Copyright © 2018 KENFOX
All other rights are reserved. This document and its contents are made available on an “as is” basis, and all implied warranties are disclaimed. The contents of this document do not constitute, and should not be relied on as, legal advice. You should approach a legal professional if you require legal advice.
I. Legal basis
- Law No. 01/NA of December 20, 2011, on Intellectual Property (as amended) (2011)
- Penal Law (2005)
- Customs Law (2005)
- Decree No. 01/PM of Prime Minister on Patent, Petty Patent and Industrial Designs (2002)
- Regulation No. 22/STEA-PMO on the Implementation of Decree on Patent, Petty Patent and Industrial Designs (2003)
II. Industrial Design related matters in Laos
At KENFOX, we assist clients in determining viability and availability of their proposed industrial designs for use and registration in Laos. KENFOX industrial design services include the followings:
- Search for shape, configuration, pattern or ornament applied to an article by any industrial process along with thorough legal opinion and advice.
- Search according to the Locarno Classification.
- Restoration of the lapsed designs
- Watch/inspection after industrial design patent
1. Definition of Industrial Designs
Industrial design means the form or shape of the product, which is to be created which includes the shape, pattern, line, color, etc;
An industrial design certificate protects a product’s special appearance (i.e., the combination of applied art and applied science of product). In order to obtain an industrial design certificate, the design must meet the following requirements: (1) it must be new in the sense that it has not been disclosed to the public by publication, display, or some other means in Laos or internationally prior to the filing date, or priority date (if priority is claimed); and (2) it must be ornamental. An industrial design is considered ornamental if “it gives a special appearance to the object to which the design is applied or in which it is embodied” (Article 15.2 of the IP Law).
In Laos, industrial designs are a type of patent, and therefore, their protection follows a similar principle. In order to maintain an industrial design registration, pursuant to the IP Law, an annual fee must be paid in advance by the rights-holder. Prescribed fees for annuity payments are specified in the Ordinances of the President of the Republic on Fees and Charges No.003 on December 16, 2012.
2. Basic Information on Industrial Designs in Laos
In Laos, industrial designs are a type of patent, and therefore, their protection follows a similar principle. Laos applies the first-to-file principle, meaning that priority is determined by whoever files the industrial design application first, or if priority is claimed, the earliest priority date. An application may contain a declaration claiming priority based on one or more earlier national, regional or international applications filed by the applicant, either in Laos or in another country, which is a party to the Paris Convention (or another international treaty to which Laos is a signatory).
Therefore, applications from Convention countries will be granted the same priority date in Laos. In the case of such international applications, the relevant Lao authority only conducts a formal examination of the patent application. While the authority does not make a substantive examination, it recognises and accepts search and examination reports from other IP offices around the world.
The time frame from the filing to granting date of a design application is approximately 6 to 12 months.
An industrial design shall expire five years after the filing date of the application and may be renewed for two continuous periods, with each period taking five years and where the application for renewal shall apply during 90 days before the expiry date [Article 35]. In order to maintain an industrial design registration, an annual fee, pursuant to the IP Law, must be paid in advance by the rights-holder. The IP Law, however, does not specify the annual fees. The maintenance fees and registration fees are expected to be established by guiding decrees/regulations following the promulgation of the IP Law.
Industrial designs are registered with MOST.
The application for an industrial design must contain the following:
- A request for registration of the industrial design;
- The name and other personal data of the applicant/inventor;
- A notarised power of attorney, and if the application is filed through an agency, the agent’s name and address in Laos must be included;
- A notarised deed of assignment, transferring rights from the inventors to the applicants;
- Drawings or photographs of the industrial design;
- A statement of the type of goods to which the industrial design relates; and
- Receipt of payment of official fees.
The application can be filed in either English or Lao. However, application documents submitted in English must be translated into Lao within 90 days from the application filing date. The translation must be certified to be a correct translation.
An application for an industrial design may also contain a claim for priority. If priority is claimed, the applicant must submit a copy of the application on which the priority claim is based, certified as correct by the authority which received the application and showing the filing date. Such documents do not require any authentication, and may be filed, without fee, at any time within three months of the filing date of the application in Laos.
Upon receiving an application for an industrial design, MOST will conduct a formality examination to ensure that the application is complete and meets the requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application.
Applications for industrial designs are not examined as to substance.
Any person, legal entity, or organisation may apply for an industrial design. A person, legal entity, or organisation residing in a foreign country, however, must be represented by an authorised representative in Laos (i.e., an IP agent).
4. Protection of industrial design in Laos
IP protection of a product’s industrial design protects the “ new and ornamental… form or shape of the product”
The Law sets out requirements to obtain an industrial design certificate in order to protect IP in an industrial design as ‘new and ornamental’
An industrial design shall be deemed ‘new’ for the purpose of the Law if it has not been disclosed to the public by publication, display or use, in Lao PDR or anywhere else, prior to the date of filing of the application for registration. An industrial design will be considered ‘ornamental’ for the purpose of the Law if it gives a special appearance to the object to which the design is applied or in which it is embodied and such appearance is not functional or dictated by technical features of the object.
Designs ineligible for industrial design registration are those in which the appearance of the design is dictated by technical features of the object to which the design is applied or in which it is embodies, and designs that are considered contrary to social order and the fine traditions of the nation by the relevant authorities.
5. Requirements for Obtaining an Industrial Design Certificate
In order to obtain an industrial design certificate, a design shall meet all the following requirements:
- shall be new: meaning that it has not been disclosed to the public by publication or by use or displayed, or in any other means in the Lao PDR or any place in the world prior to the date of filing the application for registration or prior to the priority date of the application for registration;
- shall be ornamental: meaning that it gives a special appearance to the object to which the design is applied or in which it is embodied.
6. Designs Ineligible for Industrial Designs Registration
Designs ineligible for industrial designs registration shall be as follows:
- a design the appearance of which is dictated by technical features of the object to which the design is applied or in which it is embodied;
- a designs that is contrary to social order and the fine traditions of the nation.
7. Claiming Priority
An application for the granting of a patent or petty patent, or for the registration of an industrial design or trademark, may contain a declaration claiming priority based on one or more earlier national, regional, or international applications filed by the applicant or his predecessor in title in the Lao PDR or in another country or office that is party to an agreement to which the Lao PDR is a party and that provides for a right of priority. The requirements for establishing a claim to priority shall be as described in a separate regulation.
For industrial designs or trademarks the priority period is six months from the priority date.
8. Temporary Protection of Industrial Designs at Certain Exhibitions
Temporary protection shall be available for industrial designs in respect of goods exhibited at official or officially recognized international exhibitions, provided a request for such protection is made and an application is filed within six months from the date on which the goods were first exhibited or rendered at such exhibition. In such case, the application shall be deemed to have been filed on the date on which the goods were first exhibited at such exhibition, provided that temporary protection shall not be applied so as to extend any other claim of priority.
9. Application process in Laos
Filing application
Applications for Registration of Industrial Designs
Applications for registration of industrial designs shall include the following documents:
- a request for registration of the industrial design;
- if the applicant is represented, a power of attorney and the name and address of the applicant’s representative in the Lao PDR;
- one or more drawings or photographs that clearly disclose the industrial design as needed to illustrate its appearance;
- a brief statement of the type of goods to which the industrial design relates;
- receipt of payment of fees.
The application may include a claim of priority as provided in Article 29 of this Law (if applicable).
Each application for industrial design registration shall apply to a single industrial design or a series of related designs for a single class as per the international classifications.
The Ministry of Science and Technology shall accept the application and assign a filing date that contains, at a minimum:
- the name, address and nationality of the applicant;
- a drawing or photograph;
- filing fee as per regulations.
If any individual, legal entity or organization wishes to apply for registration of industrial design, shall satisfy all specified requirements within the times set by the Ministry of Science and Technology.
Formality examination
The Ministry of Science and Technology will conduct a formality examination of each industrial property application to ensure that the application is complete, in correct form, and that fees have been paid. The Ministry of Science and Technology will notify the applicant whether the application is sufficiently complete to receive a filing date.
If the application is sufficiently complete to receive a filing date but it appears that the application is incomplete or otherwise incorrectly filed, the Ministry of Science and Technology will inform the applicant to complete the application within 60 days of notification.
Substantive Examination
After completion of the formality examination of the application, the Ministry of Science and Technology will examine as to substance the patent, petty patent, industrial design, trademark and geographical indication applications for registration.
An application for a patent is subject to a substantive examination to determine whether it meets the requirements for patentability or for obtaining a petty patent as described in this Law. The substantive examination shall be based on a search of existing technical knowledge. Where the application has previously been subject to a search or examination by another authority the applicant may submit a copy of the report of such office and request that it be accepted in lieu of conducting a search in the Lao PDR.
If the applicant is unable to provide substantive examination reports for the invention or utility innovation which is the subject of the application, the applicant may submit a request to the Ministry of Science and Technology to examine as to substance the application. The Ministry of Science and Technology will undertake the examination within the following time frames: 32 months for an invention and 12 months for a utility innovation from the date of filing the application or the priority date. However, all expenses incurred in the request for the examination of the invention or utility innovation registration application shall be the burden of the requestor.
The registration applications for industrial design, trademark and geographical indication will not be requested to examine as to substance.
Registration
After consideration and examination of the industrial property registration applications which are considered to fulfill the requirements provided for in this law, the Ministry of Science and Technology will issue a patent, petty patent or industrial property registration certificate, enter the registration in the register and publish the registration in the official industrial property gazette.
Where an industrial design, trademark or geographical indication has been registered, the third party may request an objection or a cancellation of such registration within period of 5 years from the date of publication in the official gazette.
10. Termination of Industrial Property Rights
Patents, petty patents, and industrial property registrations shall terminate as follows:
- the term of protection is expired;
- the industrial property owner fails to renew the registration and pay the applicable fees, in which case, rights shall terminate as of the end of the term for which protection was granted and the fee was paid;
- the patent, petty patent, or registration is invalidated based on a finding that one or more requirements for protection have not been satisfied; where such finding applies to only a portion of the industrial property, the termination shall apply only to such portion as is invalidated. In such case, the invalidation shall be effective as from the grant of the patent, petty patent, or registration;
- failure to the commercial exploitation, the industrial property rights will be terminated after the final decision by the competent court.
11. Term of Protection of Industrial Designs
The term of protection of industrial designs shall be 15 years from the date of filing the application for registration.
In order to maintain the term of protection, the industrial design owner shall pay fees every five years in advance.
12. Rights of the Industrial Design Owner
An industrial design owner has the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying an industrial design which is a copy or imitation of the protected design, when such acts are undertaken for commercial purposes.
13. Invalidity and Cancellation
Where an industrial design registration is held invalid by the People’s Court, the Ministry of Science and Technology shall cancel such intellectual property accordingly.