How to Validate a European Patent in Cambodia

Under a recent cooperation agreement, European patents can be validated in Cambodia, thereby conferring the same rights as a regular Cambodian patent. Cambodia is the only country in Asia to benefit from such a system, and only the fourth globally (Morocco, Moldova and Tunisia being the others).

The validation must be specifically requested by the patent owner - the validation agreement does NOT automatically extend patent protection for all European patents to Cambodia. Validation is possible for both applications filed directly to the European Patent Office, as well as European PCT applications. The validation procedure is relatively straightforward, however it must be considered early in the application process in order not to miss crucial deadlines.

As a first step, the patent owner should verify that two outset criteria are met:

- The European application must have been filed on or after March 1, 2018 - the date of entry into force of the validation agreement. Patents granted after March 1, 2018 from applications filed before that date cannot be validated.

- The patent is not for a pharmaceutical product, as these are not currently protected under Cambodian patent law. As a Least Developed Country, Cambodia has been granted a waiver from its obligations as a World Trade Organization member to protect pharmaceutical patents until 2033. As an aside, applications for pharmaceutical products may actually be filed at present, however they will not be examined until 2033 (or possibly later if another waiver is granted, or even sooner if Cambodia voluntarily amends its patent law).

Second, within six months from publication in the European Patent Bulletin of the search report (or for PCT applications, within the period for performing acts required to enter into the European phase) a validation fee of EUR 180 must be paid to the EPO. There is a two-month grace period following this six-month window, subject to a 50% surcharge.

Third, within three months of the EPO granting the application, a request for validation must be submitted by a licensed Cambodian agent to the Cambodian Ministry of Industry and Handicraft. The request for validation requires the relevant application form, a power of attorney appointing the agent, a copy of the European patent, and an English and Khmer translation of the patent's title, claims and abstract. While the applicant is free to arrange for translation into Khmer themselves, the Ministry of Industry and Handicraft can perform the translation from English on the applicant's behalf - subject to payment of a translation fee. This is highly recommended, as few Khmer translators outside of the Ministry have the necessary technical knowledge and understanding of patent law. An independent review of the Ministry's draft translation is recommended so as to ensure its accuracy and that no claims have been narrowed.

Finally, a publication fee of USD 30 must be paid to the Ministry of Industry and Handicraft, as well as the standard certificate issuance fee of USD 150. Upon successful validation, the Ministry will issue a patent certificate for the owner's records.

The following chart outlines the procedure for validating a European patent in Cambodia:

 

 

 

The legal basis of the validation system is:

- Agreement between the President of the European Patent Office and the Cambodian Minister of Industry and Handicraft, signed January 23, 2017
- Royal Kram No. NS/RKM/1117/017 on the Ratification of the Agreement on Validation of European Patents between the Government of the Kingdom of Cambodia and the European Patent Office, dated November 24, 2017
- Prakas (declaration) No. 282 MIH/2017 on the Regulation and Procedures for the Validation of European Patents in Cambodia


Translating a Patent into the Cambodian Language

An applicant for a Cambodian patent must submit a Cambodian language (Khmer) translation of the application - a seemingly cumbersome and expensive process, which actually turns out to be much easier than at first glance.

Confronted with this requirement, many potential applicants hire a professional translation firm, often at great expense, to perform the translation before submitting the application to the Ministry of Industry and Handicraft. Given the technical sophistication of the document and terms of art in patent law, even the most experienced firm would struggle to render a decent translation. This can have grave consequences for the scope of protection granted in the patent, as a mistake could inadvertently narrow the claims or even potentially render the patent invalid.

We recommend against this.

Far simpler, and almost certainly cheaper, is to have the Ministry do the translation themselves. The initial application can be submitted in English, after which the Ministry will issue a quotation for the translation, based on the length and complexity of the document. After paying the fee, the Ministry's trained staff will perform the translation and provide a draft for the applicant's approval. The draft should be checked by a native-Khmer speaker with a firm understanding of patent law and the technical field, in order to ensure its accuracy. Once approved, the Khmer translation will form part of the patent application.


Attorney Sreypeou Chaing joins Abacus IP as Of Counsel

Abacus IP is pleased to announce the joining of Ms. Sreypeou Chaing as Of Counsel to Abacus IP, where she focuses on contentious intellectual property matters in Cambodia.

An attorney admitted to the Bar Association of Cambodia and the Managing Partner of CSP & Associates, Sreypeou has years of experience handling litigation cases before Cambodian courts, as well expertise in a broad range of commercial and corporate matters.

“Having known and worked with Sreypeou for close to a decade, I am delighted to have her join our firm as Of Counsel. A first-class attorney, she will add a valuable skill-set and capability to our intellectual property practice,” said Pheng Thea, Principal of Abacus IP.

Prior to joining Abacus IP and founding CSP & Associates, Sreypeou practiced law with several leading law firms in Cambodia, as well as working as a consulting attorney to private companies. Sreypeou holds a Master’s degree in Activity Enterprise Law and a Bachelor’s Degree in Private Law from University Lumiere Lyon 2 (France) and a second Master’s Degree and Bachelor’s Degree in Private Law from Royal University of Law and Economics (Cambodia). Sreypeou in addition holds the designation Certificat d’Aptitude de Profession d’Avocate from the Bar Association of Cambodia.

Sreypeou speaks Khmer, English and French.


Validation of European Patents in Cambodia to Begin March 1st

From March 1, 2018 European patent applications and registrations can be validated in Cambodia, thereby conferring essentially the same protection as throughout the 38 member states of the European Patent Organization. Validation is made upon request and payment of a 180 Euro validation fee, and only possible for European or international applications filed on or after March 1, 2018.

The validation system is based on an agreement between the President of the European Patent Office and the Cambodian Minister of Industry and Handicraft dated January 23, 2017, ratified by Royal Kram No. NS/RKM/1117/017 and implemented through the declaration (prakas) No. 282 MIX/2017 passed December 8, 2017. Further details are expected from the EPO and the Ministry of Industry and Handicraft in the coming weeks.


Renewing a Trademark in Cambodia: Calculating Deadlines

One recurring issue our clients encounter is how to calculate the various deadlines associated with owning and renewing a trademark in Cambodia. Miss a deadline and the registration risks being scratched from the Registry.

Trademarks are valid for ten years as counted from the date of filing of the application, and can be renewed for subsequent ten-year terms indefinitely. In order to renew, a request must be submitted and the appropriate fee paid on time. The renewal request can be submitted starting from six months before the expiry date (meaning nine years and six months from the application date), up until six months AFTER the expiry date, subject to a penalty fee.

Separate from the renewal, mark owners must file an affidavit of use or non-use in the fifth year of each term. This is calculated from the date of registration for the initial term (not the application date, as with the renewal deadline) or from the renewal date (which is the same as the expiry date).

The timeline below presents these deadline rules with a simple example.

Please refer to Cambodia Trademark Registration for further information on the current process and requirements.


Abacus IP @ INTA Annual Meeting

Abacus IP, represented by its Director David Haskel, will be attending the International Trademark Association Annual Meeting in Seattle from May 19-23, 2018.

The world’s largest and most widely attended trademark event, INTA’s Annual Meeting, offers the unmatched opportunity to examine key industry issues, gain actionable insights, forge critical partnerships, exchange ideas, and come away energized and equipped to meet the challenges and opportunities offered by a constantly evolving IP landscape.

Clients and interested persons are invited to be in touch with David directly to arrange a meeting in Seattle (david@abacus-ip.com).


Official Fees for Trademark Matters in Cambodia to Increase

Effective January 1, 2018, the official fees for trademark matters in Cambodia will be increased and new fees will be introduced for international marks under the Madrid System, which Cambodia joined on June 5, 2015.

While certain fees will more than double, the basic fee for filing and registration of a trademark will increase by less than three percent. With the establishment of the fees for international marks, the Department of Intellectual Property Rights will, from January 1, 2018, be able to serve as office of origin under the Madrid System. The enabling regulation also sets forth estimated timeframes for processing of matters by the Department of Intellectual Property Rights, though these are merely indicative and non-binding.

According to the Joint Declaration on Public Service Fees between the Ministry of Commerce and Ministry of Economy and Finance No. 1217, dated November 27, 2017, the previous two Joint Declarations (No. 985 dated December 28, 2012 and No. 1643 dated December 16, 2014 will be abrogated on December 31, 2017.

The schedule of official fees can be downloaded here.

Please refer to the page on Cambodia Trademark Registration for complete information on current requirements and processing.


How to Re-Register a Singapore Patent in Cambodia

The Intellectual Property Office of Singapore and Cambodia’s Ministry of Industry and Handicrafts concluded a Memorandum of Understanding permitting for the filing of Cambodian patents through the Singaporean authority, and vice versa.

The Memorandum of Understanding is valid for five years from January 20, 2015 and can be renewed upon the mutual consent of both parties. After the Ministry of Industry and Handicraft issued a Prakas (Declaration) on implementation the Memorandum on July 25, 2016, applicants are allowed to file for Cambodian patents through the Intellectual Property Office of Singapore (IPOS).

In order to register, the applicant must have first been granted a patent in Singapore. The Singaporean patent must be in-force at the time of filing a request for registration in Cambodia. In addition, the patent must have a filing date on or after February 11, 2003.

The request for registration of a Singaporean patent must be made to the Department of Industrial Property of the Ministry of Industry and Handicraft, and accompanied by a payment of the filing fee, a certified copy certificate of grant of the Singaporean patent, a certified copy of final specifications, a copy of abstract and a copy of original notarized POA if a local patent agent is appointed. Although, a certified copy of the Certificate of Grant of Singapore patent is required to be submitted, the Registrar still examines this based on the Patent Law and its related declaration. Cambodian translations must be submitted to the Patent Office within six months from the date of filing a request for registration. The registration fee and annual fee must be paid within three months from date of Registrar’s notification.

Patent rights received under this declaration may not be enforced against any prior rights which already existed before the date of filing a request for registration of Singapore patent in Cambodia. A person who has been using or exploiting that patented invention in Cambodia may continue to use or exploit it, even though the Singapore patent was granted by the Cambodia Department of Industrial Property.

Decisions of the Ministry of Industry and Handicraft regarding the granting of a patent may be appealed to the competent court within three months of the decision.


Complete Guide to Intellectual Property in Cambodia Released

Abacus IP is pleased to announce the publication of its new work, The Complete Guide to Intellectual Property in Cambodia.

This guide provides a go-to reference for attorneys, business owners, and the interested public, covering all major forms of IP in the Kingdom of Cambodia. With chapters on trademarks, copyrights, patents, industrial designs, geographical indications and other forms of IP, readers will find a concise, complete, and up-to-date summary and analysis of current law and practice.

Available for download or purchase through Amazon.


China and Cambodia to cooperate on E-Commerce, law still pending

Following on two other cooperation agreements signed recently (on trademarks and patents), Cambodia and China have agreed to cooperate on e-commerce matters, as reported by the Phnom Penh Post.

The MOU, signed in Phnom Penh on November 10th, covers policy communication, capacity building, personnel training and joint research. With the Chinese e-commerce giant Alibaba recently bringing in over $25 billion in a single day, more than the annual GDP of Cambodia, China could certainly offer lessons and expertise for the country's development.

While the legal framework for much of online commerce is still lacking, this has not stopped a vibrant ecosystem of startups and established players entering the market. An E-Commerce law has been in draft form for a number of years now, and seemed to be about to become a reality late last year, but there has been no movement on the draft of late.