With the rising number of patent registrations in Cambodia, annuity payments have become an important issue for rights-holders to be aware of. The following provides a complete overview of the relevant legal provisions, and most importantly the current practice of how the Cambodian Patent Office has implemented them.
The patent annuity requirement in Cambodia is specified in Article 46 of the Law on Patents, Utility Model Certificates and Industrial Designs, which reads:
“In order to maintain the patent or patent application, an annual fee shall be paid in advance to the Registrar for each year, starting one (1) year after the filing date of the application for grant of the patent. A period of grace of six (6) months shall be allowed for the late payment of the annual fee on payment of the prescribed surcharge as referred to in Article 130 of this Law. If an annual fee is not paid in accordance with the provisions of this Article, the patent application shall be deemed to have been withdrawn or the patent shall lapse.”
The annuity payment amounts (converted from Khmer Riels to US dollars), specified in the Joint Prakas (Declaration) on Public Service Fees, dated July 8, 2015:
Year 1: NO FEE
Year 2: 20 USD
Year 3: 20 USD
Year 4: 40 USD
Year 5: 100 USD
Year 6: 140 USD
Year 7: 180 USD
Year 8: 220 USD
Year 9: 260 USD
Year 10: 300 USD
Year 11: 350 USD
Year 12: 400 USD
Year 13: 450 USD
Year 14: 500 USD
Year 15: 550 USD
Year 16: 610 USD
Year 17: 670 USD
Year 18: 740 USD
Year 19: 810 USD
Year 20: 890 USD
Finally, the Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, specifies in Rule 28:
“Annual fees shall be executed as following:
1- Upon payment of an annual fee in accordance with Article 46 of the Law, the
Registrar shall, within three (3) weeks from the date payment is received, furnish or send
to the applicant or to the owner of the patent and utility model certificate a receipt of
2- The Registrar shall record and publish a notification of the lapse of a patent and
utility model certificate.
3- Annual fees shall not be refundable.”
To make an annuity payment in Cambodia, a written request must first be submitted to the Patent Office in person, which sits within the Ministry of Industry and Handicraft. Thereafter, the office will issue a Notification for Patent Annual Maintenance Fee, which often takes several weeks to months to obtain. The payment must thereafter be made within three months of the date of notification, in cash and in person to the official cashier within the Ministry of Industry and Handicraft. An official receipt will be issued immediately upon payment, in accordance with Rule 28.1, above.
As the patent system is relatively new in Cambodia, with the first patents only being granted in 2015, the provisions regarded annuity payments are not currently fully implemented. Specifically, in current practice the Patent Office will allow a patent owner to make retroactive payments even after the application or registration has lapsed. However, if a notification to pay the annuity is issued, and the payment not made within the three months set by the notification, the patent will lapse and cannot be revived.
Further, publication of notifications that a patent has lapsed, as called for under Rule 28, does not currently take place. Unlike for trademarks, patent registrations are not currently published, though this is expected to be rectified soon with the launch of an online patent database.
Despite this only partial implementation of the annuity requirements, patent owners are strongly advised to properly calculate, record and make annuity payments should they wish to maintain their rights in Cambodia as the practice can change at any time.