Laos’ Department of Intellectual Property (DIP) published its Decision on Patents and Petty Patents No. 1714/MOST, dated December 15, 2020, in the Official Gazette on December 23, 2020. The decision is a replacement for and comprehensive revision of a similarly named 2012 decision, and it is the latest step in the country’s steady efforts to strengthen its patent regime. The new decision clarifies and simplifies many key points, the most significant of which are detailed below.
- Priority date. Applications filed under the Patent Cooperation Treaty have a 31-month time limit for entering the national phase, counting from the priority date. This improves on the 2012 decision, which set the time limit at 30 months.
- Submission of original documents. If the pre-filled, unsigned form for the power of attorney and deed of assignment is submitted, scanned copies of the notarized power of attorney and deed of assignment must be submitted within 15 days (down from 60 days under the 2012 decision). However, the original documents still must be submitted within 60 days.
- International classification. Applicants can ask the Department of Intellectual Property (DIP) to indicate the international class of patent and petty patent applications. If there are amendments to the class, applicants can file an amendment form with the DIP free of charge. International classification was not mentioned in the 2012 decision.
- Publication timeline. Applications for patents or petty patents will be published in the 19th month after the application filing or priority date. The 2012 decision, in contrast, did not mention the publication timeline.
- Opposition. The procedures for an opposition to a patent or petty patent application are clear and concise under the new decision, whereas opposition was not mentioned in the 2012 decision.
- Examination request period. While the 2012 decision gave only a broad description of examination, the new decision provides clear guidelines on procedures, requirements, and timeline of this phase. The applicant must request substantive examination within 24 months after the filing date for patents and six months for petty patents. International substantive examination results can be filed within three months of their receipt.
- Claims. An excess fee will apply to each independent claim in excess of 3 and each dependent claim in excess of 15.
- Error correction. The decision permits the correction of errors found in the publication of a patent after it has been granted. Correction requests must be made within 60 days of the date of publication.
- Cancellation and withdrawal. Third parties can file cancellation applications with the DIP within five years after the relevant publication date in the Official Gazette. If more than five years has elapsed since the relevant patent’s publication date, the application should be filed with the People’s The 2012 decision had only addressed this issue in broad terms.
- Annuity payments. There is a six-month grace period for renewal and annuity payments.
While securing patents in Laos has not been a priority for many companies operating in the jurisdiction, some of the ambiguity that surrounded the practice has been cleared up by this decision. Consequently, it is more worthwhile then ever for intellectual asset owners to incorporate a patent filing strategy into their business plans in Laos.
Filing Process for Patents and Petty Patents
This new decision on patents and petty patents was the main topic for a roundtable discussion between Tilleke & Gibbins and the Lao DIP on March 31, 2021. In preparation for the meeting, IP specialists at Tilleke & Gibbins developed a flowchart of the patent-filing process in Laos, emphasizing the key points of the new decision and providing a touchstone for the dialogue, allowing for practical and fruitful discussions of each step of the process. It also acts as a helpful guide to the process for those unfamiliar with it, and we are pleased to provide it below for reference.
The DIP representatives found the flowchart to be a useful and practice overview, and provided helpful insights on best practices for obtaining a patent in Laos. They also expressed their optimism that the issues of prolonged pendency for patent registration in Laos may finally be improved, with the DIP aiming to decrease the backlog of pending patent applications in the coming few years. The successful realization of this improvement would be positive news for Laos, as it would allow the registration of these crucial rights to be completed in a timely manner, thereby attracting more incoming investment in technology from companies that would be able to rely on legal protections for their patented inventions.