Myanmar Patent Protection in Draft Patent Law
Country’s Background for European SMEs
Myanmar is an emerging market showing steady growth rates since the country set itself on a course of political liberalisation. Despite being one of the poorest ASEAN nations, the country’s economy grew at around 8.5% in the 2014/2015 fiscal year, with economic reforms bolstering consumer and investor confidence. The service sector was the main driver of growth thanks to expansions in telecommunications and transportation. Myanmar is an emerging economy with a GDP of $64.3 billion, which is attracting more and more foreign investments. Its 53.4 million strong population is mainly occupied in the agricultural sector. However, the garment and mining industries, as well as wood products also take up a significant part of the economy.
Patents in Myanmar
Myanmar is not currently a signatory of the Paris Convention for the Protection of Industrial Property or any other treaty protecting patents. However, in accordance with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), to which it has acceded, Myanmar is required to implement and comply with Articles 1-12, Article 19 of the Paris Convention and the terms of TRIPS by no later than 1st July 2021. Myanmar is now drafting IP laws such as the Patent Law to ensure its IP legislation is more in line with the TRIPS.
Although the Burma Patents and Designs (Emergency Provisions) Act 1946 came into force in 1993, there is presently no law in operation on patents. This implies that production, commercial use and trade in goods is possible without permission of the companies (or individuals), including those who may already hold the relevant patents outside Myanmar. At present, patent owners can file a Declaration of Ownership with the Myanmar Registry Office of Deeds and Assurances. There is no substantive examination or formality examination and once the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English language newspaper such as the New Light of Myanmar, advising the public of patents’ ownership. The Declaration will be valid for 3 months with a possibility of renewal. However, the Declaration of Ownership does not grant any patent rights and currently there are very few options to actually enforce patents in Myanmar.It is also possible to register Technology Transfer Agreements with the Myanmar Scientific and Technology Research Department. Only registered agreements are enforceable in Myanmar. The law, however, doesn’t cover patent licensing.
EU imports for Myanmar are dominated by the textile industry, accounting for nearly 80% in 2011, making it the 29th largest trading partner for the EU for clothing. Agricultural products also play a significant role in Myanmar’s exports to the EU. EU exports to Myanmar on the other hand are dominated by machinery and transport equipment. EU exports to Myanmar have risen steadily since its increasing political liberalisation.
As patent protection in Myanmar is extremely limited, in order to seek protection for their inventions, most entrepreneurs have to invest considerable amounts in protecting their trade marks through the means locally available in Myanmar so that they can at least protect their brand reputation and goodwill from illegal action related to their products and businesses.
New Draft Patent Law (year 2015)
Myanmar government has published the New Draft Patent Law in 2015 that is still pending for approval. The Draft Patent Law will include procedural and substantive provisions found in patent laws of most Paris Convention countries (including EU countries).
According to the Draft Patent Law, in order to be patentable, the invention must:
(a) be novel (absolute novelty applies);
(b) involve an Inventive step; and
(c) be industrially applicable.
Those three requirements are in line with international standards of patent protection worldwide. The patent registration system will also be similar to many other ASEAN countries. Patent applications would be filed with the Myanmar Intellectual Property Office (IPO), the governmental body that shall be created to be in charge of all IP registrations in the country. Upon receiving the application, a preliminary examination of all patent applications will be performed by the IPO, and publication of the patent application will follow if the patent application is considered complete and does not contain information contrary to national security or public safety.
The IPO might delay publication of the patent application until it receives clearance from the responsible ministry. For patent applications determined to be contrary to national security or public safety, the responsible ministry shall have the right to transfer any and all rights in the patent application to the Myanmar government. The ministry however needs to provide sufficient compensation to the applicant.
The Draft Patent Law will also provide an opposition period of 3 months, starting from the date when the patent application was published. The opposition period is followed by substantive examination and subsequent grant of patent or rejection of the application.
Patents will be protected for 20 years subject to annuity fees. However, regarding essential pharmaceuticals the Myanmar government will have the right to issue compulsory licenses, which means that the patent owner cannot object to other companies receiving the right to produce these pharmaceuticals. These licenses, however, would be subject to royalties. According to the Draft Patent Law, essential pharmaceuticals are defined as those pharmaceuticals considered essential to the public,
national security, or development of the country, or those pharmaceuticals which provide a monopoly to the patentee that is considered detrimental to national interest.
In case of patent infringement, patent owners will have the right to pursue civil litigation and criminal prosecution. Additionally, patent owners may apply to relevant courts for preliminary injunctions.
Currently, in the absence of a functional patent law, it is extremely difficult to enforce patents in Myanmar. Under the Specific Relief Act (1877) and under the Merchandise Mark Act (1889), there are provisions which might grant enforcement, however, it is advisable to discuss these options with local IP lawyers to see whether they are applicable to the specific case. It is also advisable to discuss patent protection strategies with an IP expert before bringing technology to Myanmar.
In order to seek protection for their products, companies can consider emphasizing trade mark protection in Myanmar to protect their brand reputation and goodwill from illegal action related to their business, since brand protection is currently more developed in Myanmar.
South-East Asia IPR Helpdesk
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (firstname.lastname@example.org) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit their online portal at http://www.ipr-hub.eu/.