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The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

Patent Application Pendency in Various Countries: Part 4

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As clients begin to develop global patent portfolios, an effective practitioner will be aware of basic information related to application filing and pendency in locales where protection is sought. This article provides a high-level look at application pendency, grant rates, and effects of lapse in select countries in Southeast Asia and Oceana.

Filing, Examination, and Fees

This is Part 4 of a four-part series on patent application pendency, grant rates, and effects of lapse in select countries. Part 1 can be found here. Part 2 can be found here. Part 3 can be found here. Part 4 focuses on Philippines, Singapore, Thailand, Taiwan, and Vietnam. Patent Applicants and Practitioners are advised to contact local counsel with any specific questions not covered in this article.[1]

Many clients that have complex intellectual property portfolios often have patents and applications in a dozen or more countries around the world. Effective intellectual property management requires understanding of the client’s goals as well as the differences in rules and procedure in various patent examining jurisdictions, and what patent life, if any, may be expected in return for monetary investment in a given patent examining jurisdiction.  One aspect of global intellectual property management is an understanding of application pendency, grant rates, and effects of lapse in countries where the client desires protection.  

This series of articles is meant to aid Applicants in deciding where to spend resources to obtain patent coverage by provide information regarding 1) substantive examination, 2) the length of time expected between filing and the first action from the patent office, 3) the length of patent term, 4) potential consequences of allowing an application to go abandoned should the applicant not want to pay the grant fees or annuities[2], and 5) the current state of the patent examination process. The information is presented on a country-by-country basis.

Republic of the Philippines

Philippines is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Philippines must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Philippines has seen the number of applications filed by non-residents remained relatively stable.[3] 

Over this same time period, the number of patents being granted in Philippines has a slightly erratic trend.[4]

Philippines recognizes Utility Patents and Industrial Designs. A request for examination is compulsory in Philippines to avoid abandonment and must be requested at the time of filing the application, or within 6-months from the publication of the application. Utility Patents are given a patent term of 20-years from the date of filing in Philippines, or from the international application filing date. Industrial Designs do not undergo substantive examination and only undergo formal examination. Industrial Designs are given a patent term of 5-years from the date of grant, which is renewable for up to two additional consecutive 5-year terms.

Annuities in Philippines are due starting from the 5th year after filing. Annuities are due each year thereafter if the patent is to remain in force.  For Industrial Designs, the renewal fees are due within 12-months prior to the current term expiration.

In Philippines, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, patent examination in Philippines has been slightly slower than examination in other countries, with some backlogs exceeding 5-years. An Applicant can expect a delay of between 3 and 4-years from the date of filing to the date of first action, depending on the technology. An Applicant may expect final disposition to occur by about 5-years after filing.

Republic of Singapore

Singapore is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Singapore must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Singapore has seen the number of applications filed by non-residents trend slightly upward.[5] 

Over this same time period, the number of patents being granted in Singapore has been fairly level.[6]

Singapore recognizes Utility Patents and Industrial Designs. Utility Patents are given a patent term of 20-years from the date of filing in Singapore. Industrial Designs are given a patent term of 5-years from the date of filing, which is renewable for up to four additional consecutive 5-year terms. 

A request for examination is compulsory in Singapore to avoid abandonment. In Singapore, a couple options for examination are available. An Applicant may request local search and examination within 36-months from the date of filing, or examination based on the results of a foreign search report, also within 36-months from the date of filing. Generally, Singapore may follow search reports issued by patent offices in EP, UK, US, KR, JP, CA, and AU. Alternatively, modified examination may be requested within 54 months of filing, relying on a corresponding grant.

Annuities in Singapore are due starting with the 5th year from filing date.   Annuities are due each year thereafter if the patent is to remain pending or in force. 

In Singapore, other than loss of patent rights, there are no negative implications for allowing an application to lapse. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, patent examination in Singapore often happens fairly rapidly. Applicants may expect a first action to be issued within 12-months following a request for examination. Applicants may consider delaying examination until closer to the 36-month deadline in order for prosecution to mature in another country. Singapore patent law generally mirrors EP and UK, so these countries are often chosen as the basis for modified examination.

Kingdom of Thailand

Thailand is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Thailand must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Thailand has seen the number of applications filed by non-residents remain relatively stable.[7] 

Over this same time period, the number of patents being granted in Thailand has trended upward.[8]

Thailand recognizes Utility Patents and Industrial Designs. Utility Patents are given a patent term of 20-years from the earliest priority date. Industrial Designs are given a 5-year term that is renewable for an additional 5-years.

A request for examination is compulsory in Thailand to avoid abandonment. The request for examination must be filed within 5-years from the date of publication, and the request is generally validated based on examination results for a corresponding application. As such, Thailand normally follows prosecution in other examining jurisdictions. Amending the claims to correspond to those as issued in in EP, US, KR and elsewhere normally results in allowance of the same application in TH. Accordingly, Applicants may consider delaying examination until closer to the 5-year deadline in order for prosecution to mature in another country.

Annuities in Thailand are due starting with the 5th year from filing date.   Annuities are due each year thereafter if the patent is to remain pending or in force. 

In Thailand, other than loss of patent rights, there are no negative implications for allowing an application to lapse. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, an Applicant can expect a delay of 1.5 to 2-years or more, depending on the technology area, between requesting examination and the issuance of a first action. As such, amending the claims to correspond to those issued in another country to expedite grant may be worthwhile.

Taiwan / Republic of China

Taiwan is a party to neither the Paris Convention nor the Patent Cooperation Treaty. Taiwan is a member of the World Trade Organization. Accordingly, patent applications filed in Taiwan must be filed within 12-months of the foreign priority document through provisions of the WTO.

Taiwan recognizes Utility Patents and Industrial Designs. A request for examination is compulsory in Taiwan to avoid abandonment. The request for examination must be filed within 3-years from the date of local filing. Based on our recent experience, office actions are issued quickly after a request for examination is filed, and TW applications are often the first in the family of corresponding national stage application to receive an office action. If consistency of granted claim scope with other family members, such as US, JP, CN, EP or other examining jurisdictions, is desirable, it is advisable to delay filing a request for examination in Taiwan until closer to the deadline to allow prosecution of the other family members to develop. 

Utility Patents are given a patent term of 20-years from the date of priority. Industrial Designs are given a non-renewable patent term of 15-years from the date of filing.

Annuities in Taiwan accumulate and are due within 3-months of receipt of the notice of allowance. Annuities are due each year thereafter if the patent is to remain in force. 

In Taiwan, other than loss of patent rights, there are no negative implications for allowing an application to lapse. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Socialist Republic of Vietnam

Vietnam is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Vietnam must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 31-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Vietnam has seen the number of applications filed by non-residents gradually increase.[9] 

Over this same time period, the number of applications granted in Vietnam has also trended upwards.[10]

Vietnam recognizes Utility Patents and Industrial Designs. A request for examination is compulsory in Vietnam to avoid abandonment. The request for examination must be filed within 42-months from the date of priority. Utility Patents are given a patent term of 20-years from the date of priority. Industrial Designs are given a patent term of 5-years from the date of filing, with two additional terms each of 5-years available upon payment of renewal fees.

Annuities in Vietnam accumulate and are due with payment of the grant fees. Annuities are due each year thereafter if the application, and subsequent patent, is to remain in force. 

In Vietnam, other than loss of patent rights, there are no negative implications for allowing an application to lapse. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, in Vietnam, modified examination may be requested based on search results received in US, EP, JP, and KR. Amending the claims to correspond to those as issued in one of these countries may result in quicker prosecution of the application.

Part 1 of this series focused on selected countries in South America. Part 2 of this series focused on selected countries in Africa. Part 3 of this series focused on selected Gulf States.

 

[1] Special thanks to our friends and colleagues at Marks & Clerk for answering our questions during the preparation of this article.

[2] In some jurisdictions over the years, fees due, but not paid, were treated as a debt owed by the Patent Owner. To avoid the debt, the Patent Owner was required to expressly disclaim or abandon the patent.

[3] WIPO IP Statistics, https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=PH

[4] Id.

[5] WIPO IP Statistics, https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=SG

[6] Id.

[7] WIPO IP Statistics, https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=TH

[8] Id.

[9] WIPO IP Statistics, https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=EC

[10] Id.