Laos - DUONG & TRAN

PATENT AND PETTY PATENT

DEFINITION

According to Article 3 of Law on Intellectual Property (The IP Law) a “patent” means the official certificate issued by the state organizations to protect inventions that are new, involve an inventive step and are capable of industrial application.

Petty patent means the official certificate issued by the state organization to protect utility innovation.

Unity

According to Article 31 of IP Law on unity of patent/petty patent, an application for a patent or petty patent shall relate to one invention or utility innovation only or a group of related inventions or utility innovations so linked as to form a single inventive concept as per the international classification.

Patentability

An invention/utility innovation which is not contrary to laws and regulations, culture or fine traditions of the nation, national defense, public security, health and the environment, is excluded from patentability under Article 4 of the Patent Law. A patent or petty patent may be refused under Article 21 if it is contrary to social orders and moral, damages human, animal or plant life or health or causes serious prejudice to the environment and is contrary to security and peace of Lao PDR.

According to Articles 13, 14 of the IP Law, patentability conditions are provided as follows:

Novelty of invention

In Laos, novelty requirement for patent is universal while novelty requirement for utility innovation is limited in Lao territory.

To be considered as new, an invention has not been existed, not been disclosed to the public by journal or by actual use or in any other means in the Lao PDR or any place in the word prior to the date of filing the application for registration or prior to application for priority date for such patent.

To be considered as new, a utility innovation must have not been previously know or used in the Lao PDR within one year prior the date of filing an application.

Inventive Step

An invention is considered to involve an inventive step compared to previous inventions.

An utility innovation involves an inventive step which has easier inventive step than required for a patent

Industrial application

An invention is considered industrially applicable if it can be industrially applicable in industry, handicraft, agriculture, fishery, services, etc.

Unpatented and limited subject matters

Under Article 21 of Lao IP law, the following objects are also not protected as patent/petty patent under Article 21 of Lao IP law:

Inventions or utility innovations that are not novel, if they are discovered exists, including living organisms or parts of living organisms that exist in nature;
Subject matter that is not an invention does not constitute a technical solution because it is merely a scientific principle or theory, a mathematical algorithm, or a set of rules for doing business or playing games except those may constitute an element of an invention or utility innovation;
diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals except those may constitute an element of an invention or utility innovation.

PATENT SPECIFICATION

The specification of an invention is the most important part of a patent application. This part consists of a description, drawings (if any), one or more claims and abstract.

Description that discloses the invention or utility innovation in such clear and complete terms as to enable a person of ordinary skill in the relevant field of technology to understand and exploit the invention or utility innovation; the description shall disclose the best mode for making or using the invention or utility innovation.

Claims that clearly specify the subject matter to be protected and are supported by the description.

Drawings are required when they are necessary for the understanding of the invention.

Abstract merely serve the purpose of technical information; in particular, it shall not be taken into account for the purpose of interpreting the scope of the protection.

APPLICATIONS FOR PATENT MATTERS

PCT National Phase Applications

(PCT national phase applications should be filed within the 30 months from the earliest priority date)

PCT application number or publication number and changes on applicant(s), inventor(s) in the national phase
Details of PCT application (full name, address, and nationality of applicant(s) and inventor(s), priority data, and international classification indexes) in the case this application has not yet been internationally published
Specification (including title, description, drawings(if any) and claims) and abstract of the invention and amendments in English for our translation into Lao language
Original Notarized Power of Attorney within 02 months from the filing date
Original Notarized Deed of Assignment if the applicant in national phase is not the same in the international phase within 02 months from the filing date
Request for substantive examination in the case search report, examination result for the same invention/utility innovation from foreign countries are not submitted.
Information and documents (search report, examination result and copy of issued patent (if any) relating to the PCT application or the corresponding foreign applications (if any) for the same invention/utility innovation during the examination period.

National Applications

(Priority claiming applications must be filed within 12 months of the earliest priority date)

Details of applicant(s) and inventor(s) (full name, address, and nationality)
Classification indexes of the invention under the Strasbourg Classification system
Specification (including title, description, drawings(if any) and claims) and abstract of the invention in English for the purpose of our translation into Lao language
Number, date and country of priority application(s)
OriginalNotarized Power of Attorney within 02 months from the filing date provided that a copy of Power of Attorney is submitted at filing
Original Notarized Deed of Assignment within 02 months from the filing date
Certified copi(es) of priority application(s) within 03 months from the filing date
Request for substantive examination in the case search report, examination result for the same invention/utility innovation from foreign countries are not submitted.

Requirements for payment of annual fee

Request for renewal must be filed within 6 months before the anniversary of filing date

Original notarized Power of Attorney
Copy of Patent Letter(including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Requirements for recordal of changes of name/address

Original Notarized Power of Attorney
Certified copy of document evidencing change of name/address (Extract of Company Register, Declaration of Change, and so on)
Copy of Patent Letter (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Requirements for recordal of assignment/license contract

Original Notarized Power of Attorney
Original Notarized Assignment/License Contract
Copy of Patent Letter (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Costs

The costs of obtaining and maintaining a patent/petty patent depend on factors such as the number of claims beyond the fifteen, number of pages beyond fifty, whether the convention priority right is claimed, providing search reports and examination results for the same invention/utility innovation issued by foreign countries and objections raised during the examination by the DIP. Providing the search report and the examination result helps the applicant save the fee for filing request for substantive examination.

Payment for the costs can be made in one or several times. For example, application fees including fees for filing, claiming priority right (if any), and publication can be paid on the filing date. Examination fees including fees for conducting patentability search and substantive examination can be paid when a request for substantive examination is filed in the case no search report and examination result are submitted. Granting fees including fees for grant, registration and publication of patent are paid upon being invited by the Patent Office.

The service charges are subjected to 10% value added tax. Other disbursements such as telephone calls, faxes, postage, courier and copying will be charged on the basis of the actual expenses.

PROCEDURE AND TIME FRAME

Patent applications may be filed at the Department of Industrial Property (DIP), Ministry of Science and Technology directly. The filed applications will be subjected to the examination process as the Flow Chart for obtaining a Patent/Petty Patent in the ANNEX.

Examination on filing

The Receiving Division will examine whether the patent application satisfies the requirements on the documentation and the application fees have been paid.

If the application meets all the requirements on filing, the DIP will issue an Official Filing Receipt to confirm receiving of the application in which a date of filing and an application number will be assigned.

Examination as to form

The filed application will be then examined as to form to ensure whether it complies with the administrative requirements or formalities.

If all the relevant documents and information are included and satisfy the formality requirements and the application fees have been paid, the application will be accepted as complete and regular and the application number and the filing date will be officially recorded.

Publication of the application

The patent application will be published in the Official Industrial Property Gazette in the 19^th month after the date of filing the application.

Examination as to substance

The patent office may use the search report and examination result for the same invention filed in foreign countries to refuse the application or grant a patent or carry out examination by themselves.

In the case no the search report and examination result are to be submitted, the applicant must make request for substantive examination and pay the fees for the examination. The DIP will carry out substantive examination by themselves with cooperation of foreign patent offices.

The substantive examination verifies whether there exist any grounds for refusal connected with unity, priority, double patenting and patentability.

Grant, recordal and publication of a patent

When the DIP finds that all formality and substantive requirements for the grant of a patent are fulfilled, the applicant will be invited to pay fees for the grant, registration, publication of the patent.

After the prescribed fees are paid, the DIP will issue to the applicant a patent letter, record the information of the patent in the register and publish it in the Official Industrial Property Gazette.

Duration of patent and annual fees

The term of patent is 20 years for inventions and 10 years for utility innovation as of the filing date of the application.

In order to maintain the patent, an annual fee must be paid to the DIP after the filing date.

INDUSTRIAL DESIGN

DEFINITION

According Article 3 of the IP Law, an industrial design (design) means the form or shape of the product, which is to be created which includes the shape, pattern, line, color, etc. A certificate for industrial design is issued for a design, which is new and ornamental.

Unity

An application for industrial design includes single industrial design or a series of related designs for a single class as per International Classification.

Protection criteria

According to Article 15 of the Intellectual Property Law, protection conditions for industrial design are provided as follows:

Novelty

The standard for determining novelty of industrial design is based on universal novelty. The design shall be new in a sense that it has not been disclosed to the public through magazines or by actual use of displayed, or in any other means in the Lao PDR or any place in the world prior to the date of filing the application for registration or prior to the priority date of the application for registration.

Ornamentation

Design shall meet requirement of ornamentation. That means that the design gives a special appearance to the article to which the design is applied or in which it is embodied.

Unprotected designs

Article 22 of Intellectual Property Law stipulate on objects, which are not protected as industrial design as follows:

a design the appearance of which is dictated by technical features of the article to which the design is applied or in which it is embodied;
a design that is contrary to social order and the fine traditions of the nation.

APPLICATIONS FOR DESIGN MATTERS

Requirement for registration

(Priority claiming applications must be filed within 6 months of the earliest priority date)

Details of applicant(s) and designer(s) (full name, address, and nationality)
Title or indication of the product(s)to which the design is applied
The international classification code under the Locarno Agreement
Drawings/graphic representationsof the design showing the whole article for which protection is required
Original notarized Power of Attorney within two (02) months from the filing date provided that a copy of Power of Attorney is submitted at filing
Original notarized Deed of Assignment within 02 months from the filing date
Certified copi(es) of priority application(s) within 3 months from the filing date if priority right is claimed

Requirements for renewal
(Request for renewal must be filed within 6 months before the expiry date)

Original notarized Power of Attorney
Copy of Certificate of Industrial Design (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Requirements for recordal of changes of name/address

Original Notarized Power of Attorney
Certified copy of document evidencing change of name/address (Extract of Company Register, Declaration of Change, and so on)
Copy of Certificate of Industrial Design (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Requirements for recordal of assignment/license contract

Original Notarized Power of Attorney
Original Notarized Assignment/License Contract
Copy of Certificate of Industrial Design (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Costs

The costs of obtaining industrial design certificate depend on factors such as the number of the industrial designs in an application, the convention priority rights claimed and objections raised during the examination by the DIP.

Payment for the costs can be made at the time of filing and registration. Application fees including fees for filing, claiming priority right (if any) are often paid on the filing date. Registration fees including fees for registration and publication of industrial design are paid upon being invited by the DIP.

The total costs include official fees and service charges. The service charges are subjected to 10% value added tax. Other disbursements such as telephone calls, faxes, postage, courier and copying will be charged on the basis of the actual expenses.

PROCEDURES AND TIME FRAMES

Applications for industrial design may be filed at Department of Industrial Property (DIP), Ministry of Science and Technology directly. The filed applications will be subjected to the examination process as the Flow Chart for obtaining an Industrial Design in the ANNEX.

Examination on filing

The Receiving Division examines whether the industrial design application satisfies the requirements on the documentation and the application fees have been paid.

Examination as to form

The filed application will be then examined as to form. The DIP examines the application whether it complies with the administrative requirements or formalities.

Publication of the application

The design application will be published in the Official Industrial Property Gazette after the completion of formality examination.

Examination as to substance

The application will be automatically examined as to substance. The substantive examination verifies whether there exist any grounds for refusal connected with failure to satisfy the protection criteria as mentioned above as well as criteria of unity, priority, double registration.

Registration, recordal and publication of Industrial Design

When the DIP finds no grounds for refusal, it will issue an Acknowledgement of Industrial Design Registration in which the applicant will be invited to pay the fees for registration and publication of the industrial design.

After the prescribed fees are paid, the DIP will issue to the applicant a certificate for registration of industrial design, record the details of the industrial design in the register and publish the industrial design in the Official Industrial Property Gazette.

The publication information contains the publication number and the publication date, the application number and the filing date, the international classification code, the information on the applicants, the designers, the industrial design agent, the priority data, the title and the drawings/photographs.

Duration and renewal of patent for industrial design

The term of patent for industrial design is 15 years from the filing date.

In order to maintain the term of protection, the industrial design owner shall pay fees every five years in advance.

TRADEMARKS

DEFINITION

Mark means any sign, or any combination of signs, capable of distinguishing the goods or services of one individual, legal entity, and organization from those of other individuals, legal entities and organizations. Such signs may include words including personal names, letters, numerals, figurative elements, shape, three dimension picture, motion picture or package of products and combinations of colors as well as any combination of such signs

There are four marks (or trademarks) protected under Article 3 of the Lao Intellectual Property Law.

Trademarkmeans the mark as defined above to use with the goods and services as well as to distinguish between these goods or services and other goods or services
Collective trademarkmeans the trademark used by affiliated enterprises or members of an association, cooperative, state or private organization or a group of individuals;
Certification markmeans the trademark, which the owner has permitted the use of by individuals, legal entities or organizations for use with their goods or services in order to certify the characteristic, which relates to the origin, raw materials and production methods of the goods or methods of services supply, type, quality, safety or other characteristics of the goods or services;
Well-known markmeans a trademark, which is widely recognized by the relevant sector within the territory of the Lao PDR, including where such knowledge is a result of promotion of the trade mark. Criteria for determination of a well-known mark are provided in Article 16.3 of Intellectual Property Law;

The trademark application must relate only one mark used for one or more classes of goods and/or services. A class includes non-limit list of goods/services. However, class headings are not permitted in list of goods/service filed. The International Nice Classification is applied for list of goods/services in trademark application.

Criteria of registrability

A trademark is available for registration if it is distinctive for the goods or services which the mark is applied for.

Detailed regulations on the distinctiveness of a trademark are provided by Articles 16 and 23 of the Intellectual Property Law, namely

A mark is eligible for trademark registration if:

It is not identical to a previously registered mark, well-known mark, or geographical indication for the same goods or services;
It is not similar to the previously registered mark, well-known mark for the same, similar, or related goods and services, where the use of the later mark would tend to cause confusion as to the source of goods and services or create a false impression that they are connected or associated with another party;

A mark cannot be used and registered as trademarks is:

The mark that does not distinguish the goods or services of the applicant from those of another individual, legal entity or organization;
the mark that consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or of signs that have become customary in the current language or in the good faith and established practices of the trade in the Lao PDR;
the mark that is of such a nature as to deceive or mislead the public or trade circles in which the mark is used or is of a fraudulent nature;
the mark that consists of or comprises indications that, when used in the course of trade, is liable to mislead the public as to the origin, nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods or services;
the mark that consists of or contains without authorization from the relevant governmental entity, armorial bearings, flags, or other national emblems, and official signs, hallmarks, abbreviations or full names of towns, municipalities, provinces or capital of the Lao PDR or foreign countries;
the mark that consists of or contains, without authorization from the relevant state or international organization, an emblem of an international organization or symbols created by international conventions, official seals or symbols of state or international organizations;
the mark that consists of or contains, without authorization, the name, image, or likeness of a living person;
the mark that consists of or contains, without authorization images of cultural symbols or historical monuments, or the name, image, or likeness of a national hero or a leader, or the mark would be offensive or contrary to the fine traditions of the nation;
the mark that is identical, or similar to trademarks already registered for the same, similar, or related goods or services;
the mark that is identical, or similar to a well-known mark for the same, similar or related goods or services;
the mark that is identical, or similar to a trade name for a business that provides the same, similar, or related goods and services;
the above-mentioned mark that would lead to a likelihood of confusion as to the source of the goods or services or falsely suggest an association with the registered mark or well-known mark or trade name, as appropriate;
the mark that consists of or incorporates a geographical indication which identifies a place other than the true origin of the goods;
the mark that consists of or incorporates a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory;
the mark consists of or contains matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;
the mark is of such a nature as to create confusion with the establishment, the goods, or the industrial or commercial activities, of a competitor;
the mark is of such a nature that its use in the course of trade would discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
the mark is contrary to national security, social order, culture and the fine traditions of the nation.

Nature of the goods or services is not the case for denying of the registration of the mark.

APPLICATIONS FOR TRADEMARK MATTERS

Filing requirements for trademark registration

(Priority claiming applications must be filed within 6 months of the earliest priority date)

Details of applicant(s) (full name, address, and nationality)
01 print of mark with the size not larger than 8 cm x 8 cm
Description of the mark: colors claimed and English translation and/or transliteration into Romanletters if the mark comprises words not in English
List of Goods or Services and, preferably, their International Classification(s)
Regulation governing the use of mark if the mark is certification mark or collective mark
Number, date and country of priority application if priority right claimed
Original notarized Power of Attorney within 02 months from the filing date provided that a copy of Power of Attorney is submitted at filing
Certified copi(es) of priority application(s) within three (03) months from the filing date if priority right is claimed

Requirements for renewal
(Request for renewal must be filed within 06 months before the expiry date)

Original notarized Power of Attorney
Copy of Certificate of Trademark Registration (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)
01 print for mark with the size not larger than 8 cm x 8 cm

Requirements for recordal of changes of name/address

Original notarized Power of Attorney
Certified copy of document evidencing change of name/address (Extract of Company Register, Declaration of Change, and so on)
Copy of Certificate of Trademark Registration (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Requirements for recordal of assignment/license contract

Original Notarized Power of Attorney
Original Notarized Assignment/License Contract
Copy of Certificate of Trademark Registration (including Acknowledgement of Name/Address Change and Acknowledgement of Assignment, if any)

Costs

The costs of registration of trademark depend on the convention priority rights claimed and objections raised during the examination by the DIP. Payment for the costs must be made at the time of filing. Registration fees including fees for registration, claiming priority right (if any).

PROCEDURES AND TIME FRAMES

Applications for trademark may be filed at the Department of Industrial Property (DIP), Ministry of Science and Technology directly. The filed applications will be subjected to the examination process as the Flow Chart for obtaining a trademark registration in the ANNEX.

Examination on Filing

The Receiving Division will examine whether the trademark application satisfies the requirements on the documentation and the application fees have been paid.

If the application meets all the requirements on filing, the DIP will issue an Official Filing Receipt to confirm the receipt of the application in which the date of filing and the application number will be assigned.

Examination as to form

The filed application will be then examined as to form. The DIP examines the application whether it complies with the administrative requirements or formalities.

Publication of the application

The Trademark application will be published in the Official Industrial Property Gazette after the completion of formality examination.

Examination as to substance

The application will be automatically examined as to substance. The substantive examination verifies whether there exist any grounds for refusal connected with failure to satisfy the trademark registrability criteria as mentioned above.

Registration, recordal and publication of trademark

When the DIP finds no grounds for refusal, the DIP will issue to the applicant the certificate of trademark registration, record the information related to the trademark and list of goods and services in the register kept by the DIP and then publish the trademark in the Official Industrial Property Gazette.

Duration and renewal of registration

The registration remains in force for 10 years from the date of registration.

The registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application. Such application may be made within 06 months before the end of each successive 10-year period for which the registration was renewed. Renewal fee may be paid within 6 months after expiration of trademark registration term.

OPPOSITION, TERMINATION AND CANCELLATION

The third party may lodge a notice for opposition against such application within 90 days for patent and pretty patent and within 60 days for industrial designs, trademark from the date of publication of the application.

TERMINATION

Patents, petty patents, and trademark shall terminate when:

The term of protection is expired
the holder fails to renew the registration and pay the applicable fees and service charges, in which case, rights shall terminate as of the end of the term for which protection was granted and the fees and service charges were paid
patent, petty patent, or registration is invalidated based on the finding that one or more requirements for protection have not been satisfied; where such finding applies to only a portion of the invention, innovation, design and trademark, the termination shall apply only to such portion as to be invalidated. In such case, the invalidation shall be effective as form the grant of the patent, petty patent, or registration for trademark of industrial design
failure to commercial exploration, the industrial property right will be terminated after the final decision by the competent court

CANCELLATION

The third party may request a cancellation or elimination of a patent, petty patent, industrial design registration, trademark registration within period of five years from the date of publication of the registration. Where a patent, petty patent, industrial design registration, trademark registration is held invalid by the People’s Court, the Ministry of Science and Technology shall cancel or eliminate such intellectual property accordingly. In the case of patents or petty patents, such holding shall specify the patent or petty patent claims to which the holding applies.

A trademark registration may be cancelled for non-use in the following cases:

the trademark has not been used for a consecutive period of five years;
the trademark has been used merely token use or such use not been in good faith by the owner.

Any third party may request to the Ministry of Science and Technology to cancel or revoke the registration of the non-use of the trademark. In any cancellation or revoke proceeding, the owner shall be entitled to present reasons justifying the non-use of the trademark. Force major to such use arising independently of the will of the owner shall be recognized as valid reasons for non-use.