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Chinese Patent Validation in Cambodia: How & Why

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Presentation on the validation of Chinese patents in Cambodia. Presented to the All China Lawyers Association - IP Committee, in Nanning, China on December 8, 2018 by Mr. Pheng Thea, of Abacus IP.

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Chinese Patent Validation in Cambodia: How & Why

  1. 1. Chinese Patent Validation in Cambodia: How & Why Mr. Pheng Thea, Abacus IP ACLA 2018 IP Annual Meeting Nanning, China December 7-9, 2018
  2. 2. Speaker’s bio Name: Mr. Pheng Thea Firm: Abacus IP Location: Phnom Penh, Cambodia Email: Thea@abacus-ip.com Pheng Thea is the co-founder and principal of Abacus IP, a full-service intellectual property agency in the Kingdom of Cambodia. A seasoned IP professional, Mr. Pheng is licensed by the Cambodian Ministry of Commerce’s Department of Intellectual Property and certified by the World Intellectual Property Organization. Prior to founding Abacus IP, Mr. Pheng lead the IP prosecution practice at a leading Cambodian law firm. His practice involved the registration and maintenance of hundreds of trademarks, patents, industrial designs and other forms of IP on behalf of innovators and businesses from around the globe. Mr. Pheng is a graduate of the faculty of law of Pannasastra University of Cambodia. In addition, he holds a Certification in Intellectual Property Specialization from the World Intellectual Property Organization and the University of South Africa.
  3. 3. Close & Growing China-Cambodian Ties • 19 bilateral MOUs & Agreements, including on IP • Belt and Road Initiative Projects (Phnom Penh-Sihanoukville Expressway, Phnom Penh Airport, Sihanoukville SEZ) • China largest source of foreign direct investment - $5.3 billion from 2013- 2017 • 2017 Bilateral trade: $5.1 billion (Cambodian GDP: $22 billion) • 2020 aim: 2 million Chinese tourists + $6 billion bilateral trade
  4. 4. Patent Legal Framework • Law on Patents, Utility Model and Industrial Designs (2003) • Law on Amendment on the Article 37, 38, 109 and 136 of the Law on Patents,…. (2017) • Prakas on the Procedures for Grant of Patent and Utility Model (2006) • MOU with SIPO and Singapore, Validation Agreement with EPO, Joint Statement with JPO (CPG) • Law on the Ratification of the Agreement on Validation of European Patents between Cambodia and EPO (2017) • Patent Cooperation Treaty (PCT) 08 December 2016 • Prakas on the Re-Registration of Chinese Patent in Cambodia (March 2018) • Prakas on the Procedures for the Validation of European Patents in Cambodia (Dec 2017) • Prakas on the Re-Registration of Singaporean Patent in Cambodia (July 2016) • Prakas on Acceleration of Patent Registration for Japanese Patent Applications (July 2016)
  5. 5. The Six Paths to a Cambodian Patent
  6. 6. Applications Total Entitlement Years 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 Application Local 0 0 0 0 0 0 1 2 0 3 0 0 6 Foreign 13 39 28 26 43 53 74 63 65 65 42 46 557 Grant Local 0 0 0 0 0 0 0 0 0 1 0 0 1 Foreign 0 0 0 0 0 0 0 0 1 9 11 7 28 Re-Registration of Singapore Patents Total Entitlement Years 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 Application 12 13 15 40 Grant 9 10 14 32 Re-Registration of Chinese Patents Total Entitlement Years 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 Application 53 53 Grant 28 28 Patent Applications & Granted As of 2 Nov 2018
  7. 7. Non Patentable • Discoveries, scientific theories and mathematical methods • Schemes, rules or methods for doing business, performing purely mental acts or playing games • Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body • Pharmaceutical products • Plants and animals other than micro- organisms, and essentially biological processes for the production of plants or animals • Plants varieties
  8. 8. Conditions for Re-Registration • Validity • Filing date on or after 22 January 2003 • Subject matter is patentable (previous slide) • Not contrary to the public order or morality, destroy human, animal, plant life or health, serious prejudice to the environment or prohibited by law
  9. 9. Required Documents 1. A request form (No. RRCP) 2. An original POA certified by the China Council for the Promotion of International Trade 3. A certified copy of certificate of the granted Chinese patent issued by SIPO in Chinese language and its English translation with the certification true and correct translation by an authorized translator 4. A certified copy of specification of the granted Chinese patent issued by SIPO in Chinese language and its English translation with the certification true and correct translation by an authorized translator • Description, Claims, Abstract, Drawings (if available) 5. Cambodian language translation of items 3 and 4 6. Payment of Filing Fee
  10. 10. Sample of the Documents Request Form Power of Attorney Patent Specification Duplicate Certificate
  11. 11. Application Process
  12. 12. Grant of Patent Registration
  13. 13. Maintaining Registrations Year Official Fee (USD) Year Official Fee (USD) 1st - 11th 350 2nd 20 12th 400 3rd 20 13th 450 4th 40 14th 500 5th 100 15th 550 6th 140 16th 610 7th 180 17th 670 8th 220 18th 740 9th 260 19th 810 10th 300 20th 890
  14. 14. Registration Fee and Annual Fee • The annual fee in Cambodia should be paid based on the filing date of the registered Chinese patent • The registration fee and annual fee shall be paid within 3 months from the date of invitation
  15. 15. Payment Annual Fee
  16. 16. Rights of Earlier Use • Not extend to prior use by any person before the date of registration • Co-existence with Chinese patent registered in Cambodia • Can be transferable or handled only with an enterprise or company
  17. 17. Termination of Patent Rights • The rights to Chinese patent in Cambodia shall not be effected due to the unpaid fee with SIPO • The rights to Chinese patent in Cambodia shall be effected after the expiration of Chinese patent after legal settlement were terminated • Legal effect based on the final status of the Chinese patent after the conclusion of all legal remedial procedures • Any changes, SIPO shall inform MIH
  18. 18. For More Information…. Download @ www.abacus-ip.com
  19. 19. Thank You! Abacus IP 436 Plov Lum, Chamkar Orvleuk Sangkat Kakab, Khan Posenchey 12406 Phnom Penh Cambodia +855 (0)88 8005 400 +855 (0)12 215 129 info@abacus-ip.com

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