[KASS] Ultimate ASEAN Patent & Trademark Prosecution Guide

Page 1

The IP Experts

MALAYSIA


TRADEMARK Prosecution Requirements in MALAYSIA Official Language: English, Bahasa Malaysia Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

No PoA required Translation and transliteration of the mark (if in a language other than English or Malay)

Priority Application 

Certified copy of the Priority Document is only required upon request by Registrar

Assignment / Mergers  

Copy of simply signed Deed / Assignment Agreement (for our records) Original simply signed Form TMH1

Licenses / Registered User   

Recordal required Copy of simply signed Agreement Original simply signed Form TMH2

Timeline 

12 – 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization.

© KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in MALAYSIA Official Language: English, Bahasa Malaysia Membership: Paris Convention, PCT Late Entry into National Phase: Yes

Types of Patent   

Patents UI Divisional

Duration of Patents (years)  

Patent: 20 UI: 10 + 5 + 5

Documents / Info required for application   

English spec & drawing in MS Word format Bibliographic information Simply signed scanned POA, SJAR (can be submitted within 3 months either from the date of filing in Malaysia or when requested by the Registrar)

Claiming Priority Under Paris Convention 

CTC is not required unless requested by the Registrar

Grace Period 

Timeline for Grant

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

36 - 60 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty

© KASS International Sdn Bhd | as at April 2022


The IP Experts

SINGAPORE


TRADEMARK Prosecution Requirements in SINGAPORE Official Language: English Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

No PoA required Translation and transliteration of the mark (if in a language other than English or Malay)

Priority Application 

Certified copy of the Priority Document is only required upon request by Registrar

Assignment / Mergers 

Copy of simply signed Deed / Assignment Agreement (for our records)

Licenses / Registered User  

Recordal possible Copy of simply signed Agreement (for our records)

Timeline 

6– 12 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in SINGAPORE Official Language: English Membership: Paris Convention, PCT, BT Late Entry into National Phase: Yes

Types of Patent   

Provisional Patent Application Patents Divisional

Duration of Patents (years) 

Patent: 20

Documents / Info required for application    

English spec & drawing in MS Word format Bibliographic information NO POA is required If the priority application is not in English, a VET must be submitted together with the English translation

Claiming Priority Under Paris Convention 

CTC is not required

Grace Period 

Timeline for Grant

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

36 - 48 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty

© KASS International Sdn Bhd | as at April 2022


The IP Experts

INDONESIA


TRADEMARK Prosecution Requirements in INDONESIA Official Language: Bahasa Indonesia Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application   

Simply signed PoA Simply signed Statement of Mark Ownership Translation and transliteration of the mark (if in a language other than English / Bahasa Indonesia)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers   

Simply signed PoA Statement of Mark Ownership Legalized Deed

Licenses / Registered User  

Simply signed PoA Legalized Deed required

Timeline 

18– 24 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in INDONESIA Official Language: Bahasa Indonesia Membership: Paris Convention, PCT Late Entry into National Phase: Yes

Types of Patent   

Simple Patents Patents Divisional

Duration of Patents (years)  

Patent: 20 Simple Patent: 10

Documents / Info required for application 

 

English spec & drawing in MS Word format (Bahasa Indonesia translation to be submitted within 30 days from filing date in Indonesia) Bibliographic information Simply signed scanned POA, Assignment and Statement of Ownership (can be submitted within 3 months from the date of filing in Indonesia)

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 16 months from the priority date)

Grace Period 

Timeline for Grant

Yes – 6 months before the filing date in Indonesia

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

36 - 60 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


The IP Experts

THAILAND


TRADEMARK Prosecution Requirements in THAILAND Official Language: Thai Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes Documents / Info required for application   

Notarized PoA Translation and transliteration of the mark (if in a language other than English/Thai) Signed copy of the applicant’s passport or identity card (if applicant is an

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English) Signed Statement confirming the subsistence of the priority application

Assignment / Mergers    

2 Notarized POA Notarized Deed Original Registration Certificate Signed copy of the applicant’s passport or identity card (if assignor or assignee is an individual person)

Licenses / Registered User    

2 Notarized POA Notarized Original Agreement Copy of Registration Certificate Signed copy of the applicant’s passport or identity card (if licensor or licensee is an individual person) Timeline

12– 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in THAILAND Official Language: Thai Membership: Paris Convention, PCT Late Entry into National Phase: Yes

Types of Patent   

Invention Patents Petty Patents Divisional (non-voluntary)

Duration of Patents (years)  

Patent: 20 Petty Patent: 6 + 2 + 2

Documents / Info required for application 

 

English spec & drawing (Thai translation can be submitted within 90 days from the date of filing in Thailand) Bibliographic information Original Notarized PoA and Original DoA can be submitted within 90 days from the date of filing in Thailand

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 16 months from the priority date or first filing date)

Grace Period 

Timeline for Grant

Yes – up to 12 months before the filing date in Thailand

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

48 – 72 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty

© KASS International Sdn Bhd | as at April 2022


The IP Experts

VIETNAM


TRADEMARK Prosecution Requirements in VIETNAM Official Language: Vietnamese Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

Simply signed PoA Translation and transliteration of the mark (if in a language other than English / Vietnamese)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers   

Simply signed PoA Notarized Original Deed Original Registration Certificate

Licenses / Registered User   

Simply signed PoA Notarized Original Agreement Copy of Registration Certificate

Timeline 

12– 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in VIETNAM Official Language: Vietnamese Membership: Paris Convention, PCT, BT Late Entry into National Phase: No

Types of Patent   

Invention Patents Utility Solution Patents Divisional

Duration of Patents (years)  

Patent: 20 Utility Solution Patent: 10

Documents / Info required for application 

 

English spec & drawing in MS Word format (Vietnamese specification must be submitted at the time of filing) Bibliographic information Simply signed original PoA, and original DoA (can be submitted within 1 month from the date of filing in Vietnam)

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 3 months from the filing date in Vietnam)

Grace Period 

Timeline for Grant

Yes – up to 12 months before the filing date in Vietnam

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

36 – 48 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty

© KASS International Sdn Bhd | as at April 2022


The IP Experts

MYANMAR


TRADEMARK Prosecution Requirements in MYANMAR Official Language: Burmese, English Member of Madrid Protocol: No Paris Convention: No Multi-class Application: Yes

Documents / Info required for application  

 

Previous system (Filing at ORD): Notarized and legalized PoA Notarized Declaration of Ownership New system (Soft Opening): Scanned copies of: Notarized TM2 form Original endorsed Declaration of Ownership

Priority Application 

Nil

Timeline 

2– 5 months

Assignment / Mergers 

Previous System (Filing at ORD): Original PoA and signed original Deed of Trademark Assignment N.B. All docs notarized and legalized

Licenses / Registered User   

Previous System (Filing at ORD): Original Agreement PoA Declaration of Ownership N.B. All docs notarized and legalized

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. MYANMAR: Myanmar’s new Trademark Law was enacted on 30 January 2019, with the soft opening for trademark registration commencing on 1 October 2020. Due to the current situation in Myanmar, the grand opening date has yet to be confirmed. To date, filing can still be done at the Office of Registration of Deed (ORD), followed by re-registration under the soft opening. Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization.

© KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in MYANMAR Official Language: Burmese, English Membership: None Late Entry into National Phase: Nil

Types of Patent 

Nil

Duration of Patents (years) 

Nil

Documents / Info required for application   

English spec & drawing in MS Word format Bibliographic information Priority Application Details

Claiming Priority Under Paris Convention 

Nil

Timeline for Grant

Grace Period 

Nil

Nil

The new Myanmar patent law was enacted on 11 March 2019, but the patent law has yet to be officially implemented. As such, there is currently no legislation in Myanmar giving a proprietary right to a patent and regulating the use and enforcement of patent in Myanmar and hence the publication of a Cautionary Notice in a local newspaper is recommended.

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


The IP Experts

PHILIPPINES


TRADEMARK Prosecution Requirements in PHILIPPINES Official Language: English, Filipino Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

Simply signed PoA Translation and transliteration of the mark (if in a language other than English)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers  

Notarized Deed / Assignment Agreement Simply signed PoA

Licenses / Registered User   

Agreement to be examined by DITB for compliance Notarized Agreement Notarized PoA

Timeline 

6– 9 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in PHILIPPINES Official Language: English, Filipino Membership: Paris Convention, PCT, BT Late Entry into National Phase: Yes

Types of Patent   

Patents UM Divisional

Duration of Patents (years)  

Patent: 20 UI: 7

Documents / Info required for application   

English spec & drawing in MS Word format Bibliographic information Simply signed Original PoA and Original DoA can be submitted within 2 to 3 weeks from date of filing in Philippines

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 6 months from the filing date in Philippines)

Grace Period 

Timeline for Grant

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

36 – 48 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


The IP Experts

CAMBODIA


TRADEMARK Prosecution Requirements in CAMBODIA Official Language: English Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

Notarized PoA Translation and transliteration of the mark (if in a language other than English)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers   

Notarized PoA Notarized Deed Original Registration Certificate

Licenses / Registered User   

Notarized PoA Notarized Original Agreement Copy of Registration Certificate

Timeline 

12– 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in CAMBODIA Official Language: Khmer Membership: Paris Convention, PCT Late Entry into National Phase: No

Types of Patent   

Patents UM Divisional

Duration of Patents (years)  

Patent: 20 UM: 7

Documents / Info required for application   

English spec & drawing in MS Word format Bibliographic information Original Notarized PoA and Original Notarized DoA can be submitted within 6 months from date of filing in Cambodia If English specification is used for filing then Khmer translation to be filed within 2 months from date of filing in Cambodia

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 3 months from the filing date in Cambodia)

Timeline for Grant

Grace Period 

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

48 – 72 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


The IP Experts

LAOS


TRADEMARK Prosecution Requirements in LAOS Official Language: English, Laotian Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

Notarized PoA Translation and transliteration of the mark (if in a language other than English)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers   

Notarized PoA Notarized Original Deed / Assignment Agreement Copy of Registration Certificate

Licenses / Registered User   

Notarized PoA Notarized Agreement / Declaration of License Copy of Registration Certificate

Timeline 

12– 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization. © KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in LAOS Official Language: Lao Membership: Paris Convention, PCT Late Entry into National Phase: No

Types of Patent   

Patents Petty Patents Divisional

Duration of Patents (years)  

Patent: 20 Petty Patent: 10 + 2

Documents / Info required for application   

English spec & drawing in MS Word format Bibliographic information Original Notarized PoA and Original Notarized DoA can be submitted within 60 days from date of filing in Laos If English specification is used for filing then certified Lao translation to be filed within 90 days from date of filing in Laos

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 3 months from the filing date in Laos)

Grace Period 

Timeline for Grant

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

48 – 84 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


The IP Experts

BRUNEI


TRADEMARK Prosecution Requirements in BRUNEI Official Language: English Member of Madrid Protocol: Yes Paris Convention: Yes Multi-class Application: Yes

Documents / Info required for application  

No PoA required Translation and transliteration of the mark (if in a language other than English)

Priority Application 

Certified copy of the Priority Document is required with English translation (if in a language other than English)

Assignment / Mergers  

No PoA required Original signed Deed/ Assignment document with English translation (if in a language other than English)

Licenses / Registered User  

No PoA required Original Agreement with English translation (if in a language other than English)

Timeline 

12 – 18 months

Note: A “simply signed PoA” means that the PoA only needs a signature from the applicant. The PoA does not need notarization/legalization.

© KASS International Sdn Bhd | as at April 2022


PATENT Prosecution Requirements in BRUNEI Official Language: English Membership: Paris Convention, PCT, BT Late Entry into National Phase: No

Types of Patent  

Patents Divisional

Duration of Patents (years) 

Patent: 20

Documents / Info required for application   

English spec & drawing in MS Word format Simply signed PoA SJAR

Claiming Priority Under Paris Convention 

CTC is required (can be submitted within 16 months from the filing date in Brunei)

Grace Period 

Timeline for Grant

Yes – up to 12 months before the first filing

ABBREVIATIONS

PoA SJAR SoO DoA CTC UI / UM BT

= = = = = = =

48 - 60 months

Power of Attorney Statement Justifying Applicant’s Rights Statement of Ownership Deed of Assignment Certified True Copy Utility Innovation / Utility Model Budapest Treaty © KASS International Sdn Bhd | as at April 2022


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