Patent
What We Do
KASS: Expert Guidance for Inventors and Businesses in Southeast Asia
At KASS, we advise local and foreign inventors or owners of inventions, and draft, file and prosecute patent applications on their behalf. Our team of registered patent agents, technical experts and lawyers help to put our clients at ease by providing comprehensive advice on issues of patent infringement, patentability, prior art searches, and more, even as we regularly update clients on IP-related issues in Southeast Asia.
Frequently Asked Questions
A patent is an exclusive right granted to an inventor of a product or process to manufacture and use the invention for a given period.
An invention is an original technical solution in the form of a product or a process which is intended to solve a problem by application of laws of nature.
In general, the invention must meet 3 criteria:
- New: The invention must not already exist in the world. It is recommended that potential patent owners keep their invention as private knowledge until the patent is accepted.
- Inventive step: The new invention must be entirely unique, or have an obvious improvement compared to any existing invention.
- Industrial application: The invention must be practical and be useful in an industry.
The following are largely non-patentable:
- Discoveries, scientific theories and mathematical methods.
- Plant or animal varieties or essentially biological process for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro- organism processes.
- Schemes, rules or methods for doing business, performing purely mental acts or playing games, and
- Methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. Products used in any such methods are patentable. Claims on method of treatment of human or animal body by therapy are not patentable. However, claims drafted as use of compounds to treat a medical problem (Swiss type claims) are acceptable.
- Claims to computer programs per se.
Patent Searches are highly effective tools to obtain answers to specific technical questions. Patent Databases contain a huge volume of technology documents, in the form of patent descriptions and drawings. There are several categories of patent descriptions published namely
- Patent applications awaiting grant of patent
- Granted patents which are still subsisting
- Granted patents which have expired or have been abandoned
By conducting a Patent Search, we can help you:
- Find solutions to a technical problem you are facing
- Design around a patented product or process
That’s not all, Patent Searches can also provide useful information to answer your questions on:
- What is the state of art in a particular field of technology?
- What are your competitors doing?
- What is the trend in the technological advancements?
KASS offers quality, customised research with fast turnaround and affordable pricing. We have access and the capability to search the patent database resources of US, UK, Europe, Japan, Hong Kong, China, Malaysia, Korea, Australia and 65 other countries.
KASS provides the following patent search services:
- Equivalent Patent Search: Useful for parties wanting to know the patent portfolio of a particular owner so that a consolidated action can be taken to attack validity of the patents or a part of due diligence exercise to be undertaken prior to assignment or license of patents.
- Prior Art (Patentability / Novelty) Search:Provide patent documents that disclose inventions close to an identified technology.
- Infringement Search (Freedom to Operate Search):Identify subsisting patents that would bar the manufacture, use, or sale of a product, or a product made according to a process. This search is necessary before commencing manufacture or sale of a new product.
- Validity Search:Used to attack the validity of a granted patent or to oppose a pending patent application. Also useful to determine the strength of a patent before taking an assignment or license of the patent.
- Patent File Search:Used to determine whether the patent was prosecuted according to Patent Regulations. Often such searches are done to attack the validity of a granted patent or to oppose pending applications.
- Competitor / Third-Party Search:All patents applied for or granted to a competitor or to any third party can be searched to learn their research strategy, identify key research staff, patent filing activities, etc. This gives a good indication of the technical areas a particular party is concentrating on.
The PCT is a treaty under the World Intellectual Property Organization (WIPO) with 153 member countries. The PCT facilitates the filing of an international patent application for an invention by filing a single application.
A PCT application by itself does not result in the grant of a patent, since there is no such thing as an “international patent”. To obtain a grant of a patent, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards the grant of one or more patents.
Additional KASS Information
To obtain a patent in Malaysia, the process involves several steps to ensure that your invention is properly protected under Malaysian law. The timeline for the registration process typically takes between 36 to 60 months, depending on various factors such as the complexity of the patent application and the presence of any objections or amendments.
Key Requirements for Patent Registration:
Grace Period: Malaysia provides a 12-month grace period for an inventor’s own disclosure. This means that if the inventor publicly discloses their invention within 12 months prior to filing the patent, such disclosure will not affect the novelty of the invention.
Documents Required for Patent Application:
- An editable MS Word copy of the specification, including the description, claims, abstract, and any applicable figures or sequence listings, must be submitted in English.
- The name and address of both the inventor and the applicant, as well as the nationality of the inventor, must be clearly stated.
- If the applicant is not the inventor, you’ll need to provide an explanation of how the applicant obtained the rights to the invention.
- Signed Power of Attorney (PoA) and Statement of Justification of Applicant’s Right (SJAR) are required. These documents can be submitted at the time of filing or within 3 months after receiving a formality objection.
Special Considerations:
Claiming Priority under the Paris Convention: If you're claiming priority from an earlier application under the Paris Convention, the application must include the necessary documents as well.
No Notarization/Legalization Needed: Unlike some jurisdictions, Malaysia does not require notarization or legalization for the PoA or SJAR.
Duration of Protection:
- Patents: The protection for patents lasts 20 years from the filing date.
- Utility Innovations (UI): The protection for utility innovations lasts for 10 years, with the possibility of extending it by an additional 5 years.
With these requirements in place, the patent prosecution process in Malaysia ensures that your invention is properly protected while complying with national and international patent laws.
To obtain a patent in Indonesia, the process involves specific steps to protect your invention. The timeline for registration typically takes 36 to 60 months, depending on the complexity of the application and other factors.
Key Requirements for Patent Registration:
Grace Period: Indonesia provides a 6-month grace period for an inventor’s own disclosure before the filing date. This means the inventor's prior disclosure within 6 months will not affect the novelty of the invention.
Types of Protection for Inventions:
- Patents: Protection lasts for 20 years.
- Simple Patents: Protection lasts for 10 years.
Documents Required for Patent Application:
- Claiming Priority Under the Paris Convention: A Certified Copy (CTC) is required, which can be submitted within 16 months from the priority date.
- Specification and Drawings: The specification must be submitted in English, and a Bahasa Indonesia translation must be provided within 30 days from the filing date in Indonesia.
- Bibliographic Information: This includes the name and address of the inventor and applicant.
- Power of Attorney (PoA), Assignment, and Statement of Ownership: A simply signed scanned PoA, Assignment, and Statement of Ownership must be submitted, which can be done within 3 months from the filing date in Indonesia.
Special Considerations:
Late Entry into National Phase: Yes, Indonesia allows late entry into the national phase if there are circumstances beyond the applicant's control.
Duration of Protection:
- Patents: 20 years from the filing date.
- Simple Patents: 10 years from the filing date.
With these requirements in place, the patent prosecution process in Indonesia ensures that your invention is properly protected while complying with both national and international patent laws.
To obtain a patent in Thailand, the process typically takes 48 to 72 months, depending on the complexity of the application. Several steps and documents are involved to ensure that the invention is properly protected under Thai patent law.
Key Requirements for Patent Registration:
Grace Period: Thailand offers a 12-month grace period for an inventor’s own disclosure before the filing date. This means that if the inventor discloses the invention publicly within 12 months prior to the filing, the disclosure will not affect the novelty of the invention.
Types of Protection for Inventions:
- Invention Patents: Protection lasts for 20 years.
- Petty Patents: Protection lasts for 6 years, with possible extensions of 2 years each, for a maximum total of 10 years.
Documents Required for Patent Application:
- Claiming Priority Under the Paris Convention: A Certified True Copy (CTC) of the priority document is required, which can be submitted within 16 months from the priority date or the first filing date.
- Specification and Drawings: The specification, including drawings, must be in English. A Thai translation must be submitted within 90 days from the filing date in Thailand.
- Bibliographic Information: This includes the name and address of the inventor and applicant.
- Power of Attorney (PoA) and Deed of Assignment (DoA): The original notarized PoA and original DoA can be submitted within 90 days from the filing date in Thailand.
Special Considerations:
Late Entry into National Phase: Yes, Thailand allows late entry into the national phase if there are circumstances beyond the applicant's control.
Duration of Protection:
- Invention Patents: 20 years from the filing date.
- Petty Patents: 6 years, extendable by 2 years twice for a total of 10 years.
With these requirements, the patent prosecution process in Thailand ensures your invention receives protection while adhering to both national and international patent law standards.
To obtain a patent in Vietnam, the application process typically takes between 36 to 48 months. Several important steps and documents are required to ensure your invention is granted protection under Vietnamese patent law.
Key Requirements for Patent Registration:
Types of Protection for Inventions:
- Invention Patents: Protection lasts for 20 years from the filing date.
- Utility Solution Patents: Protection lasts for 10 years from the filing date.
Grace Period: Vietnam offers a 12-month grace period for novelty exceptions, allowing for prior disclosure of the invention up to 12 months before filing without affecting the novelty.
Documents Required for Patent Application:
- Claiming Priority Under the Paris Convention: A Certified True Copy (CTC) of the priority document is required, which can be submitted within 3 months from the filing date in Vietnam.
- Specification and Drawings: The specification and drawings must be submitted in English, with the Vietnamese translation required at the time of filing.
- Bibliographic Information: The applicant must provide the name and address of both the inventor and the applicant.
- Power of Attorney (PoA): A simply signed original PoA is required, which can be submitted within 1 month from the filing date for non-PCT applications, or within 34 months for PCT applications from the priority date/PCT filing date if no priority claim is made.
Special Considerations:
Late Entry into National Phase: Vietnam does not allow late entry into the national phase.
Duration of Protection:
- Invention Patents: Protection lasts for 20 years.
- Utility Solution Patents: Protection lasts for 10 years.
With these steps, the patent prosecution process in Vietnam ensures that your invention is protected under national and international patent laws.
In Singapore, obtaining a patent involves several steps. The process typically takes between 36 to 48 months. To ensure the protection of your invention under Singaporean patent law, there are specific requirements and documents that must be submitted.
Key Requirements for Patent Registration:
Types of Protection for Inventions:
- Patents: Protection lasts for 20 years from the filing date.
Grace Period: Singapore allows for a 12-month grace period, meaning that an inventor’s own disclosure of the invention made within 12 months before the filing date can be disregarded under certain circumstances, such as breach of confidence, display at an international exhibition, or publication in an academic paper.
Documents Required for Patent Application:
- Claiming Priority Under Paris Convention: If you are claiming priority under the Paris Convention, the application must include a Certified True Copy (CTC) of the priority document, although CTC is not required for the application itself.
- Specification: An editable MS Word copy of the specification, including the description, claims, abstract, and any applicable figures or sequence listings, must be submitted in English.
- Applicant Details: The name and address of both the inventor and the applicant must be provided.
- PoA & DoA: A Power of Attorney (PoA) and Deed of Assignment (DoA) are not required in Singapore.
- Translation: If the priority application is not in English, a verified English translation of the application must be submitted along with the filing.
Special Considerations:
Late Entry into National Phase: Singapore allows for late entry into the national phase.
Duration of Protection:
- Patent Protection: Patents are granted for 20 years from the filing date.
With these steps and requirements, you can navigate the patent prosecution process in Singapore to ensure that your invention is granted the protection it deserves under both national and international law.
Myanmar's patent prosecution process is relatively straightforward, with specific guidelines that need to be followed. As of February 2024, Myanmar does not offer a grace period for the filing of patents, nor does it have detailed categories for types of patents like other jurisdictions.
Key Requirements for Patent Registration:
Grace Period: Myanmar does not provide a grace period for patent filings, meaning prior disclosure of the invention may affect the novelty of the patent.
Types of Patent Protection: Myanmar does not differentiate between different types of patents such as invention patents or utility models.
Documents Required for Patent Application:
- Claiming Priority Under Paris Convention: To claim priority, applicants must submit an English specification and drawings in MS Word format.
- Bibliographic Information: Basic bibliographic details, including the priority application details, must be included.
Official Language: The official languages for filing patents in Myanmar are Burmese and English.
Membership: Myanmar is not currently a member of the Paris Convention or any other major international patent treaties.
Late Entry into National Phase: There is no provision for late entry into the national phase.
Duration of Protection: Myanmar does not specify the duration of patent protection under its current legal framework.
Timeline for Grant: The timeline for granting patents is not specified, and there may be delays or lack of clarity in the process.
Navigating the patent prosecution process in Myanmar may require close attention to these guidelines, particularly due to the lack of detailed structures like grace periods or patent types compared to other jurisdictions.
The patent prosecution process in the Philippines involves a series of steps designed to protect innovations under Philippine law. As of February 2024, the timeline for registration typically spans 36 to 48 months, depending on various factors such as the complexity of the application and any objections that may arise.
Key Requirements for Patent Registration:
Grace Period: The Philippines allows a 12-month grace period for the inventor’s own disclosure. If the inventor discloses the invention within 12 months before filing, the disclosure will not affect the novelty of the invention.
Types of Protection: There are two primary types of protection for inventions in the Philippines: Patents and Utility Models.
Documents Required for Patent Application:
- Claiming Priority Under Paris Convention: Applicants claiming priority from an earlier filing under the Paris Convention must submit the necessary documentation along with the application.
- Editable MS Word Copy: A specification in MS Word format, containing the description, claims, abstract, and any applicable figures or sequence listings, must be submitted in English.
- Inventor/Applicant Information: The name and address of both the inventor and applicant must be provided.
- PoA and DoA: Scanned copies of the signed Deed of Assignment (DoA) and Power of Attorney (PoA) are required. These documents can be submitted at the time of filing or within 1 month of receiving an office action. Notarization/legalization is not required.
Official Language: The official languages for filing patents in the Philippines are English and Filipino.
Membership: The Philippines is a member of the Paris Convention, PCT, and the Budapest Treaty.
Late Entry into National Phase: The Philippines allows late entry into the national phase if necessary.
Duration of Protection:
- Patents: Protection lasts for 20 years.
- Utility Models: Protection lasts for 7 years.
Timeline for Grant: The expected timeline for the patent grant process in the Philippines is between 36 and 48 months.
With these requirements in place, patent registration in the Philippines ensures that inventors can protect their innovations while complying with national and international regulations.
