28 July 2021
On June 29, 2021, World Trade Organization (WTO) members approved another 13-year extension of the least developed country (LDC) transition period for applying the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The extension came as a result of a last-minute consensus during the TRIPS Council meeting, and just two days short of the original expiry date of July 1, 2021. As a result of the agreed extension, the new deadline for LDCs to comply with the TRIPS intellectual property protections is July 1, 2034.
The TRIPS Agreement establishes minimum standards for protection of intellectual property rights in WTO member states, which include complying with the substantive rules under the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works, as well as rules on the protection of trademarks, geographical indications, patents, industrial designs, layout designs of integrated circuits, and undisclosed information (i.e., trade secrets).
At the same time, the WTO recognized that its LDC members face unique challenges, often coupled with a lack of resources or administrative infrastructure, and are not yet at a point where full compliance with the TRIPS Agreement would be feasible. Therefore, LDCs were not required to implement the TRIPS Agreement other than certain articles on equal treatment for foreign parties, most-favored nation status, and obligations under World Intellectual Property Organization (WIPO) treaties. Instead, a “transition period,” or grace period, was instituted to give LDC members time to prepare for full adoption of the treaty. It is this transition period that has been extended until July 1, 2034.
Many LDCs are already in compliance with some of the remaining provisions, so the latest extension will have varying effects in these jurisdictions. Overviews of the extension’s ramifications for Cambodia, Laos, and Myanmar are provided below.
Cambodia
In Cambodia, the effects are primarily copyright-related, as other IP matters are covered under existing laws and regulations that are generally already in line with the TRIPS Agreement. The TRIPS Agreement incorporates the substantive provisions of the Berne Convention (except those on moral rights), including providing for automatic protection of literary and artistic works without local publication formalities.
Cambodia, on the other hand, does not grant automatic copyright protection, so until the country amends domestic legislation or becomes fully bound by the TRIPS Agreement or the Berne Convention, copyright holders will have to carefully review their protection in Cambodia. Without meeting local publication requirements, foreign copyright holders may find that their work is without protection in Cambodia.
The extension of the transition period also relates to protection of trade secrets and undisclosed information in Cambodia. Currently, the Cambodian Constitution and Civil Code afford private information legal protection, and the Criminal Code makes disclosure of any confidential information a crime, but there is not yet a law specifically on trade secrets. While the TRIPS Agreement treats disclosure of confidential information as an act of unfair competition, Cambodia’s broad treatment of the issues falls short of this. There is no guidance on what is considered a trade secret, conditions for obtaining protection, the protection and remedies available, and exceptions. This means that commercial secrets (e.g., marketing plans, pricing information, etc.) that would normally be afforded trade secret protection may not currently be eligible for protection in Cambodia.
As part of its WTO accession commitments, Cambodia agreed to protect undisclosed test or other data submitted for marketing approval of agricultural or pharmaceutical products using new chemical entities from unfair commercial use (i.e., data exclusivity) for at least five years after a grant of marketing approval. However, it seems that this specific commitment may be suspended until 2033 under the pharmaceutical products waiver (see below) in light of Cambodia’s LDC status.
An eight-year data exclusivity period with respect to agricultural products is currently available upon request, but it is unclear whether this also applies to pharmaceutical products, potentially making this information difficult to protect under current Cambodian law.
Laos
The extension of the TRIPS deadline for LDCs is expected to have no immediate consequences for IP owners in Laos, which is a contracting member of the Berne Convention and the Paris Convention. These agreements are already reflected in the Law on Intellectual Property, which is the cornerstone of the IP legal framework in Laos. The government has also issued various regulations (for example, on patents and petty patents, industrial designs, layout designs of integrated circuits, geographical indications, and copyrights and related rights) in accordance with recommendations of international organizations such as WIPO.
Myanmar
For Myanmar, the extension of the TRIPS transition period for LDCs has broad implications, as implementation of four substantive IP laws (enacted in 2019) is still pending and the country thus still remains out of compliance with most TRIPS requirements.
Implementation work has begun for only one of these four laws: the Trademark Law. The newly formed Intellectual Property Department (IPD) launched the “soft-opening period” of the law on October 1, 2020, accepting applications for the refiling of existing marks in Myanmar to be re-filed under the Trademark Law. The full implementation of the law has been delayed, and no date has yet been fixed. The Ministry of Commerce has indicated that they expect implementation of the other three laws to take place only after the Trademark Law has taken effect.
In the meantime, new marks can still be recorded via a Declaration of Ownership under the old system, while protections for industrial designs, patents, and copyrights continue to proceed under the common law system and related existing laws.
Pharmaceuticals
This extension of the TRIPS general transition period does not affect the separate TRIPS Council waiver regarding pharmaceutical products, which exempts LDCs from protecting pharmaceutical patents and test data until January 1, 2033. That waiver also requires them, in the meantime, to allow “mailbox applications” to meet countries’ priority deadlines, whereby the country’s intellectual property authority will accept the application but not examine it until the pharmaceutical transitional period ends. Protection can then be granted for the remainder of the patent term, calculated from the filing date.
Conclusion
While this extension of the TRIPS transition period for LDCs is not the kind of legal or policy change that requires an immediate response, it is a good reminder for companies operating in LDCs such as Cambodia, Laos, and Myanmar to take stock of their intellectual property in each jurisdiction and consider whether alternate protection strategies may be necessary based on the continued application of local laws that may not comply with the TRIPS Agreement. With the proper approach, rights holders can often achieve satisfactory levels of protection for their intellectual property in these jurisdictions despite the persistence of legal or administrative hurdles.
