Patent Protection in Brunei Darussalam

9 January, 2017

 

A few weeks ago we discussed copyright protection in Brunei Darussalam. This week we are taking a look at patent protection in the ASEAN smallest nation. You will learn how to apply for a patent in Brunei Darussalam, what protection is available for your rights and how you can enforce your rights in case of an infringement.  

 

Background for EU SMEs

 

Brunei Darussalam is one of the 10 countries of the Association of South-East Asian Nations (ASEAN).  Despite being one of the smallest ASEAN countries, it is also one of the wealthiest nations in the South-East Asian region. Brunei Darussalam has an annual GDP of EUR 10.6 billion[1] and most of its revenue comes from the exports of crude oil and natural gas.

 

The European Union is Brunei Darussalam’s 5th largest trading partner. The EU’s Key exports to Brunei Darussalam include pearls, precious metals, transport equipment and machinery and appliances. The EU’s key imports from Brunei Darussalam include machinery and appliances, optical and photographic instruments, pearls and precious metals.

 

Brunei Darussalam’s legal system is based on English Common Law and since the year 2000, Brunei Darussalam has passed various legislations on trade marks, industrial designs, copyright and patents. Brunei Darussalam’s IP legal system is in compliance with international standards, complying with international agreements and treaties administered by the World Intellectual Property Organisation (WIPO). It is a member of a number of conventions including the Paris Convention, the Berne Convention, the Patent Cooperation Treaty (PCT) and the Hague Agreement Concerning the International Registration of Industrial Designs. Brunei Darussalam is also a signatory of the TRIPS agreement.

Patents in Brunei Darussalam

 

On 1 January 2012, a new Patents Order was enacted in Brunei Darussalam, which created a regular patent application filing process. It is important to note that the law and rules regarding patents are relatively new and, as such, it is possible that the Brunei Darussalam Intellectual Property Office’s (“BruIPO”) practice and procedures might develop in an unpredictable manner.

 

For a patent to qualify for registration:

 

• The invention should be new;
• The invention must involve an inventive step. It must be something that represents an improvement over an existing product or process that already exists; and
• The invention must be useful and have some form of practical application. Its use should be applicable to all industries.

 

It usually takes up two to four years to register a patent in Brunei Darussalam. A patent which has been registered is given a term of twenty years from the date of filing, subject to payment of annual renewal fees.

 

For the ‘re-registration’ of a Malaysian, Singapore or UK granted patent, the total cost of  filing a patent (including official fee, disbursements and legal fee) is B$ 1,100 (approximately EUR 685). For a national application of a patent, the cost is B$ 5,000 (approximately EUR 3,105).

 

How to Apply for a Patent

 

National Filing

 

Patent application must be filed in English with the Brunei Darussalam Intellectual Property Office. There are no restrictions based on nationality or residency in applying for a patent in Brunei Darussalam. However, a foreign applicant is required to file through an authorised representative (agent) with a local address in Brunei Darussalam.

 

The first step an applicant should take is to request for a patent to be granted by filing the relevant statutory forms together with the specifications of the invention including the description, drawings and claims.

 

Once the Registrar gives notification that all formalities are met, the applicant then files a request for a search report and subsequently an examination report. The search report is a search for any relevant prior art carried out by an examiner under the Registrar. The examination report ensures that all relevant provisions have been complied with.

 

The applicant lastly, files the Request for the Grant Certificate when the application is published in the Patent Journal to

receive the Certificate of Grant of the Patent if the application is all in order and no amendments are required to be made.

 

An applicant who has earlier filed a patent in a country of the Paris Convention or a WTO member country may claim priority based on the earlier application in the subsequent application in Brunei Darussalam Darussalam, if the application was made within twelve months and not published. The application process is the same as outlined above, however the applicant has priority in this case assuming that no other application has been made in Brunei Darussalam before the applicant filed his/her patent within the foreign country in question.

 

Filing through Patent Cooperation Treaty Route

 

Brunei Darussalam only acceded to the Patent Cooperation Treaty (PCT) on 24 July 2012. Therefore, only applications filed using the PCT route after 24 July 2012 may designate Brunei Darussalam in international applications filed on or after that date. Nationals and residents of Brunei Darussalam will also be entitled to file international applications under the PCT from that date onwards. It will usually take up to two to four years to register a patent using the PCT process in Brunei Darussalam.

 

Benefiting from the ASEAN Patent Examination Co-operation

 

Brunei Darussalam is also a participating Member State in the ASEAN Patent Examination Co-operation (ASPEC). ASPEC is a regional patent work sharing programme involving nine of the ten IP Offices in the Member Countries of the Association of Southeast Asian Nations (ASEAN) (only Myanmar is not yet involved). The objectives of ASPEC are to reduce complexity, achieve time savings and improve the quality of search and examination. Reference made to an earlier examination already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce searches and develop a more comprehensive examination strategy. For example, a Singaporean patent application would, in theory, be able to take advantage of expedited process at the Brunei Darussalam Intellectual Property Office allowing for the eventual speedier grant of patent protection. ASPEC is free-of-charge and operates in English in all ASEAN IP Offices (except Myanmar).

 

Tips and Watch-outs

 

The BruIPO does not currently have any local patent examiners. Search and Examination is outsourced to three prescribed offices – the Hungarian Patent Office, the Austrian Patent Office and the Danish Patent Office – which can be time consuming and cause delays in the grant of the patent. Therefore, when claiming priority of another corresponding patent application, it is recommended to rely on the earlier patent application’s search and examination results (if positive results).

If the applicant has a patent application filed in Australia, Canada (English language patents only), Japan, New Zealand, Republic of Korea, the UK, the USA and the European Patent Office (English language patents only), he/she can rely on the search and examination reports from the corresponding application. This may help expedite patent application process.

 

Enforcement

 

Civil Litigation

 

Civil proceedings may be brought in court by an IP owner facing infringement. The IP owner may claim for such remedies as an injunction, order for delivery up to the infringing product seizure, damages or account of profits. Civil proceedings are the easiest avenue for enforcement for most IP owners facing infringement as only the certificate of registration is needed for proof of ownership.

 

To initiate a lawsuit, SMEs will need to file a writ endorsed with a Statement of Claim alleging the infringing act and claiming for the remedy. Before filing the court action, a letter to the infringer to cease and desist should be deployed. Court hearings may take up to two years, although court hearings recently became faster and the trial dates may be given within twelve to fifteen months. However, if the infringer responds to the initial cease and desist letter, the process of settlement is much faster.

 

Criminal Prosecution

 

Criminal Prosecution is usually considered the most cost effective enforcement route available to IP right holders as the legal expenses of prosecution are borne by the Government as the prosecuting party. It is also the best route to take for actions against infringers on a commercial scale and when infringement involves dangerous goods. To file a prosecution, a police report must be firstly made. The police force will then conduct investigations and depending on their findings, they may conduct raids. Lastly, the police will report to a public prosecutor of the Attorney General Chambers about whether to prosecute the offender. Criminal prosecution is brought by the Attorney Generals Chamber and is thus free.