Question 1
We note that Luxembourg (LU) is listed as a designated state under European (EPO) regional protection and on the other hand, the deadline to file a national phase application in LU is 20 months from the priority date i.e. 16 September 2009 (priority date is 16 January 2008). Should the national phase application in LU not be filed before 16 September 2009 and instead an EP national phase application be filed before 16 July 2010 (30 months from the priority date), can LU be named as a designated state at the EPO based on the EP national phase application?

Answer 1
LU can be named as a designated state at the EPO only if EP has been designated in the PCT application. However, under R.4(9)a)i) PCT “the filing of a request shall constitute the designation of all contracting states that re bound by the PCT on the international filing date”.

Question 2
We note that Tanzania (TZ) and Uganda (UG) are listed as designated states under ARIPO regional protection and on the other hand, the deadline to file a national phase applications in TZ and UG is 21 months from the priority date i.e. 16 October 2009 (priority date is 16 January 2008). Should the national phase applications in TZ and UG not be filed before 16 October 2009 and instead an ARIPO national phase application be filed before 16 August 2010 (31 months from the priority date), can TZ and UG be named as designated states based on the ARIPO national phase application?

Answer 2
Even though the deadline for filing PCT national phase applications under Chapter I in Tanzania and Uganda is 21 months from the earliest priority date, it will be possible to file a PCT regional phase under Chapter I at ARIPO and designate Tanzania and Uganda. The deadline for filing a PCT regional phase under Chapter I at ARIPO is 31 months from the earliest priority date.

Question 3
The details of regulatory process in Indonesia for Imported Food and Imported Cosmetic Products.

Answer 3
We are pleased to provide herewith the details of regulatory process in Indonesia for Imported Food at the Indonesian National Agency of Drug and Food Control, including the requirements and the related timelines and validity periods.

Requirements for registration:

1. Appointment letter from manufacturing company (original) in origin country to the Indonesian local importer/distributor. The said letter has to be legalized by the Indonesian Consulate.
2. Health Certificate (original) from a competent institution (i.e. Ministry of Health, Food & Drug Agency) of the origin country
3. Valid written laboratorial analysis report (original) of the product. The said report should include:
a. Nutrition substances (Nutrition claim)
b. Any substance claimed and mentioned in the product label
c. Chemical examination
d. Microbiological and metal filth
Please note that the said laboratorial report is considered valid within 6 months from the date of the analysis.
4. Product sample including the label that will be used, containing all necessary information of the product.
5. Application Form (which we will provide)

Timeline for registration:

The registration certificate will be issued approximately 3 months from the date of the submission of the requirements items 1 – 5.

Validity for registration certificate:

The registration certificate will be valid for 5 years unless there is a new development
of knowledge and technology or new regulation that is applicable to replace the
existing regulation.


Question 4
Could you provide me with the details of regulatory process in Indonesia for Imported Cosmetic Products.

Answer 4
We are pleased to provide herewith the details of regulatory process in Indonesia for Imported Cosmetic Products at the Indonesian National Agency of Drug and Food Control, including the requirements and the related timelines and validity periods.

Requirements for registration:

1. Appointment letter from manufacturing company (original) in origin country to the Indonesian local importer/distributor. The said letter has to be legalized by the Indonesian Consulate.
2. Official Certificate (original) from a competent institution (i.e. Ministry of Health, Food & Drug Agency) of the origin country evidencing that the cosmetic has been authorized to be sold to public in its origin country
3. Original letter of GMP (Goods Manufacture Practice)
4. Product sample including the label that will be used, containing all necessary information of the product.
5. Application Form (which we will provide)

Timeline for registration:

The registration certificate will be issued approximately 1 month from the date of the submission of the requirements items 1 – 5.

Validity for registration certificate:

The registration certificate will be valid for 5 years unless there is a new development of knowledge and technology or new regulation that is applicable to replace the existing regulation.

Question 5
Is it possible to reinstate a lapsed patent in Thailand?

Answer 5
It may be possible to reinstate a lapsed patent in Thailand, depending on how long ago the annuity payment was missed.
As provided by Section 43, Paragraph 4 of the Thai Patents Act, in the case of non-payment of an annuity, the Director-General of the Thai Patent Office shall report to the Patent Board and request cancellation of the patent. When the Board decides, they will send a copy of the decision to the patent agent. The patent agent may appeal the Board’s decision within 60 days from receipt thereof. If no appeal is filed within the deadline, the patent will be deemed abandoned. If it has already reached that stage, there is practically nothing we can do.
However, there is often a backlog at the Thai Patent Office. If the Director-General has not requested the Board to cancel or, the Board has not made any decision yet, there may be a chance. Once the decision is issued, we may appeal explaining that there have been extenuating circumstances (for example: that the patentee changed agents and, did not intend to abandon the patent). The Board would most likely ask the applicant to pay the annuity fee due. The patent would then be reinstated.
We would have to look at the status of the patent to see what may be done. We would be pleased to advise further when you can provide us with either the patent number or application number.

Question 6
Our clients have asked us about filing a patent application in Malaysia. The national phase deadline has passed. Is there any option for late filing - or extension from the UK part of a granted EP patent - or and Australian one?

Answer 6
We confirm that for cases wherein the Malaysian National Phase entry deadline has passed, it is possible to re-instate the said time lapsed application, according to the following procedure.

The Procedure for Reinstatement:

Section 780(a) of the Act deals with reinstatement as follows:
An applicant of a PCT application designating Malaysia must before the expiration of 30 months from the priority date submit to the Malaysian Registry a copy of the international application in English and pay the prescribed fee, failing which the international application will be considered withdrawn for the purposes of the Malaysian Patents Act. Once deemed withdrawn, the international application may only be reinstated where:
1. the applicant has made a request in writing to the Malaysian Registry by
a) paying the prescribed fee which is the standard application fee, and submitting a copy of the international application in English
b) a written statement specifying the reasons for failure to comply with national entry requirements
c) a supporting declaration or other evidence;
2. the said request (item 1) was made within 2 months from the date of removal of the cause of the failure to meet the 30-months deadline, or within 12 months from the expiration of said deadline, whichever expires earlier; and
3. the Malaysian Registry is satisfied that the failure was unintentional.
4. a payment of the prescribed fees in addition for late filing is made.
We trust that the above-mentioned explanation has sufficiently answered your question.