Question 1
Clearer pictaure regarding “a prior use right” as one of the means of defense on a patent litigation in Malaysia. We have studied regarding prior use right based on your patent law article, but it is still difficult for us to find any detail information or practice about prior use in Malaysia.
1. Case law on prior use.
2. Interpretation of “prior use” under a patent law in Malaysia.
3. Textbook – if there is a fundamental textbook about patent system in English.
Answer 1
In answering the your enquiries regarding “a prior use right” as one of the defense on a patent litigation in our country. Prior use right is governed under S37(2)[1] which reads together with Section 38 (1)[2] where a person at the priority date of the patent application:-
(a) was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the product or using the process referred to in paragraph (a),
he shall have the right, despite the grant of the patent, to exploit the patented invention, provided that the product in question is made, or the process in question is used, by the said person in Malaysia and further provided that he can prove, if the invention was disclosed and his knowledge of the invention was not a result of such disclosure.
In section 38 (2), the provision reads that the right referred to in subsection (1) shall not be assigned or transmitted except as part of the business of the person concerned. This particular provision defined that to what extent the right conferred wherein the right may not be transferred except as part of the course of business.
Good faith is defined which includes due inquiry and implies not only an upright mental attitude but also clear conscience, and that ordinary prudence has been exercised according to the standard of a reasonable person as per Gopal & Anor V Awang Bin Mona[3].
Further, in the course of business is defined as something that is part of its activities. This can be referred to the case of Charles R Davidson & Co V M’Robb (or Officer)[4] , per Lord Dunedin.
Malaysian case that related to the above provision is Intercontinental Specialty Fats Sdn. Bhd. V Asahi Denka Kogyo KK [5]. According to this case as per Abdul Aziz J, the defendant were the proprietors of UK Patent GB 2028862B for an invention called ‘cacao butter substitute ‘.
In this case, the defendant’s patent was registered, first in the UK in 1978, citing the priority date to be August 30, 1978. It was subsequently re-registered in Malaysia under the old Registration of UK Patents Act 1951. The date of the registration of the patent in Malaysia being July 18, 1985. The plaintiff sought to argue that prior to the date of registration of the patent in Malaysia, they had manufactured the product that is the subject of the patent in good faith. By virtue of S38 of the Patents Act 1983, the plaintiff further argued that despite the grant of the subject patent, they had and continue to have the right to exploit the invention on the basis of prior use.
Abdul Aziz J found that S38 exceptions do not apply to patents that were granted prior to the 1983 Act. This is because the previous 1951 Act only deals with re-registration of UK patents and does not govern any prior use. Secondly, the phrase ‘the patent application’ in S38(1) covers only patent applications under the law 1983 Act (the new Malaysian Patent Act). The learned judge rightly pointed out that the phrase ‘priority date’ under S38 seems to point to the priority date of a patent application under the law 1983 Act. This is because the plaintiff sought to argue that for the purposes of prior use right, they quoted the date of registration in Malaysia as the priority date. With respect to obviousness, the priority date was August 30, 1978 when the patent was applied in the UK. As S38 deals with any potential prior use of a patented product or process prior to its application in Malaysia under the Act 1983 Act, the plaintiff had failed to prove that the 1983 Act governs them in any way[6] .
The essence of this right was rightly summed up by the learned judge, Abdul Aziz J, in that it covers good faith use of a product or a process which eventually is patented by someone else. On a comparative basis, this notion of ‘good faith prior use’ is similar to that of ‘honest concurrent user’ in trademark law [7].
1. Patents Act 1983
2. Ibid
3. [1978] 2 MLJ 251 at 255
4. [1918] AC 304 at 321
5. [2000] 4MLJ775 (HC)
6. Patent Law in Malaysia, Cases and commentary, Dr. Ida Madieha
7. Ibid
Thursday
Monday
Patent Registration Enquiry
Question 1
Is it possible for An Australian Pty. Ltd. company to be the applicant for Malaysian patent?
Answer 1
Yes. However, it depends on the nationality of the inventor’s according to the laws in Australia, i.e. if the named inventor is Australian, then there might be a security clearance to file a first filing application outside Australia.
Question 2
If so, is the process the same or more demanding / onerous?
Answer 2
The process is the same.
Question 3
If so, is the likelihood of a Pty. Ltd. company being granted a Patent equally or less likely? i.e. : does it enhance our application if we use a Sdn. Bhd. Entity?
Answer 3
On paper, there is no preference given. However, in practice, a local entity is given priority for fast track/expedited prosecution to grant.
Is it possible for An Australian Pty. Ltd. company to be the applicant for Malaysian patent?
Answer 1
Yes. However, it depends on the nationality of the inventor’s according to the laws in Australia, i.e. if the named inventor is Australian, then there might be a security clearance to file a first filing application outside Australia.
Question 2
If so, is the process the same or more demanding / onerous?
Answer 2
The process is the same.
Question 3
If so, is the likelihood of a Pty. Ltd. company being granted a Patent equally or less likely? i.e. : does it enhance our application if we use a Sdn. Bhd. Entity?
Answer 3
On paper, there is no preference given. However, in practice, a local entity is given priority for fast track/expedited prosecution to grant.
PCT National Phase In Indonesia, Malaysia & Singapore (How PCT rule 17(c) is applied)
Question 1
I am writing to ask a question about the PCT National Phase in Indonesia, Malaysia and Singapore. In particular, I would appreciate it if you could answer a question about how PCT Rule 17(c) is applied in Indonesia, Malaysia and Singapore.
Assume the following facts: a year or more after entering the national phase in these three jurisdictions from an international application, but before examination, it is realized that there was an inadvertent failure to submit the priority document both in the international phase and upon entering the national phases. The claim of priority was however properly made on the “Request” in the international phase.
Does the applicant, after discovery of the inadvertent failure, have an opportunity under PCT Rule 17(c) in one or more of these jurisdictions to furnish the priority document within a time limit which is reasonable under the circumstances?
Or, is the priority claim irrevocably lost after expiration of some fixed time limit after the national phase commences set by rule or statute in the pertinent jurisdiction under PCT Rule 17(c)?
Answer 1
PCT Rule 17(c) states that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable. Therefore, according to the above rule, the claim of priority will not be automatically disregarded if the priority document was not submitted during the international phase and the national phase. Generally, upon entering the national phase in the respective countries, the national offices will conduct a formality examination to ensure that all the required documentation are correct and in good order before proceeding to prosecute the application further. However, if they found that the priority document was not submitted during the international phase, the national office will then notify the applicant of the missing priority document and allow the applicant time to furnish the outstanding document. If the applicant fail to submit the required document after the allowed time, only then will the priority claim be disregarded.
Please be advised that under the current Indonesian, Malaysian and Singapore Law, there is no requirement to submit the priority document at the time of entering a PCT application into national phase in the respective countries. The applicant is only required to provide the details of the priority date, the priority application number and the country of filing in order to claims the priority date of the priority application.
A certified copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the Registrar. If such a request is made by the Registrar, the said certified copy of the priority application must be submitted within two to three months from the date of the Registrar's request depending on jurisdiction.
We hope the above addressed your query.
I am writing to ask a question about the PCT National Phase in Indonesia, Malaysia and Singapore. In particular, I would appreciate it if you could answer a question about how PCT Rule 17(c) is applied in Indonesia, Malaysia and Singapore.
Assume the following facts: a year or more after entering the national phase in these three jurisdictions from an international application, but before examination, it is realized that there was an inadvertent failure to submit the priority document both in the international phase and upon entering the national phases. The claim of priority was however properly made on the “Request” in the international phase.
Does the applicant, after discovery of the inadvertent failure, have an opportunity under PCT Rule 17(c) in one or more of these jurisdictions to furnish the priority document within a time limit which is reasonable under the circumstances?
Or, is the priority claim irrevocably lost after expiration of some fixed time limit after the national phase commences set by rule or statute in the pertinent jurisdiction under PCT Rule 17(c)?
Answer 1
PCT Rule 17(c) states that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable. Therefore, according to the above rule, the claim of priority will not be automatically disregarded if the priority document was not submitted during the international phase and the national phase. Generally, upon entering the national phase in the respective countries, the national offices will conduct a formality examination to ensure that all the required documentation are correct and in good order before proceeding to prosecute the application further. However, if they found that the priority document was not submitted during the international phase, the national office will then notify the applicant of the missing priority document and allow the applicant time to furnish the outstanding document. If the applicant fail to submit the required document after the allowed time, only then will the priority claim be disregarded.
Please be advised that under the current Indonesian, Malaysian and Singapore Law, there is no requirement to submit the priority document at the time of entering a PCT application into national phase in the respective countries. The applicant is only required to provide the details of the priority date, the priority application number and the country of filing in order to claims the priority date of the priority application.
A certified copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the Registrar. If such a request is made by the Registrar, the said certified copy of the priority application must be submitted within two to three months from the date of the Registrar's request depending on jurisdiction.
We hope the above addressed your query.
Information And Documents Regarding Entry Into National Phase In India Of An International PCT Application
Question 1
When does a patent application enters into national phase of India as PCT? How does the national phase start?
Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.
The time limit for entering the National Phase
(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.
(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.
Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?
Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.
(1.) Basic requirements
Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:
(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;
(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.
(2.) Additional special requirements
Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:
a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.
When does a patent application enters into national phase of India as PCT? How does the national phase start?
Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.
The time limit for entering the National Phase
(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.
(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.
Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?
Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.
(1.) Basic requirements
Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:
(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;
(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.
(2.) Additional special requirements
Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:
a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.
Legalization Of Formal Documents For Patent Fillings In Malaysia
Question 1
Requirements regarding legalization of formal documents; i.e. priority documents, assignments and power of attorney? Are the requirements different for applications filed direct versus PCT national phase in Malaysia?
Answer 1
In Malaysia there is no requirement for legalization of any formal documents. This applies to both direct filings and PCT national phase filings.
However, in Malaysia, certified true copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the registrar.
If such a request is made by the registrar, the said certified copy of the priority application must be submitted within three months from the date of the Registrar's request.
Requirements regarding legalization of formal documents; i.e. priority documents, assignments and power of attorney? Are the requirements different for applications filed direct versus PCT national phase in Malaysia?
Answer 1
In Malaysia there is no requirement for legalization of any formal documents. This applies to both direct filings and PCT national phase filings.
However, in Malaysia, certified true copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the registrar.
If such a request is made by the registrar, the said certified copy of the priority application must be submitted within three months from the date of the Registrar's request.
Thursday
Patent Protection, Enforcement And Court System In Singapore
PROTECTION
Question 1
What is the term of protection of a patent in Singapore?
Answer 1
In Singapore, a patent life last for twenty (20) years counted from the date of filing. There is no Utility Model in Singapore.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Possible for patents with a filing date on or after 1 July 2004 if:
(a) Unreasonable delay by the SG patent office in granting the patent.
(b) Unreasonable delay by the foreign patent offices in granting a corresponding patent which the subject SG application is relying on, or
(c) Unreasonable delay in obtaining marketing approval for pharmaceutical products.
(Supplementary Protection Certificate)
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Singapore?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Springboard and post patent expiry injunction;
§ Interlocutory Injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Singapore?
Answer 3
Yes.
Question 4
Does Singapore’s patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed on a loss of profit basis. Any damages or account of profits or grant of other relief are also possible.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Singapore?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any recent cases of patent invalidation or patent infringement in Singapore?
Answer 1
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Other Suits [2005] SGHC 90.
The defences on lack of novelty and inventiveness were raised. The court reviewed the defendant devices and held it was infringing as they contain each and every element of the claims of the patent.
The court rejected the plaintiff's claim that there was a conspiracy to infringe the patent, as it held that a party would only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an understanding to carry out acts of infringement. The mere fact that the Israeli manufacturer gave indemnities to the Singaporean distributor was not sufficient for the court to infer that inducement had taken place to constitute acts of patent infringement, as the threshold of proving conspiracy is high.
On the claim of joint tortfeasorship against the defendants on grounds that the acts of infringement were carried out in "furtherance of a common design", the court held that two persons who agree on a common course of action and commit a tort would be joint tortfeasors. The court looked at the relationship of the parties especially the indemnity given by the manufacturer and held there was a common design to infringe the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Singapore?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom.
Question 5
How are foreigners treated by the courts in Singapore?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in Singapore?
Answer 7
A Notice of Appeal is filed within 14 days of the date of the decision.
Question 1
What is the term of protection of a patent in Singapore?
Answer 1
In Singapore, a patent life last for twenty (20) years counted from the date of filing. There is no Utility Model in Singapore.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Possible for patents with a filing date on or after 1 July 2004 if:
(a) Unreasonable delay by the SG patent office in granting the patent.
(b) Unreasonable delay by the foreign patent offices in granting a corresponding patent which the subject SG application is relying on, or
(c) Unreasonable delay in obtaining marketing approval for pharmaceutical products.
(Supplementary Protection Certificate)
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Singapore?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Springboard and post patent expiry injunction;
§ Interlocutory Injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Singapore?
Answer 3
Yes.
Question 4
Does Singapore’s patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed on a loss of profit basis. Any damages or account of profits or grant of other relief are also possible.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Singapore?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any recent cases of patent invalidation or patent infringement in Singapore?
Answer 1
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Other Suits [2005] SGHC 90.
The defences on lack of novelty and inventiveness were raised. The court reviewed the defendant devices and held it was infringing as they contain each and every element of the claims of the patent.
The court rejected the plaintiff's claim that there was a conspiracy to infringe the patent, as it held that a party would only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an understanding to carry out acts of infringement. The mere fact that the Israeli manufacturer gave indemnities to the Singaporean distributor was not sufficient for the court to infer that inducement had taken place to constitute acts of patent infringement, as the threshold of proving conspiracy is high.
On the claim of joint tortfeasorship against the defendants on grounds that the acts of infringement were carried out in "furtherance of a common design", the court held that two persons who agree on a common course of action and commit a tort would be joint tortfeasors. The court looked at the relationship of the parties especially the indemnity given by the manufacturer and held there was a common design to infringe the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Singapore?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom.
Question 5
How are foreigners treated by the courts in Singapore?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in Singapore?
Answer 7
A Notice of Appeal is filed within 14 days of the date of the decision.
Tuesday
Court System
Question 1
We understand that the National Office of Intellectual Property of Vietnam (NOIP) handles the invalidation procedures whereas Court handles the infringement cases. Please confirm if there was any change on this matter.
Answer 1
Please be advised that the NOIP is responsible for handling the invalidation petition.
In case of any disagreement with the Decision of the National Office of Industrial Property for an invalidation petition filed with the NOIP, the appellant shall have an option between filing an appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
In respect of the infringement cases, depending on the nature of the infringement, they may be handled under Administrative, Civil or Criminal Actions.
Courts are entitled to apply civil or criminal measures when handling the infringement cases while the Board of inspectorate in Science and Technology within the Ministry of Science and Technology and Department of the Ministry of Trade, Economic Police, Customs, and People committees are vested with the power to apply administrative measures.
Question 2
How efficient are the NOIP and courts in disposing IP litigation cases in Vietnam?
Answer 2
Only Courts are empowered to deal with all requests of the owner patent. However, court system is not efficient as there is no specialized court on IPRs, judges at Court are not so technically qualified and lacking of experience in industrial property cases, handling procedure is often extend beyond the prescribed time limit.
The handling made by the NOIP and other Administrative Authorities often takes place for a shorter time. In addition, the handling scope applies on a large scale, which is not restricted by the territory of each local and is consistent. Therefore it allows the patent owner to exploit tire patent effectively. However, these Authorities are limited to their empowerment. They have no empowerment but empowerment to handle cases under administrative measures. And they are not vested to determine any damages that a patent owner had to bear.
Question 3
Do the NOIP and courts rely on precedent cases decided in foreign countries?
Answer 3
No. The Vietnam law system is a written one and not rely on precedent cases.
Question 4
How are foreigners treated by the NOIP and court?
Answer 4
The foreigners are treated as Vietnamese nationals. In addition, they have rights to authorize 1P agencies and they are entitled to have their interpreters.
Question 5
What is the time frame for a patent invalidation/patent infringement suit to be decided in Vietnam?
Answer 5
Within 60-90 days form the date of receipt of the suit. However, in practice it can take much longer period of time, on the basis of case by case.
Question 6
How to appeal to a decision by the NOIP for patent invalidation and court for patent infringement?
Answer 6
In case of any disagreement with the Decision by the NOIP for a patent invalidation, the appellant shall have an option between a further appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
The appeal to MOST can be made within 30 days from the date of receipt of the notice of the decision of the NOIP. The Minister of MOST, based on proposal of the Inspection Board within the MOST, must issue a decision, within 45 to 60 days from receiving the appeal petition. The decision of the Minister is final.
In case the applicant decides to go to the Court, the competent Court shall be the People's Court (Administrative Court) of Hanoi, or Ho Chi Mini) City in case involved a foreign nationals, or local court having the local competence on the applicant. The Decision of the first instance Court shall be appealable to the People's Supreme Court. The Supreme Court's decision shall be final unless objected himself or by the Chairman of the People's Supreme Inspectorate. This procedure is also applied to appeal the decision of the court for patent infringement.
We understand that the National Office of Intellectual Property of Vietnam (NOIP) handles the invalidation procedures whereas Court handles the infringement cases. Please confirm if there was any change on this matter.
Answer 1
Please be advised that the NOIP is responsible for handling the invalidation petition.
In case of any disagreement with the Decision of the National Office of Industrial Property for an invalidation petition filed with the NOIP, the appellant shall have an option between filing an appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
In respect of the infringement cases, depending on the nature of the infringement, they may be handled under Administrative, Civil or Criminal Actions.
Courts are entitled to apply civil or criminal measures when handling the infringement cases while the Board of inspectorate in Science and Technology within the Ministry of Science and Technology and Department of the Ministry of Trade, Economic Police, Customs, and People committees are vested with the power to apply administrative measures.
Question 2
How efficient are the NOIP and courts in disposing IP litigation cases in Vietnam?
Answer 2
Only Courts are empowered to deal with all requests of the owner patent. However, court system is not efficient as there is no specialized court on IPRs, judges at Court are not so technically qualified and lacking of experience in industrial property cases, handling procedure is often extend beyond the prescribed time limit.
The handling made by the NOIP and other Administrative Authorities often takes place for a shorter time. In addition, the handling scope applies on a large scale, which is not restricted by the territory of each local and is consistent. Therefore it allows the patent owner to exploit tire patent effectively. However, these Authorities are limited to their empowerment. They have no empowerment but empowerment to handle cases under administrative measures. And they are not vested to determine any damages that a patent owner had to bear.
Question 3
Do the NOIP and courts rely on precedent cases decided in foreign countries?
Answer 3
No. The Vietnam law system is a written one and not rely on precedent cases.
Question 4
How are foreigners treated by the NOIP and court?
Answer 4
The foreigners are treated as Vietnamese nationals. In addition, they have rights to authorize 1P agencies and they are entitled to have their interpreters.
Question 5
What is the time frame for a patent invalidation/patent infringement suit to be decided in Vietnam?
Answer 5
Within 60-90 days form the date of receipt of the suit. However, in practice it can take much longer period of time, on the basis of case by case.
Question 6
How to appeal to a decision by the NOIP for patent invalidation and court for patent infringement?
Answer 6
In case of any disagreement with the Decision by the NOIP for a patent invalidation, the appellant shall have an option between a further appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
The appeal to MOST can be made within 30 days from the date of receipt of the notice of the decision of the NOIP. The Minister of MOST, based on proposal of the Inspection Board within the MOST, must issue a decision, within 45 to 60 days from receiving the appeal petition. The decision of the Minister is final.
In case the applicant decides to go to the Court, the competent Court shall be the People's Court (Administrative Court) of Hanoi, or Ho Chi Mini) City in case involved a foreign nationals, or local court having the local competence on the applicant. The Decision of the first instance Court shall be appealable to the People's Supreme Court. The Supreme Court's decision shall be final unless objected himself or by the Chairman of the People's Supreme Inspectorate. This procedure is also applied to appeal the decision of the court for patent infringement.
Patent Protection, Enforcement And Court System In Vietnam
PROTECTION
Question 1
What is the term of protection of a patent in Vietnam?
Answer 1
In Vietnam, a patent life last for twenty (20) years counted from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Vietnam?
Answer 1
§ Administrative Actions;
§ Civil Actions;
§ Criminal Actions; and
§ Border Control Measures.
Administrative Actions
Administrative authority has been vested with various authorities, from central to local government, among them the most effective are the Board of Inspectorate in Science and Technology within the Ministry of Science and Technology and Department of Science and Technology at province, also Market Management Department of the Ministry of Trade, Economic Police, Customs, Specialized Industrial Property Inspectorates, and People committees.
Civil Actions
If the patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.
Complaints are lodged with People's Court of the province; town or city with is directly responsible to the central government.
Where one of the parties to the action is a foreigner the case must be filed with the People's Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.
The foreign plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. It usually takes 6 months to 1 year for a case to come to trial. Decisions of the People's Court are generally issued and available within 15 days.
Decisions of the First instance Court may be appealed to the Appeal Court of the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.
Complaints must be submitted directly or through a local representative in the case of foreign entities.
Courts are empowered to issue a temporary and urgent order to stop the infringing activity pending determination at trial, provided the evidence in the complaint justifies such action.
Criminal Actions
A patent owner may make denunciation for the investigation, and if convicted criminal actions to be brought against an infringer pursuant to applicable provisions of the Criminal Code.
It is to be noted that firstly under the Criminal code of Vietnam only individuals are subject to criminal liability, that limits much of action when 1P infringement are made by legal entity, the personal responsibility in such activities should be established. 'I' Secondly the precondition for criminal offence is that the infringement causing serious consequence, or the infringer has previously been administratively punished, or has been already sentenced for the same crime but the criminal record has not been cleared. Factors that need badly explanation and to date are not given any further details guidance for the application.
Prosecution authority lies with: (1) the police who can investigate, seize goods and arrest infringers, and (2) the public prosecutorates who have, in addition to having the same powers as police, the authority to indict and prosecute infringers.
The police generally initiate investigations upon a patent owner's formal complaint.
The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.
If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.
Cases are brought before the People's Court of the district having jurisdiction over the place where the alleged infringement occurred. If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.
Decisions of the People's Court may be appealed to the upper court either the People's Court of Province or City or to the Appeal Court of the Supreme Court, the highest and final court.
The punishment can be very severe, ranging from 6 months to 3 years imprisonment for 1P infringement. If the counterfeit goods are foods, drugs, agriculture chemical products, up to IS to 20 years' imprisonment. In addition, a counterfeit can be liable to pay a monetary tine, forbidden from holding certain position, disqualified from certain profession, in a period up to 5 years.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
IP Enforcing Administrations and Courts are empowered to determine amount of the owner's loss and to grant a temporary and urgent measure to stop the infringing activity, the patent owner can request appropriate Enforcing authorities or initiate a law suit at the Court and request the Court carry out the relevant measure in order to overcome the consequence of the infringement.
Question 3
Are protective orders available in Vietnam? For example, does Vietnam's patent law require the patent owner to send a warning letter to an alleged infringer before a court action can be taken against him?
Answer 3
No. The patent owner has right (but not be obligated) to inform the infringer that he is the owner of the patent and request the infringer to stop the infringing activity.
Question 4
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 4
We wonder whether "a preliminary injunction" in this question means "a injunction/decision to grant a temporary and urgent measure. If yes, the answer of this question is "Yes". When or before initiating a lawsuit at the Court, the patent owner has right to request the court to grant temporary and urgent measures to stop the infringing activity. Such measures are Seizing Goods that infringe Industrial Property Rights, interdicting change the status, interdicting assign the property right, The person who made a such request is obligated to guarantee the payment of damages to such measure debtor in case of improper application of such provisional measure.
In urgent circumstances require protect evidences and prohibit a serious consequences that may be occurred, after receiving the request and evidences, within 48 hours as from the moment of receipt of the request, the judge in charge of the case must consider and issue a Decision of temporary and urgent measure. If the request is not accepted, the court must inform the requester by a written letter in which the reasons for unacceptance are given.
In other cases, the time limit for granting the above-mentioned decision is 3 days counted from the date of receiving the request if the person who made a such request must not perform guarantee measures or immediately after he perform guarantee measures.
Question 5
How long would a patent infringement/patent invalidation case take in Vietnam?
Answer 5
It varies upon case by case but it takes at least four to six months counted from the date of handling the ease. In practice, this term may extend 12-18 months.
Question 6
How are damages/royalties assessed?
Answer 6
Principles of determination of loss caused by IPR infringements:
- the loss caused to the holder of IPR by an infringement comprise both tangible and intangible loss: (i) Tangible losses comprise loss to property, decreased income and profits and reasonable costs for prevention and rectification of such loss, reasonable attorney fees and other, actual loss, loss of business opportunities, decrease in the business reputation and other intangible loss; (ii) Intangible loss comprise of loss to the dignity, honour, prestige and other intangible loss.
- the level of loss shall be determined on the basis of the actual losses incurred by the holder of IPRs due to the infringement upon such IPRs.
Bases for determination of losses caused by IPR infringements:
If the plaintiff succeeds in proving that an IPR infringement has caused tangible loss to him/her, lie/she shall have the right to ask the court to determine the level of damages on one of the following bases:
- the total tangible loss as determined in cash plus the profits gained by the IPR infringer if such profits have not yet been included in the total tangible loss;
- the value of transfer of the IPR subject matter with the assumption that the defendant has been transferred by the plaintiff the right to use that industrial property subject matter under a contract for using such industrial property subject matter to the extent equivalent to the act of infringement committed;
- in case it can not determine as above mentioned, the tangible loss is fixed by the court but not exceeding VND 500 million.
If the plaintiff succeeds in proving that such IPR infringement has caused intangible loss to him/her, he/she may request the court to determine an appropriate level of damages ranging from VND 5 million to VND 50 million depending on the level of loss.
In addition, the plaintiff may request the court to oblige the infringer pay the reasonable attorney fees.
Question 7
Can the alleged infringer sue for damages if the patent owner fails to proof infringement in court?
Answer 7
Yes. In case the alleged infringer succeeds in proving that the request for provisional measure is not well grounded and caused damages to him, the court will obligate the patent owner to pay of compensation for these damages.
In case the court decides that there is no infringing action, the alleged infringer may request the patent owner to pay of compensation for damages which are determined as in above answer (6).
Question 1
What is the term of protection of a patent in Vietnam?
Answer 1
In Vietnam, a patent life last for twenty (20) years counted from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Vietnam?
Answer 1
§ Administrative Actions;
§ Civil Actions;
§ Criminal Actions; and
§ Border Control Measures.
Administrative Actions
Administrative authority has been vested with various authorities, from central to local government, among them the most effective are the Board of Inspectorate in Science and Technology within the Ministry of Science and Technology and Department of Science and Technology at province, also Market Management Department of the Ministry of Trade, Economic Police, Customs, Specialized Industrial Property Inspectorates, and People committees.
Civil Actions
If the patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.
Complaints are lodged with People's Court of the province; town or city with is directly responsible to the central government.
Where one of the parties to the action is a foreigner the case must be filed with the People's Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.
The foreign plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. It usually takes 6 months to 1 year for a case to come to trial. Decisions of the People's Court are generally issued and available within 15 days.
Decisions of the First instance Court may be appealed to the Appeal Court of the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.
Complaints must be submitted directly or through a local representative in the case of foreign entities.
Courts are empowered to issue a temporary and urgent order to stop the infringing activity pending determination at trial, provided the evidence in the complaint justifies such action.
Criminal Actions
A patent owner may make denunciation for the investigation, and if convicted criminal actions to be brought against an infringer pursuant to applicable provisions of the Criminal Code.
It is to be noted that firstly under the Criminal code of Vietnam only individuals are subject to criminal liability, that limits much of action when 1P infringement are made by legal entity, the personal responsibility in such activities should be established. 'I' Secondly the precondition for criminal offence is that the infringement causing serious consequence, or the infringer has previously been administratively punished, or has been already sentenced for the same crime but the criminal record has not been cleared. Factors that need badly explanation and to date are not given any further details guidance for the application.
Prosecution authority lies with: (1) the police who can investigate, seize goods and arrest infringers, and (2) the public prosecutorates who have, in addition to having the same powers as police, the authority to indict and prosecute infringers.
The police generally initiate investigations upon a patent owner's formal complaint.
The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.
If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.
Cases are brought before the People's Court of the district having jurisdiction over the place where the alleged infringement occurred. If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.
Decisions of the People's Court may be appealed to the upper court either the People's Court of Province or City or to the Appeal Court of the Supreme Court, the highest and final court.
The punishment can be very severe, ranging from 6 months to 3 years imprisonment for 1P infringement. If the counterfeit goods are foods, drugs, agriculture chemical products, up to IS to 20 years' imprisonment. In addition, a counterfeit can be liable to pay a monetary tine, forbidden from holding certain position, disqualified from certain profession, in a period up to 5 years.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
IP Enforcing Administrations and Courts are empowered to determine amount of the owner's loss and to grant a temporary and urgent measure to stop the infringing activity, the patent owner can request appropriate Enforcing authorities or initiate a law suit at the Court and request the Court carry out the relevant measure in order to overcome the consequence of the infringement.
Question 3
Are protective orders available in Vietnam? For example, does Vietnam's patent law require the patent owner to send a warning letter to an alleged infringer before a court action can be taken against him?
Answer 3
No. The patent owner has right (but not be obligated) to inform the infringer that he is the owner of the patent and request the infringer to stop the infringing activity.
Question 4
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 4
We wonder whether "a preliminary injunction" in this question means "a injunction/decision to grant a temporary and urgent measure. If yes, the answer of this question is "Yes". When or before initiating a lawsuit at the Court, the patent owner has right to request the court to grant temporary and urgent measures to stop the infringing activity. Such measures are Seizing Goods that infringe Industrial Property Rights, interdicting change the status, interdicting assign the property right, The person who made a such request is obligated to guarantee the payment of damages to such measure debtor in case of improper application of such provisional measure.
In urgent circumstances require protect evidences and prohibit a serious consequences that may be occurred, after receiving the request and evidences, within 48 hours as from the moment of receipt of the request, the judge in charge of the case must consider and issue a Decision of temporary and urgent measure. If the request is not accepted, the court must inform the requester by a written letter in which the reasons for unacceptance are given.
In other cases, the time limit for granting the above-mentioned decision is 3 days counted from the date of receiving the request if the person who made a such request must not perform guarantee measures or immediately after he perform guarantee measures.
Question 5
How long would a patent infringement/patent invalidation case take in Vietnam?
Answer 5
It varies upon case by case but it takes at least four to six months counted from the date of handling the ease. In practice, this term may extend 12-18 months.
Question 6
How are damages/royalties assessed?
Answer 6
Principles of determination of loss caused by IPR infringements:
- the loss caused to the holder of IPR by an infringement comprise both tangible and intangible loss: (i) Tangible losses comprise loss to property, decreased income and profits and reasonable costs for prevention and rectification of such loss, reasonable attorney fees and other, actual loss, loss of business opportunities, decrease in the business reputation and other intangible loss; (ii) Intangible loss comprise of loss to the dignity, honour, prestige and other intangible loss.
- the level of loss shall be determined on the basis of the actual losses incurred by the holder of IPRs due to the infringement upon such IPRs.
Bases for determination of losses caused by IPR infringements:
If the plaintiff succeeds in proving that an IPR infringement has caused tangible loss to him/her, lie/she shall have the right to ask the court to determine the level of damages on one of the following bases:
- the total tangible loss as determined in cash plus the profits gained by the IPR infringer if such profits have not yet been included in the total tangible loss;
- the value of transfer of the IPR subject matter with the assumption that the defendant has been transferred by the plaintiff the right to use that industrial property subject matter under a contract for using such industrial property subject matter to the extent equivalent to the act of infringement committed;
- in case it can not determine as above mentioned, the tangible loss is fixed by the court but not exceeding VND 500 million.
If the plaintiff succeeds in proving that such IPR infringement has caused intangible loss to him/her, he/she may request the court to determine an appropriate level of damages ranging from VND 5 million to VND 50 million depending on the level of loss.
In addition, the plaintiff may request the court to oblige the infringer pay the reasonable attorney fees.
Question 7
Can the alleged infringer sue for damages if the patent owner fails to proof infringement in court?
Answer 7
Yes. In case the alleged infringer succeeds in proving that the request for provisional measure is not well grounded and caused damages to him, the court will obligate the patent owner to pay of compensation for these damages.
In case the court decides that there is no infringing action, the alleged infringer may request the patent owner to pay of compensation for damages which are determined as in above answer (6).
Friday
General Enquiry On Possible New Litigation Matter In Thailand
Question 1
What are the possible remedies available in Thai Litigation?
Answer 1
The possible remedies and to apply for an urgent hearing for injunction relief, and to file the plaint against the other party, claiming for damages.
To request for an urgent injunction from the court, we must file the plaint against the other party, simultaneously.
Question 2
If injunctive relief is one of the remedies, how quickly can it be obtained and does client have to testify in person in Thailand?
Answer 2
It will take 2-3 weeks to prepare a plaint for filing at the court, as well as filing a petition demanding for an injunction.
If the judge believes that it is an urgent matter, then the judge will allow to have a hearing for an injunction on the same day that we file the case. Then the judge will issue a Court Order on that day, or the following day.
On the other hand, if the judge thinks that it not an urgent matter, then the judge will fix the day to have a hearing for the injunction which may take one or two months, even more, depending on the case schedule of the Court.
It would be better if the client is able to testify during the hearing for injunction by himself, otherwise the legal agent or representative of the client would have to testify instead.
Question 3
What are the governing Laws for such matter?
Answer 3
The Copyright Law, the Law of Contract, and the Law concerning business transaction on electronics, etc.
Question 4
What is its estimated duration?
Answer 4
For the injunction, if the judge grants an urgent injunction, it will take a few days after filing the case.
If the judge does not grant an urgent injunction, but only the normal injunction, it will take a few months or even longer.
For the process of the litigation, it may take a year and or even slightly longer.
Question 5
Is there any expedited process of obtaining judgment in Thailand, (like the summary judgment in Singapore, which is granted without trial, if the Court believes that there is no triable issue and therefore, there is no defence)?
Answer 5
There is a process for the summary judgment in Thailand. However, it is not easy to request and get a summary judgment.
Question 6
If he plaintiff is a foreign company, does it have to furnish security for costs of the defendant, and if so, what is the form and quantum of such security?
Answer 6
It is not compulsory for a foreign plaintiff to furnish security under Thai Law.
Nevertheless, the defendant has a right to submit a petition to the judge demanding the foreign plaintiff to furnish security.
The amount of security depends on the discretion of the judge, which will be influenced by the amount of claim.
The security would be in cash, which is deposited to the Court.
What are the possible remedies available in Thai Litigation?
Answer 1
The possible remedies and to apply for an urgent hearing for injunction relief, and to file the plaint against the other party, claiming for damages.
To request for an urgent injunction from the court, we must file the plaint against the other party, simultaneously.
Question 2
If injunctive relief is one of the remedies, how quickly can it be obtained and does client have to testify in person in Thailand?
Answer 2
It will take 2-3 weeks to prepare a plaint for filing at the court, as well as filing a petition demanding for an injunction.
If the judge believes that it is an urgent matter, then the judge will allow to have a hearing for an injunction on the same day that we file the case. Then the judge will issue a Court Order on that day, or the following day.
On the other hand, if the judge thinks that it not an urgent matter, then the judge will fix the day to have a hearing for the injunction which may take one or two months, even more, depending on the case schedule of the Court.
It would be better if the client is able to testify during the hearing for injunction by himself, otherwise the legal agent or representative of the client would have to testify instead.
Question 3
What are the governing Laws for such matter?
Answer 3
The Copyright Law, the Law of Contract, and the Law concerning business transaction on electronics, etc.
Question 4
What is its estimated duration?
Answer 4
For the injunction, if the judge grants an urgent injunction, it will take a few days after filing the case.
If the judge does not grant an urgent injunction, but only the normal injunction, it will take a few months or even longer.
For the process of the litigation, it may take a year and or even slightly longer.
Question 5
Is there any expedited process of obtaining judgment in Thailand, (like the summary judgment in Singapore, which is granted without trial, if the Court believes that there is no triable issue and therefore, there is no defence)?
Answer 5
There is a process for the summary judgment in Thailand. However, it is not easy to request and get a summary judgment.
Question 6
If he plaintiff is a foreign company, does it have to furnish security for costs of the defendant, and if so, what is the form and quantum of such security?
Answer 6
It is not compulsory for a foreign plaintiff to furnish security under Thai Law.
Nevertheless, the defendant has a right to submit a petition to the judge demanding the foreign plaintiff to furnish security.
The amount of security depends on the discretion of the judge, which will be influenced by the amount of claim.
The security would be in cash, which is deposited to the Court.
Wednesday
Inventor's Rights
Question 1
If an employee of a company in India makes an invention, do the rights in the invention automatically belong to the employer? Does the employer have to pay an “inventor compensation” to the inventor (as in Germany)?
Answer 1
In India, derivation of title has to be based on a contract between the inventor and the employer company. Typically, the title on the invention is derived through the employment contract or a deed of assignment. The employment contract must specify that the title of the invention developed during the “course of employment” is transferred to the employer. No separate consideration is required. The employer does not have to pay an “inventor compensation” separately.
If an employee of a company in India makes an invention, do the rights in the invention automatically belong to the employer? Does the employer have to pay an “inventor compensation” to the inventor (as in Germany)?
Answer 1
In India, derivation of title has to be based on a contract between the inventor and the employer company. Typically, the title on the invention is derived through the employment contract or a deed of assignment. The employment contract must specify that the title of the invention developed during the “course of employment” is transferred to the employer. No separate consideration is required. The employer does not have to pay an “inventor compensation” separately.
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