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Law and Regulation

Myanmar Passes Patent law

Pyidaungsu Hluttaw Law No. 7/2019—Myanmar’s Patent Law—was enacted on March 11, 2019, providing a framework for the protection of inventions related to products and processes. This is the first legislation specifically addressing the protection of patents in the history of Myanmar.
 
The law will be administered by the Directorate of Patents of the Intellectual Property Office, to be established under the Ministry of Commerce, and implementing regulations will be issued in due course.
 
Overview
 
Under the Patent Law, an invention is patentable if it is novel, involves an inventive step, and is industrially applicable. Non-patentable inventions include discoveries, scientific theories and mathematical methods; schemes, rules and methods for doing business, performing purely mental acts or playing games; computer programs; essentially biological processes for production of plants and animals other than man-made living micro-organisms and processes; plant or animal varieties; methods for the treatment of human and animal body and such diagnostic techniques; inventions related to known matters including naturally-existing objects or their new usage and features; and inventions which negatively affect the morals, peace, and tranquility of Myanmar.
 
Importantly, in accordance with the extended transition period for meeting obligations under the TRIPS Agreement for Least-Developed Country Members, the Patent Law contains special provisions exempting the protection of pharmaceutical patents until January 1, 2033, and the protection of chemical products used in agriculture, food products, and microbiological products until July 1, 2021, unless the Myanmar government specifies otherwise.  
 
Priority under the Patent Cooperation Treaty or the Paris Convention can be claimed in Myanmar within one year from the date of the initial application. Unless a request for early publication is submitted, applications are published 18 months after the date of application, whereas requests for substantive examination must be submitted within 36 months from the date of application. If official actions are issued by the Directorate of Patents, responses must be filed within 60 days.
 
The law contains provisions addressing compulsory licenses to be issued by the Directorate of Patents, and also makes the recordation of patent licenses mandatory. Further, the new law stipulates a national security clearance procedure, requiring applicants and inventors residing in Myanmar to obtain written authorization from the Directorate of Patents before applying for patents outside of Myanmar.
 
Granted patents are valid for a term of 20 years from the filing date, or 10 years for petty patents. Annuities are payable.
 
Patent infringement claims can be filed at the specialized Intellectual Property Court (which will be established by the Supreme Court of the Union via powers conferred under the law). Criminal penalties include imprisonment of up to a year, a fine not exceeding MMK 2,000,000 (approx. USD 1,300), or both.
 
Applications under the New Law
 
Patent applications can be filed in English or Myanmar language, but the registrar may request the submission of a certified translation in either language. Applications should contain:

1. The request for grant of patent;
2. The applicants’ names, nationalities or countries of incorporation, and addresses;
3. The inventors’ names, nationalities, and addresses;
4. The representative or agent’s name, national registration card number, and address;
5. Patent specifications and drawings;
6. One or more patent claims;
7. Priority documents, if applicable; and
8. The request for early publication, if applicable.

If an application made by joint applicants is executed by only one of the applicants, a written agreement evidencing the approval of all applicants must also be submitted. A disclosure statement on the origin of genetic resources and prior informed consent of the use of traditional knowledge in the claimed inventions must also be submitted if appropriate.
 
The Directorate of Patents and the Intellectual Property Office may stipulate additional required documents and information from time to time.
 
Next Steps
 
As with the recently enacted Trademark Law and Industrial Design Law, new applications under the Patent Law are not yet accepted. The effective date of the Patent Law will be announced via a Presidential Notification at a later stage. At present, no timeline has been set out for the issuance of implementing regulations or the establishment of the Intellectual Property Office. We will provide details as they become available.
 
For more information on this development, or to enquire about any of the steps above, please contact our Myanmar office at myanmar@tilleke.com or on +95 1 255 208.