Patent Protection in Cambodia
Background for the European SMEs
The Association of Southeast Asian Nations (ASEAN) as a group is EU's third largest trading partner after the United States and China. ASEAN countries are at different economic and political development stage, and among them, Cambodia has recently shown steady growth rates, while its economy grew at 7.1% in 2014 and 7% in 2015. The garment sector, together with construction and services, are the main drivers of its economy. Growth is expected to remain strong in 2016, as recovering internal demand and dynamic garment exports offset stagnation in agriculture and softer growth in tourism. Cambodia is an emerging market with a GDP of $16.4 billion, which has the potential of becoming a trading and logistics hub for the Indonesia region. Its 15.3 million strong population is mainly occupied in the agricultural sector. However, garment industry, construction and tourism are among major industries in Cambodia, with the garment industry accounting for 90% of Cambodia’s exports.
EU exports to Cambodia are dominated by machinery and appliances, agricultural products, chemical products and transport equipment while Cambodia’s exports to the EU are dominated by garment industry, accounting for 72% of Cambodia’s exports.
Patents and Utility Models in Cambodia
Patents are the set of exclusive rights granted to inventors or their assignees to exploit an invention for a limited period of time. The Cambodian Patent Law defines an invention as, “the idea of an inventor which permits in practice the solution to a specific problem in the field of technology.” The law further clarifies that an invention may either be, or relate to, both a product and a process. A product patent (i.e., a patent giving protection to the product as such) gives the patent holder the exclusive right to make, import, sell, offer for sale, use, and stock the product for the purpose of sale or use. A process patent (i.e. a patent granted for a process or a method), gives the patent holder an exclusive right to prevent others from using that process/form.
An invention is patentable if it is novel, involves an inventive step, and is industrially applicable. An invention is novel if it is not disclosed to the public, anywhere in the world, prior to the date of filing the application or the priority date. An invention is considered to involve an inventive step if the invention is not obvious to a person skilled in the art. The industrially applicable requirement means that the invention must have a use in at least one kind of industry. The Patent Law excludes certain types of inventions from patent protection, such as discoveries, scientific theories and mathematical methods. The law also excludes inventions that would be contrary to public order or morality, that would be harmful to human, animal or plant life and that would seriously compromise the environment.
Utility Model Certificates areintellectual property rights that protect the technical aspects of inventions. The Patent Law defines utility models as any invention which is new and industrially applicable and may be, or may relate to, a product or process. Thus, unlike patented inventions, utility models do not need to involve an inventive step. This is the key difference between utility models and patented inventions; whereas utility models may be obvious to a person skilled in the art, patented inventions may not. Patents are granted protection for twenty years, whereas utility models will only be protected for seven years, without a possibility of renewal.
Cambodia employs the first-to-file system, meaning that the person, whose application has the earliest filing date – or, if priority is claimed, the earliest priority date, will be granted the patent or utility model certificate. Here the priority date is, the date when an application was first made for the patent or utility model certificate in a foreign country. The period of priority starts from the filing date of the first application and is valid for twelve months.
Patents and utility model certificates are granted by the Department of Industrial Property of the Ministry of Industry, Mines, and Energy (“MME”). European SMEs should keep in mind that foreign applicants must be represented by a local agent in Cambodia.
A patent or utility model certificate application can be submitted in English or in Khmer and must contain the following:
- A formal request and application form containing the name, address, nationality and residence of each applicant;
- If the applicant is the inventor, the application dossier must also contain a Statement of the Applicant’s Right. If the applicant is not the inventor, the application must clearly state each inventor’s name and address, and be accompanied by a statement justifying the applicant’s right to the patent;
- A description of the invention;
- One or more clearly stated claims defining the matter for which protection is sought;
- Drawings, if necessary to understand the invention;
- An abstract outlining the technical information
- Power of Attorney certified by notary public in case of foreign applicant
- Foreign filing information of the patent application or utility model certificate application, if filed internationally, and upon request by MME.
If priority is claimed, the MME may request the applicant to additionally submit any search or examination reports relating to the foreign application, a copy of the granted foreign patent or utility model certificate, or foreign office action.
At any time before the granting or refusal of a patent or utility model certificate, the applicant may convert his/her application into an application for a utility model certificate (if the original application was a patent application) or a patent application (if the original application was an application for a utility model certificate). An application may be converted only once.
The patent application filing fee is 115 EUR and once the patent has been granted, there will be an annual patent validity maintenance fee, which starts from 15 EUR for the second year and gradually rises up to 550 EUR for the 20th year. Filing fee for a utility model is approximately 70 EUR.
Patent Protection Watch-outs
Unless otherwise agreed by contract, the employer will have the rights to any invention created while executing an employment contract. Even though the employer has the right to the patent, the employee has the right to be named as the inventor on the invention.
It should be noted that the Cambodian Ministry of Industry, Mines and Energy has the right to allow a government agency or a third party to exploit an invention or utility model on certain public interest grounds. Such grounds include, for example, national security, nutrition, health and development. Moreover, a government agency may also grant a third party the right to exploit the patent if the patent holder has acted anti-competitively.
The European SMEs should also be aware that the Ministry has the right to issue non-voluntary licenses to third parties to produce and commercialize the invention without the permission of the patent owner if the Ministry is“satisfied that the patented invention is not exploited or is insufficiently exploited in the Kingdom of Cambodia”. Non-voluntary licenses can be issued by the Ministry if the owner of the patent has not started to exploit the patent after the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last.
In cases of patent infringement, patent owners and licensees will have two ways for enforcing their rights – through civil litigation or through criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option.
A civil infringement suit may be brought by both the patent owner and by a licensee.However, the licensees should at first notify the patent owner and request them to file the civil suit first, once the patent owner refuses to do so, the licensees may bring the civil suit themselves. The court can award monetary damages and it also has the power to order preliminary injunctions or temporary restraining orders to prevent infringement or imminent infringement, or to preserve evidence.
Initiating civil procedure in Cambodian civil court can be time-consuming and expensive due to systematic problems in the Cambodian judiciary. However, only the civil court does have the authority to grant damages.
Patent infringement also constitutes a criminal offense in Cambodia. The penalty for infringement of patents and utility model certificates can be a fine ranging from 5 million Riels and 20 million Riels (approximately 1000EUR to 4300EUR) and/or punishment by imprisonment ranging from one to five years. The maximum penalty for a repeat offender is the doubling of both the fine and the term of imprisonment. Where a person is found guilty of patent infringement or an infringement of a utility model or, the competent court may also order the confiscation or destruction of the infringing goods.
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (firstname.lastname@example.org) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.