Myanmar Patent Law
The New 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.
Myanmar is now neither a PCT member nor Paris Convention yet, so there is no time limit to file a Patent Declaration claiming seniority in Myanmar. However, Myanmar is a member of WTO and WIPO, so Myanmar has been obliged to abide by and implement the provisions of the relevant treaties of this Organization. It means Patent Declaration claiming the seniority should be preferably filed no later than  months with respect to the PCT application and  months in respect of convention patent application counted from the priority date or before it is published in the worldwide according to the general international regulation for filing patent application.
There is no requirement on the substantive examination. It means that there is not any examination to the registration of patent application. Accordingly, to define the registration of patent, the Myanmar Registry will endorse the Declaration with the patent number and granting date and return it to the patentee.
The average time from filing up to the registration will be about six  months.
The registration is not complete solution to protect of patent in Myanmar. So, the publication of Patent Cautionary Notice in local newspaper should be done after the registration of patent to inform the public about the registration and claim to ownership and warning against the potential infringement.
Observations about the Patent Examination procedure
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 and PCT
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.
Patent Applications requirements under the New Law in Myanmar
Applications should contain:
The request for grant of patent;
The applicants’ names, nationalities or countries of incorporation, and addresses;
The inventors’ names, nationalities, and addresses;
Power of Attorney (POA)
Patent specifications and drawings;
One or more patent claims;
Priority documents, if applicable; and
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.
Patent applications can be filed in English or Myanmar language, but the registrar may request the submission of a certified translation in either language.
There is no regulation regarding to the term of protection for patent in Myanmar. However, according to the general international regulation for patent, it can be protected 20 years from the priority date, namely, it depends on the term granted in the home country.
According to the established practice, it is recommended to apply for maintenance in every 3 years by re-registering a Patent Declaration and re-publication of a Cautionary Notice.
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.
The Directorate of Patents and the Intellectual Property Office may stipulate additional required documents and information from time to time.
Myanmar New Trademark Law
On a related note, we would like to inform you that the new Myanmar Trademark Law was enacted on January 30, 2019. It is important to note that under this new Trademark Law, all existing trademarks in Myanmar must be refiled and re-registered with the new IP Office in order to enjoy statutory protection of trademark rights. The effective date of this new Law has not yet been announced. At present, trademarks are still prosecuted and maintained under the existing recordal system. The practice of publication of cautionary notices will also continue, until and unless there are official announcements countermanding this practice. As the new Trademark Law is not yet in force, please note that any searches conducted and advice provided in this report is based on the current trademark recordal system practiced in Myanmar.
* The new trademark Law will be getting in fornce upon June 2020.
* Take in count thagt Myanmar have a strict first-to-file system.
Hence currently, trademark registration in Myanmar can be done in conformity with the "Old System" and the"New System".
Myanmar does not have a specific trademark law.
Currently, trademarks can be registered with the Myanmar Registration Office (Registry of Deeds and Assurances) under Section 18(f) of the Registration Act and Direction 13 issued under the Registration Act by refiling a Declaration of Trademark Ownership (“DTO”) with the Registration Office.
One DTO can cover one trademark for one or several classes of goods or services. There is neither examination nor opposition proceedings. The registration is granted in 4 to 6 weeks if the Registrar finds the DTO conform with the Registration Act. Once the trademark is registered, it is a practice to publish a Cautionary Notice (“CN”) in a local newspaper in order to notify the public of trademark ownership and to discourage infringement of the trademark.
Trademark Registration Procedure in Myanmar
There is no Patent and Trademark Registration Office in Myanmar. Application is to be filed at the Myanmar Registration Office (Registry of Deeds and Assurances).
Applicant files the DTO and the POA with the Registration Office.
Registration is granted and registered DTO is returned to the applicant.
Applicant publishes Cautionary Notice (“CN”) in a local newspaper.
The Myanmar Trademark Law implements the “first-to-file” system from the previous “first-to use” System. Myanmar government (IP Section) will introduce procedure and implement trademark application in the very near future. Said period will last for 3 or 4 months. The Myanmar Trademark Office will mechanize the trademark registration process by utilizing an online e-filing system (IPAS), provided by WIPO.
All reregistration process shall be implemented by means of e-filing system. Seniority and/or prior rights and/or use can be claimed at the time of online e-filing process. But applicant shall need to provide relevant evidence. Therefore, previous DTO and cautionary notices will play a vital role for recognizing seniority and/or prior rights and/or use.
Multi-class applications will be allowed in Myanmar.
The trademark application date of any re-registered trademark shall be 1st January 2020.
The trademark registration shall be issued after fulfillment of formality process.
With regard to trademark application/registration fees, Myanmar Trademark Office awaits approval from Union Government of Myanmar. After the approval and/or permission from the Union Government, the Myanmar Trademark Office will declare all official fees relating with trademark application/registration.
The Trademark Gazette will be published bi-weekly in a digital format.
National Opposition Period
There is neither examination nor opposition proceedings. Cancellation in Court is available post.
The Nice Classification is used for registration of a DTO but it is not officially adopted by the Registration Offices. After the enforcement of the new law, the Nice classification will be officially adopted.
Trademark Registration information and document require in Myanmar
Under current practice, the Trademark application has to be filed at the Office of the Registration of Deeds (ORD) by submitting the notarized “Declaration of Ownership of Trademark” along with the notarized and legalized Power of Attorney (POA).
To proceed with the application, we will require the following information/documents:
* Full name, address, and nationality/country of incorporation of the applicant;
* Clear trademark representation (one JPEG / PDF copy is sufficient);
* Priority information and documents, if applicable;
* The list of goods and services according to the International Nice Classification;
* A completed Power of Attorney which has been duly certified by a Notary Public and legalized by the Embassy of Myanmar in the country concerned; and
* A completed Declaration of Ownership which has been duly certified by a Notary Public.
Please be advised that ORD accepts only the original documents. Each document executed abroad must be filed in Myanmar within 3 months from its execution date.
A trademark registration is valid without an expiry date. However, it is a practice for the owner of a registered trademark in Myanmar to publish a Cautionary Notice (“CN”) every 3 years to notify the public that the trademark is still owned by the owner or to re-register a DTO of the mark with the Registration Office every period of 3 years.
The actual use of a trademark in the local market is essential and the Court takes it into account in conjunction with its registration and publication when the Court considers a dispute in relation to the trademark.