Phnom Penh, Cambodia – Patent annuities are part of the country’s intellectual property management system in Cambodia, ensuring that patents remain in force. A patent annuity system refers to the requirement for patent holders to pay annual fees to maintain their patent rights over a certain period.

To date, the annuity requirements and deadlines laid forth in the Patent Law of Cambodia have not been strictly enforced in Cambodia. Thus, patent holders have been allowed to make up any overdue payments at any time, without penalty imposed by the Cambodia Department of Industry Property (DIP) under the Ministry of Industry, Science, Technology and Innovation (MISTI).

On 14 August  2024, DIP organized a half-day workshop to announce further changes to the annuity system of patents, utility model certificates and plant variety protection registrations in Cambodia, which changes have superseded prior ones scheduled to come into effect on 14 August 2024. Accordingly, starting 15 October 2024, patent applicants and patent holders must pay each annuity within six months before the annuity period starts. If they fail to meet this deadline, a late fee will be applied during the 12-month annuity window. Within the last six months of the annuity period, a restoration fee will be added to this late fee. The granted patents or patent applications will be considered abandoned and invalid if the fees are not paid by the end of the annuity period. Thus, no late or restoration fees will be due if the annuities are paid before then.

In light of the above, you should promptly check your patent portfolio to identify any payments due before 15 October 2024 and complete all payments by their respective deadlines to avoid penalties imposed by DIP and ensure uninterrupted protection of your patent rights.

As a side remark, like in most countries, the standard patent protection in Cambodia lasts for 20 years from the filing date, provided the annual patent annuity fees are paid. However, once the 20-year period expires, patent rights typically cannot be extended, as the patent falls into the public domain, allowing others to use the invention without the patent holder’s permission.

Patent Term Extension in Cambodia

Cambodia does not currently have a formal system for patent term extensions or supplementary protection certificates (SPCs), which are mechanisms in other countries to extend patent life in certain sectors, such as pharmaceuticals, where lengthy regulatory approval processes can delay market entry. Therefore, after the 20-year period, the patent protection typically expires.

Exceptions and Possible Mechanisms

1. Patent Restoration for Lapsed Patents: If a patent lapses due to non-payment of annuities but the patent holder has a valid reason, Cambodia may allow a limited time to restore the patent, subject to penalties or fees.
2. Protection of New Uses or Improvements: While the original patent may not be extended, a new patent could potentially be filed if there are significant improvements or new uses of the existing invention. This would involve applying for a new patent based on the modification or improvement rather than extending the existing one.

Further, in Cambodia, as in many other countries, the concept of compulsory licensing exists under patent law. This mechanism allows the government or a designated third party to use a patented invention without the consent of the patent holder, under certain conditions. The primary objective of compulsory licensing is to ensure that patents are not abused and that critical inventions, especially in fields like healthcare and pharmaceuticals, are accessible to the public when necessary.

1. Legal Basis
   • The Cambodian Law on Patents, Utility Model Certificates, and Industrial Designs includes provisions for compulsory licensing. This is in line with international agreements like the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which Cambodia, as a member of the World Trade Organization (WTO), is obligated to follow.
2. Conditions for Compulsory Licensing
   • Non-Use of Patent: If the patent holder is not making adequate use of the patented invention in Cambodia within a certain time (usually 3 years from grant or 4 years from filing), a compulsory license may be requested.
   • Public Interest: A compulsory license can be issued when it is deemed necessary to protect public health, national security, or other urgent public needs.
   • Anti-Competitive Practices: If the patent holder is found to be engaging in anti-competitive practices that harm the economy or restrict access to important products, a compulsory license can be issued.
   • Failure to Reach Agreement: If the patent holder and the person seeking a license cannot reach an agreement under reasonable commercial terms after negotiations, the government can intervene.
3. Procedure
   • A third party or the government may request a compulsory license from the competent authority, usually through an administrative or legal process.
   • The patent holder will be notified and has the right to defend their case.
   • If the compulsory license is granted, the licensee (the party using the patent) must pay adequate compensation or royalties to the patent holder, as determined by law.
4. Scope and Limitations
   • A compulsory license does not grant full ownership of the patent to the licensee but only allows them to use the patented invention under specific conditions.
   • The license is non-exclusive, meaning other licenses can still be granted by the patent holder or the government.
   • The compulsory license is limited to the Cambodian market and cannot be used for export unless permitted under special circumstances, such as for pharmaceuticals under the TRIPS waiver.
5. Termination
   • If the conditions that led to the issuance of the compulsory license change, or if the patent holder begins using the patent sufficiently, the license may be terminated.

Compulsory licensing is generally seen as a last resort and is used to balance the rights of patent holders with the needs of society. It’s especially relevant in areas like access to medicines or essential technologies.

For further information, please do not hesitate to contact us at [email protected].