Enforcement/Litigation in MYANMAR
Bud & Prairie are profusely expert and experienced to advise and assist you with enforcement/litigation related matters.
- Legal Framework
- New IP Laws: Myanmar has recently enacted several new IP laws, including the Trademark Law (2019), Copyright Law (2019), Patent Law (2019), and Industrial Design Law (2019). These laws are designed to bring Myanmar in line with international standards.
- Transition Period: While these laws have been enacted, the full implementation, including the establishment of IP courts and the training of relevant authorities, is still ongoing.
- Enforcement Mechanisms
- Civil Enforcement: IP rights holders can file civil lawsuits against infringers in Myanmar’s courts. Civil remedies may include:
- Injunctions: Court orders to stop the infringing activities.
- Damages: Financial compensation for losses suffered due to the infringement.
- Account of Profits: An order requiring the infringer to pay the profits made from the infringement.
- Criminal Enforcement: The new IP laws provide for criminal penalties for severe infringements, including fines and imprisonment. The enforcement of criminal penalties is handled by the police and the courts.
- Administrative Actions: The Department of Intellectual Property (DIP) may take administrative actions, including issuing warnings or fines to infringers. Administrative enforcement is typically faster but may not provide the same level of compensation as civil litigation.
- Litigation Process
- Filing a Complaint: The IP rights holder must file a complaint with the relevant court, detailing the infringement and the relief sought.
- Preliminary Injunctions: In urgent cases, the court may grant a preliminary injunction to prevent ongoing or imminent infringement while the case is being decided.
- Evidence Gathering: The plaintiff must provide evidence of their IP rights and the infringement. This may include documentation of registration, proof of ownership, and evidence of the infringer’s actions.
- Court Proceedings: The case will proceed through Myanmar’s court system, which may involve hearings, witness testimony, and the presentation of evidence.
- Judgment: The court will issue a judgment, which may include orders for damages, injunctions, or other remedies.
- Challenges in Enforcement
- Judicial Expertise: One of the challenges in IP litigation in Myanmar is the limited experience and expertise of the judiciary in handling complex IP cases. As the new IP laws are implemented, specialized IP courts are expected to be established, which should improve this situation.
- Delay in Court Proceedings: Litigation in Myanmar can be time-consuming due to procedural delays and the backlog of cases in the courts.
- Limited Awareness: There is still a need for greater awareness and understanding of IP rights among businesses, the judiciary, and enforcement agencies.
- Alternative Dispute Resolution (ADR)
- Mediation and Arbitration: To avoid lengthy court battles, parties may opt for alternative dispute resolution mechanisms such as mediation or arbitration. These methods can be faster and more cost-effective.
- WIPO Arbitration: Myanmar’s IP laws recognize the possibility of international arbitration for IP disputes, particularly those involving foreign entities. The World Intellectual Property Organization (WIPO) provides arbitration and mediation services that can be used in Myanmar.
- Border Measures
- Customs Enforcement: Myanmar’s customs authorities have the power to detain goods suspected of infringing IP rights. Rights holders can request customs authorities to take action against counterfeit or pirated goods entering the country.
- Border Control Cooperation: Enhanced cooperation with other countries in the region, particularly through ASEAN, is helping to improve border measures against IP infringement.
- Practical Steps for Rights Holders
- Monitoring and Investigation: IP rights holders should actively monitor the market for infringements and gather evidence to support enforcement actions.
- Legal Representation: Engaging local legal experts who are familiar with Myanmar’s legal system and the new IP laws is crucial for effective enforcement.
- Education and Training: Companies should invest in educating their staff about IP rights and the importance of enforcement to protect their brand and products.
- International Considerations
- Membership in International Treaties: Myanmar is a member of the World Trade Organization (WTO) and is thus bound by the TRIPS Agreement, which sets minimum standards for IP enforcement. Myanmar’s new IP laws are designed to comply with these international obligations.
- Cooperation with Foreign Entities: For foreign companies, cooperating with local authorities and legal representatives is essential for navigating Myanmar’s IP enforcement landscape.
Overall, while Myanmar is making progress in improving its IP enforcement and litigation mechanisms, challenges remain. Rights holders need to be proactive in protecting their IP and prepared to navigate a system that is still evolving.
For further information, please do not hesitate to contact us at bud-prairie@bud-prairie.com.
1. Patentability Search
Patentability search is also known as a novelty search, which helps identify whether or not an idea is novel and involves an inventive step (nonobvious). The most complete searches include all types of prior art to give an inventor or organization a comprehensive look at the technology landscape. A patentability search should be completed during the ideation phase, as well as prior to disclosure.
A patentability search is conducted by examining published patents that relate to your own invention to figure out whether your idea has already been patented. You can also see similar inventions, allowing you to improve and refine your own invention without infringing on someone else’s patent. And you can do all this before you have spent many hours and thousands of dollars on an idea that you can’t patent.
2. Freedom to Operate Search
A freedom to operate search (often abbreviated as FTO) determines how similar your product is to existing patents, and therefore how likely you are to infringe on a patent by making and marketing your invention. You may also see this type of search called a patent infringement search or right-to-use search.
Completing an FTO search early in the innovation cycle helps R&D teams design around existing patents. Later on, the results of the search can identify whether you may need to license other patents to bring your product to market.
3. State of the Art Search
Completing a state of the art search (also known as a product clearance or patent landscape search) allows you to examine the literature related to a specific industry, rather than around a certain technology, which may be applicable across industries. Using a state of the art search helps businesses find competitors and existing products within their field. These insights allow researchers, engineers, and leaders to make strategic decisions at any point within the innovation cycle.
4. Invalidity Search
To assess the strength of a specific patent, companies will use an invalidity search. This is also called a validity search. The results of this search determine whether or not the patent holder can claim infringement. They can also be used to decide licensing fees or value. If an invalidity search finds evidence in the form of existing, yet undiscovered, prior art, the patent should not have been granted and is unenforceable. This type of patent search is completed after a patent is granted.
5. Evidence of Use Search
Some organizations actively seek out products that infringe on their patent rights. This type of search is called an evidence of use search. To find these products, an organization or inventor will review similar patents and look for evidence the patent is utilized in a way that infringes on the searcher’s rights. Evidence of use searches happen after a patent is granted and as it matures.
6. Search Database
There are several databases in which patent searching may be done. Many databases such as USPTO, Google Patents, Free Patents Online, esp@cenet etc. are freely available, while other databases such as ThomsonInnovation, Orbit, Patbase etc. are available on the basis of a subscription. Each of these databases varies in terms of at least one of the following: Data Coverage, Search Engine, Interface.
• Google Patent Search Database. The Google search engine has revolutionized how people use the Internet. …;
• Patentscope. Patentscope is a free database put out by the World Intellectual Property Organization (WIPO)…;
• The USPTO Database…;
• Espace European Database…
The following are some of the largest and most popular patent office databases.
• Canadian Patents Database (CIPO)…;
• DEPATISnet (DPMA)…;
• Espacenet (EPO)…;
• JP-PlatPat (JPO)…;
• PatentScope (WIPO)…;
• U.S. Patent Assignment Database (USPTO)…;
• U.S. Patent Center (USPTO)…;
• U.S. Patent Databases (USPTO).
However, an inventor or applicant can also conduct their own patent search. The inventor or applicant has the advantage of often being more familiar with the art to which the invention relates, including having an understanding of the common knowledge held by persons skilled in the art and the relevant terminology.
Patent drafting is a part of how to patent an idea and is the process of writing the patent description and claims. It is at the core of every patent application. When the patent is issued or allowed, the draft serves as the specification part of the document. The patent applicants have to be more aware that depending on how well the complete specification is drafted and how precisely and correctly the claims describe the invention or the imaginary ‘boundary” is set, the easier it will be to defend it against third parties.
Normally, a patent specification covers the following parts:
• Field of Invention: It generally discloses a field to which the invention generally relates.
• Background: It discloses existing devices or methods related to the field of invention, broadly known as prior art. Background generally discloses prior art and limitations or disadvantages associated with the prior art.
• Summary of Invention: It (i) discloses the objectives of the invention, (ii) generally lists distinguishing features and advantages of the invention for which protection is being sought, (iii) summarizes the main features of the invention to be claimed, and (iv) also includes a broader explanation of the invention and briefly mentions the solution provided by the invention.
• Brief Description of Drawings (if any): If the invention includes any drawings, then this section includes a description of the drawing briefly such that a reader can get an overview of what could be disclosed by the drawing. The drawings are to be prepared in separate sheets as per different guidelines of different jurisdictions. The drawing sheets are filed with the patent specification.
• Detailed Description of Invention: It explains the different features of the invention in detail. Detailed description should be written such that a skilled person in the art can understand the invention solely after referring to this description. All claimed features and their interconnections, if any, need to be explained. In other words, all the claimed features need to be well supported in the detailed description.
• Claim(s): Claims are the most important part of a patent draft. Claims decide the scope of the protection which would be awarded to the inventor when the patent is granted. Claims are broadly divided into two categories, independent claim, and dependent claim. Every patent draft or patent application must contain at least one independent claim. Claims tend to change in course of the examination (narrower in most cases than the originally filed claims.
• Abstract: It is a technical summary of the invention. Generally, the Abstract should disclose the invention sufficiently to enable a person to perform a search for anticipation. The publication of a patent application includes publication of the abstract and representative drawing, if any.
• Drawings: Not all specifications have drawings. Such drawings, if any, would be prepared and submitted to the Patent Office in separate sheets. Different jurisdictions have different rules for allowable drawing sheets.
The significance of patent drafting and its impact on the patent protection should be conveyed to the SMEs, start-ups and inventors along with the information on importance of the patent protection in general. They should be informed that in case of any opposition or challenging the validity of their patent by a third party, a poorly drafted patent will be easily invalidated.
An opposition proceeding is an administrative process available under the patent law of many jurisdictions which allows third parties to formally challenge the validity of a pending patent application (pre-grant opposition), of a granted patent (post-grant opposition).
Once the patent application is published, an opposition may be filed within a certain time period prescribed under the applicable law. The opponent shall state the grounds for opposition and submit any evidence. If no opposition is filed during that period, the substantive examination will be carried out.
In the meantime, an applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of examiners to IP Vietnam, having once paid the fee for such appeal.
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