Brunei Darussalam - New Patents Order, 2011

We have just learnt that a new Patents Order, 2011 (S57/2011) has come into force in Brunei Darussalam, with effect from 1 January 2012. This legislation repeals the previous patent legislation ('The Inventions Act', Chapter 72).

The main provisions of the new Patents Order are as follows:

- Patents may only be granted in respect of inventions which satisfy the criteria of novelty, inventive step and industrial applicability. Previously, patent applications were not examined on substantive grounds, but were merely advertised for opposition by any interested third party. Under the new legislation, provisions are made for applications to be searched and to be examined on both formal and substantive grounds. It is possible to avoid the need to pay a search fee by filing a copy of a search report which has issued in respect of a corresponding patent application filed elsewhere.

- The novelty requirement is absolute (worldwide), although disclosures within the 12 months immediately preceding the filing date which result from various acts constituting breaches of confidence by a third party are discounted.

- Methods of surgery, therapy or diagnosis are excluded from patentability.

- Patents are granted under the new Patents Order for a term of 20 years from the filing date, and annuities are due in respect of the fifth and each subsequent year from the filing date. A grace period of six months is provided for the late payment of annuities. However, it appears that annuities are not yet being accepted in practice, and will not become payable until such time as the required Patent Rules have been promulgated.

- It appears that the official fees have been increased. We are currently looking into this in order to ascertain any changes which have occurred.

- Transitional provisions are included in the new law, which specify that any existing application for the reregistration of a granted UK (including EP(UK)), Singaporean or Malaysian patent which has been filed under the previous legislation will be granted as if the previous law had not been repealed. Furthermore, where such a UK, Singaporean or Malaysian patent has been granted within the 36 months immediately preceding the date of commencement of the new Patents Order, 2011 (1 January 2012) and is still in force at that date, an application for reregistration of that patent may be filed within 24 months of the date of commencement, i.e. before 1 January 2014. Finally, where an application for a UK, Singaporean or Malaysian patent has been made before the date of commencement of the Patents Order, 2011 and is pending on that date, the applicant may apply to reregister the eventual foreign patent within 12 months of the date of issuance of that patent.

- Any patent granted in Brunei under the previous law and still in force on commencement of the new Patents Order, or any patent filed and granted under the transitional provisions, will be treated in accordance with the provisions of the new Patents Order. We therefore believe that annuity payments will be required in order to keep such a patent in force. However, we are currently awaiting clarification from the Registry as to when such renewal fees become payable, and whether any back fees will be due.

- The new legislation provides that priority may be claimed from earlier filed patent applications under the Paris Convention. The law also includes provisions which will allow for the processing of PCT applications when Brunei has acceded to the Patent Co-operation Treaty.

We will provide further details on our website when we have received clarification of the above points. In the meantime, please do no hesitate to contact us if you have any questions.

6th January 2012

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