I was recently invited to give a webinar to the Chartered Institute of Patent Attorneys on the topic of “Understanding SPCs in Different Countries”.

The plan was to undertake a survey of the patent laws in various South East Asian Countries, including ASEAN, focussing on whether it is possible to obtain extensions of the term of a patent covering a pharmaceutical or biologic, where there had been a delay in obtaining regulatory approval.

The question the webinar would answer is: are Supplementary Protection Certificates (SPCs) and Patent Term Extensions (PTEs) available in Brunei, Cambodia, East Timor, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand or Vietnam?

What is a Patent Term Extension or a Supplementary Protection Certificate?

A patent term extension (PTE) or a supplementary protection certificate (SPC) extends the term of protection of a patent beyond its original expiry.

This extension of the patent term compensates the patentee for time lost during the regulatory approval process, particularly in industries like pharmaceuticals and biotechnology, where lengthy testing and approval periods can significantly reduce the effective patent life. PTE aims to restore part of the exclusivity period, allowing patent holders to maximize their commercial returns on their innovations. The specific provisions and eligibility criteria for obtaining a patent term extension vary by jurisdiction.

Singapore

The Singapore Patents Act contains provisions for extension of the term of protection of a patent to take into account delays in obtaining marketing approval for pharmaceutical products in Singapore.

Cambodia, Indonesia, Laos, Malaysia, Philippines, Thailand and Vietnam

Supplementary Protection Certificates and Patent Term Extensions are not available in Cambodia, Indonesia, Laos, Malaysia, Philippines, Thailand or Vietnam.

Interestingly, in Vietnam, there is a mechanism for compensating patent owners for regulatory delays in that any maintenance fees payable for keeping the patent alive during the term of delay are waived. The term of the patent is unchanged, however.

East Timor

There is no patent system in place at the moment in East Timor.

Brunei

The Bruneian Patents Act contains provisions for patent term extensions for delays in regulatory approval, similar to those available in Singapore.

Acknowledgements

We are grateful to our ASEAN and South East Asian friends at CCW Partnership (Brunei), Abacus IP (Cambodia), Tilleke & Gibbins (Indonesia), Raja, Darryl & Loh (Malaysia), Cruz Marcelo & Tenefrancia (Philippines), Tilleke & Gibbins (Thailand) and Kenfox IP (Vietnam and Laos) for their assistance in compiling this information.

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