Prior to 1 January 2012, patent protection in Brunei was obtained through the re-registration of a patent granted in the United Kingdom, Malaysia or Singapore. On 1 January 2012, a new Patents Order was enacted in Brunei, which discontinued the re-registration process in favour of a regular patent application filing process. However, the new Patents Order has transitional provisions which still allow for the re-registration of a United Kingdom, Malaysia or Singapore patent within 1 year of their grant, provided such a patent has a date of filing before 1 January 2012.
The transitional provision, section 115(4)(a) of the new Patents Order, states that the term for re-registered patents is 20 years from “the date of the patent in the United Kingdom, Malaysia or Singapore”. In Civil Appeal No. 10 of 2013 (Winthrop Pharmaceuticals (M) Sdn Bhd and Shionogi Seiyaku Kabushiki Kaisha), it was argued whether the term “the date of the patent” in section 115(4) meant the date of filing or the date of grant of the re-registered patent. The Court of Appeal construed the “date of the patent” as the date of grant.
As a result of this decision, the Brunei patent office now calculates the renewal of all Brunei patents, obtained by re-registration, from the date of grant of the re-registered United Kingdom, Malaysia or Singapore patent. A patentee who is paying renewal fees based on the previous scheme, which calculated the renewal from the date of filing of the re-registered patent, can now pay renewals under the new scheme upon request. Should the renewal be calculated from the date of grant, a grace period that expires on 1 July 2015 is given for late payment, without the imposition of any late fees. Nevertheless, the patentee can choose to still remain to pay renewals under the previous scheme.
Importantly, the Court of Appeal decision also means that Brunei patents, which were believed to have already expired under the previous term calculation from the date of filing of the re-registered patent, now possibly have a new lease of life. However, the Brunei patent office appears to have not yet given clear guidance on how such Brunei patents are to be handled. For instance, would these Brunei patents be automatically in force for the remainder of its new term, if the patentee had already paid all the relevant renewal fees for the entire term of the Brunei patent – but under the previous scheme; or would the patentee still need to pay renewal fees, despite having already made such payment? We will provide an update should there be any development.