On May 31, 2024, Myanmar's new Patent Law officially came into effect, ending the long-standing lack of a patent system. But for Chinese enterprises with patents in Myanmar, the risk of invalidity under the new system has gradually emerged: failure to participate in the ASEAN Patent Examination Cooperation Program (ASPEC) has led to a lack of regional endorsement of patent quality, the lack of substantive examination for utility models has hidden stability risks, and the special restrictions on drug patents have hidden compliance traps. This article will delve into the core rules and practical pain points of Myanmar's patent invalidation system, providing enterprises with risk prevention and control strategies throughout their entire lifecycle.

The invalidation system of patents in Myanmar is centered around the Patent Law No. 7/2019, which was promulgated in 2019 and will come into effect in 2024. The supporting administrative rules have not yet been fully introduced, presenting a transitional feature of "legal principles and practice to be clarified". Its core framework has three key points:

（1） Clear definition of statutory invalidity grounds

The new Patent Law clarifies six situations in which a patent can be declared invalid, covering two dimensions: substantive requirements and procedural compliance:

1. Failure to meet the three core requirements of novelty, creativity, and industrial applicability is the most common reason for invalid requests;

2. Belonging to legally non patentable topics, including scientific theories, computer programs, surgical treatment methods, pure aesthetic creations, etc;

3. Drug products violate special restrictions - prior to January 1, 2033, patent applications are generally not allowed, and authorized related patents can be directly challenged and invalidated;

4. The patent application documents have substantive defects, such as unclear claims and insufficient disclosure of technical solutions;

5. Failure to pay the annual fee as required or voluntary waiver by the patentee;

6. The applicant submits false materials or conceals key information, such as concealing technical sources or priority defects.

Among them, the "formal examination loophole" of utility models is particularly worthy of vigilance. Unlike invention patents, Myanmar only conducts formal examination on utility models without substantive verification of novelty and creativity, which leads to a large number of utility model patents having inherent stability defects and being easily overturned in invalidation procedures.

（2） The two-stage model of "administrative pre judicial final"

According to the spirit of the new Patent Law and the commonality of Southeast Asian systems, Myanmar adopts an invalid handling model of "administrative agency first examination, court final ruling":

1. Administrative stage: Invalid requests must first be submitted to the Myanmar Intellectual Property Authority (temporarily under the jurisdiction of a department under the Ministry of Commerce), which will conduct a preliminary examination of the reasons for invalidity and make a decision;

2. Judicial stage: If the parties are dissatisfied with the administrative decision, they may file a lawsuit with the Myanmar court, and the court's judgment shall be final.

This model is not only different from Cambodia's "exclusive jurisdiction of justice", but also different from Laos's "administrative organs can take the initiative to invalidate" rule, giving consideration to administrative efficiency and judicial justice.

（3） The retroactive rule of invalid judgments

Although the new Patent Law does not explicitly mention retroactive effect, according to the TRIPS Agreement and the practices of ASEAN countries, patents declared invalid will be deemed non-existent from the date of authorization. This means that companies' licensing contracts, infringement claims, and other actions based on the patent will lose legal basis, which may lead to chain disputes and economic losses.

2、 Program points: Practical process from application to arbitration

Due to the incomplete supporting regulations, there are still ambiguous areas regarding the specific time limit and operational norms of Myanmar's patent invalidation procedures. However, based on legal principles and regional practices, four key stages and precautions can be identified:

（1） Application for initiation: a "permanent risk period" with no clear time limit

Unlike Laos' "5-year window period", Myanmar's new Patent Law does not set a time limit for invalid requests, and third parties can challenge them at any time after patent authorization. The request requires submission of written materials, including reasons for invalidity, a list of evidence (such as existing technical literature, proof of public use, etc.), and legal fees.

Special attention should be paid to the fact that the applicant does not need to prove their interest in the patent, and any unit or individual can initiate an invalidation request, which significantly increases the risk of the patent being "maliciously challenged".

（2） Defense Response: The Core Attack and Defense of the Burden of Evidence

After receiving an invalid request, the competent authority will notify the patentee in writing to defend, and the defense period is expected to be 30-60 days (according to the standards of neighboring countries such as Vietnam). The core of this stage is the allocation of burden of proof:

1. The plaintiff shall provide sufficient evidence to prove the invalidity of the patent, such as public publications, sales records, etc. prior to the application date;

2. The defendant may submit defense materials such as priority proof, existing technology search report, annual fee payment voucher, etc. to refute the invalid claim.

For utility model patents, the defendant needs to prepare additional evidence of actual use or supplementary search reports to compensate for the stability defects caused by formal examination.

（3） Review and ruling: Technical determination relies on expert opinions

When the administrative agency reviews, it will focus on verifying invalid reasons item by item. For complex technical issues, it is expected to refer to ASEAN practices and entrust technical experts to provide opinions. The examination conclusion includes three types: complete invalidity, partial invalidity (such as certain claims being invalid), and maintaining validity.

At present, as the new system has just been implemented and there are no publicly available cases of invalid rulings, the practical scale of the review standards still needs to be continuously observed.

（4） Judicial relief: procedural efficiency to be verified

If the party is dissatisfied with the administrative ruling, they may file a lawsuit with the court. Based on the characteristics of Southeast Asian judicial practice, patent invalidation litigation in Myanmar may face problems of longer cycles and lower efficiency - similar litigation in Vietnam and Indonesia has an average cycle of 18-24 months, while Myanmar may be similar. Enterprises need to prepare in advance for long-term response.

3、 Differences in ASEAN and Pain Points for Chinese Enterprises: Special Risks that Cannot be ignored

As a member state of ASEAN, Myanmar's patent invalidation system has both regional commonalities and significant individual differences. Chinese enterprises need to focus on three major differentiation risks:

（1） Shortcomings in patent quality caused by ASPEC's absence

The ASEAN Patent Examination Cooperation Program (ASPEC) covers 9 member countries and can achieve mutual recognition of examination results to improve patent quality, but Myanmar is the only country that has not joined the program. This means:

1. When companies apply for patents in Myanmar, they are unable to utilize the examination results from countries such as China and Thailand to expedite the authorization process;

2. The lack of regional coordination in patent examination in Myanmar makes it more difficult to ensure the stability of authorized patents, and the risk of invalidation is significantly higher than in other ASEAN countries.

（2） The 10-year 'ban period' trap of drug patents

The new Patent Law clearly stipulates that pharmaceutical products shall not be granted patent rights before January 1, 2033, which is in sharp contrast to the system of most ASEAN countries. Pharmaceutical companies need to be alert to two types of ineffective risks:

1. Misjudging policy boundaries, applying for patents for drugs within the prohibited scope and obtaining authorization can easily lead to invalidation by competitors;

2. Patents obtained through "curve applications" may be challenged due to their substantive nature belonging to the category of pharmaceutical products.

（3） High inefficiency risk of utility models

Due to the adoption of formal examination system, the invalidation rate of utility model patents in Myanmar is expected to be much higher than that of invention patents. If Chinese enterprises overly rely on utility model protection for core technologies, they may face the embarrassing situation of "patents being invalidated when defending their rights". According to statistics, the success rate of invalidation of utility model patents under similar systems can reach over 60%.

4、 Response strategy: Risk prevention and control guidelines for the entire lifecycle

In response to the particularity of Myanmar's patent invalidation system, enterprises need to establish a full process strategy system of "strict application control, strong maintenance management, and fast response":

（1） Application stage: Establishing a stable foundation

1. Priority should be given to selecting core technologies protected by invention patents: to avoid potential risks caused by defects in the formal examination of utility models, comprehensive searches of existing technologies should be conducted in advance for technologies that require utility model applications, and search reports should be retained as evidence for subsequent defenses;

2. Strictly avoid the drug patent exclusion zone: Before 2033, priority should be given to protecting drug related technologies as trade secrets or trademarks. If it is necessary to apply for a patent, it is necessary to first verify whether it complies with the TRIPS Agreement and the special exception provisions of the Myanmar government;

3. Make full use of the priority system: Based on Chinese patent applications, make priority claims and use China's substantive examination results to enhance the stability of Myanmar patents, reducing the risk of being invalidated on the grounds of "lack of novelty".

（2） Maintenance phase: Dynamic monitoring and compliance management

1. Establish a patent ledger and annual fee reminder mechanism: set a warning period of 3 months in advance for annual fee payment to avoid patent invalidation due to missed fees, and retain complete payment vouchers for verification;

2. Regularly conduct patent stability assessments: search relevant existing technical literature every quarter, pay special attention to competitors' publicly available technologies, and promptly identify potential invalidation risks;

3. Monitor industry patent dynamics: track Myanmar patent announcements and invalidation rulings (to be made public), assess the stability of suspected infringing patents, and initiate invalidation challenges in a timely manner.

（3） Response phase: Efficient response and evidence gathering

1. Quickly establish a response team: Within 7 days of receiving an invalid notice, form a special team of "local lawyers for technical personnel" to clarify the defense strategy and evidence collection list;

2. Targeted preparation of defense materials:

① Faced with the accusation of "lack of novelty": submitting priority documents, proof that has not been publicly disclosed before the application date, and analysis reports that do not constitute a conflict with existing technology;

② To address the invalidity of utility models: supplement and submit actual usage evidence such as sales records and production contracts of patented products to support the practicality and innovation of the technology;

③ Involving drug patent disputes: issuing government approvals or TRIPS compliance certificates that comply with exception provisions;

3. Make good use of expert opinions: For complex technical issues, hire technical experts from China and Myanmar to provide opinions and enhance the persuasiveness of defenses.