IP transactions in life sciences in ASEAN countries: IP ownership and sharing

In the second of a three-part series exploring key aspects of IP transactions in life sciences in the Association of Southeast Asian Nations (ASEAN) countries, we will clearly state the terms of IP ownership and sharing, having focused on data export controls in part one.

ASEAN countries generally do not have mandatory IP ownership and sharing provisions, such as China has for human genetic resources. Ownership is stipulated in the respective IP laws.

Singapore

In Singapore, without an agreement stating otherwise, each co-owner (whether Singaporean or foreign) of a patent is entitled to an equal undivided share in the patent, and a co-owner is entitled to do any otherwise infringing act for his own benefit without the consent of (or the need to account to) any of the other co-owners. Any co-owner may also bring proceedings for infringement without the concurrence of the others, but the other co-owners shall be made parties in these proceedings. However, a co-owner may not, without the consent of the other co-owners, grant a licence under the patent or assign or mortgage a share in the patent.

Malaysia

For intellectual property generated through international collaborations, in the absence of any agreement to the contrary, the local and foreign entities jointly own the same. Joint owners may separately assign or transmit their rights in the patent, exploit the patented invention and take action against any person exploiting the patented invention without the other owners' consent, but may only jointly withdraw the patent application, surrender the patent or conclude a licence contract.

Indonesia

The rights to an invention produced by several persons shall be jointly owned by them, unless agreed otherwise. In addition, for an innovation generated from the collaborative effort of a foreign entity and an Indonesian entity, it is required that all of the inventors from both entities are listed in the patent application.

The Philippines

When two or more persons have jointly created an invention, the right to a patent shall jointly belong to them. Each of the joint owners possesses an undivided share of the patent and is entitled to personally exploit the invention for their own profit. However, none may grant licences or assign their right, title, interest, or part thereof, without the consent of the other owner(s), or without proportionally dividing the proceeds with the other owner(s).

Thailand

When an invention has two or more creators, they shall apply for a patent jointly. In addition, in the absence of any provision to the contrary, a joint owner of a patent may exercise rights without the consent of the other joint owner(s), but they may not grant a licence or assign the patent without all joint owners’ consent.

Vietnam

The new intellectual property generated from collaborative efforts shall be jointly owned, unless otherwise agreed.

India

A patent may be granted to two or more persons, each of whom shall be entitled to an equal and undivided share in the patent, unless an agreement to the contrary exists. Further, with reference to international collaboration, the Indian Council of Medical Research Guidelines provide that Indian participating centres must function as partners in terms of ownership of samples, data, analysis and IP rights.