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Thursday, October 9, 2014

The Trans-Pacific Partnership and IP

The controversial Trans-Pacific Partnership (TPP) is still off and on. TPP negotiations in Washington this week on various free trade matters including IPRs broke down again.  The TPP is an initiative from the United States which aims to grow trade and investment in Asia-Pacific. The partners are Australia, Canada, Chile, Japan, Mexico, New Zealand, Peru and from SE Asia, Singapore, Brunei, Vietnam and Malaysia.

Controversially the TPP includes stronger standards for IPR protection and a number of emerging 21st century IP issues. However its application to emerging economies is worrying many people.

The TPP agreement previously made the news for the wrong reasons. Secretive, unbalanced, leaked by Wikileaks, contentious and so on. It includes a number of emerging markets including like Vietnam which have IP systems far less developed than the others and perhaps not able to cope with sophisticated issues.
Areas of international public concern relate to medicines, publishers, ISPs, criminal offences and biological patents. They include:
restrictions on the making of ‘temporary copies’ of copyright works in electronic form
  • allowing the patentability of surgical methods
  • placing limitations on access to affordable medicines
  • making ISPs responsible for policing copyright infringement
  • lengthening the term of copyright protection.
Criticism from the online community has been directed towards the so-called hard line approach being taken by the US. The access to medicines lobby complain that these provisions will harm public health. So far the draft chapter seen from the WikiLeaks release is complex and convoluted. The negations are broken but not over yet.

Wednesday, October 8, 2014

Philippines IP Director lays out plans for improving IP enforcement

At an AmCham Intellectual Property Rights Committee Meeting in Manila this week, The IP Office DG Ricardo Blancaflor talked about "Current and Future Plans for Intellectual Property Enforcement". He mentioned 
1. Removal of the Philippines from the USTR Special 301 watch list after ‘sustained actions’
2. Enforcement issues still faced today include: judicial system and legal infrastructure weaknesses, limited IP enforcement powers, rampant digital piracy and general availability of counterfeits in the market.
3. In view of the 2015 ASEAN integration, DG identified the following regional action plan:

 a. Information awareness activities on enforcement
 b. Publicly available statistical informoation on IP enforcement
 c. Documenting the reduced movement of pirated goods and counterfeits
 d. Private sector involvement in antipiracy and information awareness campaign
4. He summarized efforts of the IPO in 2014:
 a. Increased copyright enforcement actions through the NCIPR
 b. Streamlining judicial procedures
 c. Capacity building
 d. Information campaigns

Several other points were discussed:
  • The Bureau of Copyrights is still not established due to budgetary delays 
  • More anti-counterfeiting training / brand familiarization for Customs is needed
  • There is ongoing dialogue between FDA and IPO concerning patents. DG didn’t want to elaborate and simply said they’re waiting for outcome of dialogue.
  • There will be an IP enforcement summit on 20 October 2014.
The Philippines IPO is good at IP holder outreach and continues to make steps to improve the IP enformcenet system.

Tuesday, October 7, 2014

New Thai patent covers Ebola treatment

Many people are working furiously to develop treatments for the Ebola virus which has killed more than 3,000 people in West Africa. Thailand's Mahidol University's Faculty of Medicine at Siriraj Hospital in Bangkok has developed a new formula that will trigger antibody production to fight the disease. The hope is that it may lead to a treatment for use after infection, as opposed to a pre-infection vaccine, to stimulate the body's natural immune system to fight off infection. Mahidol University has applied to the Thai IP department for a patent to be granted.  It will be interesting to see if the grant will take as long as many other medical patents do to get granted given the urgent need.

Friday, October 3, 2014

Enforcement provisions in Indonesia's new copyright law

Below are the additions to the Indonesian copyright enforcement regime in the newly passed Copyright law.  
Landlord liability

There is a welcome provision on the creation of landlord liability.

Online infringement

In respect of online infringement, there is also now a dedicated section that gives new powers to the Ministry of Information to block access to infringing materials on websites.  The implementation of this provision requires further regulations to be passed.  Depending on what the regulations requires, it may provide copyright owners with additional tools to tackle online infringement.

Complaint based offense

Copyright infringement is now classified as a complaint based crime, bringing it in line with all other IP rights – trademarks, industrial designs and patents. The advantage would be that in theory, the police or enforcement department in the IP office has to investigate an offense when a complaint is filed. This will also allow the copyright owner to have better visibility and involvement in the criminal complaint process and be in a position to query or withdraw the complaint, if needed.

Criminal sanctions

Under the criminal provisions of the new law, the mens rea element has been removed. The old law requires the mental element of "intentional act". This suggests that it may be easier to secure conviction under the new law.

Under the new law, the punishment has been adjusted as follows:

Offending act

Old law (Article 72)

New Law (Article 113)

Copying and distribution  commercially

Up to 7 years and/or maximum of IDR 5 billion

Up to 4 years and/or maximum of IDR 1 billion

Copying and distribution in the form of piracy


Up to 10 years and/or maximum of IDR 4 billion

The explanatory notes do not provide further clarification on what constitutes "form of piracy" that warrants the higher sanctions.
The practical enforcement environment remains Indonesia's biggest IP challenge, with criminal action remaining extremely challenging. The addition of a new ministry to handle online enforcement hopefully adds a new dimension.


Wednesday, October 1, 2014

Philippines Supreme Court squashes search warrant quash applications

A common problem in the Philippines after raids is that defendants try to overturn the search warrant application on the basis that is was flawed. It is almost a standard tactic by some defense attorneys. If they fail, they then appeal, dragging the dispute out many years. The problem is that the courts would repeatedly grant such quash orders, destroying the entire raid, usually on the basis that, in their 'after the event' opinion there was no probable cause, most commonly because the investigation process was not done properly. Even when counterfeit goods were in fact found!
A new case has hopefully put the issue to rest. New Fields Asia Pacific was raided by the police on a complaint from Microsoft and Adobe based on search warrants. The Manila Regional Trial Court later quashed the warrants and directed that the seized items be returned. The RTC said that the search warrants were defective because they failed to specify which computers were to be searched for the pirated software. The investigating officer had no personal knowledge of the exact location of the installed software, and had relied on screen shots acquired from a confidential informant. Thus without personal knowledge there was no probable cause. The Court of Appeals later upheld the RTC ruling.

The Supreme Court has now overturned the decisions stating that the lower courts failed to focus on the substantive issues. Lets hope the courts will follow this and in future successful raids will cease to be overturned on what is in essence a technicality.

Vietnam seeks to hire foreign R&D talent

A new Vietnamese Government decree is coming into force which will enable overseas Vietnamese and foreign experts to be hired as leaders of science and technology organisztions and projects in Vietnam.  In a bid to help prioritize research and development, the Vietnamese government is seeking to attract expertise from abroad. They will simplify visa, work and family procedures in a bid to attract talent.

The key conditions for such overseas Vietnamese and foreign experts include that that they own patents or plant varieties in relation to key technologies that Vietnam wishes to encourage, or that they have held relevant R&D management positions.

Vietnam has been building a catalogue of policies to encourage R&D, having seen how weak it's technology position is in SE Asia - see here for more details.

Monday, September 29, 2014

Philippines freezes copy Starbucks mark

The Bureau of Legal Affairs (BLA) of the Philippines Intellectual Property Office has made a decision in favor of Starbucks against Cafe de Manila. The latter made a trademark application for a slogan “The Frap Bar Everyone Deserves and Designs” for coffee products.
Starbucks owns the trademark FRAPPUCCINO, one of its most popular drinks brands.  The BLA decided that Frap was similar because it constitutes a prefix or dominant part of Starbucks' registered trademark FRAPPUCCINO. 

The containment of a trademark entirely inside another is a regular headache for IP offices. The extent to which added material in the senior mark renders it different is not usually considered. Although here the focus on the prefix might be right given Starbucks' long and widespread use.

Thursday, September 25, 2014

New Indonesian copyright law provisions

On 16 September 2014, the Indonesian House of Representatives passed the Bill on Copyright to replace the current Law no. 19 of 2002 on Copyright. The new law introduces a number of changes to copyright, such as :

a. New protected works such as data compilations, video games and traditional cultural expressions;
b. Moral rights and economic rights are separate forms of copyright;
c. The duration of copyright protection is extended from 50 years after the creator’s death to 70 years;
d. Copyright infringement is specified to include landlord liability and non commercial circulation of online content is now an exception to infringement
e. Management of collective rights is covered;
f. Criminal copyright infringement now requires a formal complaint from the rights holder (previously the police could act ex officio).


Thursday, September 18, 2014

Copyright royalty collections in the Philippines

Law 10372 amended the Intellectual Property Code to provide for collective rights management organizations (CRMOs) to collect on behalf of artists, performers, dancers, musicians, composers, authors and publishers, royalties for the public or commercial use of their copyrights. It applies to a variety of industries. There are 4 CRMOs at present in the Philippines:


FILSCAP - Filipino Society of Composers, Authors and Publishers, Inc.
PRSP - Performers Rights Society of the Philippines
FILVADRO – Filipino Visual Arts and Design Rights Organization
FILCOLS – Filipinas Copyright Licensing Society, Inc.

The all serve slightly different functions in terms of the copyrights they manage.

The Performers’ Rights Society of the Philippines (PRSP) is now seeking official accreditation as a CRMO by the Intellectual Property Office of the Philippines (IPOPHL). This will pave the way for it to collect royalties for the commercial or public use of its members’ performing rights. CRMOs are ultimately to be regulated by a state agency, the Bureau of Copyright, which will be operational later in 2014. 


Tuesday, September 16, 2014

New copyright law passed in Indonesia

The Indonesian Parliament today passed the long awaited amended Copyright Law. The draft had been in Parliament for a year, and the resolution to pass it was followed by local signer expressing his creativity by singing one of his songs in Parliament.

Trademark and Patent amendment bills are also awaited.