Monday, August 13, 2018

Singapore's new Customs powers

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Under the EU Singapore Free Trade Agreement, Singapore must improve its Customs IP border protection system. A new Intellectual Property (Border Enforcement) Bill passed into law on 9 July. It will improve IP border enforcement measures in the following ways:

  • Allow upon IPR holders’ requests seizure of exports suspected of infringing copyrights and trademarks (imports can already be seized)
  • Allow upon IPR holders’ requests seizure of imports and exports suspected of infringing registered designs
  • New powers of disclosure by Customs to IPR holders of names and contact details of persons connected to the import/export of seized goods necessary to start IPR infringement actions. This is a narrow exception to Customs’ normal obligations of confidentiality and can only occur after seizure and document proof of rights and payment of security deposit.
The precise timing of the above new powers depends on the coming into force of the Singapore EU FTA, currently estimated to be mid-2019. Only the third of the above on information disclosure starts immediately. 
Singapore is often criticised for failing to stop infringing goods passing through its ports. It is the largest transhipment port in the world and Economist Intelligence Unit research suggests a vast trade in illicit goods occurs.  These new rules don’t touch goods in transit, but at least exports and imports can be properly controlled. One key main challenge is the cost of bringing expensive civil litigation proceedings against freight forwarders/shippers.

Tuesday, July 31, 2018

Indonesia's controversial patent implementation rules are enacted

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Indonesia's controversial patent working requirements are now going to be enforced. The Patent Law requires that a granted patent must be worked in Indonesia, otherwise it can be revoked by the government. “Working” a patent means making a product or using the process in the patent. The requirement to use the patent locally was found in the old 2001 Patent Law but there was no sanction for non compliance. 

Under the revised 2016 Patent Law, revocation of such a patent could be initiated by a party representing national interest. First there was a draft Ministerial regulation setting out details. This was followed by protests from business groups and foreign governments. So the Indonesian government circulated a draft presidential decree to clarify that the application of Article 20 would be softened by allowing for patent holders to apply for temporary waiver from compliance where they are incapable of working a patent or it is not economically viable to do so.  The aim was to satisfy high tech industries who are unable to manufacture complex products in every country. Pharmaceuticals and electronics/telecoms products are obvious examples.

In July 2018 Regulation 15/2018 was issued by the Minister of Law and Human Rights. IP holder concerns appear to have been largely ignored. The Regulation states that it aims to support efforts to transfer technology, attract investment and provide jobs. Now a patent holder may apply for a dispensation within three years from patent grant if it cannot work its patents in Indonesia. The maximum period allowed for a dispensation is 5 years. However further extensions may be possible if the reasons remain valid. The Regulation is brief and lacks detail.
One question that arises is who can revoke a patent on this basis? The IP office has orally said that the "party representing national interest" could be wider than just the public prosecutor, who represent national interest issues, and that even a private entity or person might be able to revoke on this basis. 

Another question relates to patents granted more than three years ago. The patent office has said that this cannot apply to patents granted before the 2016 patent law revision i.e. patents granted under the old law.  Right now the granted patents that companies are most concerned about are those under the existing law. But after 2019 new granted patents will start to fall victim to the rules. 

Further the proposed waiver of a maximum allowable period of five years will not even last the length of a patent. For many fast moving technologies that might be enough, but not for many. Although the 5 year period appears to be extendible, the details are scant.

In any event the rules will apply to vast swathes of Indonesian patent applications since in practice not that many products can be made in Indonesia. There are complex reasons for the lack of investment in technology in Indonesia, and the patent law is only one small element. 

So companies will need to decide one of several unattractive options: 

a. File and apply for waivers - that just increases costs and may need to be repeated. Careful calculation of the timeline relative to the technology implementation globally will be needed. 
b. File and don't apply for a waiver but accept that patents may be revoked. What is not clear is who by and when, at this stage. 
c. Don't file patents in Indonesia at all if you cannot manufacture here. 

None of these options are good for patent applicants. Patent holders will simply face higher costs  and higher invalidity risks than in other countries. It will not help Indonesia in the sense that this won't suddenly enable or force companies to manufacture products in Indonesia. The main reasons for that, are practical commercial matters like foreign investment in a sector is restricted by the negative investment list, or employment costs are high due to the difficulty hiring and firing staff. Using the patent law alone to try to force foreign investment will achieve the reverse – it will increase the cost and complexity of business in Indonesia. 

To decide what next, patent holders will need to analyze their patent portfolio for at risk patents, prioritize their technologies/patent families and then decide how to proceed. 

Monday, July 23, 2018

IP pendency and ease of doing business in the Philippines

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There is a lot of talk right now in SE Asian governments on how to slash bureaucracy, to ease doing business, make countries more attractive to investors. In the Philippines, this leads to an interesting clash with IP.

Republic Act 11032 or the Ease of Doing Business (EODB) and Efficient Government Service Delivery Act of 2018, is a laudable new law designed to do exactly that. However it has caught the IP Office of guard. IP transactions such as Patent and Trademark examination cannot possibly be done within the timeframes set out in the EODB. The IP Office says its most complex transactions take many months sometimes over a year. However EODB mandates that government departments must complete their transactions within one of 3 time limits depending on the nature of the transaction. The time limits range from 3-20 days. Civil servants who don't comply can be subject to disciplinary action and ultimately fired.

The IP Office complains that its processes are done to international standards and given the need for global prior art searches or trademark similarity analysis, they cannot meet the EODB so are asking to be taken outside its remit.  Whilst this seems reasonable, it is also a serious question, how pendency can be improved. Small businesses not used to IP registration are the best barometer - they usually laugh incredulously when told it can take a couple of years to register a trademark in SE Asia!

Monday, July 16, 2018

Innovation benchmarks in SE Asia

The Global Innovation Index, annual research from Cornell University, INSEAD and WIPO on innovation in economies is positive for Asia in 2018. The research measures 80 factors that lead to ability to innovate new technologies and put them to use. Factors include high-tech imports, quality of technical publications, R&D expenditure, overseas investment, numbers of scientific researchers, educational enrolment and numbers of patents and trademarks.

SEA is showing one of the biggest improvements this year. Singapore sits in 5th place, as one of world's most innovative states. Thailand one of the big movers this year now sits in 44th; with Vietnam in 45th. Malaysia is in 35th place. ASEAN policies, local policy improvement and greater economic dynamism are cited as the reasons. Philippines at 73rd and Indonesia at 85th lag behind.

Monday, July 9, 2018

Indonesia's Madrid regulation

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Government Regulation No. 22 of 2018 on Registration of International Trade Mark Madrid Protocol (“Regulation”) was enacted and took effect on 6 June 2018.

In summary the Regulation contains the following:

-           Applications can be filed via electronic or non-electronic forms and can be in English.
-           An Applicant should be an Indonesia citizen, domiciled or have a legal domicile in Indonesia, or have clear industrial/commercial business activity in Indonesia.
-           the IP Office conducts a formality examination within 5 days of receipt of an International Application.
-           the IP Office notifies the International Bureau within 2 months from the date of receipt of an International Application.
-           the IP Office shall notify the International Bureau of the result of the substantive examination within 18 months from the date on which it was notified of an International Application.
-           An Objection against provisional refusal can be submitted within 30 days from the date of the refusal notification from the International Bureau  
-           IR Holders can file a transformation request within 3 months where the IR is cancelled due to the termination of the Basic Registration or Basic Application in the country of origin per the provisions of the Madrid Protocol
-           IR Holders can replace existing trade mark registrations in Indonesia with an International trade mark designating Indonesia in certain circumstances. Both registrations do co-exist but the IR Holder gains protection from the initial rights based on the national registration in Indonesia.

According to WIPO’s Madrid Monitor database, there are 15 international trade mark applications originating from Indonesia already. Some 2,227 applications have already designated Indonesia. US, EU and Japan lead the designations. This is despite the system not being fully set up yet!

Tuesday, July 3, 2018

World Cup litigation in Thailand kicks off again

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Every FIFA World Cup disputes erupt in Thailand over broadcast rights. See here for the 2014 dispute.

Now in 2018 Bangkok’s Central Intellectual Property and International Trade court has had to weigh in on it. TrueVisions had again licensed certain broadcasting rights from FIFA.  There are several free to air channels (as in most countries), which in Thailand include Army''s Channel 5, True4U Channel 24, and Amarin TV Channel 34. Thailand's National Broadcasting and Telecommunications Commission’s (NBTC) has ‘must carry’ rules which require free to air World Cup content (since many years ago, it was pay only, to the anger of Thai football fans). 

For the Russia 2018 World Cup TrueVision showed matches in higher quality 4K ultra high definition, apparently the first in the region. Its Channel 400 gives high speed 50Hz refresh rate coverage for Gold and Platinum subscribers. TrueVisions claim it is 20 times clearer than existing standard systems. 

Meanwhile telecoms operator, Advanced Info Services’ (AIS) companies have been showing matches through their App based content channels for AIS phone subscribers in Thailand.  They had been rebroadcasting World Soccer Cup 2018 programs from free TV stations including TV channel 5 HD , True 4U channel, and Amarin TV Channel 34 via the  AIS PLAY and AIS PLAYBOX Apps. 

TrueVisions sued AIS subsidiaries Mimo Tech and Super Broadband Network in the IP/IT court for infringement of its broadcast rights. Although AIS is rebroadcasting games which are available free to air, TrueVisions argued that it too as licensee or the broadcast owner FIFA AIS had to provide consent for AIS to stream the games. The IPIT court agreed that mobile streaming of the football games breached TrueVisions’ rights for the tournament. The court ordered the two AIS companies to stop broadcasting the matches on 28th June.

Sunday, July 1, 2018

EU FTAs in SE Asia

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While the US busies itself issuing tariffs for IP violation, the EU is quietly getting on with a series of IP agreements in Asia. The EU Indonesia Free Trade Agreement (which contains a substantial IP chapter) is currently under negotiation. Four rounds of talks have been held so far. 

Meanwhile the Vietnamese Embassy in Belgium, in collaboration with the European Union (EU), the EU-Vietnam Friendship Parliamentarians’ Group and the European Institute for Asian Studies, held a workshop in Brussels on June 20 to speed up the signing and ratification of the EU-Vietnam Free Trade Agreement. Among the issues Vietnam is working to resolve to take advantage of the agreement, are a number of intellectual property areas. 

Apart from that in Malaysia seven rounds of EU Malaysia negotiations have been held but the FTA is on hold and a stocktaking exercise is being finalized to assess the prospect to resume negotiations. Thailand and Philippines are also in FTA negotiations with the EU now. 

Negotiations for a region-to-region FTA with ASEAN were paused in 2009 to give way to bilateral country FTAs, which will then be the building blocks towards a future region-to-region agreement.