Sunday, September 30, 2018
Indonesia has caused a stir in the patent world by asking patent owners to pay annuities for patents they no longer want – see here for previous background.
The new law put an end to the issue at least going forwards. However the government seems to be pushing ahead with trying to force patent owners to pay old annuity debts. The rule was that for unpaid annuities, after 3 years the patent was deemed void, but the annuities were still payable. The only way around it was to notify of the abandonment. But the unpaid annuities became a debt. The patent office issued letters of demand, and the debts were transferred to KPNL a state body with responsibility for recovering them.
In September 2018 the Patent Office wrote to many patent owners copying embassies. A 6 month payment deadline was given. The threat was that they would no longer examine their patent applications if patentees did not pay the old debts.
What happens next is anyone’s guess. Indonesia is the only country in the world applying such a draconian interpretation of annuities. Recognizing that this was inappropriate, it was ceased under the new law. But for some reason they are insisting on pursuing the old debts. We assume diplomatic complaints will soon follow.
Monday, September 17, 2018
The Indonesian litigation over the PIERRE CARDIN mark has finally come to a conclusion. See here for the previous reports. In 1974 the mark PIERRE CARDIN was registered in class 3 then later assigned to Alexander Satryo Wibowo. The crux of the case was whether the case had passed the 5-year deadline for cancellation actions and the extent of the available evidence bask in the 1970s o prove bad faith. Alexander won at first instance and on appeal.
Pierre Cardin filed a reconsideration appeal to the Supreme Court based on new evidence (novum). The Supreme Court rejected the appeal. The court did hear the new evidence submitted but rejected the case as being a repetition of the earlier case.
Reconsideration appeals are always difficult. New evidence needs usually to be compelling. The problems in such cases usually begin with the earlier cases having insufficient evidence; the loss then becomes harder and harder to overcome over time.
Monday, September 10, 2018
In June 2018, a new Competition Law was passed to replace the 2004 law. It takes effect in July 2019. Antic competitive practices by local and foreign entities, including public bodies are covered including offshore practices that harm competition in Vietnam. the law will be regulated by a new National Competition Committee (NCC) and Competition Investigation Agency (CIA) both under the Ministry of Industry and Trade. Anti-comparative contracts and economic concentration and market abuse are the main thrust of the law. IP contracts, and control of IP will likely be areas that could affect IP holders.
Wednesday, September 5, 2018
A UN meeting in Bangkok this week seeks to hammer out rules for the Paris Agreement on Climate Change. The so called Rulebook for the Paris Agreement must be negotiated this year, to reduce global warming. The contentious issue of funding for projects to achieve the Paris Agreement‘s target reduction in global temperatures are the main sticking point. There have already been ructions at the Green Climate Fund following Trump’s US withdrawal and the consequent loss of US funding.
What has this go to do with IP? Well the principle means of achieving the Paris Conventions goals is the development and deployment of many new technologies to reduce environmental harm. Secondly countries and companies will need to measure their impact, through use of environmental technologies and eco-brands.
For SE Asia this is critical, given their developmental positions. As fast industrializing nations and therefore major polluters SE Asian countries will need to develop, license in and/or seek funding for the advances which will achieve the Paris Agreement goals. The global IP ecosystem will need to help support and measure this.
Thursday, August 23, 2018
All things Korean from K Pop to hairstyles to luxury Amore Pacific and LG Household beauty products are in vogue across Asia and beyond. This is leading to a new type of copycats. Fake fragrances are sold in fake stores (see photo) around the region. Dozens of such shops have appeared in Vietnam recently. Mumuso is a Shanghai based retailer of Korean style goods. Its stores use Korean script, staff costumes and music. The allegation is that it sells Chinese sourced fake Korean goods. It is rapidly expanding and now the Shanghai company is opening in Australia. And even it is being copied across Asia, with numerous copy retail trademark registrations for Mumuso appearing in other Asian trademark registries. But there is no original Mumuso brand in Korea!
Korean government agencies such as the Korea Trade-Investment Promotion Agency and the Korea Creative Content Agency are very concerned. They are encouraging Korean firms to take action to stop the sale of copies of their goods and the issue has also been raised with the Blue House (the President’s office in Seoul). The Korean IP communities is in heated discussion on how to protect the “Korean Wave” (a.k.a. Hallyu) as Korean’s own national IP.
Monday, August 13, 2018
- 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.
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 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
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
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
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!