Thursday, December 6, 2018

New IP treaties in the works will matter for SE Asia

Image result for Asia pacific map The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), (formerly the Trans-Pacific Partnership (TPP) before Trump pulled the US out) will come into force in 2019. The 11 state deal includes 4 ASEAN countries Singapore, Brunei, Malaysia and Vietnam as well as 7 other Asia-Pacific countries - Australia, Canada, Chile, Japan, Mexico, New Zealand and Peru. With China and Japan that makes this deal over 15% of world trade and CPTPP the third largest free trade area in the world after NAFTA and the EU. Singapore and Vietnam ratified earlier in 2018. Both will need to make legislative amendments (Singapore has already begun that). 

The IP Chapter has the most comprehensive IP standards of any FTA and includes extra jurisdictional provisions on theft of IP by corporations operating abroad. It also has what are known as TRIPS Plus provisions. These include relating to subject matter patentability scope, patent term extensions for regulated products, data exclusivity (esp. for pharma and agrochem products), patent linkages (to regulatory approvals), and more robust enforcement measures (which in general TRIPS has failed to achieve).

Another trade deal is the Regional Comprehensive Economic Partnership (RCEP) is a proposed free trade agreement (FTA) between the ten ASEAN members and six which have existing FTAs with ASEAN including Australia, China, India, Japan, South Korea and New Zealand. This will ultimately comprise 40% of world trade so will become the biggest FTA yet. Negotiations are close to a final agreement. 

RCEP has a comprehensive IP chapter and in general is expected to seek to achieve similar standard to the CPTPP in many of the areas described above. The arguments over the extent of patenting, access to medicine made in countries that signed the CCPTPP are now playing out in the remaining countries looking at the RECP.

A major concern is that RCEP is driven by China and countries that are looking at whether to join, such as Thailand, worry that it may threaten their US relations.

Thursday, November 29, 2018

Singapore digital piracy - taking on the set top box market

Image result for kodi set top boxAcross Asia, new forms of content delivery systems are creating new forms of piracy. The movie and content industry’s efforts to attack these are illustrated by new IP cases. The High Court in Singapore ordered several Internet Service Providers (ISPs) to block access to links which provide pirated content such as movies, TV shows and live sports to new TV devices.

Home entertainment devices such as set top boxes and illicit streaming devices (“ISDs”) are increasingly used to access pirated content due to their “open source” nature. Apps or “Add-Ons” offering pirated content can be easily loaded onto ISDs or even a smart phone, computer or tablet. Many have plugins that are designed to scrape the internet and pull together sites that host infringing content, making it effortless for users to access any content anytime. The affordable pricing of these invariably Chinese made boxes (some as low as $20) and free content on demand is irresistible. They are now found across the region.

The case was brought by a coalition of the largest copyright holders in Singapore. With a sophisticated court system, Singapore is often a good place to bring test cases in Asia. Its copyright laws were amended in 2014 to allow for copyright holders to apply for blocking orders from the Court against Network Service Providers/ISPs.

However although the links in the Apps were blocked, the ISD hardware and Apps themselves are not. By disabling online locations with functionalities to access infringing content, the Apps are heavily disrupted. But they are software so can quickly be updated or new Apps made available.

The Singapore case is consistent with Australian Federal Court judgments blocking online locations with functionalities that facilitate copyright infringement. This all illustrates the continuing uphill battle against digital pirates who are constantly evolving to find ways to offer infringing content using the latest technology.

Thursday, November 22, 2018

Digital commerce in SEA

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The digital economy is booming in SE Asia. A report called E-Conomy SEA 2018 by Google and Temasek about ride hailing apps, online media, online travel and e-commerce makes in SE Asia has some interesting facts and predictions:
  • 350m SEA digital consumers in 2018 in a $72Bn E-Conomy, expected to reach $240bn by 2025
  • Indonesia’s e-commerce sector dominates the SEA region at $27bn in value; Vietnam has the largest e-commerce share of total GDP at 4%
  • 41% of travel is booked online now, due to rise to 57% by 2025
  • Online media – gaming, ads, gambling and subscription music & video is growing by 24% p.a. in SE Asia
  • Ride hailing and food delivery are with 26% growth with Indonesia tha largest and fastest growing
  • VC funding is booming - 2,000+ internet companies got funding of over $7 bn over 3 years (record $1.4 bn in 2018)
  • Uniform companies include Bukalapak, Lazarda, Go-Jeck, Grab, Tokopedia Razer, VNG, Traveloka. Only Lazarda has been through an exit (trade sale to Alibaba)
  • Fintech is attracting a great deal of new interest; Medtech, digital education and social commerce will grow too
  • Singapore HQ and Indonesian companies got the most investments
  • Improvements: Mobile data costs falling, consumer trust growing, skilled talent pool bigger
  • Challenges: logistics still hard, disparate payment systems
For everyone involved there is massive excitement and the hope that such a huge sectoral growth can buoy SEA economies for some years.

Wednesday, November 7, 2018

Myanmar law passes lower house

According to the Ministry of Education, the Trade Mark Bill was reviewed and debated at Pyithu Hluttaw (Lower House) Bill Committee on 5 November 2018.

Members of the Pyithu Hluttaw Bill Committee, the Pyithu Hluttaw, Committee of Inherent Rights of Citizens, Economic and Financial Development Committee, Ministry of Education, Union Attorney Office and Legal Affairs and Special Cases Assessment Commission attended the debate.

The Bill should be submitted to the Pyithu Hluttaw for final comments, debate and vote at the upcoming parliament session which will start on 12 November 2018. The Bill might therefore pass into law before the end of this year.

Sunday, September 30, 2018

Indonesia's patent annuity debt issue rumbles on

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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

Indonesian Pierre Cardin case finally ends

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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

Vietnam's new competition law

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

Paris Agreement negotiations and IP

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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

Korean copies in SE Asia

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

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.