Wednesday, June 20, 2018

A new approach to replacing fakes in the Philippines

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An innovative plan to replace counterfeit goods with local Filipino crafts has been proposed by the Intellectual Property Office of the Philippines (IPOPHL). The drive for this is the increased enforcement leading to a reduction in sales of fake goods by traders in the notorious  Greenhill shopping centre. Greenhills is undergoing upgrade renovations.

The IPO sees a different benefit namely to insert IP into locally-made products.  They hope that  a newly opened Greenhills can become a premier showcase for high quality and inventive Filipino products created by Filipino inventors, entrepreneurs and designers. The IPOPHL Director offered its network of Innovation and Technology Support Offices that support local R&D, to help. They identified locally designed jewelry is one opportunity along with specialized crafts like doll-making both of which are threatened by overseas imports.

Tuesday, June 19, 2018

Protecting Indonesia from biopiracy

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Indonesia’s rich biodiversity, the second largest in the world, provides for a long practice of traditional knowledge among its many indigenous communities. Its historically famous Maluku Islands, better known as Spice Islands is a good illustration of the commercial attractiveness of its abundant natural resources to many, including biopirates. “Biopiracy” is a term used to describe the commercial appropriation of ‘unprotected’ knowledge of biological resources without authorisation from and fair compensation or recognition to its native owners. This is defined and required under the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity. The Nagoya Protocol is a 2010 supplementary agreement to the 1992 Convention on Biological Diversity.  Unauthorised parties are restricted from the use of their traditional knowledge without the permission of its commercial owner. Biopiracy is more prevalent in developing countries where there is a lack of awareness and availability of legal protection for traditional knowledge and lack of funding for required research for commercialisation of natural resources. 

Indonesia has taken several steps over time to increase protection of its natural resources. The 2016 Patent law includes provisions on genetic resources and traditional knowledge based inventions. A new draft law aimed at research aims to be passed in 2018. It will impose tough sanctions intended to protect natural resources, local knowledge and to promote local researchers in international research projects. Foreign researchers will be required to submit their raw data to the government, and to recognise and include local researchers in published works arising from the project. Offences will lead to heavy sanctions, including criminal sentences and fines. This in addition to its past efforts including more stringent requirements and scrutiny in research permits granted to foreigners. The new law also requires foreign researchers to produce work that will ‘produce beneficial output for Indonesia’. 

In response to this latter rule foreign researchers and scientists have voiced alarm, stating that this rule will seriously discourage many important international research and collaboration with Indonesia because it is not feasible to guarantee that the research will definitely ‘produce beneficial output for Indonesia’. They say this goes beyond the Nayoya Protocol. The protection of natural resources is inconsistent in Indonesia. While attempts to protect the environment are worthy, enforcement is often lax, and the arguments over destruction of rain forests and reefs illustrate this.

Sunday, June 17, 2018

Laos amends its IP law

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Laos, one of the smallest economies in the region has updated its IP laws.  The new Law on Intellectual Property No 38/NA of 2017 took effect at the start of June 2018. It replaced the old 2011 law.  It contains various changes, in summary:

a.         The Trademark definition is expanded to non-traditional marks. Oppositions have been introduced. The intention is to create an online publication system.
b.         The patent regime is largely unchanged except for an increased ability of the government to challenge patents contrary to public policy.
c.         Industrial designs now have an opposition procedure.
d.         Plant Variety provision are changed inline with the UPOV Convention.
e.         Copyright protections are expanded especially in the context of digital broadcasts.

Enforcement procedures have been improved. There is a de-emphasis on administrative remedies. Ex officio customs IP enforcement is provided for although more rules are needed. Criminal IP enforcement is simplified.

Laos is an ASEAN member, but perhaps the least open and smallest economy.  However it to has to comply with ASEAN rules on IP protection and enforcement so it is not surprise that it has to modernise its IP system.

Wednesday, June 13, 2018

Indonesia's customs system - the final stage of setting up its IP border protection system

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After Government Regulation No. 20 of 2017 on Controls of Import and Export Goods under 2006 Customs Law came into effect on 2 August 2017, the Ministry of Finance has finally passed Implementing Regulation No. 40 of 2018 which sets out the procedures for customs recordal and seizures. The Implementing Regulation takes effect on 16 June 2018.
Recordal for trade marks and copyrights

Trade mark and copyright owners with a local business entity domiciled in Indonesia can now file customs recordal applications. In addition to the usual proof of trade mark certificates or copyright and information on genuine goods, the application must include documents relating to the local business entity, importer/exporter information and a statement of liability from the IPR owner. The IPR owner must also appoint an Examiner who can verify genuine products as well as understand the distribution and marketing of the products.

Once the application is submitted, Customs will review the application and approve/reject the application within 30 days.

Recordals are valid for one year and are renewable.

Restraint – confirmation by IPR owner in 2 days

Once Customs notifies the IPR owner of the restraint of a shipment, the IPR owner will need to send confirmation of its decision to either apply for Court detention order or otherwise to Customs within two days.

Detention order

The IPR owner or its proxy must then apply to Court within four working days and provide to Customs a bank or insurance guarantee of IDR100M (USD7,200) which is valid for 60 days. The application is to the Commercial Court in the jurisdiction of the port where the goods were seized.

Customs then holds the goods and provides the IPR Owner with a detailed summary of the shipment.  The Court must deliver its detention order decision within two business days from the filing of Court application and send its decision to Customs within one business day.

Examination of detained goods

Upon receipt of the Court detention order, Customs will detain the goods for ten business days. Within two business days of Customs’ receipt of the Court detention order, the IPR owner will need to send its request to Customs who will arrange a time for all parties including the appointed Examiner to examine the detained goods.

If more time is required, the IPR owner can apply to Court for an extension of ten business days but there will be an additional security.

Legal action/settlement

After the ten-day detention period, if the goods are confirmed as infringing and if there is no settlement, the IPR owner can take legal action. The 2017 Regulation provides that this means civil or criminal action or settlement. This is problematic, as it is not clear how it is possible to file legal cases in such a short period, and of course, lawsuits are expensive.


While it is positive that Indonesian Customs has introduced a system to record IP rights, this recordal system is currently limited to IPR owners with a local subsidiary. We believe the Indonesian government’s desire to encourage foreign investment is its rationale behind this requirement, as it hopes that many more foreign IPR owners will set up local presences in Indonesia. The process for the Court detention order and examination looks relatively clear, but this needs to be tried to see how it works, and the timelines are very short. Finally, there remains uncertainties if parties are unable to settle following the expiry of the detention order, they may have to choose to proceed with either civil or criminal action, which will be expensive.


Thursday, June 7, 2018

US and EU IP judgements on SE Asian countries; part 3 Indonesia

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Part 3 of this series on the combined views of the EU and US on IPO protection in major SEA economies focuses on Indonesia. 

The EU report says that Indonesia, having enacted new copyright and trade mark legislation, was also moved from Priority 2 to 3 in previous years. But market access barriers, weak governance and corruption continue to weigh down IPR infrastructure. There are high levels of pirated and counterfeit products, and no regulatory data protection. Legislation drafting is not transparent and IPR registration is very slow.  Enforcement by the IPO Investigation team has declined and the Police and Customs remain ineffective. Other concerns are absence of implementing regulations, lack of protection against unfair commercial use, bad faith trade mark registrations, overly lengthy and expensive Court proceedings, Court decisions are not published and contain very brief legal reasoning.  The patent law is cited as having problems.

The USTR shares similar concerns about the 2016 patent law which includes restrictive local manufacturing requirements as additional patentability criteria which “undermine innovation and research and prevent investment”. They mention the lack of regulatory data protection for pharma and plant products. It also questions whether the newly implemented Customs IP recordal system can really benefit foreign right holders, because only those with a local subsidiary can record their IP rights with Customs. The USTR also states that Indonesia GIs law raises questions about the effects of new registrations on pre-existing trade mark rights, and questions the lack of unfair competition laws.

Both the EU and the US look to Indonesia to improve IP enforcement cooperation among relevant agencies, to meaningfully address all concerns. Indonesia is in many senses, less well developed according to both EU and US in IP protection, and thus remains at a higher level of concern than other SEA countries. The EU is in the process of negotiating an FTA which includes a number of IP elements.  

Tuesday, May 29, 2018

US and EU IP judgements on SE Asian countries; part 2 Philippines

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In this second post on EU and US official views on IP protection in major SE Asian markets the focus is on Philippines

The EU states that Philippines has improved its protection and enforcement recently and has moved from Priority 2 to 3 (and if it continues its current positive trajectory could in future be removed entirely). The USTR credited Philippines for adopting laws and enforcement practices to prevent unauthorised camcording, but says it still has slow opposition proceedings.

The Philippines has made great strides in IP protection in recent years. It is held up as the best example of building inter agency cooperation, through the efforts of the IP department and its NCAC inter agency enforcement team. The big test is whether this continues under the present government. 

Sunday, May 27, 2018

US and EU IP judgement on SE Asian countries; part 1 Thailand

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The US 2018 Special 301 Report and the EU report on the protection and enforcement of IP in Third Countries have been released in recent months. Its an interesting exercise to compare the different views. 

In SE Asia the combined conclusions are that, overall, major economies including Indonesia, Thailand, Philippines, Vietnam and Malaysia have made positive developments in IP over the last 2 years however more work is needed. Indonesia remains a Priority concern in both reports – it is the last SE Asian country on the USTR Priority Watch List, but was moved from Priority 2 to 3 in the EU list in recognition of some improvement in its IP protection. Philippines, Thailand and Malaysia remain on Priority 3 in EU report, while USTR lists Thailand and Vietnam on its Watch List.

This post focuses first on Thailand. Thailand remains on both the EU Priority 3 List and improved its ranking on the USTR Watch List.

Both the EU and USTR credited Thailand on its establishment of a National Committee on IP Policy and a subcommittee to improve the coordination of IP enforcement agencies. Both reports also took note of Thailand efforts to catch up with its backlog of IP applications and joining the Madrid Protocol. Concerns remain especially for USTR regarding a range of copyright issues, including a widespread use of unlicensed software in both public and private sectors, lengthy Court proceedings and low damages, extensive cable and satellite signal theft, and counterfeiting and piracy remain rife.

The EU urges Thailand to strengthen its IP protection by including landlord liability for trade mark infringement and putting in place an effective “notice and take down procedure” against copyright infringement. The USTR also emphasises strengthening copyright laws and protection against unfair commercial data use, and to address its public health challenges while maintaining a patent system that encourages innovation.

At a general level Thailand is having to address complex IP issues, and its national policy and coordination is strong. This reflects the more advanced state of Thailand's IPR system. 

Friday, May 11, 2018

Local movies and piracy in Indonesia

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It is often said that governments work to improve IP when their own industries suffer. The Indonesian film industry was widely reported this week as complaining about losses of IDR 1.5 trillion (over $100 million) due to content and DVD piracy. It conducted research across the country and found that most Indonesians download illegal films online or buy pirated DVDs.  

The biggest reason, the research indicated was that most people had no idea that watching movies that way was illegal in the first place.  Not many genuine movies are available in DVD format any more, but pirate DVDs made in Indonesia are widely available.  Newer online services like Netflix, Iflix and Hulu have only just started and are only available where bandwidth is high in cities. They are still more expensive than DVDs too. Peer to peer downloading is also a problem due to the availability of pirated content on sites.  This was ultimately a bigger cost to the movie companies because illegal downloads in cities take customers away from cinemas.

Another major reason is poor access to movie theatres. "People are drawn to pirated content because it’s cheap, and for those in remote areas it's the only way to watch films," the researchers stated. There are a little over a thousand movie theatres in the country with many of those in the capital Jakarta.

Indonesian movie association Aprofi regularly reports illegal streaming and download sites. The Justice and Human Rights Ministry works with the Ministry of Communications and Informatics to shut them down. Aprofi reported over 300 sites in 2017. While many are taken down it is time consuming and in practice, doesn't always happen.

The solutions are more nuanced than just sporadic blocking of a few sites once a complaint is made. It is necessary to target multiple streams, mirror sites, to co-opt IPS assistance and take a far more aggressive approach at stopping the access to illegal content.  Clearly blocking 300 so sites a year is not getting the industry anywhere. Apart from improving the legal remedies, there must also be accessible genuine movie channels, (so thousands more movie theatres – and jobs!), cheaper and more easily accessible genuine online content as well as more anti piracy education.

Tuesday, May 8, 2018

SE Asia Inc's IP ownership remains limited

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A report in the Asia Times based on recent WIPO research on innovation in SE Asia underlines how much countries still need to do. to drive up industrial IP creation.  A 40% rise in patent applications over the last 3 years is not bringing with it the research and innovation that it implies.

Here is how the main SE Asian economies ranked in the top IP filers:

Singapore (29), Vietnam (31), Thailand (33), Malaysia (39), the Philippines (47), Indonesia (53). 

When you drill into the detail you find that Indonesia, Vietnam and Thailand are biased towards trademarks, not patents. Indonesia lags at 112th in the world in patents.

When mapped against world class companies, it also becomes obvious that few SE Asian companies are major IP owners. Some leading brands from the region are Indonesia's largest bank BCA, the Shangri La and Banyan Tree hotel groups from Singapore and the Thai Union seafood group.

On the technology side patents are dominated by relatively basic technologies like agricultural, chemistry and medical science and very little IT and biotech.

IP is only a proxy for innovation; but what is clear is the region is not yet producing enough.


Tuesday, May 1, 2018

Design law amendments in Indonesia

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The next IP law due for reform in this round (the copyright law was amended in 2014, then patents and Trademarks in 2016) in Indonesia is the designs law. An IPR of increasing significance and one that is popular with domestic applicants in the region, designs are often overlooked as a means of protection. ASEAN’s AEC is keen on pushing through the Hague system in major markets in the region to reduce cost for applicants.  

The draft designs law (along with some other draft laws relating to business/industry) were due to be presented to Parliament and completed in 2017. However more work is needed and likely the law will be enacted in late 2018. One interesting change proposed is an unregistered design right. Also draft article 30 speaks of international filings - presumably intended to accommodate Indonesia joining the Hague Agreement in the future. Or rejoining, as technically Indonesia joined as a Dutch colony before independence, but that of course was not recognized as valid after independence.

Sunday, April 29, 2018

Naruto was just monkeying around in court

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Naruto the Indonesian monkey has failed in his appeal to prove copyright in the famous monkey selfies. See here for the history.

Of course he did; the question at issue was whether an animal could be a legal person therefore entitled to own copyright. Despite other attempts so far no one has proven animals have personal rights.

A US Federal Appeals court found that People for the Ethical Treatment of Animals, an American animal rights organization (PETA) who backed his case had used Naruto “as an unwitting pawn in its ideological goals.” PETA sued photographer, David Slater, on Naruto’s behalf. The court concluded “We have no idea whether animals or objects wish to own copyrights or open bank accounts to hold their royalties from sales of pictures.”