Sunday, February 17, 2019

Unpaid Patent Annuities – extension of time to 17 August 2019

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Indonesia's DGIP had sent letters in mid-August 2018 to patent holder stating that if the outstanding annuities amounts were not paid within 6 months (i.e. by mid-February 2019), the Patent Office would not accept any new applications. See here for the background. 
The DGIP has just published a circular letter dated 17 February on their website. The DGIP has extended the period of time for a patent holder to settle any unpaid annuities  a further 6 months from the date of the circular i.e. by 17 August 2019. The reasons for this extension are that the August 2018 letter was not completely socialized and the procedures for the payment require more time and work to put in place.

Thursday, February 14, 2019

Thailand invalidates all cannabis patents

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The cannabis patent dispute has now escalated. The Thai government has issued a decree ordering the Thai DIP to invalidate all cannabis related patents. The military government is allowed to do this under the its special powers. Thailand legalised medical marijuana and kratom applications last year

The background is here but in essence an access to medicines lobby type panic has arisen because several pharma companies applied to patent cannabis related inventions. Unfortunately wild misinterpretation of patent rules has led to speculation that usual ogre, MNC big pharma is trying to block local research and prevent Thai medicinal products based on cannabis reaching patients. No one appears to have checked whether the patents are valid or not, instead simply asserting that they must be for natural processes. Nor did the government wait for the DIP’s usual patent examination. 

A frenzy of misreporting and misunderstanding seems to be part of the problem. The 10 or so patents in question ought to be rejected anyway if they don’t comply with Thai law, that is they are not novel uses. But it takes time to examine a patent and the government seems to have accelerated their decision in the face of a media frenzy.  The media does not report if the patents are for valid inventions or not? 

Now the worry is a worse situation will be created by the possible automatic invalidation of possibly good patents, in breach of WTO rules. Whether appeals will be filed is the next step to watch.  

Wednesday, February 6, 2019

Singapore/Battam case transhipment concludes

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The case of Burberry Ltd v Megastar Shipping Pte Ltd has reached the Singapore High Court. The case arose because counterfeit Burberry, Louis Vuitton and other luxury goods were shipped from China to Singapore, in two containers,  for onward shipment to Batam, Indonesia.  The crux of the Singapore litigation was about how the goods were transhipped through Singapore. 

The Singapore Court of Appeal has held that “goods in transit” are still imported so illegal under the Trademarks Act. However, the freight forwarder importer the goods, but it did not 'use' trade mark. Instead as a commercial freight forwarder it was unfair to impose liability for trade mark infringement as they are a mere conduit.  

The first thing to say about this is that transhipment is increasingly now viewed as something customs authorities must deal with from an IP perspective. The Singapore EU FTA ought to have covered it, but it did not include goods in transit. Singapore likes to defend its position as a transhipment hub, so not be obliged to check all shipments (despite earning money from each container that passes through its port). So it is positive that the court did find the goods imported in principle. In this case there were facts that showed the shipments passed through Singapore’s Portnet IT system. 

However the other issue is the use of the nearby Indonesian port, Batam. The problem there is that Indonesia has no effective border protection system, despite one being introduced last year. See here. So there remains a major issue whether Indonesian customs could stop the goods. Secondly Batam is a Free Trade Zone. It is often used for export processing, and illicit goods pass through it frequently. The region of Riau was historically known for smuggling - see here.  Indonesian customs generally do not interfere and it is not clear if the new IP border protection system could intervene at all. The IP owners suspect that such a huge volume of fakes cannot actually have been bound for Batam itself, that port being relatively remote from the major markets in Indonesia. 

So although important, the case probably doesn’t help in deterrence. Freight forwarders are not liable, and Indonesia’s Batam is still going to be used to handle illicit goods freely. The loss of the fake goods was the only deterrent to whomever the ultimate owners were, a fact which will never be known along with their ultimate destination.

Sunday, February 3, 2019

Compulsory Patent Licensing in Indonesia

A Ministerial Regulation No. 39 of 2018 on Procedures for Compulsory Patent Licensing took effect on 28 December 2018.  This Regulation mainly gives a clear structure to compulsory licensing in accordance with TRIPS.

Article 3 of the Compulsory Licensing Regulation sets out that the Minister may grant a compulsory license in several cases. One is that the patent holder did not manufacture his product or use his process in Indonesia within 3 years after the patent was granted. Another is the patent was used in a form or manner detrimental to the public interest. A third is that a patent for an improvement  cannot be implemented without another party's patent which is still under protection. 

Various categories of applicants for a compulsory license are possible. An applicant must submit an application to the Directorate General of IP. There is an examination process. The grant is conditional as follows:

a.     It is a non-exclusive compulsory license.

b.     Consideration must be paid for the grant to the patent holder.

c.     Evidence and information or an explanation for the compulsory license grant must be given 

d.     A time period of the compulsory license is provided. 

f.      Conditions on expiry and termination must be provided.

g.     The decision will specify what part of the patent is granted a compulsory license.

The Regulation covers when the  Minister may grant compulsory license for pharma products, specifically: 

a.     Manufacturing pharmaceutical products to treat human diseases.

b.     To import pharmaceutical products if Indonesia is not yet capable to manufacture it to treat human  diseases.

c.     To export pharmaceutical products outside Indonesia based on developing countries requests  (the Doha system related to import and export mechanisms).

The Minister must record the grant of any compulsory license and notify applicants and patent holders.  It is not clear whether Indonesia is simply implementing TRIPS or whether applications to manufacture medicines for third countries are likely.

Monday, January 28, 2019

Brand Values in SEA

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Brand Finance has issued its annual Brand Valuation survey. Every year this improves and gets more detailed. 

However SEA brands are still underrepresented. 8 SEA brands appear in the top 500 500 (1%), from a region representing nearly 9% of the world's population and 4% of global GDP. 

The most valuable SEA brands are the following. 3 Singaporean banks, DBS (202), OCBC (364) and UOB (363), Thailand’s PTT (359), an energy & chemicals conglomerate, Indonesian telco Telkom (442), Vietnamese telco Viettel Telcom (478), and from Malaysia Maybank (494) and Petronas (127), an energy company. 

The dominance of banks, telcos and oil & gas is illustrative of less developed economies. The major IP leaders in the industrial sectors such as Thailand’s SCC or in the consumer goods sector such as Indonesia’s Indomie or San Miguel or the Philippines, or Lazarda in ecommerce, do not feature yet.

Wednesday, January 23, 2019

Copyright works for the visually impaired in SE Asia

The Marrakesh Treaty of 2013 sets copyright exceptions for works which benefit the visually impaired. The exceptions allow the creation of derivative works in braille, audio, special font size etc without Copyright owner consent. It is usually estimated that up to 10% of works might need to be made into such formats. 74 countries are members so may now amend their copyright laws once it comes into effect in October 2019. WIPO administers the treaty. So far only Singapore has joined in SE Asia, but Vietnam  is thinking about it, according to delegates at a November 2018 seminar in Hanoi by the National Committee for the disabled. 

Wednesday, January 16, 2019

Thai medical marijuana legalisation starts access to medicines battle

Image result for cannabis images Thailand legalizing medical cannabis use might seem to have little IP relevance, but IP seems to be the biggest concern. The worry is a flood of patents for medical cannabis. Thailand is already highly sensitive about the effect of patents on access to medicines. News reports that a high volume of patent filings will be contrary to the public interest. Commentators say that this will deny Thai patients access to cannabinoid medical products resulting from them due to high costs of innovator owned medicines and also that Thai researchers will have more limited access to marijuana compounds to research.  

Whilst much of the media hype has referred to the common panic about dominance by multinational big pharma, the cannabinoid medicines industry is typically a different group. GW Pharmaceuticals is a small UK company which focuses on cannabinoid products for multiple sclerosis and is now expanding into other therapeutic areas. It is the biggest ogre since it has applied for various cannabis drug patents in Thailand. Some are co owned by Japan's Otsuka Pharmaceutical. So far the numbers of cannabinoid patents in Thailand are believed to be relatively small, just over a dozen or so. 

The issue pits the Thai Government Pharmaceutical Organization (GPO) against the patent office. The GPO argues cannabinoid products are naturally occurring so cannot be patented. Of course patent law is more subtle than that and ways to manufacture, process and refine natural products are of course patentable f they are completely new, and not obvious. News reports suggest the patent office may refuse the patents. In November the Thai Prime Minister waded in stating that he could use the military drafted constitution to cancel the patents. Another point is that these patents were filed long ago before legalisation, so may fall foul of another provision on legality of the patent.

However another consideration is control over plant varieties for cannabis strains and the potential restrictions on farming that might follow. Expect a long drawn out debate. Because only medical uses are legal, neither side will be consuming anything to relax over the issue!


Monday, January 14, 2019

ISP copyrght and trademark liability solutions in Philippines and Thailand

In the Philippines Senate Bill No. 2109 a.k.a. the Philippine Online Infringement Act is close to enactment. It will establish a system to allow complaints filed at the IPO to notify the National Telecommunications Commission to terminate trading licenses for ISPs that continue to permit hosted websites to infringe or assist copyright infringement.

Meanwhile in Thailand a new bill seeks to put teeth into a system which was out in place several years ago.  Thai copyright law amendments, details of which are here, failed to deliver the results needed. That is to require ISPs to take down infringing content or risk an injunction, Instead ISPs frequently require a  court order  to remove illicit content. The new bill establishes a  notice and takedown system to provide save harbor. If they don’t comply, ISPs become liable for the infringement.

In both countries copyright enforcement should become easier; however trademark infringements hosted by ISPs remain problematic. ISPs especially e-commerce sites also need safe harbor protected by notice and takedown, along with a threat of injunctions and if they fail to comply, liability. And if possible fast administrative site blocking.

Thursday, January 10, 2019

New product labelling rules in Indonesia

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New product labelling rules in the F&B, personal care and pharma sector aim to improve consumer safety.  Indonesia’s FDA (a.k.a. BPOM) issued its Regulation 22 in late 2018 to require BPOM issued bar codes to be used. All foods and drugs health supplements, cosmetics and processed foods must now have a bar code,  issued by BPOM and put it on the label.  This will apply to locally produced and imported goods.  Track and trace technology will enable verification and digital reporting will support this.  

Monday, January 7, 2019

The Vietnam-EU FTA

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2019 should see the Vietnam Europe Free Trade Agreement come into effect. The final text was agreed and the EC Commission approved then it was sent to the EU council for signature (during which time each Member State reviews it) and finally it will be submitted to the European Parliament for adoption probably by mid 2019.  The EU Singapore FTA is slightly more advanced and due to adoption in early 2019 too.

The Agreement contains a so called TRIPs+ IP chapter. That means the provisions go beyond the WTO TRIPS agreements. Whilst this is sometimes criticized as being to much for developing countries to bear (e.g. in enforcement), in many cases it provides more useful detail on existing TRIPS obligations.

Key provisions include the following:

a. A large number of provisions mirror TRIPS, restating obligations sometimes with a little more detail. In other cases, it covers areas where TRIPS is silent (such as freedom to choose parallel import regimes)
b. Performers, phonogram/sound recording and broadcast copyright is strengthened. Vietnam's own music industry will welcome this.
c. Anti circumvention and rights management provisions are included. This is intended to prevent music and film piracy.
d. Artists' resale rights are provided.
e. Trademark non-use is extended to 5 years 
f. Extensive GI provisions are set out. Vietnam is a relatively active proponent of GI protection and registers many GIs. A large scale reciprocal registration system will occur under the FTA. there are transitional provisions for certain contentious GIs like Feta and Champagne.
g. Designs provisions require Vietnam to join the Hague Agreement (generally felt to be helpful in SEA by reducing cost) and allows dual copyright protection for designs.
h. Patent term extensions where marketing delays occur are permitted (a provision that access to medicines advocates dislike).
j. Regulatory test data protection is required (again disapproved by access to medicines advocates), to protect innovator test data submitted in the marketing approval process. (Technically TRIPS intended to cover this but its provisions never worked.)
k. Extensive provisions to improve civil IP litigation are included. these are likely to be helpful in an emerging IP system such as Vietnam's where court system weakness is often cited as a problem. Important additional remedies include right to information, proper damages, legal costs and published decisions.
l. Clearer internet ISP liability, injunction and safe harbour provisions should improve online enforcement - often cited as a concern.
m. Border enforcement improvements are mandated. In fact Vietnam has a functioning IP border protection system, its problems are more a scale problem due to proximity to China (especially the problematic northern land border).

Whilst criminal provisions are not covered (as criminal provisions are not harmonized in the EU), the parties are required to follow TRIPS.  there are also an array of cooperation and technical assistance mechanisms which will likely lead to the EU spending a great deal of time and resources working with Vietnam to improve its IP system from 2020 on.