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ASEAN : Changing Its IP Landscape for Growth

The Intellectual Property Rights Experts Group of the Asia-Pacific Economic Cooperation (APEC) recognizes that intellectual property rights protection and enforcement is a key factor for promoting foreign trade and investment, as well as boosting economic development.

Enjoying a growth rate of 4.5%, the Asia-Pacific region has been identified as the fastest-growing region in the world economy. The intellectual property laws of the various countries in the region have moved forward in different ways, and we update you on this below. As you will see, the regions’ IP regimes are all evolving quickly.

 

Singapore

On July 10, 2012, the Singapore Parliament passed the Patent (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill geared towards strengthening and enhancing Singapore’s patent system.

The amendments aim:

To effect a shift from the current “self-assessment” patent system to a new and enhanced “positive grant” patent system.

Under the current “self-assessment” system, the applicant may choose from different search and examination options: namely: i) rely on the established International Preliminary Report on Patentability (IPRP); or ii) rely on a prescribed corresponding granted patent; or iii) request local examination based on an established search report; or iv) request local search and examination. As such, the applicant can request and obtain a granted patent in Singapore even if the outcome of the examination is not favourable.

On the other hand, under the new “positive grant” patent system, the decision to allow the patent rests with the Patent Registrar, and only patents which have been searched and examined and fully satisfy all the three patentability criteria of novelty, inventive step and industrial applicability will be allowed to proceed to grant.

To liberalize the patent agent sector

Foreign-qualified patent agents undertaking offshore patent agency work will be allowed to register in Singapore. However, the scope of offshore patent agency work that the registered foreign-qualified patent agents can undertake will be limited so that they can only apply for or obtain patents at foreign patent offices other than the Intellectual Property Office of Singapore (IPOS); preparing patent specifications for filing patent applications (including PCT international patent applications) outside Singapore; and providing advice on other countries’ patent laws.

To streamline and harmonize the IP registries IT system and procedures at IPOS

The relevant sections of the Patent Act, Plant Varieties Protection Act, Registered Designs Act and Trade Marks Act have likewise been amended to support the streamlining and harmonization of the IT system and processes of the various registries at IPOS. The new integrated registries IT system will make it easier and more convenient for customers to transact and access information related to the different types of IP via the IPOS IP portal.

 

Indonesia

The Supreme Court of Indonesia issued Regulation No. 5 of 2012 setting out the requirements and procedure for obtaining a provisional decision on intellectual property rights violations. The new rules took effect on July 30, 2012. A provisional decision results in seizure of infringing goods prior to conducting a full-blown trial.

Under the new rules, the trademark owner or its representative must submit evidence of ownership, evidence supporting an initial indication of infringement and details of the specific documents or evidence sought to be collected and preserved. The applicant is required to provide a cash bond or bank guarantee equivalent to the value of the goods that are the subject of the provisional decision.

The application will be assigned to a judge within 24 hours from filing. Thereafter, a decision of acceptance or denial will be issued within 48 hours. The proceedings will be kept confidential until a provisional decision is issued.

When a decision of acceptance is issued, the confiscation clerk will be accompanied by the applicant and two witnesses who will be present during the implementation of the seizure. Minutes detailing the provisional decision must be signed by the parties, witnesses and defendant, if present during the implementation.

A formal notification from the court issuing the provisional decision will be sent to both parties. The defendant will be reminded of its right to a hearing, at which time evidence of both parties will be received. A provisional decision must be affirmed or denied within 30 days from date of issuance.

 

Malaysia

Regulations pertaining to the voluntary notification of copyright were introduced on June 1, 2012.

Prior to the regulations, there was no formal copyright registration process in place. Nonetheless, copyrighted works are protected from the moment of creation following the requirements of the Berne Convention. The new regulations, however, encourage copyright holders to make a voluntary deposit of the copyrighted work with the Controller of Copyright upon payment of official fees. With the voluntary notification in place, it is expected that the certified extracts issued by the Controller shall be prima facie evidence of the particulars therein and admissible in court. Thus, once the ownership of copyright is recorded, the burden of proof that copyright does not subsist in the work is shifted to the infringer.

 

Thailand

Several amendments to the Trade Marks Act are in the pipeline. Among the amendments is the acceptance for registration of smell and sounds marks.

To be registered, the sound would have to be distinctive. To be eligible for registration, the pending bill states that the sound must “not [be] directly descriptive of the quality or character of the goods, a natural sound of the product or a sound arising from the functionality of the product.” In other words, following the rules of thumb in trademark registration, sounds which are distinctive or which have the ability to indicate the product’s origin shall be allowed registration, i.e., advertising jingles of a particular product.

Similarly, a smell mark has to be distinctive in order to be registrable. Smell marks that are descriptive of the character, quality of the goods or the natural scent of the product will not be allowed.

The draft bill allowing registration of sound and smell marks was passed by the cabinet and is currently awaiting approval from the Senate for implementation.

 

The Philippines

On July 25, 2012, the Philippines became the 85th contracting party – and the 3rd ASEAN member state after Singapore and Vietnam – to become a member of the Madrid Protocol.

Several advocacy and public consultation meetings were conducted by the Intellectual Property Office of the Philippines (IPOPHL) together with trademark owners, chambers of commerce, government officials and local practitioners. IPOPHL repeatedly assured interested parties that there will be no difference in the substantive examination of applications received by way of the Madrid Protocol as the Intellectual Property Code of the Philippines (Republic Act No. 8293) and its implementing rules and regulations will continue to be the basis of examination. Hence, Madrid Protocol and regular trademark applications will be required to comply with the Declaration of Actual Use requirements to remain in force and effect.

On the patents side, IPOPHL signed its first-ever Patent Prosecution Highway (PPH) Agreement with Japan Patent Office (JPO) on February 9, 2012. The PPH is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between patent offices. It also permits each participating patent office to benefit from the work done by another patent office, with the goal of reducing the examination workload and improving patent quality. It was reported that in the ASEAN region, only the Philippines and Singapore are members of the PPH program.

The pilot PPH program will be in effect for three years from March 12, 2012, to March 11, 2015. During the pilot program, applicants may request accelerated examination by following a prescribed procedure by IPOPHL.

 

India

On July 2, 2012, Chaitanya Prasad, Controller General of Patents, Designs & Trade Marks of the Indian Patent Office, issued a notice designed to simplify the process of filing a PCT National Phase application in India (effective on July 6, 2012).

The Indian Patent Office (IPO), in coordination with the International Bureau of the World Intellectual Property Organization, has obtained online access to PCT International Applications and related documents available at the International Bureau. Hence, applicants are no longer required to submit multiple copies of documents that are readily available at the International Bureau. This mechanism will increase efficiency and reduce errors in manual data entry to obviate the need for correction in PCT national phase applications.

However, the new instructions apply only to PCT National Phase Applications entering India which do not claim priority of any PCT National Phase Application filed previously in India. Hence, said instructions would not be applicable to any divisional applications filed in relation to previously filed PCT National Phase Application in India.

The simplified requirements for filing a PCT National Phase Application in India are (a) title of the invention; (b) applicant’s name, address and nationality; (c) preamble to the description of the invention; and (d) the last page of claims together with the date and signature. The description, claims and abstract of the inventions are no longer required to be mentioned in Form 2.

Likewise, the particulars for filing a divisional application and particulars for filing a patent of addition, respectively, are not required to be furnished when filing national phase entry of a PCT application.

The notification also emphasized that the IPO will no longer allow an applicant to amend the specification or related documents upon national phase entry in India. Any amendments in the claims or specification henceforth can only be made after entering the national phase entry in India.

Moreover, the documents to be filed by an applicant should exactly correspond with the updated information available on the records of the IB on the date of filing of a PCT National Phase Application in India. Such information must have been notified/published by the IB in accordance with the PCT and the regulations made thereunder. Any request pending before the IB shall be of no consequence and should not be reflected in the application. However, failure to submit unpublished and published PCT application related documents may have unfavourable consequences at the IPO.

Also, while the process of filing of PCT national applications has been simplified, applicants are still required to comply with all other requirements in accordance with the provisions of the Indian Patents Act, 1970 and rules framed there under.

 

Brunei

Brunei became the 125th contracting state to the Patent Cooperation Treaty (PCT) on April 24, 2012. Its membership came into effect on July 24, 2012.

As such, Brunei joins the other PCT member states in offering applicants a choice for national protection of their invention. Similarly, nationals and residents of Brunei will also be entitled to file international applications in the PCT contracting states. From July 24, 2012, onwards, any international application filed will automatically include the designation of Brunei. Also, because Brunei is bound by Chapter II of the PCT, the country will automatically be elected in any demand filed in respect of an international application filed on or after such date.

The Patent Registry Office of the Brunei Economic Development Board, the leading economic development agency of the country, will administer Brunei’s PCT system. To better prepare for its recent accession to the PCT, the country will have its own full-fledged intellectual property office in charge of all intellectual property rights by year 2013.

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