IP APAC Market Update 2021-22 by CMS

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APAC IP Update – Winter 2021-2022 – Published: March 2022

 

China

CNIPA releases the Amended Measures for Registration of Pledge of Patent Rights

On 16 November 2021, the China National Intellectual Property Administration (CNIPA) released the amended “Measures for the Registration of Pledge of Patent Rights”, which establishes an online application system for conducting registration procedures online. Applicants no longer need to submit physical identity, change, and cancellation certificates, etc. The CNIPA will conduct random checks on the commitments made online. If any inconsistency is found, disciplinary measures may be imposed (Article 20).

Click here for the full text (Chinese only) of the Measures.

CNIPA issues New Guidelines on Trade Mark Examination and Adjudication

Recently, the China National Intellectual Property Administration (CNIPA) has issued the New Guidelines on Trade Mark Examination and Adjudication, which went into effect on 1 January 2022. The New Guidelines have two sections, and the first section is a newly added part, which states the standards for formal examination and handling of routine. It is noteworthy that in the New Guidelines, the meaning of “malicious trade mark registration applications not for use”, an amended part of Article 4 under the Trade Mark Law, is stated in Chapter 2 of Section II. Exceptions to the application of Article 4 can be found in Article 3 in Chapter 2 of Section II. Also, the new Guidelines (Article 5 in Chapter 2 of Section II) list ten types of conduct that should be considered as “malicious trade mark registration applications not for use”.

Click here for the full text (Chinese only) of the Guidelines.

Beijing Intellectual Property Court accepts first case on “Drug Patent Linkage” mechanism

In November 2021, the Beijing Intellectual Property Court accepted the first case of “drug patent linkage” after implementing this mechanism.

In the case, the plaintiff claims to be the patent holder of Chinese Patent No. 2005800098777.6 while the defendant made a type 4.2 declaration on the Patent Information Registration Platform for Drugs Marketed in China (i.e. the drug patent linkage mechanism, according to article 76 of the Patent Law).

The plaintiff is requesting the court confirm that the defendant’s generic drug application infringes on the plaintiff’s patent rights and that the defendant should cease its use of the plaintiff’s patent in any form.

Click here for the case information issued by Beijing Intellectual Property Court.

CNIPA releases Standards for Judgement of General Trade Mark Violation

On 31 December 2021, the China National Intellectual Property Administration (CNIPA) released the ‘Standards for Judgement of General Trade Mark Violation’ to standardise the judicial practice of trade mark infringement. The Standards have been in effect since 1 January 2022. In the Standards, the definition of general trade mark violation is given. Also, nine actions are identified as general trade mark violations in article 3 of the Standards.

Click here for the full text (Chinese only) of the Standards.

Beijing Intellectual Property Court publishes Guidelines for Filing Civil Cases of Patent Disputes Related to Drugs under Registration (Trial Implementation)

On 4 January 2022, Beijing Intellectual Property Court published the Guidelines for Filing Civil Cases of Patent Disputes Related to Drugs under Registration (Trial Implementation). These Guidelines are expected to lead to better implementation of Article 76 of the new Patent Law and facilitation of patent disputes related to drugs. The Guidelines improve the clarity of case filing requirements for the public.

Click here for the full text (Chinese and English) of the Reference.

Hong Kong

Hong Kong customs seizes 15,000 suspected counterfeit medical-grade face masks

On 22 February 2022, the Customs and Excise Department (C&E) published a press release (the “Press Release”) announcing that it had the seized about 15,000 suspected counterfeit medical-grade masks (with an estimated value of HKD 30,000) at a shopping mall in Ho Man Tin.

The C&E was notified that the suspected counterfeit masks were being offered for sale in the local market. With further assistance from the trade mark owner, the C&E was able to locate the suspected counterfeit goods and the suspect. The C&E subsequently took enforcement action and raided a temporary stall.

The individual arrested is suspected of selling or possessing for sale goods with a forged trade mark and has been released on bail pending further investigation. The C&E is also looking into the source of these masks.

Click here for the full text (English only) of the C&E’s Press Release.

International Registration of Marks to be established in Hong Kong

In his final budget address, on 23 February 2022, Hong Kong Financial Secretary Paul Chan Mo-po emphasised the importance of strengthening the intellectual property regime in order to develop Hong Kong into a knowledge‑based economy and an international I&T hub.

To achieve this, the Financial Secretary announced that the Hong Kong government is preparing to implement the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in Hong Kong. The international trade mark registration system is expected to be in operation next year at the earliest.

In relation to patents, the government will be allocating HKD 85 million to the Intellectual Property Department (IPD) over the next three financial years to enhance Hong Kong’s capacity to conduct substantive examinations in processing original grant patent applications. Moreover, the IPD is exploring opportunities to collaborate with Mainland authorities to facilitate measures for cross-border IP protection.

Click here for the full text of the Financial Secretary’s Budget speech.

Singapore

Copyright Act amended

On 21 November 2021, the new Copyright Act 2021 came into force, which introduced changes to the law with the aim of strengthening the copyright regime. These changes ensure that the laws in Singapore reflect technological developments in the way content is created, distributed and used, and simplifies its language to make the law more easily accessible.

Key changes include:

  • Commissioned creators of photographs, portraits, engravings, sound recordings and films will be the first owners of copyright by default consistent with creators of other types of commissioned works, such as poems, paintings and music compositions. This is, however, subject to any agreement made between the creator and the commissioning party, which would prevail over the right prescribed in this section. Regardless of copyright ownership, commissioning parties can continue to use the work for the purpose for which it was commissioned. For example, couples who engage a wedding photographer can use their wedding photos for personal use, even if they do not own the copyright.
  • Creators and performers are given the right to be identified in a clear and prominent manner whenever someone uses or distributes their literary, dramatic, musical or artistic work, or performance in public, including online over social media platforms, even if they do not own the copyright to the work. The obligation to identify does not apply if the creator’s or performer’s identity is not known, or in specified scenarios (e.g. where an artwork in a public place is captured in a photograph or video) or for exempted materials (e.g. computer programmes). This new right will help creators and performers to gain exposure and build their reputation, particularly in the online environment where works or performances are often misattributed or not attributed at all.
  • The Copyright Act 2021 has introduced fair use exceptions that will ensure that copyright works are reasonably available for use by the general public. One exception introduced to boost research and innovation is the use of works for computational data analysis. Copyright works, if lawfully accessed (e.g. without circumventing paywalls) may be used for computational data analysis (e.g. sentiment analysis, text and data mining, and training machine learning) without first seeking the permission of the copyright owner. Another exception is the use of online materials for educational purposes. Teachers and students can use freely available online materials for educational purposes, as long as the source and date of access are cited and the material is sufficiently acknowledged (e.g. identification of the author and the title or description of the work). Any digital communication of the materials must be done on the educational institution’s internal network or on the Ministry of Education’s Student Learning Space. If the teacher or student is informed that the source material used infringes copyright, they must stop using the material.

Click here for the full text of the Copyright Act 2021.

Streamlining process for registration of intellectual property assets

On 12 January 2022, parliament approved changes to intellectual property laws, which simplify and streamline the process for registering intellectual property assets.

One proposed change to intellectual property laws is to allow partial acceptance for national trade mark applications, which is already permitted for international trade mark applications and a common practice in other jurisdictions. Currently, when businesses apply to register a trade mark across multiple types of goods and a similar trade mark already exists for one particular type of good, the entire application is temporarily halted. The introduction of partial acceptance would therefore allow the trade mark to be registered for the categories of goods and services where there are no objections.

Another proposed change to intellectual property laws is to improve public access to patent documents. The Patents Open Dossier was launched in 2017 so that inventors and the public can better understand why patents were sought or had been granted in Singapore. The proposed change would allow the Intellectual Property Office of Singapore to make such documents available to the public, even if there are no requests for the documents.

Click here for the Second Reading on the Intellectual Property (Amendment) Bill 2021.

Australia

Further clarification on the patentability of computer-implemented inventions

Under Australian law, there are no specific exclusions for software or methods that are implemented as computer software or a related project. Such inventions are patentable only if what is substantially claimed meets manufacturing requirements and, in particular, is not a mere scheme, abstract idea or information. The point is whether the computer is integral to the invention in that a method embodied in the software solves a technical problem within the computer and whether the invention solves a technical problem outside the computer (possibly in different fields of technology that have their own technical problems) or results in an improvement in the functioning of the computer.

Following a series of decisions by the Commissioner of Patents where patents were successfully claimed for computer-implemented inventions, the Full Federal Court of Australia in Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 has agreed with the lower court’s findings that the invention, the subject of its two innovation patents, was not “patentable subject matter”. The decision concerned two patent applications brought by Repipe Pty Ltd that disclosed systems and methods for providing information to field workers by way of a central computer server connected to a GPS-enabled mobile device.

Justice Neil McKerracher in the lower court held that the patent applications were not eligible for patent protection on the basis that the invention, which was the subject of the applications, was “a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim”. On appeal, Repipe argued that the functionality of the invention lay in the configuration of the mobile devices and the server, drawing parallels to the electronic gaming machine found to be patentable at first instance in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202. In Patents v Aristocrat, the court also laid out a two-step test for the patentability of computer-implemented inventions – whether a claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a patent; and whether the invention lies in the computerisation of the method, or whether the language of the claim involves merely plugging an un-patentable scheme into a computer.

Unfortunately, the appeal was not successful because the present invention did not cross the high threshold required for patentability of computer-implemented invention since the purpose of the claimed invention was to solve a problem in the field of business operations, rather than a problem in the field of computer technology. Justice Nye Perram then highlighted the difficulty of applications for patents for computer-implemented inventions since such cases have only succeeded twice and in both cases the inventions could broadly be characterised as an improvement in computer technology.

In light of the decision, it is likely that the two-step test adopted by the majority in Patents v Aristocrat will remain as the applicable test for the patentability of computer-implemented inventions.

Click here for the full text of the case.

Malaysia

Amendments made to the Copyright Act

In December 2021, Malaysia’s House of Representatives passed amendments to its Copyright Act. Key takeaways from the amendments include:

  • Harsher punishments would be imposed against those who facilitate access to pirated content via illegal streaming. Any person who commits or facilitates infringement of the copyright in any work will be liable on conviction to a fine of not less than RM 10,000 (USD 2,385) and not more than RM 200,000 (USD 47,699). This individual would also be liable to imprisonment for a term not exceeding 20 years. According to the amendments, infringement occurs by: (a) manufacturing a streaming technology for sale or hire; (b) importing a streaming technology; (c) selling or letting for hire, offering, exposing or advertising for sale or hire, possessing or distributing a streaming technology in the course of a business; (d) distributing a streaming technology for purposes other than in the course of a business to such an extent as to affect prejudicially the owner of the copyright; or (e) offering to the public or providing any service of streaming technology, Those who commit the offence under the guise of a corporate body or as a partner in a firm are not spared since every director, CEO, COO, secretary, manager or other similar officer of such body corporate or firm will be deemed guilty of the offence and charged severally or jointly, unless they can show that they had no knowledge and conducted due diligence to prevent the offence. These amendments better align the Malaysian copyright regime with the laws of other copyright-driven nations, such as the US, which are concerned about markets where illegal internet services are tolerated.
  • The amendments will enhance the provisions in relation to “licensing bodies”, which will be renamed “collective management organisations” (CMO) consistent with international practices. These amendments include a new requirement whereby only companies limited by guarantee may be declared as a CMO for copyright owners, authors or performers. This stands in stark contrast with the previous position where any society or organisation could apply to be declared a licensing body. Furthermore, the declaration of a body as a CMO will be limited to two years, subject to renewals, repealing an earlier provision stating that a body could be indefinitely declared a licensing body.

Click here for the full text of the Copyright (Amendment) Bill 2021.

Vietnam

Vietnam joins WIPO’s Copyright Treaty

On 17 November 2021, Vietnam acceded to the World Intellectual Property Organisation’s Copyright Treaty (WCT), becoming the 111th member of the WCT. The provisions of the WCT will officially take effect in Vietnam three months after the date of accession (i.e. 17 February 2022).

A special agreement under the Berne Convention, the WCT deals with the protection of works and the rights of their authors in the digital environment. Any Contracting Party (even if it is not bound by the Berne Convention) must comply with the substantive provisions of the 1971 Act of the Berne Convention for the Protection of Literary and Artistic Work. The WCT deals primarily with two subject matters to be protected by copyright: (a) computer programmes, whatever the mode or form of their expression; and (b) compilations of data or other material, in any form, which, by reason of the selection or arrangement of their contents, constitute intellectual creations. Regarding the rights granted to authors, in addition to the rights recognised by the Berne Convention, the WCT grants: (a) the right of distribution; (b) the right of rental; and (c) a broader right of communication to the public.

The accession to the WCT will also force authorities to galvanise enforcement efforts surrounding online piracy, which is a point of contention for many in the creative sector given outdated copyright laws. The WCT now obliges Vietnam to effectively prevent and tackle infringement on digital platforms. Together with the upcoming amendments to Vietnam’s intellectual property laws, it is certain that Vietnam’s accession to the WCT will contribute to a more transparent and effective copyright regime.

Changes proposed to examination guidelines for computer-related inventions in Vietnam

In the second half of 2021, the Intellectual Property Office of Vietnam proposed changes to the Examination Guidelines for Patent and Utility Model in Vietnam in order to keep pace with the sharp increase in computer programme invention patent filings in Vietnam. The Law on Intellectual Property in Vietnam excludes computer programmes from patentability, but in accordance with the proposed Examination Guidelines for Patent and Utility Model in Vietnam, computer programme-based inventions may be patentable if the programme-related computer invention exhibits technical characteristics and/or produces an additional technical effect that goes above and beyond the common interactive communication between computer and programme.

Members from the Patent Examination Centre, Legal and Policy Department and experts from the Japan International Cooperation Agency have been deployed to establish a working group with the goal of determining the particular circumstances under which applications relating to computer programmes are patentable. In December 2021, the working group released the preliminary guidelines for this issue, which provides for the following procedure:

  • At the formality examination stage, examiners will consider whether the invention contains technical characteristics (i.e. equipment, processing of data representing physical entities). If the answer is no, the application for a patent will be rejected. Then the examiners will consider whether the invention is named with a term such as “computer programme”, “computer programme product” or “signal-carrying programme”. If the answer is yes, the application for a patent will be rejected.
  • At the substantive examination stage, the examiners will consider whether the invention contains technical characteristics producing an additional technical effect. If the answer is no, the application for a patent will be rejected. All claims presented as a “computer programme”, “computer software”, “computer programme/software product” or “signal carrier programme” would be eliminated by the examiners. Three types of claims are expected to be accepted: (a) a method performed by a computer for a specific purpose; (b) a treatment device suitable for performing the method; or (c) one computer readable storage medium containing a computer programme for carrying out the method.

The date for publication of the final amended guidelines has not yet been released.

 

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