Important Developments in Intellectual Property Law in Asia

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Australia

The Intellectual property Laws Amendment (Raising the Bar) Bill 2011 was passed without amendments by the Senate. It has been read for the first time in the House of Representatives and it is anticipated that the House will pass it without amendments also. A few things to note:

• The most important part of the Bill is Schedule 1, which establishes a higher standard for assessment of inventive and innovate step, as new ‘utility’ requirement for ‘a specific, substantial and credible use’ for a claimed invention, and more stringent requirements for the scope and detail of disclosure required to support patent claims.
• The standard disclosure required for provisional specifications is elevated to equivalence with that required for complete applications.
• ‘Modified examination’ and ‘deferral’ of examination will be abolished.

 China

The 10th edition of the Nice Classification was adopted by the State Administration of Industry and Commerce and took effect on 1 January 2012. The Nice Classification will apply to applications filed on or after 1 January 2012. Therefore, application filed before will not be reclassified.

Korea

Following the ratification of a  free trade agreement (FTA) between the US and South Korea, South Korea amended its Patents Act. The amended laws will come into effect in March 2012, the same month the FTA takes effect.

The amendments will concern the following:

• Patent term adjustment can be made by application. A patent term may be extended, to compensate for unreasonable delays during the prosecution of a patent, if the Korean Intellectual Property Office (KIPO) caused the delay. If the registration is delayed for more than 4 years from the date of filing of the application or more than 3 years from the request of examination, whichever is later, the patent term can be extended for a period equivalent to the delay. Delays caused by the applicant will not be taken into consideration.
• Novelty grace period is extended to 12 months. This amendment is in line with the Substantive Patent Law Treaty.
• Previously in Korea, if a patent was not practiced for more than 2 consecutive years, the KIPO could revoke it. This provision has been removed, as it unfairly limits the patentee’s rights.
• Trade secrets obtained during patent litigation are now protected. The court is able to order the parties, counsel or employees involved in the lawsuit to keep trade secrets from other persons (not under the protective order).

Japan

On 8 June 2011, the Act on Amendment of the Patent Act was promulgated and is scheduled to come into force within a year. The key points of amendment are:

• The enhancement of the protection afforded by regular license;
•  A remedy for misappropriated applications;
• The restriction of retrials; and
•    The expansion of the exception for loss of novelty.

Malaysia

The Trade descriptions Act, 2011 was recently passed and aims to tighten trademark enforcement provisions by prohibiting false trade descriptions and false or misleading statements conduct and practices in relation to goods or services. The new law provides the following:

• Search and seizure of counterfeit goods is facilitated without exposing the genuine proprietor to significant liability.
• Trade description is wide enough to include any entity that supplies, exposes or offers for sale or has in his/her custody, control or possession any goods on which false or misleading trade description is allowed.
• Only the registered trademark proprietor can now apply for a Trade Description Order, which is valid for one year only, unless renewed. 

Thailand

Further amendments to the Trademark Act BE 2534 (1991) is expected this year. The draft amendment was approved by the Cabinet, reviewed by the Council of State and read by the House of Representatives on 1 February 2012. A reviewing committee of the House is looking at it, and it is expected that the House will approve it before the end of the year. The changes will address the following:

• Expand the scope of trademark protection;
• Facilitate and speed up the trademark registration process; and
• Adjust the official fees.

After the first reading by the House of Representatives, scent and sound marks were added to the definition of “trademark”.