Important Developments in Intellectual Property Law in Asia

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China

The State Administration for Industry and Commerce announced that the examination period for trademark applications has been reduced to 10 months. This new time period is comparable to the US and Japan. The examination period for opposition has also been reduced, it will now be 18 months.

New Zealand

The Copyright Amendment Act and Trade Marks Amendment Act, which came into force recently, will give search and seizure powers to the New Zealand Customs Service and the National Enforcement Unit of the Ministry of Economic Development in respect of counterfeit and pirated goods.

Customs will be able to seize goods at the border without a warrant if they reasonably believe that they are relevant to investigating offences under the Trade Marks Amendment or Copyrights Acts. The National Enforcement Unit is also allowed to investigate goods that are being offered for sale in a public place and to seize counterfeited or pirated goods.

Taiwan

Patents. On 29 November 2011 the Legislative Yuan passed the amendment to the Patent Act. The key amendments are:

• The patent applicant may now claim a grace period not only for unintentional disclosures, but also for disclosures in any printed publication within six months before the filing date (printed publications are not limited to academic publications).
• The restatement of rights mechanism has been introduced, for which the rules for restatement of rights now apply to the forfeiture of patent rights for matters such as unintentional failure to claim priority rights at the time of application or failure to pay patent annuities.
• The claims and abstract are no longer regarded as part of the specification, but rather as independent sections.
• The time limit for initiative amendments by the applicant has been removed; however, when an office action is issued, amendments are allowed only within the time limit specified in the office action. Furthermore, a final office action may be issued after the first if deemed necessary, within which amendments are allowed only in relation to:
• Deleting claims.
• Narrowing the scope of claims.
• Correcting erroneous descriptions.
• Clarifying unclear descriptions.

• Divisional applications may now be filed within 30 days of the date of approval of the original patent application.
• The scope of the limitation of the patent right has been extended, including private acts for non-commercial purposes and acts that are necessary to obtain drug regulatory approval in Taiwan and abroad. The principle of international exhaustion has also been adopted.
• Amendments also include requirements for applying compulsory licences. The condition of “failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time” has become a prerequisite for the application of a compulsory licence for public non-commercial use, or for a dependent patent involving an important technical advance with considerable economic significance. In addition, Taiwan Intellectual Property Office must now determine the amount of compensation when granting compulsory licences.
• The intentional or negligent act of the infringer as a requirement for the claim of damages for patent infringement, and the option of determining the amount of damages by a reasonable royalty for the use made of the invention by the infringer, have also been codified. In addition, the burden of proof has been clarified: when no patent markings or notices appear on a patented article, the claimant shall prove that the infringer has or may have knowledge of the fact that sucharticle is under patent protection.
• A new provision states that an invention patent and a utility model patent application for the same creation may be filed at the same time by the same applicant. TIPO will notify the applicant to select one patent within a specified time limit; if no patent is selected, the patent shall be deemed non-existent ab initio.
• Partial designs, computer-generated icons and graphical user interfaces are now allowed as patentable subject matter, and the derivative designs system has also been introduced.

Trademark. An Amendment to the Trademark Act was passed by the Legislative Yuan on May 31, 2011, and was promulgated by President Order on June 29. The date of enforcement of the Amendment, which the Taiwan Intellectual Property Office estimates to be in June 2012, will be decided by the Executive Yuan. The key points of amendment are:

• It will expand the scope of objects protectable as trademarks.
• A definition for different types and acts of trademark use will be provided.
• Applicants will no longer be able to pay the registration fee in two instalments.
• Coexistent registration will only be allowed when the registration is obviously not improper.
• Amendments will allow the reinstatement of rights for registration fees not paid within time limits.
• Adjustments will be made to the time when the request for division or restriction of designated goods/services can be made.
• Supporting evidence will be required, where an invalidation or revocation action is filed on the basis of a trademark, to show use of such trademark in three years before the filing of the action.
• Amendments will be made to provisions on trademark infringement, with a view to strengthening the protection offered by the law.
• The amendments will address acts likely to dilute the distinctiveness or reputation of a “well-known trademark” being deemed as trademark infringement, and deleting the provision on using a “registered trademark” of another person as the company name, business name or domain name being deemed as trademark infringement.
• Comprehensive border measures will  be addressed and should provide greater protection.
•  It will strengthen the policies on protection for well-known place of origin in Taiwan.

Thailand

Thailand’s Department of Intellectual Property will now allow the submission of patent search and examination results, in support of Thai patent applications, from ASEAN countries participating in the Patent Search and Examination Cooperation (ASPEC) program. This will make the patent process faster, efficient and less costly.

Vietnam

Last year, in September the government issued Decree No. 85/2011/ND-CP on copyright and related rights. This new decree amends and supplements a number of articles in Decree No. 100/2006/ND-CP. The following changes should be noted:

Articles added into Decree No. 100/2006/ND-CP:

• Definitions of publication of works, royalties, remuneration, material benefits and folklore and fol art works.
• Authors of computer programs will enjoy the same moral rights as authors of other works, as provided for in the Law on IP, except for publishing rights.
• New principles and methods of payment of royalties, remuneration and material benefits.

Eight articles in Decree No. 100/2006/ND-CP were amended:

• The definition of the right of reproduction is clarified. It is now defined as one of the exclusive economic rights conducted by the copyright owners or others authorized by the copyright owners or others authorized by the copyright owners to reproduce a work by any manner or under any form, including the reproduction of a work under electronic forms.
• The term of copyright protection will last for the life of the author and 50 years after his/her death.
• Copyright protection provided for lectures, delivery and speeches.
• Organizations or individuals possessing anonymous works are entitled to transfer the works to other organizations or individuals and receive royalties and remuneration.
• “Owner of broadcasts” has been changed to “users of broadcasts”.
• New guidelines for issuance, re-issuance, replacement and cancellation of Certificates of Copyright Registration and Certificates of Related Rights Registration.
• It is now required that collective management organizations sign written contracts with copyright and related rights owners about which particular rights which copyright and related rights owners entrust the collective management organizations.

 

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