APAC Monthly IP Update  – June 2020 

China

Passage of the PRC Civil Code and its impact on intellectual property rights

The Civil Code of People’s Republic of China (the “PRC Civil Code”) was published on 28 May 2020 and comes into force 1 January 2021. Made up of seven parts, the PRC Civil Code has 84 chapters and 1,260 articles. Although laws governing intellectual property rights are not compiled into an independent chapter, experts are confident that the scattered provisions will have an impact on these rights.

The provisions impacting intellectual property rights include:

• explicitly listing commercial secrets as intellectual property objects since it provides a guidance for legislation on commercial secrets in the future;
• providing punitive damages for wilful intellectual property infringement, which provides the foundation for granting punitive damages under trademark law, patent law, copyright law, and anti-unfair competition law; and
• providing a separate chapter on technology contracts, which further regulates the application of laws and regulations in technology contracts and promotes the transformation and implementation of intellectual property rights.

Detailed information of the PRC Civil Code can be found here.

SPC invites comments on judicial interpretations for the trial of trade secret disputes

On 10 June 2020, the Supreme People’s Court (“SPC”) issued a draft for comment of the following document – "Interpretations on Several Issues concerning the Application of Law in the Trial of Civil Cases Involving Disputes over Trade Secret Infringement" – in order to obtain public comments by 27 July 2020.

This Draft for Comment contains several provisions that promote the interests of trade secret holders, such as allowing the trade secret holder to specify the trade secret in dispute before the end of the first instance trial; defining that the reckless or negligent disclosure of confidential information legally obtained from another will constitute the disclosure of obtained and confidential information; specifying that the refusal to provide financial or other information as evidence without legitimate reason may lead to the recognition of the damage alleged by the trade secret holder.

The Draft also provides guidance on what constitutes technical or business information, security measures for protecting confidential information, access to confidential information, etc.

More information on this can be found here.

SPC invites comments on the drafted opinions on IP litigation evidence and strengthening sanctions on IP infringement

On 15 June 2020, the Supreme People’s Court (“SPC”) issued a draft of the document “Several Provisions on Intellectual Property Litigation Evidence” (“Evidence Draft”) and a draft on “Opinions on Strengthening Sanctions on Intellectual Property Infringement” (“Sanctions Draft”) in order to obtain public comments by 31 July 2020.

The Evidence Draft is intended to clarify the burden of proof in intellectual property disputes. For example, Article 3 loosens the patent holder’s burden of proof when the infringement dispute involves a patented method, and the burden of proof can be shifted to the alleged infringer after the patent holder provides preliminary evidence. Article 8 provides that infringing product purchasing evidence collected by the intellectual property right holder or its agent can be used as evidence in court. Article 9 loosens certification requirements for evidence collected overseas.

In the Sanction Draft, the SPC urges the people’s court to strengthen the application of security measures, issue injunctions according to law, increase compensation according to law, and increase criminal crackdowns on intellectual property infringement.

More information on this can be found here.

Hong Kong

Implementation of the Madrid Protocol in Hong Kong is fast approaching with the Amended Trade Marks Ordinance 2020

The amendment known as the Trade Marks Ordinance 2020 (“Amended Ordinance”) came into operation on 19 June 2020 and provides a basis in Hong Kong law “for the implementation of an international registration system of trade marks under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol); to enhance the mechanism for registering trade marks; to include enforcement powers; and to provide for related or technical amendments.” (extracted from the Amended Ordinance, the full text can be found here).

Currently, 106 countries, including China and many of Hong Kong's other major trading partners, are party to the Madrid Agreement adopted on 27 June 1989, which simplifies the registration process and lessens the time and cost burden for trade mark owners by allowing them to seek an extension for the protection of trade marks in multiple jurisdictions through a one-stop application process including the registration of trade marks in the register of the International Bureau of the World Intellectual Property Organisation.

The Amended Ordinance, under Part 2 Section 13, confers the Trade Mark Registrar a power to make rules to give effect in Hong Kong to the provisions of the Madrid Protocol with respect to matters relating to an application made to the International Bureau of the World Intellectual Property Organisation through the Registry for registration of a trade mark in the International Register under the Madrid Protocol and related procedure for making or dealing with such application; and to matters relating to the extension request of the protection resulting from the international registration of a trade mark in Hong Kong under the Madrid Protocol and related procedure for making or dealing with such request.

According to the press release published by the Hong Kong Intellectual Property Department, although it is expected to take some time for Section 5 and Part 4 of the Amended Ordinance concerning trade mark rights acquired in Hong Kong under the Madrid Protocol to come into operation due to the anticipated preparatory work, the Amended Ordinance signifies the fast-approaching implementation of the Madrid Protocol by the Hong Kong Government in 2022 and 2023, further to the Legislative Council Brief on the Trade Marks (Amendment) Bill in 2019.

Singapore

Launch of “SG Patent Fast Track” – world’s fastest patent application process

On 4 May 2020, the Intellectual Property Office of Singapore (“IPOS”) launched a technology-neutral patent acceleration programme called “SG Patent Fast Track” (“PFTP”), which will run until 29 April 2022. The PFTP replaces existing technology-specific programmes such as the FinTech Fast Track and Accelerated Initiatives for Artificial Intelligence, which ended in April and May 2020 respectively.

Under the PFTP, patent applications in any technology field may be granted within six months, making it the world’s fastest patent application-to-grant process of its kind.

To be eligible for the PFTP, a patent application must fulfil the following:

• The application must first be filed in Singapore (i.e. without any priority claim) and must not be a divisional application;
• The application must contain 20 or fewer claims;
• Applications under the PFTP are on a first-come, first-serve basis with a monthly cap of up to five applications per month. Any unutilised capacity will be rolled over to the next month subject to a maximum cap of ten applications per month; and
• Applicants are entitled to a maximum of ten applications under the PFTP per year.

No additional fees are necessary to participate in the PFTP at this time.

If a patent application qualifies for the PFTP, applicants must adhere to the PFTP’s strict time lines. For example, applicants must respond to a "formalities" objection within two weeks and a written opinion within two months.

The PFTP provides a competitive advantage to innovators, serving as a springboard to accelerate examination of corresponding foreign applications via Patent Prosecution Highways (“PPH”) and the ASEAN Patent Examination Cooperation (“ASPEC”) into international markets.

More information on this can be found here.

Public consultation for licensing conditions for Collective Management Organisations in Singapore

On 3 June 2020, the Ministry of Law and the Intellectual Property Office of Singapore (“IPOS”) launched a public consultation seeking feedback on a proposed licensing scheme for Collective Management Organisations (“CMOs”) in Singapore.

The public consultation will run between 3 June 2020 and 30 June 2020 and is part of the overall review of Singapore’s copyright and CMO ecosystem to develop a practical regulatory framework.

Click here for our Law-Now alert for more details.