APAC Monthly IP Update  – July 2020 

Asia-Pacific

China

China publishes second draft of amendment to PRC patent law

On 3 July 2020, lawmakers published the second draft of the Amendment to the Patent Law of People’s Republic of China, which will be open to public comments until 16 August 2020.

Compared to the first draft published in early 2019, the second draft includes enhanced design patent protection, compensation for invention patent terms, pharmaceutical patent term extensions, increased statutory damages for patent infringement, and an early pharmaceutical patent-dispute resolution mechanism and patent linkage system that further protects the rights of patentees. 

The second draft also includes enhanced protection for pharmaceutical patents. If the relevant technology of a drug under application falls under the protective scope of a patent published on China’s drug marketing patent-information registration system, the patentee or interested party can file a lawsuit with the people’s court or apply for an administrative decision with the relevant government department. According to the draft, the State Drug Administration and Patent Administration Department of the State Council will establish a patent linkage system between the examination of marketing authorisations and patent disputes arising at this stage. 

For more details, click here for a Law-Now, and here for the full text (Chinese only) of the second draft of Patent Law.

CNIPA publishes criteria for determining trademark Infringement

On 15 June 2020, the China National Intellectual Property Administration (“CNIPA”) issued the Criteria for the Determination of Trademark Infringement (“Criteria”) to further strengthen trademark law enforcement, unify the standards of law enforcement, and enhance protections under trademark law.

The Criteria, which took immediate effect, provides detailed explanations on what constitutes the use of trademarks, identical products, similar products, identical trademarks, similar trademarks and easy-to-confuse trademarks, and guidance on sales exemptions, protection of lawful prior-use during a conflict of rights, the circumstances when infringement litigation will be suspended, and the identification of right holders, etc.

For more details, click here for a Law-Now, and here for the full text (Chinese only) of the Criteria.

SPC and SPP invites comments on interpretation (III) of issues for the specific application of law in criminal IP infringement

On 17 June 2020, the Supreme People’s Court (“SPC”) and the Supreme People’s Procuratorate ("SPP") are also seeking public comments (due 2 August 2020) for the Interpretation (III) of Several Issues Concerning the Specific Application of Law in the Hearing of Criminal Cases of Intellectual Property Infringement (Draft for Comment) ("Draft").

The Draft enhances criminal law protection over trade secrets, such as Article 3 of the Draft, which states that “the other illegal means” (provided for in item 1, paragraph 1, Article 219 of the Criminal Law for acquiring right holder’s trade secrets) include bribery, fraud, unauthorised reproduction, electronic intrusion, and using a computer information system without or contrary to authorisation. Other relevant provisions also include an enhanced definition of what “caused a substantial loss to a trade secret rights holder”, how to determine the loss or illegal gain derived from infringement of trade secrets, and the criminal liability of litigation participants who have violated confidentiality obligations for a trade secret.

The Draft also specifies criminal sentencing and fine recommendations against counterfeiters, and the actions to be taken against counterfeit products.

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

Hong Kong

Impact of US Executive Order on export licensing for certain technology/data from US to Hong Kong

In 14 July 2020, US President Donald Trump signed into law the Hong Kong Autonomy Act (“HKAA”) and issued an Executive Order to revoke Hong Kong’s preferential trade privileges, economic treatment, and export of sensitive technologies.

In particular, the Executive Order instructs the heads of all agencies by 29 July 2020 to commence the revocation of license exceptions for exports to Hong Kong, re-exports to Hong Kong, and transfers (in-country) within Hong Kong of items subject to the Export Administration Regulations (“EAR”) that provide differential treatment over licensing exceptions applicable to China.  The Department of Commerce had already suspended these exceptions as of 30 June 2020 (link).

Pursuant to the 30 June 2020 guidance issued by the Commerce Department’s Bureau of Industry and Security (BIS), export/re-export transactions involving Hong Kong persons authorised under license-exception eligibility prior to 30 June 2020 can be authorised under such a provision until 28 August 2020, after which time these transactions will require a license. Exporters, re-exporters, or distributors making transfers (in-country) taking advantage of this 60-day savings clause must maintain documentation demonstrating that the Hong Kong recipient was hired and provided access to technology eligible for Hong Kong under part 740 prior to 30 June 2020.

This restriction on exports of sensitive technology and technical data from the US to Hong Kong offers less favourable treatment and more stringent licensing rights and procedures to intellectual property right holders in Hong Kong.

For more information, click here.

The Copyright (Amendment) Ordinance 2020 in operation as of 26 June 2020

The Copyright (Amendment) Ordinance 2020 (“Amendment Ordinance”), which was enacted and came into effect on 26 June 2020, was created to enhance copyright exceptions in the Copyright Ordinance (Cap. 528) (“Copyright Ordinance”) relating to persons with a print disability (i.e. a difficulty or inability to read printed material) in order to bring existing relevant copyright exceptions into line with standards under the Marrakesh Treaty.

The amendment will include, among other changes, a new section 40CB of the Copyright Ordinance and provided that the specified conditions are fulfilled, a specified body may for the purpose of supplying accessible copies of a literary, dramatic, musical or artistic work to persons with a print disability for personal use (i.e. not for selling or letting for hire), import or obtain an accessible copy from an authorised entity in other jurisdictions outside Hong Kong, possess the accessible copy, and make and supply further accessible copies from this accessible copy without infringing the copyright. The Amendment Ordinance also expands the definition of “print disability” in the Copyright Ordinance to enable persons with a perceptual or reading disability, including dyslexia, to use the copyright exceptions provided for persons with a print disability.

For more information, click here.

Singapore

Singapore strengthens IP collaboration with South Korea

On 1 July 2020, Singapore and the Republic of Korea (“ROK”) entered into a Memorandum of Understanding (“MoU”) to strengthen IP cooperation. The MoU was signed between Daren Tang, Chief Executive of the Intellectual Property Office of Singapore (“IPOS”), and Park Wonjoo, Commissioner of Korean Intellectual Property Office (“KIPO”).

The MoU allows enterprises faster access to markets and strengthens collaboration on commercial exploitation of intangible assets and IP in sectors such as healthcare, technology, artificial intelligence and Internet of Things in the innovation ecosystems of both countries.

According to IPOS’s press release on 1 July 2020, the ROK was Singapore’s eight largest trading partner in 2019, with bilateral trade amounting to SGD 39.4 billion, while Singapore was the ROK’s sixth largest foreign investor in 2018. IPOS also recorded a 47% increase in patent applications from ROK in 2019.

From this collaboration, Korean enterprises can draw on IPOS’s patent search and examination expertise to conduct international searches under the Patent Cooperation Treaty (“PCT”), an international patent filing system administered by the World Intellectual Property Office (“WIPO”). Korean enterprises can also use a PCT report from IPOS, which is an International Searching Authority (“ISA”) under the PCT, to accelerate patent grants in other jurisdictions.

Furthermore, IPOS will assist KIPO with its deep technical expertise and bilingual capabilities to conduct prior art searches to determine if an application meets the criteria for patentability. KIPO Commissioner Park commended IPOS for having “highly capable and linguistically competent examiners”. As a result, Korean enterprises planning to penetrate the Chinese market can now select IPOS as an ISA to obtain early insight into relevant prior art in the Chinese language.

IPOS Chief Executive Tang said that this MoU would bring Singapore and ROK “even closer together”, and “enhance Singapore’s attractiveness as a base for Korean innovators to access regional markets and beyond”.

Overall, this IP cooperation will allow enterprises easier access to markets in Singapore and ROK, and the ability to tap the expertise of the IP office of the other in order to develop in the region and beyond.

For more information, click here.

WIPO Centre to provide complimentary mediation services for IPOS proceedings until 31 August 2020

To further encourage the use of mediation and to help parties lower barriers to resolving Intellectual Property (“IP”) disputes under the COVID-19 pandemic, the WIPO Arbitration and Mediation Centre (“WIPO Centre”) will offer, in collaboration with the Intellectual Property Office of Singapore (“IPOS”), its WIPO mediation services at no charge to parties opting for WIPO mediation in IPOS proceedings until 31 August 2020.

Parties may also choose to use the WIPO Centre’s eADR and videoconferencing facilities at no cost.

This opportunity is offered through an existing collaboration framework between IPOS and WIPO to establish a joint dispute-resolution procedure to facilitate the mediation of IP disputes before IPOS.

The areas of mediation include:

  • Trademark
  • Patent
  • Industrial Design
  • Geographical Indications

The WIPO Mediation option offered by IPOS may prove beneficial for international parties seeking to resolve disputes across multiple jurisdictions and is available for all dispute-resolution proceedings before IPOS.

For more information, click here.