APAC Monthly IP Update  – Winter 2020/21

China

China passed the amendments to the patent examination guidelines

On 11 December 2020, the China National Intellectual Property Administration (CNIPA) passed the Announcement of Amending the Patent Examination Guidelines (No. 391 Amendments), which mainly focuses on patent applications in the chemistry and biology fields. The No. 391 Amendments came into effect on 15 January 2021.

The No. 391 Amendments clarify that post-filing data submitted to overcome lack of inventive step (Article 22.3 of the Patent Law) and insufficient disclosure (Article 26.3 of the Patent Law) rejections should be examined. It also provides two examples where the post-filing data should be examined.

For the examination of patent applications directed to chemical compounds or biological products, under the No. 391 Amendments, the examination of inventive step should follow a three-step analysis, i.e. (1) determining the closest prior art, (2) determining the difference between the present invention and the closest prior art, and the technical problem actually solved, and (3) determining whether the invention is obvious to a skilled artisan by analysing whether the prior arts provide a technical inspiration for a skilled artisan to adopt the identified difference to solve the technical problem. The No. 391 Amendments provide multiple examples to show what should be considered to pertain an inventive step and what should not in the chemical and biological fields.

Please click here for the text of the Announcement of the CNIPA on Amending the Patent Examination Guidelines (No. 391) (Chinese only).

China published drafted amendments to the implementing rules of patent law

On 27 November 2020, China National Intellectual Property Administration published the Proposals For Amendments to the Implementing Rules of the Patent Law (Draft for Comment) to be in line with the newly passed patent law amendments. Public comments were invited before 11 January 2021.

The amendments focusing on three major changes in the newly amended patent law, i.e. the newly added drug patent term compensation, the revised stipulations concerning design patents and the open licensing system. For drug patent term compensation, the Draft for Comment clarifies the issues regarding eligibility for patent term compensation, patent term compensation calculation method, protection scope enjoyed during the compensated term, requirements for applying patent term compensation, and dispute resolution over the compensated term.

For the design patents, the Draft for Comment clarifies the issues regarding the preparation requirements of a partial design patent application and the local priority claim. Furthermore, it is noticeable that China is now actively advancing the process of joining the Hague Agreement concerning the International Deposit of Industrial Designs. In the Draft for Comment, it added a new chapter 11 concerning the Hague Agreement. It clarifies issues concerning the application, publication, examination, priority claim, divisional application, grant, and license and assignment of international design patents.

For open licensing, the Draft for Comment clarifies the issues regarding the requirements for issuing open license and the information should be provided in the open licensing statement, scenarios where open licensing statement will not be announced, and the recordation and withdrawal of the open licensing statement.

Please click here for the full text (Chinese only) of the Draft for Comment.

China amends Copyright Law

On 11 November 2020, China announced the decision to amend its Copyright Law. The current Copyright Law was promulgated in 2010 (2010 Copyright Law). The amended Copyright Law (2020 Copyright Law) will take effect on 1 June 2021.

The 2020 Copyright Law contains six chapters with 67 articles. Compared with the 2010 Copyright Law, the 2020 Copyright Law strengthens the protection of copyright holders. The highlights include:

• in civil copyright infringement cases,
  • setting a base of RMB 500, and raising the ceiling of statutory damages to RMB 5 million for when the copyright holder’s actual loss and the copyright infringer’s illegal gain are hard to determine
  • setting the punitive damage of one to five times the actual damages for wilful infringement, and lowering the right holder’s burden of proof for damages;
• in criminal copyright infringement cases, setting a fine of up to RMB 250,000 for when the illegal turnover is hard to determine or less than RMB 50,000, and a fine of one to five times the illegal turnover for when the illegal turnover is more than RMB 50,000;
• expanding the scope of works protected as copyright works:
  • by defining that works can be protected under copyright law when they can be “represented in a certain form”;
  • generalising cinematographic works and TV works into audio-visual works and providing rules stipulating ownership of the works;
  • providing a catch-all clause protecting other intellectual properties that conform to the characteristics of works;
  • specifically listing digitalisation as a duplication right, and expanding the broadcasting right to the spread or rebroadcasting of the work;
• requiring that when using the work of another for a derivative creation, a license fee should be paid;
• granting injunctive relief when copyright infringement will cause irreparable damage if not stopped immediately; and
• prohibiting the direct or indirect destruction or circumvention of technologies adopted for copyright protection and setting up exceptions to the general rule.

Other highlights include adjusting the rights and obligations of collective copyright management organisations, clarifying the ownership of employee performance, expanding the scope of fair use, especially adding an exemption for providing reading-challenged people with sensible access to published works, and changing the starting date for the protection of the publication right of a legal person or non-legal organisation from the initial publication date to the work's completion date and applying similar changes to the publication right of audio-visual works,.

Please click here for the full text (Chinese only) of the 2020 Copyright Law.

Public comments stage for SPC draft Provisions on disputes involving drugs patents closes

The Supreme People's Court’s (SPC) draft Provisions on Several Issues concerning the Application of Law in the Trial of Patent Civil Cases Involving the Review and Approval of Marketing of Drugs (Draft for Comment) (Provisions) had closed public consultation stage on 14 December 2020. The Provisions clarify the application of Article 76 of the newly passed amendments to the Patent Law (2020 Patent Law), which establishes an early pharmaceutical patent-dispute resolution mechanism and patent-linkage system.

In the draft Provisions, the SPC granted first instance jurisdiction over disputes concerning drug patents to the Beijing IP court and clarified the terms in Article 76 of the patent law and procedural issues arising from a patent dispute. Other important provisions are outlined below.

The draft Provisions stipulate that the evidence submitted by a brand-name drug patent holder for filing a patent dispute before the Beijing IP court should be (1) patents recorded in the patent information registration platform, (2) a category IV declaration submitted by the generic drug applicant, and (3) preliminary evidence showing that the generic drug falls into the protection scope of the patent.

It also stipulates that when an invalidation action is taken against the patent, the Beijing IP court generally will not suspend the patent infringement litigation proceeding. The court will be able to declare non-infringement of a patent when the patent is obviously invalid.

Furthermore, it also provides that if a brand-name company brings an infringement lawsuit and withdraws it without justifiable reasons (or all claims are rejected by the court), the Beijing IP court may accept cases brought by generic drug companies against this brand-name company for damages and reasonable litigation costs incurred due to the delayed new drug review.

Please click here for the full text (Chinese only) of the Provisions.

SPC released provisions on evidence in civil litigation involving intellectual property

On 16 November 2020, the Supreme People's Court (SPC) released the Several Provisions of Supreme People's Court on Evidence in Civil Litigation Involving Intellectual Property (Provisions), which took effect on 18 November 2020. The Provisions cover burden of proof, legitimate sources of defence, evidence collection, evidence preservation, authentication, evidence and testimony examination, and damage compensation. Some important provisions include:

• Reduction of right holders’ burden of proof for patents directed to methods for producing non-new products

After the right holder proves that the product in question is the same as the one made by the patented method, he may assume the product was made by the same method. If the right holder has made reasonable effort to prove the defendant used the patented method, the court may require the defendant to prove that the method for producing the alleged infringing product is different from the patented method.

• Raise the threshold for legitimate source defence

The Provisions clarify that for proving the legitimate source, the defendant is required to provide evidence from both objective and subjective aspects. From the objective aspect, the defendant should prove that they legally obtained the alleged infringing products or the duplicates by submitting evidence such as legitimate purchase channels, reasonable prices and direct suppliers. From the subjective aspect, the alleged infringer must prove that they have taken reasonable care, which is proportionate to the evidence in the objective aspect. The alleged infringers’ scale of business, professional level, and market-trading practices can also be used to determine whether reasonable care has been taken.

• Acknowledge the evidence collected as anonymous ordinary customers

The Provisions specify that the objects, invoices and other evidence obtained as an ordinary customer either by the right holder or through an agent can be admitted as evidence in civil litigation involving intellectual property infringement. Evidence generated due to action taken by third parties can also be used as evidence in civil litigation involving intellectual property infringement.

However, if the alleged infringer only infringes the right holder's intellectual property rights due to the rights holder's evidence-collection action, then the evidence will not be considered in civil litigation involving intellectual property infringement.

• Specify the factors to be considered for evidence preservation

The Provisions specify the review factors for granting evidence preservation, including whether the applicant has provided prima facie evidence in support of its claim; whether the evidence can be collected by the applicant itself; the possibility of loss of evidence or difficulty in obtaining it in the future as well as the impact on proving the facts to be proved; and the impact of possible preservation measures on the evidence holder.

Also, the Provisions stipulate that if a party does not cooperate (without legitimate reasons) or jeopardises evidence preservation, leading to a failure to preserve the evidence, the party may face adverse consequences. If the party completes actions that destroy or fabricate the preserved evidence resulting in the evidence becoming unusable, it again may face adverse consequences.

Please click here for the full text (Chinese only) of the Several Provisions of Supreme People's Court on Evidence in Civil Litigation Involving Intellectual Property.

SPC issued opinions on reinforcing the protection of copyright and copyright-related rights

On 16 November 2020, the Supreme People's Court (SPC) issued the Opinions on Reinforcing the Protection of Copyright and Copyright-related Rights (Opinions), which took effect on the same day.

Among other important stipulations, the Opinions reaffirm that a natural person, legal person or unincorporated organisation that affixes its signature to a work, performance or sound recording in the usual way will be presumed to be the copyright owner or related right owner of the work, performance or sound recording, unless there is sufficient evidence to the contrary. It also provides factors to be considered when there is a dispute over the ownership of copyright.

The Opinions also list factors to be considered in calculating damage where the actual loss of the right holder, the illegal gains of the infringer, or the licensing fee is difficult to calculate, such as the type of right to be protected, the market value, the subjective fault of the infringer, the nature and scale of the infringement act, and the severity of the consequences of the damage. Compensation may be obtained for reasonable costs incurred during litigation (e.g. attorney fees), but will be not be included when determining the damage.

The Opinions also stipulate that the infringer will be deemed to have committed a wilful infringement if the infringer has been determined by an effective court judgment or administrative decision to have infringed the patent, or reached a settlement agreement with the right holder of the patent over its infringing act but continued to commit or in a disguised way repeatedly committed the alleged infringing act.

Please click here for the full text (Chinese only) of the Opinions on Reinforcing the Protection of Copyright and Copyright-related Rights

CNIPA publishes draft revision of guidelines for patent examination for comments

Further to the First Batch of Draft Revision of the Guidelines for Patent Examination for comments (First Batch for Comment) published on 30 September, the China National Intellectual Property Administration (CNIPA) issued a Second Batch of Draft Revision of the Guidelines for Patent Examination (Second Batch for Comment) on 10 November, which was open for public comments until 10 December 2020.

Unlike the First Batch for Comment, which focused on revisions of examination guidelines in the pharmaceutical field, the Second Batch for Comment mainly focuses on clarifying and simplifying prosecution procedural issues, such as abandoning the requirement for submitting priority documents and biological material deposits and viability certificates for filing a divisional application, and confirming that a divisional application can be filed up to three months after the receipt of the re-examination decision.

The Second Batch for Comment also adjusted examination rules for design patents. Some key developments include eliminating the requirement of submitting the stereoscopic view in a design application, clarifying that a view can be omitted if the side of the product cannot be seen easily during the product's usage, adding that the application should record a description of a product or even the use of the product when the application is directed to a part of the product, deleting a design that is not directed to the common status of the product as a unpatentable subject matter, and clarifying the “components product” constitutes one design and clarifying the definition thereof.

It is worth noting that the Second Batch for Comment provided an update on patentable subject matter. For inventions in the computer-science industry, the Second Batch for Comment expands the scope of patentable subject matter to cover inventions that adopt technical measures to solve technical problems to achieve a technical effect that conforms to the natural law. For unpatentable diagnostic methods, the Second Batch for Comment excluded methods for measuring blood pressure as an example of unpatentable subject matter.

For patentable methods not deemed diagnostic, it added that if the direct purpose of the subject matter is not to obtain a diagnostic result or health status, but only serves as an information-processing method for obtaining an intermediate result, the claim is directed to patentable subject matter. It also provided numerous examples of what and what does not constitute patentable subject matter.

Another notable change is that the Second Batch for Comment added a whole new chapter directed to the examination of traditional Chinese medicine. The chapter includes detailed examination standard for patentable subject matter, sufficient disclosure, claims to be deemed clear and supported by the description, novelty, inventive steps, and utility.

Please click here for the full text (Chinese only) of the Draft for Comment.

Hong Kong

A new version of the eleventh edition of Nice Classification entered into force on 1 January 2021

With effect from 1 January 2021, the 2021 version of the Eleventh edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”), which is designated as NCL(11-2021), has been adopted for the purpose of classifying goods and services under the Trade Marks Ordinance (Cap. 559).

The International Bureau of WIPO will apply the 2021 version of the eleventh edition of the Nice Classification to:

• any application for international registration that is received by the Office of origin on or after 1 January 2021; and
• any application for international registration that is received by the International Bureau of WIPO on or after 1 January 2021, when the said application is received by the International Bureau of WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

In conformity with its standing practice and in light of the number of changes made in this new version compared to the previous version, the International Bureau of WIPO will not reclassify in accordance with the 2021 version of the eleventh edition of the Nice Classification the list of goods and services in international registrations that predate 1 January 2021.

For more information on this new version, please refer to here.

South Korea

Korean Intellectual Property Office launches mobile application for patents

On 23 December 2020, the Korean Intellectual Property Office (KIPO) announced to expand its 'Mobile Application System'. Following its introduction of the world's first trademark application system service using mobile phones as of 16 March 2020, KIPO expanded the scope to further include patents, utility models, and designs applications.

With the introduction of the mobile application system, anyone who has a smartphone can conveniently apply for patents, utility models, and design rights without restrictions on time and place. The system also provided a 'mobile fee payment' service, which allows users to easily pay various fees to the KIPO, receive notifications, check the progress of examinations, and issue certificates.

In addition, online application/registration of general power of attorney (general delegation of procedures related to patent applications by applicants to agents) for overseas residents (a person who does not have an address or place of business in Korea) became possible, further providing English services for overseas residents to allow them to quickly and easily verify and track progress of the delegated applications by mobile phones.

For more information, please refer to here.

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Cases of riding the Korean wave to be reduced with signing of the Regional Comprehensive Economic Partnership

On 16 November 2020, the Korean Intellectual Property Office (KIPO) announced that the signing of the Regional Comprehensive Economic Partnership (RCEP) should end cases of 'riding the Korean Wave' in 15 countries, including ASEAN.

This RCEP includes a total of 83 clauses for each category, including trademarks, patents and designs. The details of the partnership are as follows:

(1) Trademark

- The number of cases in which Korean trademarks are stolen is expected to be greatly reduced since the malicious applications of trademark brokers for the purpose of preoccupying trademarks of Korean companies can be refused or cancelled locally in the region.

- A duty was imposed to establish a system that receives and processes applications electronically, and a database that allows the public to search for and utilise application and registration information.

- In addition, by giving a duty to process trademark applications and registrations in accordance with the WIPO classification system, it creates an environment where Korean companies can conveniently apply for trademarks and search related information through the international classification system in ASEAN and other local regions.

(2) Unfair Competition

- Because RCEP prohibits the misprinting and misusing of the Korean name (even if it is not a Korean product) that could cause confusion over the country of origin, the business activities of companies that have been riding the Korean Wave in ASEAN and other countries will be greatly restricted.

- An obligation was imposed to provide proper relief measures in response to a third party that registers a domain name, which is the same or similar to another person's trademark in the region.

(3) Patent

- Third-party patent applications will be greatly reduced in cases where the applications are similar to the patent applications filed by Korean companies in some ASEAN countries that have not yet adopted the system to disclose 18 months after the patent application.

- In line with the new obligation to process patent applications and registrations according to the World Intellectual Property Organisation's classification system, a foundation has been established to introduce this classification system in ASEAN.

(4) Design

- The basis for the introduction of a partial design system has been stipulated that allows applications and registrations for each part of the product in terms of design rights.

- An obligation was imposed to make efforts to process design applications and registrations in accordance with the World Intellectual Property Organisation's classification system, further supporting the future adoption of this classification system in ASEAN.

The signing of the RCEP and the earnest application of its provisions in the procedures of each country next year is expected to strengthen protections for intellectual property rights in ASEAN.

For more information, please refer to here.

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Japan

Graphic image design registered for the first time in Japan

On 9 November 2020, the Japan Patent Office (JPO) unveiled the first registered image/video design in Japan. The related details are as follows:

- With the recent diversification of Internet services and the rapid deployment of smartphones, cloud-based applications and software are now being used over networks, and the number of devices able to project images on walls, human beings, etc. has increased.

- The ability to project an image/video design to a location from these cloud applications plays an important role in determining the convenience of a product.

- The JPO revised the Design Act, which took effect on 1 April 2020, in order to promote innovation, enhance corporate competitiveness by recognising exclusive rights to an image/video design, strengthen the system to protect designs using digital technology and to build brands.

- Approximately 450 applications have been filed for image/video design as of 8 October 2020 based on the revised Design Act, and the first registered image/video design in Japan is an image for vehicle information display. This image is projected on the road surface from a vehicle installed with a video-projection device, and the image makes it easy to visually identify the presence of an external vehicle projected around the driving or stationary vehicle.

For more information, please refer to here.

Singapore

Student Mediator Features in Successful Multi-Jurisdictional IP Mediation Case

On 7 December 2020, the Intellectual Property of Singapore (IPOS) published a press release on its first multi-jurisdictional IP mediation in which a student under its “Young IP Mediator” initiative (YIPMI) participated as a “shadow” mediator. The Young IP Mediator participated in a mediation case on 30 October 2020 involving a trademark dispute. The outcome of the mediation was positive and met the commercial concerns and objectives of both parties in Singapore and overseas.

IPOS launched the YIPMI at IP Week @ SG on 26 August 2020. The initiative seeks to nurture and build up IP mediation experience among youths by giving them an opportunity to be involved in mediation. The move to offer Young IP Mediators hands-on induction and exposure to real mediation practice is part of IPOS’ continuous capability building effort to raise the next generation of IP mediation expertise and complement Singapore’s drive towards becoming a global IP dispute resolution hub.

The IPOS press release can be found here, and click here for more information on the Young IP Mediator initiative and the mediation case.

Classification of articles, non-physical products, or set of articles and non-physical products for the purposes of the registration of a design

On 23 December 2020, the Registry of Designs issued Practice Direction No. 4 of 2020, which will supersede Practice Direction No. 2 of 2019 and take effect starting on 1 January 2021.

Practice Direction No. 4 of 2020 provides that for the purposes of registration of a design, each article, non-physical product, or set of articles and non-physical products to which the design is intended to be applied is to be classified in accordance with the classification set out in the Locarno Classification, 13th Edition, except Class 32 (Graphic symbols and logos, surface patterns, ornamentation).

Practice Direction No. 4 of 2020 can be found here. Please click here for the Locarno Classification, 13th Edition.

Renewal of the Copyright (Excluded Works) Order

On 24 December 2020, the Copyright (Excluded Works) Order 2020 (“EWO 2020”) was published. The EWO 2020 sets out exceptions where users are permitted to circumvent technological protection measures (“TPMs”) for legitimate use of copyrighted works. TPMs are technologies and devices comparable to digital locks that restrict the access or use of copyrighted works.

The EWO 2020 was published following a public consultation by the Ministry of Law and the Intellectual Property of Singapore from 7 September 2020 to 2 October 2020 to review the current Copyright (Excluded Works) Order 2017 (“EWO 2017”) which expires on 31 December 2020. The EWO 2020 will take effect on 1 January 2021 and will remain in force until 31 December 2024 (both dates inclusive).

The EWO 2020 retains the exceptions in the EWO 2017, namely:

1. Continued use of software reliant on obsolete systems;
2. Read-aloud and assistive functionality for digital e-books;
3. Use of short clips from films or shows for educational purposes;
4. Use of short clips from films or shows for criticism or commentary;
5. Investigating and fixing cybersecurity flaws; and
6. Replacement or repair of essential or emergency system software.

The full text of the EWO 2020 can be found here.

Regional Comprehensive Economic Partnership (RCEP) offers key benefits for IP

On 15 November 2020, 15 Asian-Pacific (APAC) countries signed the RCEP agreement, the signatories being the ten ASEAN member states and Australia, China, Japan, New Zealand and the Republic of Korea. In total, the RCEP Participating Countries (RPCs) account for approximately 30% of global GDP and 30% of the world population as of 2020.

The RCEP Agreement is the world’s largest Free Trade Agreement (FTA) to date, and is expected to expand and enhance the economic connectivity of individual RPCs in the region, and provide new opportunities and preferential access into developing markets.

Key benefits for intellectual property under the RCEP include:

• The RCEP will raise standards for IP protection and enforcement in all RPCs. Businesses intending to penetrate markets in RPCs can obtain protection including non-traditional trade marks (such as sound marks) and a wider range of industrial designs.
• RPCs have committed to accede to international IP treaties, which will streamline applications for companies to file a single patent or trade mark application for multiple countries, instead of having to file individual applications in each country.
• Aside from provisions on harmonising protection for the standard suite of IP rights, the RCEP Agreement also provides protection for IP rights beyond the level of the World Trade Organisation (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Overall, the RCEP provides a balanced and inclusive approach to the protection and enforcement of IP rights in the region, and aligns with the objective to establish mutually beneficial economic partnerships that builds on the existing ASEAN Plus One FTAs.

For more information on the RCEP, please click here.