APAC IP Update  – Summer 2021 

China

SPC releases major and typical intellectual property cases for 2020

On 22 April 2021, the Supreme People's Procuratorate published the ten major intellectual property cases and 50 typical intellectual property cases for 2020 (i.e. Typical Cases).

Notably, the ten major intellectual property cases include:

• Apple Computer Trade (Shanghai) Co., Ltd. vs. China National Intellectual Property Administration and Shanghai Xiaoi Robot Technology Co., Ltd. (invention patent invalidation dispute);
• Huawei Technology Co., Ltd, Huawei Terminal Ltd., Huawei Software Technology Co., Ltd., vs. Conversant Wireless Licensing S.àr.l. (declaratory judgment for non-infringement and standard essential patent licensing dispute);
• Red Bull Vitamin Drink Co., Ltd. vs. T.C.Pharmaceutical Industries Co., Ltd. (trademark dispute);
• Suzhou Xysemi Electronic Technology Co., Ltd. vs. Shenzhen Yusheng Technology Co., Ltd., Caihuan HU, Jiandong HUANG, and Sailiang HUANG (infringement dispute over the exclusive right of integrated circuit layout design);
• Wuhan Atlantic Continuous Steel Casting Equipment Engineering Co., Ltd. vs. Zuxing SONG (dispute over company surplus distribution);
• Oppo Guangdong Mobile Communication Co., Ltd., Oppo Guangdong Mobile Communication Co., Ltd. (Shenzhen branch) vs. Sharp Corporation and ScienBiziP Japan (licensing dispute over standard essential patents);
• Shanghai Xuanting Entertainment Information Technology Co., Ltd. vs. Chengdu Jiqian Technology Co., Ltd. and 4399 Network Co., Ltd. (copyright infringement dispute);
• Shenzhen Tencent Computer System Co., Ltd. and Tencent Technology (Shenzhen) Co., Ltd. vs. Zhejiang Sodao Network Technology Co., Ltd. and Hangzhou Juketool Technology Co., Ltd. (unfair competition dispute);
• Huizhou Huanchang Yibai Entertainment Co., Ltd. vs. China Audio-Video Copyright Association (antitrust dispute); and
• Haipeng LI et. al. (copyright criminal infringement case).

For the 50 typical intellectual property disputes, there are 41 civil disputes related to infringement of patents, trademarks, copyrights, unfair competition and anti-trust, and plant new varieties and technology contracts; four administrative adjudication disputes related to trademark or patent invalidation and re-examination; and five criminal cases involving infringement of trademark, copyright and trade secrets.

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

CNIPA seeks comments on the revision of the trademark examination and adjudication standards

The China National Intellectual Property Administration (CNIPA) has recently formulated and issued the Trademark Examination and Adjudication Standards (Draft for Comment) to solicit comments from all walks of life by on 12 July 2021.

The Draft for Comment is divided into two parts, which seeks to reflect the latest achievements in the development of trademark protection as well as examination and adjudication practices. The revised content mainly includes two aspects: the first is to add new standards on trademark formality and administrative examination; the second is to revise and improve the substantive standards of trademark examination and adjudication. Among them, the first aspect involves clarifying and refining the general requirements for formality examination of trademark registration, opposition, review, and cancellation. The second aspect involves clarifying the applicable requirements including the types of marks prohibited from registration, judgment criteria and consideration factors for recognising that two marks are the same or similar.

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

The Patent Information Registration Platform now available for test running

On 18 May 2021, China’s Centre for Drug Evaluation (CDE) issued a Notice on the Public Testing of the Early Resolution Mechanism of Drug Patent Dispute Related Patent Information Registration Platform. This official launch of the testing of the patent information registration platform for drugs marketed in China marks another substantial step forward in the implementation of a patent linkage system in the China. The testing period for the patent information registration platform took place from 18 May 2021 to 31 May 2021. Feedback should be sent to: <[email protected]>, cc <[email protected]>.

The platform, available at https://zldj.cde.org.cn/home, offers searches conducted by drug name, patent number, and company name. In addition, the platform also allows brand-name drug companies to register the relevant patents of drugs marketed in China, and also provides comprehensive search engines for registered patent-information and patent declarations.

The Notice has three appendices providing a “patent information registration template”, “instructions on filling the form for registration of patent information of drugs marketed in China” (i.e. Instructions), and a “patent declaration disclosure template and format” (i.e. Template and Format).

Please click here for a Law-Now article drafted for the Notice, and here for the full text (Chinese only) of the Notice.

CNIPA issues measures for administrative adjudication of major patent infringement disputes

On 28 May 2021, the China National Intellectual Property Administration (CNIPA) issued the Measures for Administrative Adjudication of Major Patent Infringement Disputes and the Announcement on Issues concerning the Acceptance of Administrative Adjudication of Major Patent Infringement Disputes. The CNIPA's Measures for Administrative Adjudication came into effect on 1 June 2021.

According to these Measures, the following cases are recognised as major patent disputes: cases involving major public interests, cases seriously affecting the development of industry, and major trans-provincial cases. The Measures also provide a catch-all clause for patent disputes that could also have a major impact.

To request administrative adjudication of a major patent infringement dispute, certain circumstances must be met, along with four conditions including "the requestor shall be a patentee or an interested party". As stipulated in the Measures, where a request fulfils the relevant requirements, the CNIPA must accept the case and inform the requestor within five business days upon receipt of the request, and appoint three or more personnel to a panel to handle the case. The Measures also make it clear that, when handling a patent infringement dispute, the CNIPA must make the administrative adjudication decision within three months from the acceptance date.

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

CNIPA issues interim measures of the revised patent law

On 24 May 2021, the China National Intellectual Property Administration (CNIPA) issued the Interim Measures for the Processing of Related Examination Businesses Regarding the Implementation of the Revised Patent Law, which came into force on the same day as the revised patent law on 1 June 2021.

The Interim Measures contain important stipulations, including:

• the revised clause regarding prior disclosure does not affect the novelty of a later patent application and the domestic priority claim for design patents apply to applications filed after 1 June 2021;
• the design patent term will be 15 years only for the patents with an application date on or after 1 June 2021;
• the patent term adjustment (PTA) for invention patents applies to patents granted on or after 1 June 2021, and the patent holder should apply for PTA with CNIPA within three months from the grant date of the patent; and
• the patent right holder can apply for the patent term extension (PTE) for drug patents starting from 1 June 2021 within three months from the date receiving the approval for new drug marketing authorisation.

The CNIPA will examine the PTA and PTE request after the implementation of the newly revised Implementation Rules for the Patent Law.

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

Handling of patent infringement disputes to be prioritised

On the 16 June 2021, the China National Intellectual Property Administration (CNIPA) released a Reply to No. 6494 Suggestions of the Fourth Session of the 13th National People's Congress.

The reply contains four aspects:

• revision and perfection of the patent law;
• expediting patent litigation;
• strengthening intellectual property protection; and
• improving the settlement of intellectual property disputes through multiple mechanisms.

Important input from the CNIPA includes:

• that the people’s court should aim to conclude the first instance within six months and second instance within three month, and the invalidation process is not the main reason for delayed issuance of patent infringement judgments. The reasoning behind these measures is that a people’s court is not obligated to suspend a trial when an invalidation process is initiated and also that the invalidation request before the CNIPA will be concluded within about five months; and
• The CNIPA will continue to improve the intellectual property credit system and punish individuals who engage in severe discreditable activities.

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

CNIPA standardises the involvement of technical investigators in administrative adjudication disputes

On 7 May 2021, China’s National Intellectual Property Administration (CNIPA) published the Interim Provisions on Technical Investigators Participating in Administrative Adjudication of Disputes over Patents and Layout Designs of Integrated Circuits.

According to these Interim Provisions, technical investigators are assisting personnel not involved in decision-making. The CNIPA will establish a nation-wide directory library for technical investigators who will be selected from technical personnel in the CNIPA, industry associations, universities, research institutes, and companies in the relevant fields. The responsibilities of technical investigators include providing suggestions regarding the technical facts of key disputes, participating in investigations, inquiries, and oral hearing processes, and providing technical investigation opinions (that are not available to the public). As expected, technical investigators can ask the parties or relevant persons questions during inquiries and oral hearings. Technical investigators are also subject to recusation when their relationships with the parties or representing agents or their interests in cases may affect their neutrality.

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

NMPA clarifies matters on the filing management of ordinary cosmetics

On 25 June 2021, the National Medical Products Administration (NMPA) published the Notice on Further Clarifying Matters Related to the Filing Management of Ordinary Cosmetics, which took effect the same day.

The Notice ensures that product record-information will be made available to the public within five business days. It also provides that in the supervision and inspection work carried out by the supervisory departments at all levels, if filing materials of the registered ordinary cosmetics do not meet requirements, if filing materials are misrepresented, or if registered products violate laws and regulations, they must follow the Regulations and the Administrative Measures and other relevant regulations, conduct investigations and deal with the illegal matters.

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

NMPA publishes administrative measures for cosmetics labels

On 3 June 2021, China’s National Intellectual Property Administration (CNIPA) issued measures for cosmetics labels, which will come into effect on 1 May 2022.

These Measures stipulate that the stock-keeping units of cosmetics must be labelled, and that the Measures also apply to free samples. Labels will comply with relevant laws, administrative regulations, departmental rules, mandatory national standards and technical specifications. The contents of labels will be legal, true, complete and accurate, and will be consistent with the relevant contents of product registration or filing. Cosmetics will have Chinese labels and the Chinese characters should be larger than other languages (except for the trademark).

Meanwhile, the Measures clearly state that the Chinese labels of cosmetics products must include the following:

• The product name in Chinese, and the registration certificate number for special cosmetics;
• The registrant and record filer’s names and addresses; foreign entities should also provide the local responsible person’s name and address;
• The manufacturer’s name and address; domestic cosmetics should also provide the Production license number of the producer's enterprise;
• The standard number of the product implementation;
• All ingredients;
• Net content;
• Use period;
• Instructions on how to use;
• Necessary safety warnings; and
• Other contents that should be marked in laws, administrative regulations and mandatory national standards.

The Measures also provide that cosmetics labels cannot be marked or claimed in misleading ways or in ways that involve unfair competition. A label cannot indicate that ordinary cosmetics have medical effects.

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

Hong Kong

Hong Kong grants first-ever standard patent by original grant

The Patents Registry of the Intellectual Property Department (IPD) granted the first standard patent under the original grant patent (OGP) system during the first week of June – 14 months after the applicant filed the application.

Launched in December 2019, the OGP system creates a direct route for innovators to seek standard patent protection in Hong Kong with a maximum term of 20 years, providing an alternative to the existing "re-registration" route. The OGP system also enables any short-term patent owner or third party having a legitimate interest in the validity of a patent to request the Registry to carry out substantive examination on the underlying invention, which further safeguards the integrity of the existing short-term patent system.

The invention of the first standard patent by original grant relates to the use of artificial intelligence to manage inventory in an e-commerce system. As of 31 May 2021, the Patents Registry received a total of 426 OGP applications. Hong Kong residents or enterprises submitted 33% of these (142 applications). Non-local applicants submitted 67% (284) of the applications.

For more information about the OGP system, including its detailed filing requirements, procedures and official fees, please click here.

Hong Kong and Mainland Customs bust largest speedboat smuggling case on record

Hong Kong Customs and the Mainland Customs have been conducting a joint anti-smuggling operation codenamed "Xun Lei" since March of this year. Hong Kong Customs conducted enforcement from 2 – 7 June and uncovered a speedboat smuggling racket. A batch of suspected smuggled infringing goods with an estimated market value of about HKD 120 million was seized, including about 66,000 pieces of high-value goods (e.g. luxury handbags and valuable watches). This is the largest speedboat smuggling case uncovered by Hong Kong Customs on record in terms of seizure value.

In view of the recent upward trend of sea smuggling activities, Hong Kong Customs stepped up intelligence exchanges with the anti-smuggling departments of the Mainland Customs, and targeted a cross-boundary smuggling syndicate of counterfeit goods for in-depth investigation. The "Xun Lei" operation was jointly conducted by Hong Kong Customs, the Anti-Smuggling Bureau of the General Administration of Customs of the People's Republic of China (GACC), the Anti-Smuggling Bureau of the Guangdong Sub-Administration of the GACC, and the Anti-Smuggling Bureau of Shenzhen Customs.

The investigation is ongoing. This customs operation demonstrates the continuous efforts and close cooperation between Mainland China and Hong Kong to fight against counterfeit goods and smuggling activities.

For more information, please click here.

Indonesia

New patent examination guidelines issued for medical use claims

The Indonesian Patent Office has issued new patent examination guidelines, which provide clarification on medical use claims under the Indonesian Patent Law (No. 14/2016) (IPL).

Article 4(f) of the IPL states that a new use of a known product and/or a new form of a known product that does not offer significant increase in efficiency of that product is not patentable. The new examination guidelines appear to introduce an exception to this patentability exclusion in Article 4(f) of the IPL, providing that a medical use claim directed at a known compound (i.e. for second or subsequent medical use) is patentable if it is directed toward a specific disease and written in the purpose limited product claim (EPC2000) format.

Japan

Japan rules against Uniqlo in a lawsuit over patent rights

On 20 May 2021, the Intellectual Property High Court in Japan ruled against Uniqlo, which claimed the invalidation of a patent in a lawsuit over the validity or invalidity of the patent.

This lawsuit was based on a dispute over the validity of the patent for the technology to read the tag information of products used in unmanned self-calculators in Uniqlo stores.

The Osaka-based IT company Asterisk, which invented the said technology and obtained patent rights, claimed that the unmanned self-calculator structure used by Uniqlo violates these patent rights. In response, Uniqlo refuted by saying that this technology is "easy to invent" and filed a request for invalidation of Asterisk's patent.

In August 2020, the Japan Patent Office (JPO) partially acknowledged Uniqlo's invalidation claim in its judgment, but ruled that some parts of the patents were still valid. Both parties appealed.

The Intellectual Property High Court then decided that Asterisk's patents were "not easy to invent" and ruled in favour of Asterisk. The ruling affirmed that the technology for reading tag data cannot be invented easily and the patent rights are valid.

For more information, please click here.

Singapore

Written opinions by IP offices now accepted under the ASEAN Patent Examination Co-operation Programme

Established on 15 June 2009, the ASEAN Patent Examination Co-operation (ASPEC) Programme is an initiative that enables IP Offices from participating ASEAN member states to utilise the search and examination results from another participating IP office as a reference in its own search and examination processes. The participating IP offices include Brunei Darussalam, Cambodia, Indonesia, Lao People's Democratic Republic, Malaysia, the Philippines, Singapore, Thailand and Vietnam. Previously, only the final examination report of a corresponding patent application could be submitted with an ASPEC request.

From 15 June 2021, a written opinion established by a participating IP Office, constituting a non-final search and examination document, may also be submitted in an ASPEC request in other participating IP Offices (with the exception of Thailand’s Department of Intellectual Property or DIP). This comes with the additional requirement that the written opinion being submitted has at least one claim determined to be allowable or patentable. Currently, this change does not apply to Thailand’s DIP where final examination reports must still be submitted in an ASPEC request.

For more details on the use of written opinions for ASPEC requests, please refer to the ASPEC Document Submission Guidelines.

Amendments to Copyright Act expected

On 6 July 2021, the Singapore parliament tabled the Copyright Bill for the First Reading. This Bill is intended to improve and clarify the rights of creators, users, and intermediaries. It also introduces key changes and is the first amendment of copyright legislation drafted since 2011.

Please click here for a full update. The Copyright Bill can be viewed here.

IPOS approves “Prosecco” as a geographical indication

The Intellectual Property Office of Singapore (IPOS) issued a ruling that confirmed "Prosecco" as a geographical indication.

The decision is based on a case initiated on 3 May 2019 when the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (i.e. the Applicant), a consortium established in Italy, applied to register the name “Prosecco” as a geographical indication for wines originating from the north east region of Italy (i.e. the Application GI). The Australian Grape and Wine Incorporated (i.e. the Opponent), the representative body for grape growers and winemakers in Australia, had filed an opposition against the registration of the Application GI.

The Opponent based its opposition on two grounds under the Geographical Indications Act (GIA), namely that (a) the indication contained the name of a plant variety and is likely to mislead the consumer as to the true origin of the product; and (b) the indication did not fall within the meaning of “geographical indication” as defined in section 2 of the GIA.

The Registrar found that the opposition failed on both grounds:

• No likelihood of misleading consumers: The Registrar found that “Prosecco” was indeed the name of a grape variety but held that it does not automatically follow that the Application GI is likely to mislead consumers as to the true origin of the product. It is clear from section 15(b) of the GIA (which provides exceptions to the rights of registered GIs where the GI consists of a plant variety name) that the GIA does not prohibit the registration of geographical indications that are identical with the names of plant varieties. Based on the evidence submitted in relation to how the goods in question were marketed to and perceived by consumers, the Registrar was not persuaded that the registration of the Application GI will mislead consumers.
• Definition of “geographical indication”: The Registrar held that the Application GI fell within the meaning of “geographical indication” under section 2 of the GIA, which merely requires the indication to be used in trade to identify goods as originating from a place. Section 2 of the GIA is not concerned with how the indication is perceived by the consumers and whether the indication is a generic term for a type of product. The Registrar stated it was satisfied that “Prosecco” has been used in trade to identify goods as originating from the north east region of Italy.

Please click here for the full decision by IPOS.

Medical Devices Branch publishes draft Guidance on Medical Device Unique Device Identification System

The Medical Devices Branch of the Health Sciences Authority published a draft "Guidance on the Medical Device Unique Device Identification (UDI) System" for comments and feedback. The consultation period for this guide took place from 25 May 2021 to 30 June 2021.

This document is intended to provide manufacturers and importers with guidance on the regulatory requirements for UDI implementation in Singapore as well as details on the steps to submit UDI information to the Singapore Medical Device Register (SMDR) and Class A Medical Device Database. The draft guide currently states that the UDI System is based on the internationally harmonised International Medical Device Regulators Forum (IMDRF) principles, and clarifies that UDIs applied on medical device labels for EU or the USA markets can be used in Singapore. The draft guide also clarifies that the inclusion of UDI on the device labels will be an additional requirement and is not meant to replace any other existing labelling requirements as set out in the Guidance on Labelling for Medical Devices.

The draft Guidance on the Medical Device Unique Device Identification (UDI) System can be viewed here.

Health Sciences Authority removes over 700 listings of illegal health products from e-commerce platforms

The Health Sciences Authority (HSA) removed more than 3,200 product listings from local e-commerce platforms between January and May 2021. Of these product listings, approximately 700 were taken down during Operation Pangea, an enforcement operation targeting the online sale of illicit pharmaceutical products that was coordinated by INTERPOL between 18 and 25 May 2021. During Operation Pangea, the HSA intensified online surveillance of local e-commerce platforms to detect and disrupt the online sale of illegal health products.

The product listings taken down included those for (a) leftover or unused medicines prescribed for chronic medical conditions such as high blood pressure, diabetes and for the management of cholesterol (in Singapore only qualified licensees are allowed to sell prescription medicine); and (b) lifestyle health products such as weight loss pills, sexual enhancement medicines and cosmetic products for skin whitening, which were tested by HSA and found to be adulterated with medicinal ingredients or banned substances.

Please click here for the press release by the HSA.

South Korea

Korean Intellectual Property Office implements Collaborative Search Programme with Saudi Arabia

On 30 June 2021, the Korean Intellectual Property Office (KIPO) announced the implementation of a pilot project, the Collaborative Search Programme (CSP), which jointly conducts patent screening between South Korea and Saudi Arabia. The pilot project formally began on 1 July 2021.

The CSP provides patent review services that are faster and more accurate than general applications by examiners (searching together for prior technologies similar to that invention and sharing the results) for cases where patent applications have been made for the same inventions in the two countries.

Through the use of the CSP and cooperation of examiners from both countries, a patent invention applied for examination in both South Korea and Saudi Arabia will be able to receive accurate examination services within six months from the date of the examination request. Since a general review in Saudi Arabia takes about 21 months (as of 2018), the patent examination period should be reduced by about 15 months from the current period.

If this project is fully implemented, most of the patents from South Korea should be registrable in Saudi Arabia.

For more information, please click here.

Korean Intellectual Property Office enforces partial revision of several acts to make damage compensation a reality

On 23 June 2021, the Korean Intellectual Property Office (KIPO) announced that amendments to the Trademark Act, Design Protection Act, Unfair Competition Prevention and Trade Secret Protection Act will go into force in order for compensation to be received for infringements beyond a rights holder's production capacity.

Even if leading companies have developed innovative ideas and technologies, there were many situations in which this property was stolen or copied without authorisation instead of executing normal contracts for usage or licensing. These offences occurred because it was not possible to receive compensation for damages exceeding the production capacity of the rights holder.

The revised Act ensures that companies, which are victims of infringements and stealing activities that exceed the production capacity of the rights holder, can receive more compensation for profits (i.e. reasonable royalties) that they should have received through a license or use agreement.

The amended Compensation Calculation Method was introduced in the Patent Act in December 2020, and with the implementation of this revised Act, the same criteria for calculating damages can be applied to most intellectual property rights, excluding copyright.

If the amended Compensation Calculation Method and the 'threefold compensation system' are combined, the right holder can be more strongly protected from intentional infringement of intellectual property.

For more information, please click here.

Thailand

Deadlines for Patent Office actions extended

On 16 April 2021, the Director-General of the Department of Intellectual Property (DIP) in Thailand issued a notification to extend the submission deadlines for documents and amendments in response to office actions with the DIP. The notification was issued in response to the ongoing third wave of the COVID-19 pandemic in Thailand.

The notification provided that any office action deadlines, which originally fell between 16 April 2021 and 31 May 2021, were automatically extended to 31 May 2021. Furthermore, applicants with such office action deadlines were required to submit their responses or the required documents between 1 June 2021 and 30 June 2021.

Patent application for COVID-19 drug Favipiravir rejected

On 5 May 2021, the Department of Intellectual Property (DIP) in Thailand rejected a patent application for the drug Favipiravir, which is used to treat viral infections such as COVID-19 in many countries, including Thailand. The Director-General of the DIP indicated that the patent application for the Favipiravir tablet was rejected because it lacks an inventive step and did not constitute an advanced invention under Thailand’s 1979 Patent Act. An implication of the rejection of this patent application is that both the Government Pharmaceutical Organisation (GPO) and any private company in Thailand may be free to produce and sell this drug for local use. The GPO is currently developing its own version of Favipiravir to increase Thailand’s supply of the drug and reduce dependence on imports.