APAC IP Update – Winter 2021

Australia, Asia-Pacific

China

China encourages IP disputes mediation

On 22 October 2021, the China National Intellectual Property Administration (CNIPA) and the Ministry of Justice jointly issued “the Opinions on Strengthening the Mediation for Disputes over Intellectual Property”.

According to these Opinions, by 2025 the mediation for disputes over intellectual property (IP) will basically cover the keys regions and industries prone to IP-related disputes. A comprehensive, standardised and highly efficient mediation system for IP-related disputes will be established. The mediation system will include civil, administrative, industrial and specialised, and judicial mediation, which will become complementary, connected and coordinated with each other. As a result, civil mediation organisations established according to relevant laws and regulations, local IP administrative bodies, mediation offices established by lawyers, mediation departments within E-commerce platforms will be able to assist in resolving IP disputes. The mediators will be trained, licensed, and evaluated.  IP administrative bodies and the judicial administration will issue typical IP dispute mediation cases to provide guidance and improve mediation quality.

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

SPC issues Report on IP Disputes Judicial Judgment

On 21 October 2021, the Supreme People's Court (SPC) published a Report on the Intellectual Property Judicial Judgment of the People's Courts. This Report summarises the tasks completed by the SPC since the 18th National Congress of the Communist Party of China, identifies the difficulties courts face and proposes measures and suggestions for the coming years.  

The Report points out that there are four trends in intellectual property-related disputes:

  • the number of disputes are rapidly rising with an average annual increase of 24.5%;

  • an increasing number of disputes involve new technologies in fields such as core technology in the internet industry, genetic technology, information communication, integrated circuit, artificial intelligence and platform economy;

  • disputes arising from internet increases; and

  • balancing interests between individuals and the public are becoming more difficult.

Over the next five years, the SPC states that it will do the following:

  • conduct further judicial reform for intellectual property judicial judgments, including enhancing punishment for intellectual property infringement and promoting the in-depth application of the database of intellectual property cases, judgment documents and judgment rules;

  • strengthen international judicial exchanges and cooperation on intellectual property rights, including ensuring that foreign-related intellectual property cases will be ruled fairly in accordance with the laws, and providing equal protection for Chinese and foreign rights holders; and

  • study new situations and posit solutions for new problems, such as:

    • improving the judicial protection rules for intellectual property rights in new fields such as big data, artificial intelligence, and genetic technology;

    • researching and improving intellectual property protection over algorithms, trade secrets, artificial intelligence products, and open-source intellectual property judicial protection rules;

    • perfecting the platform economy's anti-monopoly adjudication rules, and strengthening the judicial system in key areas such as platform economy, technological innovation, information security, and people's livelihood protection.

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

CNIPA issues Clarifications Regarding Intentional Infringement of IPRs

On 18 October 2021, the China National Intellectual Property Administration (CNIPA) issued the Reply on Matters Concerning the Criteria for Ascertaining "Intentional Infringement of Intellectual Property Rights".

The Reply clarifies that "intentional" infringement should be distinguished from "serious circumstances" to prevent the inappropriate overlap of the two constituent elements to avoid repeat evaluations. Specifically, “intentional” should refer to state of mind, which can then result in aggravated punishment. “Serious circumstances” refers to the objective judgment on the adopted infringement measures and consequences.

In addition, the Reply clarifies that when determining whether an infringer who has intentionally infringed upon the intellectual property rights of another should be included in the List of Entities with Seriously Illegal and Dishonest Acts, an administrative body should also consider whether a heavier administrative punishment should be imposed and should evaluate whether the act was of a sufficiently grave nature, occurred in serious circumstance, or caused great social harm.

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

China issues the 14th Five-Year Plan for IP Protection and Exploitation

On 9 October 2021, the State Council issued the National Plan for Intellectual Property Rights Protection and Exploitation during the 14th Five-Year Plan Period, which clarifies the guiding ideology, basic principles, main goals, key tasks, and implementation safeguards for the development of intellectual property during the "14th Five-Year Plan" period.

The important developments expected in the next five years include:

  • enhancing legislation for trade secret protection and in areas such as anti-monopoly and anti-unfair competition related to intellectual property rights;

  • fully establishing and implementing punitive damage clauses provided in the intellectual property laws and increasing damage awards;

  • improving the intellectual property protection system for new fields and new business types such as big data, artificial intelligence, and genetic technology. Especially note that intellectual property protection rules for data will be researched and constructed;

  • improving the genetic resource acquisition and benefits sharing system, and establishing a cross-sectoral biological genetic resource acquisition and benefits sharing information system;

  • perfecting the patent linkage system and establishing related supporting measures; and

  • promoting the extraterritorial application of intellectual property laws and regulations in China.

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

NMPA issues Provisions on the Supervision and Administration of Cosmetics for Children

On 30 September 2021, the National Medical Products Administration (NMPA) issued Provisions on the Supervision and Administration of Cosmetics for Children. NMPA clarifies that:

  • except for labelling requirements, the other rules and regulations provided in the Provisions will come into effect on 1 January 2022;

  • from 1 May 2022, all cosmetics for children that have been filed for registration or recorded must be labelled in accordance with the Provisions;

  • for cosmetics for children that have been filed for registration or recorded before 1 May 2022, the registrant or record-filer should update the labels before 1 May 2023 to comply with the Provisions.

According to the Provisions, it should be noted that:

  • cosmetics for children should be labelled with NMPA-prescribed cosmetics for children logos and displayed on the surface of the packaging. Introductory words such as "Caution" or "Warning" should be used and warning phrases such as "Use Only under Adult Supervision" should be marked on the visible side of the package.

  • the ingredients for all cosmetics for children should follow the principles of safety first, necessary effects only, and less is better. No new raw material under monitoring, gene or nano technology is allowed. No raw material for the purpose of freckle removing, whitening, acne treatment, body hair removal, deodorants, anti-dandruff, anti-hair loss, hair dying, or perming can be added.

  • raw materials or cosmetics contact material should not contain hormones, anti-biotics or any other prohibited raw materials or substances that may endanger human health.

  • the Provisions require cosmetic registrants, record-filers, and entrusted manufacturers to take measures concerning the scent and appearance to avoid any confusion between the cosmetics and food, medications, and other products. Preventing such confusion will reduce the chances of accidental ingestion or misuse. Labels should not contain the wording “edible” or its equivalent.

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

NMPA seeks comments on Monitoring of Adverse Reactions of Cosmetics

On 29 September 2021, the National Medical Products Administration (NMPA) once again issued the Administrative Measures for the Monitoring of Adverse Reactions of Cosmetics (Draft for Comment). The deadline for submitting comments was 19 October 2021.

The Draft stipulated the obligations taken by each party (i.e. administrative departments at national, provincial, and regional levels, cosmetics registrants or record-filers, entities entrusted to manufacture or market cosmetics, platform operators, medical institutes, and national monitoring bases).  In particular, the Draft states that cosmetics registrants and record-filers must be responsible for monitoring adverse reactions, and actively collect, report, investigate and analyse the adverse reactions of their marketed cosmetics, and fulfil obligations for:

  • establishing and implementing a cosmetics-adverse reaction monitoring and evaluation system;

  • set up and appoint corresponding departments and personnel for monitoring adverse reactions;

  • actively collecting and reporting adverse reactions in accordance with the Draft's measures;

  • investigating the known adverse reactions in a timely fashion and based on the results adopting effective measures to control risks;

  • collaborating with the relevant drug administration department to investigate and handle adverse reactions;

  • establishing and keeping a record of the adverse-reaction monitoring history.

Foreign cosmetics registrants or record-filers must collaborate with its local responsible entity to fulfil these obligations.

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

China publishes Outline for Building a Powerful Intellectual Property Nation (2021-2035)

On 22 September 2021, the Central Committee of the Communist Party of China and the State Council issued the "Outline for Building a Powerful Intellectual Property Nation (2021-2035)". The Outline stipulates the following key tasks:

  • building an intellectual property system oriented to socialist modernisation:

  • building an intellectual property protection system that supports a world-class business environment;

  • building an intellectual property market operating mechanism that encourages innovation and development;

  • building a public service system of intellectual property rights that is convenient for the people;

  • building a humanistic and social environment that promotes the high-quality development of intellectual property rights; and

  • participating in global intellectual property governance.

According to the Outline, by 2025 the added value of patent-intensive industries will account for 13% of GDP, the added value of copyright industries will account for 7.5% of GDP, the total annual import and export of intellectual property royalties will reach RMB 350 billion, and the number of high-value invention patents per 10,000 people will reach 12.

For more details on these amendments, follow this link to the full text (Chinese only) of the Guidelines. 

SAMR proposes amending E-Commerce Law to Strengthen Intellectual Property Protection

On 31 August 2021, the State Administration for Market Regulation (SAMR) released the Decision to Amend the E-Commerce Law of the People's Republic of China (Draft for Comment). The deadline for submitting public comments on this Draft was 14 October 2021.

The Draft proposes the following amendments to Articles 43 and 84 of China's E-Commerce Law:

  • extending the waiting period for the intellectual property right (IPR) holder to file an administrative complaint or initiate a civil litigation to 20 business days after the platform’s delivery of the alleged infringer’s counter arguments;

  • when the business operator provides a security for potential damages to the IPR holder, the platform operator can suspend the measures adopted to protect the IPR holder’s interests;

  • if the business operator submits fraudulent statements claiming no infringement and leading to greater damage, the business operator will be responsible for aggravated liability;

  • when the platform operator fails to adopt necessary measures to stop infringement activities, the IP law enforcement department can impose a fine. In serious situations, the relevant department can restrict the platform operator’s business activities, and even revoke the relevant license for network operations.

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

Hong Kong

Hong Kong to adopt updated Nice Classification

On 10 December 2021, the Intellectual Property Department of the Government of the Hong Kong Special Administrative Region announced that the 2022 version of the eleventh edition of the Nice Classification (designated as NCL(11-2022), will be adopted for the purpose of classifying goods and services under the Trade Marks Ordinance (Cap. 559) with effect from 1 January 2022.

Click here for the 2022 version of the eleventh edition of the Nice Classification.

Hong Kong launches pilot scheme on deferral of formality examination of applications for standard patents by original grant

On 26 November 2021, the Intellectual Property Department of the Government of the Hong Kong Special Administrative Region announced the launch of a pilot scheme in relation to applications for standard patents by original grant (the “Scheme”). 

Under this scheme, an applicant may submit a request for deferral of formality examination for a period up to 12 months from the filing or priority date.  This essentially allows an applicant to establish an early filing date without having to immediately furnish any claim(s).  As such, applicants have more time to assess the patentability and commercial potential of their invention as well as to seek funding.  However, it should be noted that such applications are granted at the Registrar’s sole discretion and must satisfy certain requirements.  Furthermore, if an application is granted, the processing of the standard patent by original grant will be suspended during the deferred period.

Click here for the full details regarding the Scheme.

Hong Kong launches a public consultation on updating its copyright regime

On 24 November 2021, the Government of the Hong Kong Special Administrative Region (“HKSAR”) published a press release (the “Press Release”) regarding the launch of a three-month public consultation on updating Hong Kong’s copyright regime.  The public has until 23 February 2022 to submit their views and recommendations.

The HKSAR has proposed to use the Copyright (Amendment) Bill 2014 as the basis for updating the copyright regime as it is the result of years of deliberations between various stakeholders.  In this regard, the Secretary for Commerce and Economic Development has stated that “[they] aim to strike a proper balance between the legitimate interests of copyright owners and users and serve the best interests of Hong Kong”.

The key legislative proposals include the following five areas: (1) giving copyright owners a technology-neutral exclusive communication right; (2) introducing criminal sanctions against infringement relating to the exclusive communication right; (3) introducing two additional statutory factors for the court to consider when assessing whether additional damages should be awarded to copyright owners in civil cases involving infringement; (4) introducing “safe harbour” provisions to limit the liability of online service providers for their subscribers’ copyright infringement acts on their service platforms; and (5) providing new copyright exceptions for the use of copyright works in three categories (i.e. parody, satire, caricature and pastiche).

The consultation also covers additional issues with a view to strengthening copyright protection in Hong Kong.

Click here for the full text (English only) of the Press Release.

Hong Kong Customs raids storehouses of counterfeit sports footwear and children's clothing

On 3 November 2021, the Customs and Excise Department (“C&E”) published a press release (the “Press Release”) regarding the seizure of about 1,100 items of suspected counterfeit sports footwear and children’s clothing with an estimated value of HKD800,000 at the Shenzhen Bay Control Point in Tsuen Wan and Tsing Yi.

Initially, the C&E intercepted an incoming truck at the Shenzhen Bay Control Point, seized the suspected counterfeit goods and arrested the driver.  Upon further investigation, the C&E officers took enforcement action at a storehouse located in Tsuen Wan where further suspected counterfeit products were seized and two women were arrested.

The individuals arrested are suspected of having created dedicated pages and accounts on online social platforms to sell counterfeit goods to local customers, and renting the industrial units to store and pack the goods.

Click here for the full text (English only) of the department’s Press Release.

Hong Kong Customs detects largest smuggling case on record

On 7 October 2021, the Customs and Excise Department (“C&E”) published a press release (the “Press Release”) regarding its largest smuggling case on record in terms of seizure value. Hong Kong Customs stated that it seized a batch of suspected smuggled goods with an estimated market value of about HKD210 million from a speedboat. The seizures included high-value goods, expensive food ingredients and endangered species.

Since June of 2021, the C&E has targeted an organised smuggling syndicate active in Lung Kwu Tan and after months of investigations conducted a joint enforcement operation with the Marine Police’s Small Boat Division.  During an operation, C&E officers and Marine Police officers identified suspicious individuals moving cartons from a lorry to a speedboat at a seashore in Lung Kwu Tan.

C&E officers seized a lorry at the scene and after further investigations raided a storehouse in the vicinity.  The C&E seized a further three lorries suspected to be connected with the case and discovered significant batches of suspected smuggled goods.

Click here for the full text (English only) of the department’s Press Release.

Singapore

Changes to Dispute Resolution Regime for Patents now in force

Changes have been made to the patent regime in Singapore, pursuant to the Intellectual Property (Dispute Resolution) Act, which came into force on 1 October 2021.

Key changes to the patent system include the following:

  • A new third-party observation process for patent applications. This process allows third parties to submit additional information on the patentability of an invention to the Intellectual Property Office of Singapore (IPOS) before the examiner issues the examination report.

  • The introduction of a process allowing for the specifications of a granted patent to be re-examined upon request. The bases for e-examination requests include grounds for revocation (e.g. the invention is not patentable, or the specifications do not disclose the invention clearly and completely for it to be performed by a person skilled in the art).

The new processes highlighted above provide additional options for contesting a patent or patent application, aside from applying for patent revocations.

Notably, some of the provisions of the Intellectual Property (Dispute Resolution) Act are still not in force, such as provisions relating to the consolidation of intellectual property disputes in the High Court. Currently, intellectual property disputes may be heard in the High Court, State Courts or IPOS.

Click here for the Intellectual Property (Dispute Resolution) Act and here for the Intellectual Property (Dispute Resolution) Act 2019 (Commencement) Notification 2021.

IPOS publishes Report on Trade Secrets

The Intellectual Property Office of Singapore (IPOS) recently published the findings of a study on the protection and management of trade secrets in Singapore. This study is part of the Singapore IP Strategy 2030 and its main objective was to review the level of knowledge and ability of enterprises operating in Singapore to protect and manage trade secrets, and the current legal framework in Singapore.

One of IPOS's key findings is that clearer rules and processes may be required to maintain the confidentiality of trade secrets in legal proceedings. The report states that IPOS and the Ministry of Law are looking into feedback on this issue and will follow up on the matter with the relevant stakeholders, possibly via a public consultation.

Click here to view the report findings for the study on the protection and management of trade secrets in Singapore.

Australia

Australia makes changes to Designs Act

Several changes to the Australian Designs Act will come into force on 10 March 2022, including the following key changes:

  • The introduction of a one-year grace period for registering designs. Currently, a design must not be made public prior to filing. The new one-year grace period, which will only apply to publications that take place on or after 10 March 2022, allows applicants to make their designs public for up to one year prior to applying for design registration.

  • The introduction of new prior user rights or infringement exemptions, which apply to a third party that begins using a design after there has been a disclosure of the design, but before an application for registration has been filed.

  • Designs filed on or after 10 March 2022 will automatically undergo a formalities examination six months after the application’s priority date, which removes the requirement to request for registration within six months of the priority date.

  • The introduction of the right of an exclusive licensee to sue for infringement of a registered design. Presently, only a registered owner of a registered design may commence proceedings for design infringement.

Click here for the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021.

Australian court rules that AI can be an Inventor

In Thaler v. Commissioner of Patents [2021] FCA 879”, the Australian Federal Court has recently ruled that artificial intelligence can be an inventor.

The inventions in the Thaler ruling were containers with features that allow the containers to be joined together, as well as devices and methods for creating a light-emitting beacon. A Patent Cooperation Treaty (PCT) application was filed naming the artificial intelligence system DABUS as inventor. After a national-phase formalities examination for the application, the Australian Patent Office rejected the application on the basis that DABUS is not a natural person and cannot be named an inventor.

The applicant, Dr. Stephen L. Thaler, appealed against the Patent Office’s rejection to the Federal Court, which disagreed with the Patent Office and held that artificial intelligence can be named an inventor in a patent application. According to the Federal Court, the Australian Patents Act does not contain a definition for “inventor” and the provisions of the Patents Act do not exclude an inventor from being a non-human artificial intelligence device or system. The Federal Court further held that Thaler may be entitled to the patent granted to the invention based on the Court’s interpretation of section 15(1) of the Patents Act, such that Thaler may be entitled to the patent without the need for the inventor to own the invention and for the title to be derived by an assignment.

Click here for the full decision of Thaler v. Commissioner of Patents [2021] FCA 879.

Indonesia

Changes proposed to Patent Law

Indonesia’s patent law is currently being amended with the aim of bringing the patent law in line with Indonesia's Job Creation Law (Law No. 11 of 2020) and international standards, as well as to expedite business processes. The Directorate General of Intellectual Property held a virtual session in August 2021 to consult with relevant stakeholders on the draft amendments to the patent law.

The current draft amendments contain notable changes, which include:

  • Allowing patents for computer-implemented inventions and computer-related inventions, while specifying that computer programmes alone cannot be patented;

  • Allowing patents for a new use of an existing product or for a new form of an existing compound that significantly increases efficacy and has no related chemical structural differences from the known compound;

  • Increasing the grace period for filing a patent application from six months to 12 months after the disclosure of the invention;

  • Permitting the implementation of a patent not only through production, but also through granting permission to other parties, such as through transfer and licensing;

  • Permitting the late filing of patent applications claiming priority rights, up to 16 months from the priority date;

  • Creating the provision that a compulsory licence will be cancelled after two years if the licensee fails to secure implementation or allows ineffective implementation detrimental to the public interest; and

  • Granting the government the right to implement the patent for a pharmaceutical product for treatment of diseases in humans if the product cannot be produced in Indonesia.

Co-contributed by Eugene Wong