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Wednesday, October 29, 2014

Philippines moves ahead with IP reforms for the AEC


The Philippines has announced plans to accede to several IP agreements as part of their plans to get ready for the ASEAN Economic Community in 2015. These are:

A. The Nice Agreement on the classification of goods and services in trademark applications
B. The Vienna Agreement, on the classification of figurative parts of trademarks
C. The Singapore Trademark Law Treaty, which harmonizes various trademark prosecution procedures.
D. The Hague Agreement. This treaty provides for a centralized design registration system. ASEAN is encouraging its adoption throughout the region.

The Philippines IPO also announced plans to further amend the Intellectual Property Code. The definition of “trademark” will be expanded to include non-traditional trademarks. The Declaration of Actual Use requirement after 3 years will be axed, which will be music to trademark owners’ ears. They plan to have an electronic office action process, to accept credit cards for payment and enable direct printing of trademark certificates from the system.

The Philippines IPO continues to demonstrate leadership in ASEAN, and will no doubt become one of the leading countries in re region for IP harmonization as 2015 approaches.

Tuesday, October 28, 2014

New R&D head in Indonesia

Indonesia's newly appointed minister for Higher Education and Research and Technology (a newly merged ministry) Muhammad Nasir, says he wants Indonesia to become a world-class science and academic research player.

Nasir, formerly a university dean was one of 34 new cabinet ministers sworn in by incoming President Joko Widodo’s this week. Nasir has vowed to improve industry and innovation.
 
Historic low government funding for R&D has long been a problem.  Only half the state R&D budget was spent this year. World Bank data indicates Indonesia spends only 0.08 % of GDP on R&D. Malaysia spent 1.01% and Singapore 2.43%. From 2001 to 2010, Indonesian academics produced under 8,000 publications. Singapore, Thailand and Malaysia published 30,000 or so each.

There is a lot of work to do to boost R&D in Indonesia. The new minister is saying the right things but as with all new cabinets the deeds will be what counts.

Monday, October 27, 2014

Music piracy site in the Philippines


A Philippine-based music download site, claimed to be a notorious piracy hotspot is making media waves. The music industry’s US umbrella organization, the Recording Industry Association of America (RIAA) has pointed the finger at www.thedigitalpinoy.org as among the most notorious digital piracy markets in the world. Digital Pinoy, which operates as a discussion forum is geared to infringing music the RIAA has said. It has made a submission to the USTR which is conducting an out-of-cycle review of notorious piracy markets.
 
Digital Pinoy permits its 117,000 members to access content to download music via the many illegal links posted on the forum. Members need points to ‘buy’ the music. They earn points by replying to posts and submitting download links or song lyrics in the forum. Large amounts of illegal music can be downloaded from the links. There are also instructions on how to obtain files from various global cyberlocker sites which are sources of illegal music, so the links can then be posted on Digital Pinoy's forum. 

RIAA has been sending takedown notices to Digital Pinoy, but few downloads have been removed they say. Presumably by making a big fuss and identifying it in the USTR’s list of notorious markets, they hope the IP authorities in Manila will now start to look at it.

Tuesday, October 21, 2014

Secondary liability in the Philippines

Under the IP code as amended a landlord or ISP or other party can be liable for IP infringement in 3 circumstances:

a.      He has been given notice/knowledge of the infringing acts
b.      He has the ability to control the infringer’s activities in some way
c.      He obtains a benefit somehow from the infringement

This applies to all kinds of IP, but especially benefits copyright and trademark rights holders trying to prevent widespread retail or online infringement by forcing those who control channels of trade like online portals of retail malls to stop their tenants/users from infringing. In most cases they will have contractual powers to prevent it too. Most leases contain a prohibition on on=premises illegal activities, as do most online click licenses/terms.

Thursday, October 9, 2014

The Trans-Pacific Partnership and IP


The controversial Trans-Pacific Partnership (TPP) is still off and on. TPP negotiations in Washington this week on various free trade matters including IPRs broke down again.  The TPP is an initiative from the United States which aims to grow trade and investment in Asia-Pacific. The partners are Australia, Canada, Chile, Japan, Mexico, New Zealand, Peru and from SE Asia, Singapore, Brunei, Vietnam and Malaysia.

Controversially the TPP includes stronger standards for IPR protection and a number of emerging 21st century IP issues. However its application to emerging economies is worrying many people.

The TPP agreement previously made the news for the wrong reasons. Secretive, unbalanced, leaked by Wikileaks, contentious and so on. It includes a number of emerging markets including like Vietnam which have IP systems far less developed than the others and perhaps not able to cope with sophisticated issues.
Areas of international public concern relate to medicines, publishers, ISPs, criminal offences and biological patents. They include:
restrictions on the making of ‘temporary copies’ of copyright works in electronic form
  • allowing the patentability of surgical methods
  • placing limitations on access to affordable medicines
  • making ISPs responsible for policing copyright infringement
  • lengthening the term of copyright protection.
Criticism from the online community has been directed towards the so-called hard line approach being taken by the US. The access to medicines lobby complain that these provisions will harm public health. So far the draft chapter seen from the WikiLeaks release is complex and convoluted. The negations are broken but not over yet.
 

Wednesday, October 8, 2014

Philippines IP Director lays out plans for improving IP enforcement



At an AmCham Intellectual Property Rights Committee Meeting in Manila this week, The IP Office DG Ricardo Blancaflor talked about "Current and Future Plans for Intellectual Property Enforcement". He mentioned 
 
1. Removal of the Philippines from the USTR Special 301 watch list after ‘sustained actions’
2. Enforcement issues still faced today include: judicial system and legal infrastructure weaknesses, limited IP enforcement powers, rampant digital piracy and general availability of counterfeits in the market.
3. In view of the 2015 ASEAN integration, DG identified the following regional action plan:

 a. Information awareness activities on enforcement
 b. Publicly available statistical informoation on IP enforcement
 c. Documenting the reduced movement of pirated goods and counterfeits
 d. Private sector involvement in antipiracy and information awareness campaign
4. He summarized efforts of the IPO in 2014:
 a. Increased copyright enforcement actions through the NCIPR
 b. Streamlining judicial procedures
 c. Capacity building
 d. Information campaigns

Several other points were discussed:
  • The Bureau of Copyrights is still not established due to budgetary delays 
  • More anti-counterfeiting training / brand familiarization for Customs is needed
  • There is ongoing dialogue between FDA and IPO concerning patents. DG didn’t want to elaborate and simply said they’re waiting for outcome of dialogue.
  • There will be an IP enforcement summit on 20 October 2014.
The Philippines IPO is good at IP holder outreach and continues to make steps to improve the IP enformcenet system.
 

Tuesday, October 7, 2014

New Thai patent covers Ebola treatment


Many people are working furiously to develop treatments for the Ebola virus which has killed more than 3,000 people in West Africa. Thailand's Mahidol University's Faculty of Medicine at Siriraj Hospital in Bangkok has developed a new formula that will trigger antibody production to fight the disease. The hope is that it may lead to a treatment for use after infection, as opposed to a pre-infection vaccine, to stimulate the body's natural immune system to fight off infection. Mahidol University has applied to the Thai IP department for a patent to be granted.  It will be interesting to see if the grant will take as long as many other medical patents do to get granted given the urgent need.

Friday, October 3, 2014

Enforcement provisions in Indonesia's new copyright law

Below are the additions to the Indonesian copyright enforcement regime in the newly passed Copyright law.  
 
Landlord liability

There is a welcome provision on the creation of landlord liability.

Online infringement

In respect of online infringement, there is also now a dedicated section that gives new powers to the Ministry of Information to block access to infringing materials on websites.  The implementation of this provision requires further regulations to be passed.  Depending on what the regulations requires, it may provide copyright owners with additional tools to tackle online infringement.

Complaint based offense

Copyright infringement is now classified as a complaint based crime, bringing it in line with all other IP rights – trademarks, industrial designs and patents. The advantage would be that in theory, the police or enforcement department in the IP office has to investigate an offense when a complaint is filed. This will also allow the copyright owner to have better visibility and involvement in the criminal complaint process and be in a position to query or withdraw the complaint, if needed.

Criminal sanctions

Under the criminal provisions of the new law, the mens rea element has been removed. The old law requires the mental element of "intentional act". This suggests that it may be easier to secure conviction under the new law.

Under the new law, the punishment has been adjusted as follows:



Offending act

Old law (Article 72)

New Law (Article 113)

Copying and distribution  commercially

Up to 7 years and/or maximum of IDR 5 billion

Up to 4 years and/or maximum of IDR 1 billion

Copying and distribution in the form of piracy

--

Up to 10 years and/or maximum of IDR 4 billion

The explanatory notes do not provide further clarification on what constitutes "form of piracy" that warrants the higher sanctions.
 
The practical enforcement environment remains Indonesia's biggest IP challenge, with criminal action remaining extremely challenging. The addition of a new ministry to handle online enforcement hopefully adds a new dimension.

 

Wednesday, October 1, 2014

Philippines Supreme Court squashes search warrant quash applications


A common problem in the Philippines after raids is that defendants try to overturn the search warrant application on the basis that is was flawed. It is almost a standard tactic by some defense attorneys. If they fail, they then appeal, dragging the dispute out many years. The problem is that the courts would repeatedly grant such quash orders, destroying the entire raid, usually on the basis that, in their 'after the event' opinion there was no probable cause, most commonly because the investigation process was not done properly. Even when counterfeit goods were in fact found!
 
A new case has hopefully put the issue to rest. New Fields Asia Pacific was raided by the police on a complaint from Microsoft and Adobe based on search warrants. The Manila Regional Trial Court later quashed the warrants and directed that the seized items be returned. The RTC said that the search warrants were defective because they failed to specify which computers were to be searched for the pirated software. The investigating officer had no personal knowledge of the exact location of the installed software, and had relied on screen shots acquired from a confidential informant. Thus without personal knowledge there was no probable cause. The Court of Appeals later upheld the RTC ruling.

The Supreme Court has now overturned the decisions stating that the lower courts failed to focus on the substantive issues. Lets hope the courts will follow this and in future successful raids will cease to be overturned on what is in essence a technicality.

Vietnam seeks to hire foreign R&D talent



A new Vietnamese Government decree is coming into force which will enable overseas Vietnamese and foreign experts to be hired as leaders of science and technology organisztions and projects in Vietnam.  In a bid to help prioritize research and development, the Vietnamese government is seeking to attract expertise from abroad. They will simplify visa, work and family procedures in a bid to attract talent.

The key conditions for such overseas Vietnamese and foreign experts include that that they own patents or plant varieties in relation to key technologies that Vietnam wishes to encourage, or that they have held relevant R&D management positions.

Vietnam has been building a catalogue of policies to encourage R&D, having seen how weak it's technology position is in SE Asia - see here for more details.

Monday, September 29, 2014

Philippines freezes copy Starbucks mark

The Bureau of Legal Affairs (BLA) of the Philippines Intellectual Property Office has made a decision in favor of Starbucks against Cafe de Manila. The latter made a trademark application for a slogan “The Frap Bar Everyone Deserves and Designs” for coffee products.
Starbucks owns the trademark FRAPPUCCINO, one of its most popular drinks brands.  The BLA decided that Frap was similar because it constitutes a prefix or dominant part of Starbucks' registered trademark FRAPPUCCINO. 

The containment of a trademark entirely inside another is a regular headache for IP offices. The extent to which added material in the senior mark renders it different is not usually considered. Although here the focus on the prefix might be right given Starbucks' long and widespread use.