ambition unleashed - deacons and insights... · 2015-04-22 · asia ip celebrates 50 licensing...

Asia IP

1March 2015

CONTENTS

37

Across Asia, moviemakers release thousands of movies each year, often directly into the hands of infringers. Jeffrey Lee reports on what lawmakers and enforcement agencies are doing to protect this local industry.

Regulations and risks abound when a business wades into social media, but the risks are almost always worth it. Holly K Towle and Kendra H Nickel-Nguy explain how to manage the risks inherent in social media.

42Social Media:10 Questions AllBusinesses Should Consider

Special Features

7

Ambition

Unleashed

China is interested in more than just becoming the world’s largest economy: It also wants to strengthen its position with intellectual property. Lily Zhang reports.

14

China’s National Development and Reform Commission has imposed signiicant ines on Qualcomm for abusing its dominant position in the market. Hannah Ha and John Hickin explain what’s behind this milestone case.

17

Whether you are ready to license a patent, a fast-food franchise or the latest software, you’ll want the help of a licensing lawyer. Asia IP celebrates 50 licensing lawyers from 15 jurisdictions around Asia and the Paciic. Reporting by Johnny Chan.

Moviemakers Battle Online Pirates

NRDC HandsQualcomm Record US$975 Fine

Asia IP

2

CONTENTS

4News Analysis

� Hong Kong - City Falls in Complexity Index.� Indonesia - Government Recognizes “Areas Having IP Culture.”

Regular Sections

5People & Places

� Australia - Bird & Bird Appoints Jane Owen to Head its IP Practice in Australia.� Australia - Pinsent Masons Announces Plans to Launch in Australia.� India - Khaitan & Co Announces Partnership Promotions.� Indonesia - Zain Adnan Joins the Indonesia Practice of Tilleke & Gibbins.� New Zealand - Paul Johns Joins Baldwins Intellectual Property.

47IP Analysts

ASEAN - Malaysian Patent Revoked Due to Lack of Novelty.India - Nitto Denko v. Union of India.

3Opinion

Asia’s most ambitious nation has more in mind than just wealth accumulation.

China’s Great Leap

March 2015

Bringing a new drug to market requires a great deal of investment in research and development. Vivian Y. F. Chen looks at what patent holders can do in Taiwan to extend data protection and enhance return on investment.

45Patent and Data Protection in the Pharmaceutical Industry

Asia IP

3

OPINION

March 2015

Asia’s most ambitious nation has more in mind than just wealth

accumulation.

China’s very visible push to become the world’s largest economy has

garnered signiicant amounts of ink and airtime from journalists, and in October 2014, the International Monetary Fund conirmed that China had overtaken the United States in terms of purchasing-power-parity. But China

has, somewhat more quietly, also taken important steps to improve its

protection of intellectual property rights, an area for which the country has

been justly criticized in recent years.

The United States Trade Representative’s 2014 Special 301 report

singles China out for several areas of continuing concern: inadequacies in

trade secret protection, “indigenous innovation” policies that may unfairly

disadvantage foreign rights holders and continuing copyright piracy over

the internet.

But the USTR also highlights numerous positive steps that China has

taken to improve IP rights protection, including amendments to its trademark

law, including provisions to combat trademark squatting, expand protection

to sound marks, permit multi-class registration, and streamline application

and appeal procedures.

“The United States welcomes these long-sought reforms [and] also looks

forward to pending reforms of China’s patent, copyright, trade secrets, and

other IP-related laws and regulations,” the USTR’s report said.

Most exciting, perhaps, is China’s establishment of specialized IP courts

in Beijing, Shanghai and Guangzhou, designed to improve the consistency

of the decisions of IP cases around the country. The IP courts in Beijing and

Shanghai have jurisdiction over the cases in those cities; the Guangzhou

court will have jurisdiction over the entire Guangdong province.

Wang Zhengzhi, a senior partner at Global-Law Law Firm in Beijing,

believes the move has had a big impact on speciic law practitioners, as requirements for the appointment of judges are higher. He also sees

establishment of the IP courts as good news for business, since the

possibility of better-justiied convictions is higher. “It is a big promotion for the China IP industry,” he says.

The government has also shown that it is serious about protecting

intellectual property through administrative decisions, such as the action

taken by the National Development and Reform Commission against

IT giant Qualcomm, which attracted huge attention and resulted in a

settlement. “The centerpiece of the settlement is an eye-popping US$975

million ine,” says Charles Feng Chao, a partner at East and Concord Law Firm in Beijing, “which is the largest corporate penalty to-date in China, and

the third largest ‘abuse of dominance/monopolization’ ine ever imposed by any antitrust agency worldwide.”

We’re heartened by China’s latest attempts to improve its intellectual

property protection, and look forward to the beneits improved IP protection will bring to all stakeholders.

China’s Great Leap

Darren BartonPublisher

Gregory GlassManaging Editor

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March 2015Volume 7, Issue 3ISSN: 2072-3229

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微飛

March 2015Asia IP

4

NEWS ANALYSIS

Hong Kong Falls in Complexity Index Hong Kong has fallen 12 places

in the TMF Group Complexity Index

– from 68th in 2013 to 80 in 2014

– indicating that the city’s business

environment is becoming signiicantly less complicated. This is also supported

by foreign direct investment (FDI), as

Hong Kong continues to be the second-

largest recipient of FDI in Asia after

Mainland China.

The annual study by TMF Group,

a provider of global business and

compliance services, has ranked 81

jurisdictions across Europe, the Middle East, Africa, Asia-Paciic and the Americas according to how complex

they are to do business in from a

regulatory and compliance perspective.

TMF Group’s indings suggest that the improvement in Hong Kong’s

business environment is due largely

to the enactment of the Hong Kong

Government Recognizes “Areas Having IP Culture” The Indonesian government has

recognized several places in the

country as “areas having an intellectual

property culture” in order to promote

public participation to respect IP rights,

according to Fortuna Alvariza, an IP

attorney at Fortuna Alvariza IP (FAIP)

in Jakarta.

Expectations for improvement may start with better copyright protection. In

September, the Indonesian Copyright

Law incorporated traditional cultural

expressions.

The Copyright Bill introduced four

new works that are now protected, none

of which were protected previously:

� Translations, adaptations,

arrangements, transformations, or

modiications of traditional cultural expressions;

� Compilations of creations or data,

including in digital format;

� Original compilations of traditional

cultural expressions; and

� Video games.

Apart from protecting traditional

cultural expressions under the

copyright law, Indonesia is also one of

the contracting parties of UNESCO’s Convention on the World Cultural and

Companies Ordinance on March 3,

2014. The ordinance implements

sweeping changes to the corporate

environment in Hong Kong and

has simpliied and streamlined the legal framework which regulates

the formation and operation of

companies in Hong Kong, including

overseas companies operating in the

jurisdiction.

The adoption of this legislation – one

of the largest pieces in the country

– was an important milestone in the

development of company law in Hong

Kong and the positive impact it has

had on the business community is

highlighted in the TMF Group rankings.

“While Hong Kong has long offered

an attractive commercial environment

for foreign businesses seeking to invest

in the Asian region, the adoption of

the Companies Ordinance in March

last year has signiicantly enhanced corporate governance, reduced

regulatory hurdles and facilitated the

growth of commerce,” says Paolo

Natural Heritage, she adds.

The protection of cultural heritage

(traditional knowledge) in Indonesia

has started later than in many countries.

Alvariza says there is no oficial report on how lack of awareness in cultural

heritage may affect local communities,

but based on past experiences, there

were local artists who made traditional

sculptures which are common and

typical in their region based on orders

from their foreign clients. Their activities

were temporarily stopped when they

received warning from one of the

clients.

According to the warning, the

artists were prohibited from making

similar sculptures for other clients.

Tavolato, head of Asia Paciic at TMF Group.

Argentina (1st), Brazil (2nd) and

Bolivia (3rd) are ranked as the most

complex countries in which to do

business. Also in the top 10 were the

United Arab Emirates (4th) and the emerging economies of Korea (5th),

Indonesia (9th) and Thailand (10th)

Poland (7th) is the only European country to feature in the top 20 despite

signiicant reform, thanks in part to systems and laws inherited from the

former Soviet Union.

Joining Hong Kong among the

least-complex countries were Ireland

(79th) and Jersey (81st). Australia

ranked 76th, New Zealand 72nd,

Singapore 59th, India 44th, Russia

26th, Kazakhstan 24th, Taiwan 22nd,

Malaysia 15th, Vietnam 14th, the

Philippines 13th, China 12th and Japan

11th.

- Asia IP

The company claimed that they have

registered all the sculptures as their

IPR.

“Since the sculptures are very typical

traditional regional arts which have been

made [for generations], and further,

they did not receive any modiication sketch design from the company, we

suggested that the artists continue

to produce such sculptures because

we believe that such sculptures are

traditional cultural expressions that

cannot be exclusively registered and

owned by one party only,” Alvariza

says.

Lack of knowledge may create

confusion among the local communities,

especially among local artists, who

must know their rights and the law’s

position towards cultural heritage in

their own region.

As many similar cases have occurred

in Indonesia and elsewhere, relevant

government institutions, including the

Indonesian Directorate General of

Intellectual Property Rights (DGIPR)

and other relevant institutions/

organizations including Indonesian

Intellectual Property Attorneys

Associations (AKHKI) conduct various

workshops and programmes for

different target populations.

- Lily Zhang

HONG KONG

INDONESIA

A recent study shows that Hong

Kong’s business environment

is becoming signiicantly less

complicated.

微飛

March 2015 Asia IP

5

PEOPLE & PLACES

Bird & Bird

has appointed

Jane Owen to

head its IP practice in

Australia. Owen, who

joins from K&L Gates,

where she was a partner, will be based

in Sydney. She has over 20 years’

experience in intellectual property,

including portfolio establishment, IP

strategization, commercialization and

enforcement. Her main sector focus

is within life sciences, health care and

education. Her experience ranges

across complex patent infringement/

revocation, trade mark and passing

off, design infringement, IP ownership

disputes and appeals of decisions

made by the Commissioner of Patents

and the Registrar of Trade Marks.

She is joined by associates Troy

Alexander Gurnett, Shehana Wijesena

and Rebecca Currey.

International law irm Pinsent

Masons has announced plans to

launch in Australia in 2015. The

irm intends to launch an infrastructure sector-focused practice in Melbourne

and Sydney later this year.

Khaitan & Co

has announced

p a r t n e r s h i p

promotions for this year.

With its promotions, the

irm notes, it becomes the irst Indian law irm to reach the milestone of 100 partners. There were

no lateral hires, and nearly all of the

partners were either home-grown or

have spent a substantial number of

years at the irm. Among the promotions was Harsh Walia, a technology, media

and telecommunications lawyer in

the irm’s New Delhi ofice, who was promoted to associate partner.

S h i v a r p i t a

Nailwal has

been promoted

to partner at Chadha

& Chadha. She

joined the irm in 2008 and has expertise in prosecuting

patent applications in the ields of biotechnology, biochemistry, molecular

biology, pharmaceuticals, detection

assays, screening methods, antibodies,

vaccines and more. She handles the

client’s patent portfolios and oversees

the foreign iling department of the irm. She is based in Delhi.

Gopal Trivedi

has been

promoted to

partner at Chadha &

Chadha. He joined

the irm in 2008 and heads its Mumbai ofice. He handles IP litigation, oppositions and anti-

counterfeiting matters for the irm. He manages foreign portfolios of several

Indian clients and is primarily focussed

on domestic clients.

He also serves on the INTA

committee on parallel imports.

Tarun Gandhi

has been

promoted to

partner at Chadha &

Chadha. He is based

in the irm’s Delhi ofice. Gandhi began his career with the irm in 2009, and has expertise in prosecuting and litigating patents

related to biotechnology, life sciences,

chemistry and pharmaceuticals. He

has been actively involved in advising

clients on management of their patent

portfolios in India and worldwide.

Sonal Madan

has been

promoted to

partner at Chadha

& Chadha in Delhi.

She joined the irm in 2008 as a member of the trademarks

department. She has also been

associated with Rouse IP (India) as part

of its dispute resolution team. Besides

her expertise in trademark prosecution,

opposition and cancellation matters,

Madan has signiicant experience in advising clients on the management

of trademark portfolios, policing

and enforcement of client’s rights

and in negotiating agreements and

settlements.

Zain Adnan

has joined

the Indonesia

practice at Tilleke &

Gibbins, where he

will serve as an intellectual property

manager in the irm’s Jakarta ofice. Adnan has more than ten years of

experience in IP prosecution work and

is able to provide strategic advice on IP

registration and commercialization. His

clients include Fortune 500 and mid-

size companies in in a wide range of

industries, such as pharmaceuticals,

consumer goods, software,

manufacturing, inancial services, education, automotive, motorcycle,

and luxury goods. He has a strong

network of contacts in the Directorate

General of Intellectual Property Rights

ofice and with high-level government and trade association stakeholders.

He has contributed to revisions to

Indonesia’s copyright law, allowing

copyright holders to better protect their

rights.

Mori Hamada &

Matsumoto has

promoted nine

associates and one of

counsel to partner, as

well as three associates

to of counsel positions. Among the

promotions are Tsuyoshi Ikeda, who

has been promoted to of counsel.

Ikeda was admitted to the bar in Japan

in 2003 and in California and New York in 2009.

Paul Johns has

joined Baldwins

I n t e l l e c t u a l

Property as head of

dispute resolution.

Johns is a commercial

litigator specializing in intellectual

property, consumer protection and

tort matters. He has been in practice

since 2001 and has extensive

experience representing both domestic

and international clients before the

patent ofice and the courts. He joins Baldwins from a leading New Zealand

law irm where he was previously a senior associate working in the dispute

resolution and intellectual property

departments. Prior to this, he spent

several years at a large law irm in London.

INDIA

INDONESIA

AUSTRALIA

JAPAN

NEW ZEALAND

March 2015Asia IP

6

PEOPLE & PLACES

March 2015 Asia IP

7

Copyright Feature COVER STORY

hina’s ambition goes far further than accumulating

wealth to become the biggest economy in the world. The

government has also strengthened its soft power during

the years of its development. Last year, for example, the

State Council reviewed and approved the Action Plan for Further

Implementation of the National IP Strategy (2014-2020). The

outline of the National IP Strategy (NIPS) has been implemented

for six years.

Chinese authorities have pointed to three key aspects of the

NIPS Action Plan: irst, to strive to become a strong IPR country; to improve IP utilization and protection; and to announce practical

new steps, including plans to promote the development of IP-

intensive industries.

IP Courts: A Good Sign Last year, 2014, was a year full of exciting developments for

China, and one big step in the reform of legal system, lawyers say,

was the establishment of specialized IP courts. Subsequently,

the Supreme People’s Court issued regulations regarding the

appointment of intellectual property judges and the jurisdiction of

the IP courts in October 2014.

China’s IP courts have jurisdiction to hear:

� irst instance civil and administrative cases related to patents, new plant varieties, layout designs of integrated circuit,

technology secrets and computer software;

� irst instance judicial appeals against administrative decisions involving copyrights, trademarks, unfair competition,

etc.; and

� irst instance civil case regarding the recognition of well-known trademarks.

The IP courts are expected to improve the consistency of the

decisions of IP cases around the country. Parties to a suit may,

by written agreement, choose to have their case heard in an IP

court which has jurisdiction based on residency of the infringer or

location of the infringing event.

Wang Zhengzhi, a senior partner at Global-Law Law Firm

in Beijing, believes the move has had a big impact on speciic law practitioners, as requirements for the appointment of judges

are higher. Besides, he sees establishment of the IP courts as

good news for business, since the possibility of better-justiied convictions is higher.

“It is a big promotion for the China IP industry,” he says.

Since the new courts will focus mainly on patent cases, which

often involve technical knowledge, the Supreme People’s Court

has committed to training technical investigation oficers to provide judges with professional technical support.

“It is something that we should consider (to be improved) for

the next step” of the IP courts’ development, he says.

Zheng Xia, president at AFD China Intellectual Property in

Beijing, says the team of examiners, especially new examiners,

need to be further-trained. “Right now some examination

cooperation centres to recruit new examiners have been set up

in other cities, and it may take time for them to mature,” she

says.

China is interested in more than just becoming the world’s largest economy: It also wants to

strengthen its position with intellectual property. Lily Zhang reports.

C

Ambition Unleashed

March 2015Asia IP

8

COVER STORY Ambition Unleashed

Modifying Law Loopholes Charles Feng Chao, a partner at East and Concord Law Firm in Beijing adds that two milestone cases attracted attention of

IP professionals and the public in 2014. “The dispute over red

tins of Wang Lao Ji Chinese herbal tea addressed the cutting-

edge issue concerning the ownership and separability of goodwill

between the trademark licensor and the licensee manufacturer,”

he says.

Qualcomm encountered a trademark squatting issue which

also rose to prominence during the year. “The legal action

taken by National Development and Reform Commission

(NDRC) against IT giant Qualcomm attracted huge attention

and resulted in a settlement. The centerpiece of the settlement

is an eye-popping US$975 million ine, which is the largest corporate penalty to-date in China, and the third largest ‘abuse

of dominance/monopolization’ ine ever imposed by any antitrust agency worldwide.”

Similarly, a popular website for pirated videos – YYeTs.com – and a portal that collects and provide

Chinese subtitles for foreign movies and

TV shows – Shooter.cn – were oficially closed down in November. YYeTs.com had been shut several times in previous

years but only temporarily. “This shows

the government’s determination in

ighting online piracy,” lawyers say. Feng says although the National

Copyright Bureau of China, Ministry

of Information Industry and the State

Internet Information Ofice have jointly conducted “Sword Net Action” since 2005

in order to combat online infringements,

new types of online IP infringement will

continue to emerge and will need proper handling of judicial and

enforcement organs.

Wang adds that one question remaining in dealing with online

infringement cases is how to pursue the infringer’s liability,

due to the long distance frequently found between China and

the infringer. He suggests that some internet content providers

may use internet techniques and skills to better assist the piracy

ighting.

The IP courts are a big promotion for

the China IP industry.

- Wang Zhengzhi, senior partner,

Global-Law Law Firm, Beijing

“

”

March 2015 Asia IP

9

Ambition Unleashed COVER STORY

Li Weixiang, a director at Zeal & Have in Shenzhen, says the

role of Chinese intellectual property in Asia is equal to China’s

economic importance. This is shown not only in the number of IP

agencies and specialists, but also in the increase in patent and

trademark applications.

According to the State Intellectual Property Ofice (SIPO), the number of invention patent applications iled in 2014 stood at 928,000, up 12.5% from 2013.

Asked about how to interpret these igures, Liu says the importance of quality far outpaces quantity. There is an annual

ranking of statistics nationally of the patent application numbers,

which encourages local companies and individuals to apply

for patents and further develop their IP. He says although

the motivation is good, competitions may cause an abuse of

the applications if done without strict

surveillance.

“Some non-standardized agents have

appeared thanks to the requirement,

making proits from representing patent application cases,” he says, adding this

would harm the whole industry. “Pure

invention applications are of high quality,

but there are also some ‘junk patents’

which have been successfully applied

for only on the basis of simple imitation.”

To tackle this problem, Liu suggests

that the government set up specialized

departments, recruiting professional staff

to proceed the cases. “This should not

only be only institutionalized in Shanghai,

but rather in a national scope.”

In terms of trademark application, Feng says because

trademarks do not require actual use or intention to use in China,

this principle also motivates trademark squatters to preemptively

register famous foreign brands before the real brand owners turn

their eyes to China, which has caused huge losses and costs for

those brand owners.

However, he says, the Chinese government has been making

efforts to improve the situation by taking action in both legislative

and enforcement aspects. “Among others, the revised trademark

law substantially increased the highest amount of statutory

compensation from Rmb500,000 to Rmb3 million (US$80,700 to

US$484,000).”

Wang says recent years have witnessed an increase in

awareness of Chinese customers when choosing brands. “It

is not surprising to see more people, not only intellectuals but

also common people, paying more attention to brands,” he says,

“because brands mean quality and reputation.” He says the

choices extend to domestic products, which are close to peoples’

daily life.

Copyright Witnesses Improvements “WIPO opened its new ofice in Beijing on July 10, 2014 and the China

representative ofice is the WIPO’s ifth overseas representative ofice, joining Brazil, Japan, Singapore and Russia,”

says Qiu Xiang, a partner at Grandall

Law Firm in Beijing.

The opening of the WIPO China Ofice indicates that the Chinese government

is dedicated to the establishment of a

multilateral IP system, WIPO director

general Francis Gurry said at the

opening.

The copyright case with the most

impact in 2014, says Qiu, is the Chiung

Yao copyright case, which has drawn extensive attention and discussion from the industry and the public. The case sets an

example and provides a lead for determining infringement

standards regarding copyright infringement of ilms. In April 2014, Taiwanese writer Chiung Yao argued that mainland China TV series The Palace: The Lost Daughter had

been adapted from her novel Plum Blossom Scar and took

action, suing ive individuals for infringement; she won the case in December.

Qiu says that the 2014 CC China Online Copyright Protection

Action Plan presents a copyright protection project called

One Mechanism, Three Platforms. Through cooperation with

the Beijing Copyright Protection Centre by technological

collaboration or other methods, the copyright owners could

quickly and eficiently conirm infringing activities, including the pirate websites and links, and then strengthen its achievements

by the regular publication by the Centre.

The National Committee of Mobile Phone Media, along with

People.cn, Xinhua.net, CCTV.com, and China Mobile, China

Unicom and China Telecom, published the China Mobile Phone

Media and Mobile Online Information Safety and Copyright

Industry Self-discipline Convention. “All these measures

have signiicant meanings for the creation of genuine copy

Right now, examination cooperation

centres to recruit new examiners

have been set up in other cities, and

it may take time for them to mature.

- Zheng Xia, president,

AFD China Intellectual Property, Beijing

“

”

The centerpiece of the Qualcomm settlement

is an eye-popping US$975 million ine, which is the largest corporate penalty to-date in China.

- Charles Feng Chao, partner,

East and Concord Law Firm, Beijing

“

”

March 2015Asia IP

10


environments online and in mobile networks. However, all these

plans and conventions are self-disciplines, and are deicient in punishment against the infringers.”

Qiu says that changes to various laws are expected in 2015,

including legislation and publication of interpretation on several

questions regarding the applications of laws and regulations

in hearing patent infringement cases, interpretation on several

questions regarding the applications of laws and regulations

in hearing civil trademark infringement

cases, regulations on several questions

regarding the hearing of administrative

trademark cases, interpretation on

several questions regarding the

applications of laws and regulations

in IP pretrial preservation, and the

amendment of the Law of Promoting

the Transformation of Scientiic and Technological Achievements.

Qiu also says that China is

strengthening the protection of copyright,

and that the protection dimension has

also been improving. “In 2014, The

Copyright Protection Center of China

offered services for works keeping,

which could provide the certiication services to the copyright owner more

eficiently, conveniently and safely, and this may relieve the authors’ dificulties in providing evidences.” However, the

law does not protect the owner who is

negligent in protecting his rights, and

therefore the owners should protect themselves initiatively and

legally, he says.

These measures have signiicant meanings for the creation of genuine

copy environments online and in

mobile networks. However, all

these plans and conventions are

self-disciplines, and are deicient in punishment against the infringers.

- Qiu Xiang, partner,

Grandall Law Firm, Beijing

“

”

March 2015 Asia IP

11


Xiaomi and its Patent Battle: A Long Way to Go Jimmy Huang Jingwen, a partner at Zhong Lun Law Firm in

Beijing, says the Alibaba case shows China’s determination

to combat online piracy. The State Administration for Industry

and Commerce (SAIC) has accused Alibaba Group Holding of

failing to clean up what it called illegal business deals on the

e-commerce titan’s platforms.

SAIC, in a report published on its website in January this year,

said many products sold on Alibaba’s e-commerce websites

and services infringed upon trademarks, were substandard or

fake, were banned or endangered public security. A Reuters

report called this is “an unusually strong

government criticism of one of the

country’s biggest private companies.”

On the other hand, the lack of patent

applications from some big companies

has caused public dissatisfaction.

Xiaomi, an emerging smartphone maker

in China, was sued by Swedish telecom

company Ericsson after Ericsson claimed that Xiaomi was selling phones that used

its patent for technology.

The electronics business company

was banned from selling phones for

a while by India’s Delhi High Court in

December. However, Huo Peng, a

patent attorney and attorney-at-law at

China Science Patent Trademark Agents

in Beijing, says the “Xiaomi incident” is

far from over. “It is one of the biggest and

most important incidents in the internet

industry,” Huo says, “setting alarm to

high-tech enterprises that are lacking IP

(patent) protection.”

Xiaomi has been doing well since it entered the Indian market

in July thanks to its brand reputation and quality, selling about

100 million phones between September and December. Although

it was permitted for sale after it paid the ines, the patent battle may continue.

Huo says the main reason for the ongoing patent battle is

that China’s high-tech companies have not learned much about

overseas IP systems, nor had they paid enough attention to their

own patent capacity. Xiaomi had 35 inventive patents before

2013, applied for another 257 in 2012, and the number was over

1,000 in 2014. Although the quantity is not small if compared to a

small or medium-sized company, it is not that big for an enterprise

that has already launched into the international market. On the

contrary, some international brands, such as Lenovo and Huawei

are good examples to learn from. Longer company histories

has made such companies realize the

importance of brand and IP protection,

he says.

Huo adds that the gap between Xiaomi

and other IP-intensive companies will

remain for another three to ive years, but the situation may be ameliorated if

Xiaomi strives to apply for more high-

quality patents.

Zheng says that what happened to

Xiaomi was that the epiphany of seeking

patent protection for their technologies

came rather late. To proceed with

expansion to new markets, it is important

to avoid patent infringements before

launching products. “Clearance searches

or freedom-to-operate (FTO) analysis

can be used for risk assessment. One

may conduct such procedures in the

target regions to minimize the possibility

of future issues,” she says.

To try to catch up and get to a good position, says Bin Lin,

co-founder of Xiaomi, the company is aiming to ile 2,000 patent applications in 2015, 4,000 in 2016 and 8,000 in 2017.

Learning from Neighbours

Zheng says that China’s IP system started late compared with

its neighbours like Japan and South Korea. (The IP system was

established in the 1880s in Japan and in 1908 in South Korea.)

“Still, there are things we need to further improve, such as the

capacity of creation, IP utilization and enforcement, etc,” she

says. China will continue to improving IP systems in terms of

public awareness, administrative operation, legal system and all

related aspects.

The Xiaomi incident is far from over.

It is one of the biggest and most

important incidents in the internet

industry, setting alarm to high-

tech enterprises that are lacking IP

(patent) protection.

- Huo Peng, patent attorney and attorney-at-law,

China Science Patent Trademark Agents, Beijing

“

”

China cannot stay at the lower

end of the industrial chain with

the increasing living expenses

and associated labour costs. It is

unavoidable for China to shift its

direction of development to more

value-added industries.

- Stephen Yang, partner,

Peksung Intellectual Property, Beijing

“

”

March 2015Asia IP

12


Huang says both Japan and South Korea have mature

technology transformation systems, partly because they laid the

foundation of IP in an early stage.

In South Korea, R&D institutions and enterprises cooperate to

set up companies, taking responsibilities for the promotion and

operation of R&D products. Some specialized funds are used to

help transfer the technological achievements.

In Japan, the National University Corporation Law was the

fourth in a series of legal reforms that began in 1998 with the

passage of a law promoting the establishment of technology

licensing/transfer organization (TLOs) with authority to license

some university inventions and to channel

royalties back to the inventors, their

laboratories and their universities, says a

report by the academic journal Industry

and Higher Education. The journal says most major Japanese universities have

been approved and subsidized by the

government in accordance with the TLO

law. Universities and other technology

transfer institutions can get full support

from the government and social groups.

Regarding future IP developments in

China, Zheng says small- and medium-

sized enterprises (SMEs) are noted to be becoming more actively involved in

IP matters, of which the most obvious

indication is the number of new ilings. “They also participating in more IP-

related activities, especially trainings,

workshops and symposiums held by

state IP ofices and local IP bureaus. By the same token, IP administrative authorities of different levels also are doing at

their abilities to create the conditions to better serve SMEs for their IP needs. Pilot programmes and preferential policies are

established to achieve such support, among which the national

Fundamentally speaking, China

must strike the path of scientiic and technological invention, and

IP protection is the very necessary

requirement of innovation.

- Li Keqiang,

Premier of China’s State Council

“

”

March 2015 Asia IP

13


IPR demonstration city/enterprise programs are very popular.”

According to Qiu, IP is an important resource of development

and a key element of competitive force, and it is the call of

time and circumstance for China to become a strong nation in

IP. “This is not only the desirability of the economic and social

development of China, but also the necessary choice of the

development of China’s IP undertakings,” he says.

Chinese premier Li Keqiang emphasized on the China

Development Forum in March 2014: “Fundamentally speaking,

China must strike the path of scientiic and technological innovation, and IP protection is the very necessary requirement

of innovation.”

Only with improved IPR protection systems, Qiu says, can

China create a healthier and fairer marketing environment to

keep more scientiic and technological enterprises and talents, and this is an important step to drive China’s economic transition

and to create long-term and steady development.

Zheng says China has emphasized and driven for indigenous

innovation in the past few years. “It has been constantly

advocated and repeatedly written in government oficials’ public speeches and/or national documents that practices are called up

for the purpose of improving China’s capacity to create, utilize,

protect and administer IP, making China an innovative country

and attaining the goal of building a moderately prosperous

society in all respects,” she says.

From her perspective, a more mature and effective IP

examination is expected, so a more favourable administrative

environment would be created for applicants and right owners.

Huang adds that the irst half year of 2015 may see some big changes in new copyright and patent laws. “More modiications are expected to be seen in the copyright law, especially

regarding copyright contents, subjects and attributions.” He adds

that higher ines and more severe penalties are also expected to standardize the administrative procedures as well as the

enforcement methods.

Stephen Yang, a partner and patent attorney at Peksung Intellectual Property in Beijing, says that developing itself as

a country with strong innovative power is deinitely the right direction for China. “China cannot stay at the lower end of

the industrial chain with the increasing living expenses and

associated labour costs. It is unavoidable for China to shift its

direction of development to more value-added industries, which

entail innovative power.”

He says continued publicity and support for the government,

as well as continued reform of the legal system – in particular,

higher deterrence of counterfeiting – is needed for any signiicant improvement to happen in this regard. AIP

March 2015Asia IP

14

COVER STORY The Investors are Coming

n February 10, 2015, China’s National Development

and Reform Commission (NDRC) announced that it was

imposing fines of Rmb6.088 billion (US$975 million)

on Qualcomm for abusing its dominant position in the

CDMA, WCDMA and LTE wireless communication standard essential patents (SEPs) licensing market and the baseband chip market. The NDRC’s decision marked the conclusion of a

15-month investigation which commenced in November 2013.

Given the significance of this record-breaking fine and

decision, the NDRC posted a public statement on its website

and simultaneously held a press conference both of which

provided some preliminary details of its investigation and

decision. The complete Administrative Sanctions Decision will

be published on a later date.

Background The NDRC first received complaints and reports from two

US companies with regards to Qualcomm’s abusive behaviour

as early as 2009. The NDRC did not at this point initiate

investigations, most likely due to the infancy of the Anti-

Monopoly Law (AML) and its limited experience in dealing

with the complexity of the interaction between the AML and

intellectual property law. However, with the substantive

developments in 2012 and 2013, including Huawei/InterDigital

and the drafting of the first guidelines for anti-monopoly

enforcement in the intellectual property rights-related area, the

NDRC commenced investigations against Qualcomm following

complaints and reports from a number of Chinese and foreign

smart mobile device manufacturers in 2013.

Qualcomm’s Abusive Behaviour According to the NDRC’s public statement, Qualcomm was

found to have a dominant position in (1) the markets for the

licensing of CDMA, WCDMA and LTE wireless communication SEPs and (2) the market for the supply of baseband chips. The public statement does not provide details on how the relevant

markets were defined nor market shares held by Qualcomm

or how the NDRC established dominance. However, it is

understood from a televised interview with an NDRC oficial that in the SEPs licensing market, Qualcomm was found to have 100 percent market share for each individual SEP, and over 50 percent market share for the supply of baseband chips.

The NDRC concluded that Qualcomm abused its dominance

in the two relevant markets as shown in the table on the

following page.

Qualcomm was therefore found to have abused its power

by engaging in excessive pricing, imposing unfair terms and

bundling. The NDRC in its public statement concluded that

Qualcomm’s abusive behaviour eliminated and restricted market

competition, impeded and stifled technology innovation and

development, and harmed consumer interests. When released,

the complete Administrative Sanctions Decision should provide

China’s National Development and Reform Commission has imposed signiicant ines on Qualcomm for abusing its dominant position in the CDMA, WCDMA and LTE wireless communication standard essential patents licensing market and the baseband chip market. Hannah Ha and John Hickin

explain what’s behind this milestone case.

O

NRDC Hands Qualcomm Record US$975 Fine

March 2015 Asia IP

15

NRDC Hands Qualcomm Record US$975 Fine COVER STORY

valuable insights on the NDRC’s interpretation of these

provisions and procedural issues.

Fines and Rectiication Plan Pursuant to Section 47 of the AML, a company who abuses

its dominance can be subject to a fine of between 1 percent

to 10 percent of its annual revenue. According to the NDRC’s

public statement, Qualcomm’s ine was 8 percent of its revenue in China in 2013 and was determined by considering a range

of factors including the serious nature and extended duration

of Qualcomm’s abusive behaviour, its cooperation in the

investigation and the voluntary rectiication plan offered to the NDRC.

In addition to the ine imposed, which Qualcomm stated it will not contest, Qualcomm agreed to implement a rectiication plan approved by the NDRC, the key terms of which are as follows

� Qualcomm will offer licenses to its current 3G and 4G

Chinese SEPs separately from licenses to its other patents and will provide patent lists during the negotiation process. If

Qualcomm seeks a cross license from a Chinese licensee as

part of such offer, it will negotiate with the licensee in good faith

and provide fair consideration for such rights.

• For licenses of Qualcomm’s 3G and 4G Chinese SEPs for branded devices sold for use in China, Qualcomm will charge

royalties of 5 percent for 3G devices (including multimode

3G/4G devices) and 3.5 percent for 4G devices (including

3-mode LTE-TDD devices) that do not implement CDMA or WCDMA, in each case using a royalty base of 65 percent of the

net selling price of the device.

� Qualcomm will give its existing licensees an opportunity to

elect to take the new terms for sales of branded devices for use

in China as of January 1, 2015.

� Qualcomm will not require, as a condition of sale,

customers of baseband chips to sign a license agreement

containing unreasonable terms or prohibiting customers from

challenging the license agreement. However, this does not

require Qualcomm to sell chips to any entity that is not a

Qualcomm licensee, and does not apply to a chip customer that

refuses to report its sales of licensed devices as required by its

patent license agreement.

The fine imposed and the rectification measures suggest

that the NDRC only imposed penalties on Qualcomm’s abusive

behaviours in China. This appears to be in contrast to the

Huawei/InterDigital case, where the courts took the view that

InterDigital’s licensing practices in respect of its US SEPs had substantial, material and reasonably foreseen impact on the

domestic production, export opportunity and export trade of

Huawei and other Chinese companies, thus applying the AML

to InterDigital’s US SEPs licensing practices.

Implications The Qualcomm case is a milestone in Chinese AML

enforcement. The enforcement approach should be of particular

interest to antitrust authorities in other jurisdictions (e.g., the

European Union, the United States and South Korea) which are reportedly investigating Qualcomm for similar abusive practices.

Additionally, the decision may also impact other IPR holders

(including SEPs and IPRs which constitute de facto standards) as the results set a precedent on what may be considered

reasonable royalty rates and licensing practices in China.

Furthermore, although the NDRC investigation has ended,

there may be follow-on civil suits against Qualcomm in China

by Chinese companies and consumer groups, as the amended

Consumer Rights and Interests Protection Law in China has

provided the consumer groups with facility to bring suits on

behalf of Chinese consumers who purchased over 320 million

units of smartphones in 2013.

The Qualcomm case demonstrates NDRC’s willingness

to impose significant fines in abuse of dominance cases, in

contrast to its approach in the China Unicom/China Telecom

case and the InterDigital case. It also confirms the NDRC’s

growing sophistication with its ability to tackle the complexity

of the interplay between competition principles and intellectual

property law.

Hannah Ha is a partner of Mayer Brown JSM. Ha

co-heads the irm’s antitrust and competition practice in Asia and has more than a decade’s experience in

advising client on merger control and other antitrust

issues in China covering various industry sectors. She

also assisted clients to roll out antitrust compliance

programmes and has extensive experience in foreign

direct investment in China, cross-border mergers

and acquisitions, private equity transactions and general corporate and

commercial matters.

John M Hickin has been a partner of Mayer Brown

JSM since 2005. He is co-head of the irm’s antitrust and competition practice in Asia and has extensive

experience of dispute resolution (including arbitration

and mediation) in banking and commercial matters

in Hong Kong. He advises on regulatory matters

including SFC investigations, domestic tribunals and

administrative law remedies, including judicial review.

Hickin is co-head of the irm’s competition law group in Asia. He was involved in the consultation with the HKSAR Government regarding the region’s cross-

sector competition bill.

AIP

Qualcomm charged unfairly-high royalties by: � refusing to provide to licensees a patent list for which they were charged royalties resulting in customers being charged royalties for expired patents; � requiring licensees to grant cross licenses to it for free and refusing to deduct royalties or provide other consideration for such cross licenses; and � charging royalties on the basis of the net wholesale selling price of an overall device.

Qualcomm tied non-SEP licenses to SEP licenses without justiiable reasons by refusing to separately license its SEPs and non-SEPs, forcing some of its licensees to buy the non-SEPs from Qualcomm.

Qualcomm attached unreasonable conditions to the sale of its baseband chips requiring, as a condition of supply, baseband chip customers to sign patent licensing agreements which contain no-challenge clauses. In the event a licensee did not sign Qualcomm’s patent licensing agreement or disputed and brought suit against the licensing agreement, Qualcomm would refuse to supply its baseband chips.

MARKETS FOR CDMA, WCDMA ANDLTE WIRELESS COMMUNICATION SEPS

MARKET FOR THE SUPPLY OF BASEBAND CHIPS

Source: Mayer Brown JSM

March 2015Asia IP

16

COVER STORY New Frontier Economy

March 2015 Asia IP

17

New Frontier Economy COVER STORY

March 2015Asia IP

18

FEATURES 50 Licensing Lawyers You Should Know

ith more than 20 years of patent

and trademark experience

in physical chemistry,

nanotechnology, applied laser

technology, ibre optics, information technology, electronics, defence

technology, medical devices and

general engineering, Mark Horsburgh

is principal and head of the chemical

team at Fisher Adams Kelly in Brisbane.

Horsburgh’s experience includes

post-doctoral and professional work

at the University of New South Wales

and the University of Queensland.

Horsburgh spent two years as a

research scientist with the Defence

Science and Technology Organization

before specializing in IP protection

and bringing that capability to Fisher

and Kelly (now Fisher Adams Kelly)

in 1993. Horsburgh is able to deliver

an abundance of real world practical

advice, informed by his professional

experience gained in university and

research roles. Deeply committed to

successful commercial outcomes for his

clients, he takes the necessary time to

understand the possibilities and provide

clear and incisive recommendations.

Outside the irm, Horsburgh is a board member of the Licensing Executives Society International; a past board

member of the Professional Standards

Board for Patent Attorneys; a past

president of the Licensing Executives Society of Australia and New Zealand

as well as a fellow of the Institute of

Patent and Trade Marks Attorneys of

Australia, Graduate Australian Institute

of Company Directors, Royal Australian

Chemistry Institute and American

Intellectual Property Law Association.

Mark HorsburghFisher Adams Kelly

eff Bergmann is the principal

at Solubility in Melbourne,

with more than 17 years of

intellectual property experience gained

through roles in industry and private

practice. Bergmann specializes in

commercialization transactions such as

licenses, assignments, joint ventures,

collaborative and contract research,

material transfer agreements,

conidentiality agreements, consultancy and service agreements, clinical

trial agreements and publishing

agreements; establishment of vehicles

for technology commercialization

including company incorporation

and shareholders and subscription

agreements; advising on IP issues and

due diligence; follow-on venture capital

investment documentation as well as

pharmaceutical industry law

More importantly, Bergmann says,

he is one of only three Australian

practitioners to hold Certiied Licensing Professional certiication.

WTim Heberden Grifith Hack

Jeff BergmannSolubility

J

expert witness in court cases involving

damages to IP and provided IP transfer

pricing advice to tax authorities and

multinationals.”

im Heberden is a specialist in

the licensing, valuation and

monetization of IP. Heberden is

the director of IP valuation at Grifith Hack in Sydney and a member of the

Global Business Valuation Board of

RICS. He is a registered business

valuer, chartered accountant, certiied practicing marketer and MBA. In Asia,

Australia and Europe, his experience includes providing advice on IP

royalties for licensing negotiations,

transfer pricing and litigation; valuing IP

for inancial reporting, tax compliance, securitization, mergers and acquisitions

and litigation; developing monetization

strategies for technology, brands

and artistic works and; performing

IP evaluations for M&A planning.

Heberden is also the author of a chapter

on IP royalty rate determination for

International Licensing and Technology

Transfer and is the technical author of

RICS’ international Guidance Note on

IP Valuation.

“My licensing practice focuses

on determining IP royalty rates,”

Heberden says. “I have developed

value-maximizing licensing strategies,

advised multinationals and SMEs on IP royalty structures that are aligned with

the commercial strength of the IP and

the proposed licence terms, acted as an

T

March 2015 Asia IP

19

50 Licensing Lawyers You Should Know FEATURES

hilip Heuzenroeder has been

a principal of Spruson &

Ferguson in Sydney since

2005. Heuzenroeder provides

specialist IP advice to clients in the

consumer goods, retail, life sciences,

information and communication

technology, manufacturing and other

high-technology and brand-intensive

industries. Heuzenroeder’s clients

include the world’s most well-known

brands, eight Australian universities

and Australian government and state

agencies. He also advises a range

of start-up and small- and medium-

enterprises.

Heuzenroeder has extensive

experience in licensing from his

previous position, in which he was

employed speciically for the purpose of undertaking licensing transactions.

“I continue to advise both large and

small clients on licensing transactions

including: advising the owner of a famous

brand on its worldwide certiication trademark licensing arrangements;

advising a large multinational on the

intra-group licensing of its patent and

trademark portfolio across entities

in over 30 countries; advising an

Australian-based manufacturer on

licensing of its technology and joint

ventures arrangements in the Middle

East and North America; and advising on long term international collaborative

research and development

arrangements, including arrangements

for the licensing and commercialization

of research outputs by the research

collaborators,” says Heuzenroeder.

PhilipHeuzenroederSpruson & Ferguson

Phengfa Wang has been a partner

at Kangxin Partners in Beijing

since April 2010.

Before joining Kangxin, Wang

served as director of the Developing

Countries (PCT) Division of the World

Intellectual Property Organization from

1992 to 2005, and was responsible for

promoting more effective use of the

PCT system by developing countries

and for encouraging accession to the

PCT by more developing countries.

From 1990 to 1992, Wang was

president of CCPIT Patent Agency

(now CCPIT Patent and Trademark

Law Ofice) and was deputy general manager and then general manager of

China Patent Agent (HK) from 1985 to

1990. He worked with the legal affairs

department of the China Council for

the Promotion of International Trade

(CCPIT) from 1965 to 1985, handling IP

matters. Throughout the years, Wang

has handled thousands of application

and dispute cases and also promoted

the establishment and development of

China’s intellectual property system,

including the negotiations of reciprocal

agreements for trademark registration

between China and nearly 20 other

countries, putting forward many

recommendations on the promulgation

of the China’s trademark and patent

laws in the 1980s, and participating

in building the irst Chinese foreign-related patent agency.

Zhengfa WangKangxin Partners

Z

eading the CCPIT Patent and

Trademark Law Ofice, Ma Hao has considerable experience in

handling patent litigation and patent

invalidation cases. He started practicing

patents in 1994 when he qualiied as a patent attorney. He obtained a Bachelor

of Science degree in automation at Hefei

University of Technology; his primary

technical specialty covers electronic

and electrical engineering, including

automatic control, computer software

and hardware, telecommunications,

microelectronics, computer peripheral

devices, and general machines.

Before joining the irm in 1992, Ma had worked at the Beijing Research

Institute of Automation for Machinery

Industry from 1982 to 1992 as an

electronics engineer. His practice

focuses on patent prosecution,

reexamination, invalidation and appeal,

litigation and licensing.

H

Ma HaoCCPIT Patent and

Trademark Law Ofice

March 2015Asia IP

20


ong Li has more than 22 years

of experience in a wide range

of IP practices, with in-depth

knowledge of China’s IP systems. Li’s

practice includes counseling clients on

all aspects of IP issues, developing and

implementing IP policies and strategies,

reviewing, drafting and negotiating

technology agreements, as well as

licensing technologies. He joined King

& Wood Mallesons to set up the irm’s IP practice in 2001, and is now the co-

head partner of the IP practice group

in Beijing. He is a standing council

ichelle Ma, managing partner at

Liu, Shen & Associates in Beijing,

started her professional career in

1983 and has been one of the partners

of the irm since 1995. Ma is qualiied as a patent attorney, an attorney at

law and a trademark agent. Her areas

of special interests and experiences

are patent administration, patent

prosecution in the ield of mechanical engineering, trademark proceedings,

design patent prosecution, invalidation

proceedings and litigation. Ma is one

of the managing partners in charge of

the irm’s overall docketing for patents, and is responsible for the irm’s client relations.

Yong LiKing & Wood Mallesons

Michelle MaLiu Shen & Associates

hristopher Shaowei is a senior

partner at NTD Patent &

Trademark Agency and NTD

Law Ofice in Beijing. During his 25 years of practice, he has litigated many

complex cases and has frequently

represented clients before judicial

courts and administrative agencies

in China. Shaowei’s IP services

include licensing, dispute resolution,

patent, trademark, copyright, trade

secret, unfair competition and domain

name. Shaowei is actively involved in

the creation of Chinese IP laws and

regulations and has been an expert in

the amendments to the Chinese patent

and trademark laws.

“Licensing in China is still a

headache. A limited amount of patents

are commercialized, although huge

amount of money is invested and

quite a few encouraging policies have

been adopted, particularly for the R&D

achievements made by universities

and government-operated research

institutes,” he says. “Nevertheless,

licensing laws still need improvement.

For example, China does not have any

particular rules on how to deal with

licensing contracts when a licensor/

licensee goes bankrupt, which brings

a lot of confusion in practice. When

dealing with the issues, we have to

follow the general rules stipulated in

the bankruptcy laws and at the same

time make reference of foreign laws

which are not effective in China. Such

situations have put me in an awkward

position, and I have to persuade clients

to take a risk.”

Y

M

Helen Jiang China Patent Agent HK)

Christopher ShaoweiNTD Patent &

Trademark Agency

C

elen Jiang received her BS

in electronics from Wuhan

University of Topographic

Science and Technology, and her

LLM from the law school of Peking

University. Jiang was qualiied as a patent attorney in 1985 and started her

IP career with CCPIT Patent Agency

in the same year. She joined China

Patent Agent (HK) in 1995. In 1998

she was certiied as an attorney-at-law and is now a partner of the irm. Before that, Jiang was a trainee in an IP law

irm in Germany in 1988 and was a partner of an IP law irm in Beijing from 2007 to 2009. She has handled

many patent applications in the ields covering electronic devices, computer

engineering, communications and

semiconductors.

Jiang provides legal consultation

on IP protection, especially patent

strategy, and is experienced in patent

prosecution, litigation, licensing and

assignment, as well as computer

software registration, copyright

protection and anti-unfair competition.

member of the China Intellectual

Property Society and ACPAA, and is

a council member of Chinese Group of

AIPPI and LES. “My recent work includes advising

Dong Energy Power A/S (Denmark) in relation to its IP protection strategy

surrounding its proposed entry into

China, including IP license and/

or transfer strategy; advising Fujian

Petrochemical in relation to its

technology license agreements with

Univation Technologies; advising Japan

Display in relation to its patent license

agreements with BOE and; advising a Chinese company in relation to various

IP transfer aspects of its acquisition of

a Germany company,” says Li.

H

March 2015 Asia IP

21


nita Leung is a partner at Jones

Day in Hong Kong. Leung

has solid experience advising

local and multinational companies

in the protection, exploitation, and

enforcement of IP. Leung has been

extensively involved in the acquisition

and commercialization of IP assets,

from internal IP audits, pre-IPO due

diligence, mergers, acquisitions, and

joint ventures to research collaboration,

licensing, franchising, and distribution.

She provides clients with strategic brand

integrity programmes involving regional

and cross-border enforcement actions

at all levels, litigating on copyright,

trademark, design, and patent

disputes. Leung also assists clients on

data privacy and cyber security issues,

both locally and regionally, and the

development and execution of diverse

legal initiatives to manage the legal risks

faced by companies in China and the

Asia Paciic region, including portfolio management, product regulatory, and

compliance issues.

Outside the irm, she has played an active role in engineering many

legislative and policy changes,

including the Copyright Ordinance,

the Unsolicited Electronic Messages Ordinance, drug safety, company

name, patent reform, and digital

copyright issues. Leung also sits on

the Professional Services Advisory

Committee of the Hong Kong Trade

Development Council and is chair of the

Intellectual Property Strategic Group of

the American Chamber of Commerce

Hong Kong.

Anita Leung Jones Day

A

iancheng Jiang founded

Peksung Intellectual Property in

2003. His practice areas include

patent application drafting, prosecution

and reexamination, patent invalidation,

enforcement, licensing and transfer,

strategy in intellectual property

matters, in main technical ields, particularly in the ields of biochemistry, biotechnology, pharmaceuticals and

organic chemistry.

J

Jiancheng JiangPeksung Intellectual Property

entertainment and media practice

groups in Hong Kong. Koo advises on

all aspects of commercial IP, including

the structure and documentation of

complex commercial transactions,

licensing, franchising, distribution, co-

branding as well as IT, technology,

media, entertainment and advertising

agreements. She also has extensive

experience advising on copyright, data

protection and personal data privacy.

Koo represents many of the world’s

leading brands, advertising agencies,

entertainment businesses, ISPs and

content providers in relation to a wide

range of innovative IP or internet issues.

“My recent signiicant licensing matters include advising a leading

educational toy manufacturer on

trademark and product design

licensing, co-branding and distribution

agreements; an international apparel

and accessories brand-management

and retail-distribution network on

license and distribution agreements

for Southeast Asia with a French

footwear and apparel retailer; a

media services and post-production

company on a license for surround

sound technology throughout Asia; a

lingerie manufacturer on a joint venture

and license agreement with an Oscar-

winning Hollywood actress; and one of

the world’s most inluential developers and providers of digital entertainment

content on licensing IPRs in games’

software,” says Koo.

harmaine Koo is co-head of

Deacons IP department and

head of the irm’s commercial IP, IP litigation and enforcement, and

Charmaine KooDeacons

C

March 2015


ichael Lin, a member of the

USPTO bar and the state of

Ohio bar, was such a terrible MMichael LinMarks & Clerk

lab chemist that he had to become a

lawyer. After handling pan-Asia patent

law matters at Procter & Gamble, Lin

joined Marks & Clerk Hong Kong as the

head of the irm’s chem-biosciences group. He handles patent preparation

and prosecution, opinion work and

client counseling and has expertise

in holistic IP strategies, international

licensing and Asian patent matters. Lin

is a member of LES C-HK (treasurer and council member), an INTIPSA

Fellow, and a member of IIPCC HK

and other organizations. He has over

15 years’ experience in-licensing

and out-licensing technologies

from corporations, academia, and

governments in Asia and around the

world.

“In considering licensing

opportunities, I believe that a holistic

approach needs to be taken,” Lin

says, “integrating other forms of IP,

legal protection, commercial risks and

goals so as to form a comprehensive

business strategy.”

Asia IP

22

s founder and managing partner

of Lakshmikumaran & Sridharan

in New Delhi, V Lakshmikumaran

specializes in taxation and intellectual

property laws. Lakshmikumaran

advises clients across various industry

sectors on both domestic and foreign

issues and has been representing them

at various judicial platforms. He has

dealt with a few high-proile cases in the Supreme Court of India and regularly

advises Fortune 500 Companies,

leading Indian multinationals and

business groups on legal issues.

Before founding the irm, Lakshmikumaran has held numerous

positions in the Indian Revenue

Service and was one of the key policy

makers, actively involved in creating

customs and excise legislation. He is

often invited to be part of international

forums and symposiums and has

attended WCO-HS (World Customs

Organization–Harmonized System)

committee meetings on classiication in Brussels and addressed the

WCO GATT valuation workshop on

customs valuation as a delegate of the

International Chamber of Commerce.

He also delivers speeches on topics

such as international trade, taxes and

IP laws at renowned organizations

worldwide. He has written extensively

on taxation and trade remedy laws

for various leading business and legal

publications.

VLakshmikumaran Lakshmikumaran &

Sridharan

A

March 2015 Asia IP

23


t the New Delhi ofice of Anand and Anand, Sair Anand is a leading legal practitioner with

hands-on expertise and transactional

dexterity in licensing matters for an

array of industries such as luxury,

hospitality, and fast-moving consumer

goods. “I have recently handled

licensing deals in respect of two listed

companies in India with the highest

market capitalization in the above

mentioned ields,” Anand says. Anand has handled numerous

licensing transactions such as

technology transfer agreements,

unit franchise, master franchise, due

diligence of licensing and franchise as

well as those in royalty and competition

law. Anand is also in the advisory

committee of International Licensing

Industry Merchandisers’ Association –

India Chapter, wherein he is the sole

Indian legal practitioner member.

Sair AnandAnand and Anand

A

Anand and Anand

First Channel Building

Plot No. 17 A, Sector 16 A

Film City, Noida 201301 (UP)

India

T: +91 120 4059300

F: +91 120 4243056 - 058

E: [email protected]: www.anandandanand.com

March 2015


Asia IP

24

Lall Lahiri & Salhotra

RCY HouseC -235, Defence Colony

New Delhi - 110 024

India

T: +91 11 435 000 00

F: +91 11 435 000 03

E: [email protected]: www.lls.in

AnuradhaSalhotraLLS – Lall Lahiri &

Salhotra

Anuradha Salhotra is a founding

partner of LLS – Lall Lahiri &

Salhotra in New Delhi, and has

over 32 years of experience in the irm’s extensive litigation, trademark and

copyright prosecution practice. Salhotra

has been representing clients in the

Supreme Court of India, different high

and district courts, as well as tribunals

and forums. Presently, she handles

cases related to trademark, copyright,

patent and design, as well as litigation,

infringement and counterfeiting

actions. Salhotra also advises on

disputes arising out of IP contracts and

licensing/assignment deals. She has

had a long career advising clients and

is considered a leading IP practitioner

in the country.

“At LLS, we have been at the

forefront of managing IP matters for a

large number of clients across various

industries. Our team of attorneys has

extensive experience handling various

types of transactions, contractual

issues and similar matters which have

a considerable impact on businesses,”

Salhotra says. “Not only is emphasis

laid on identifying key features of such

arrangements but signiicant effort is made to analyze them in light of the

client’s business goals and on long

term strategy for management of such

IP. We also assist clients in assessing

risks arising from such transactions and

advising on optimum risk management

strategies.”

March 2015 Asia IP

25


idya Kalangie is a founding

partner of SKC Law, and

manager of the irm’s prosecution team in Jakarta. Kalangie

acts for clients ranging from blue-chip

companies to SMEs, and understands what issues need to be brought to the

attention of entities doing business in

Indonesia. Kalangie is a graduate of

the University of Indonesia, a licensed

advocate, a registered mediator, and

an IP consultant. She is a member

of APAA, the Indonesian Intellectual

Property Society and the Indonesian IP

Consultant’s Association.

Kalangie’s practice experience in

both corporate and intellectual property

specialist law irms makes her ideally placed to advise clients on the licensing

and commercialization of intellectual

property rights in Indonesia. “I have

acted on licensing matters for clients

from various industries including retail,

consumer electronics, education

services and hotels,” Kalangie says.

“In a jurisdiction where – with key legal

instruments pending – licensing is far

from straightforward, clients appreciate

my pragmatic approach.”

Nidya Kalangie SKC Law

N

Sunil KrishnaKrishna & Saurastri

s a partner at Krishna & Saurastri

in Mumbai, Sunil Krishna’s area

of practice encompasses the

entire spectrum of intellectual property

management. Krishna has to his

credit vast and diverse experience in

trademark prosecution. In addition,

he is actively involved in counseling a

wide range of Indian and multinational

clients.

“I have been playing a pivotal role

in client counseling, especially in the

development of IP portfolios, licensing

and joint ventures,” says Krishna.

A

Daru LukiantonoHadiputranto, Hadinoto & Partners

aru Lukiantono is the head of

the intellectual property practice

group at Hadiputranto, Hadinoto

& Partners in Jakarta. Lukiantono has

focused on intellectual property work

since 1997. He has been involved

in advising clients on full range of

contentious and non-contentious

intellectual property work, including

licensing-related matters. He is also a

member of the Asia-Paciic Trademark Ofice Relations Subcommittee of the Trademark Ofice Practices Committee for the 2014 – 2015 Committee Term

at INTA.

“As far as my licensing work

experience, it is in compliance with

the provisions in the prevailing law in

Indonesia, including but not limited

to drafting and reviewing license

agreements, carrying out due diligence

on the licensed trademarks, patents,

copyright, industrial designs, trade

secrets and advising the requirement

of recordal of any intellectual property

rights and license agreements at the

Indonesian Trademark ofice,” says Lukiantono.

alinar Kartakusuma, a partner

at Makarim & Taira S in Jakarta,

has extensive experience in

corporate and commercial transactions

focusing on M&A, investment, joint

venture projects, employment,

international franchises, and

intellectual property. Before joining

the irm in April 1989, she worked with multinational companies in the

service and manufacturing sectors

in Indonesia, England and France. Kartakusuma is also a registered IP

consultant and a sworn translator

who speaks Indonesian, English and French. She is a contributor to Getting

the Deal Through: Franchise and to the

Indonesian section of Remedies for

International Sales of Goods.

“I am also a member of the

Indonesian Advocates Association,

the Indonesian Intellectual Property

Society, the Indonesian Association of

Intellectual Property Law Consultants,

the International Bar Association, the

Inter-Paciic Bar Association as well as the Congress of Fellows of the Center

for International Legal Studies,” says

Kartakusuma.

D M

GalinarKartakusumaMakarim & Taira S


March 2015Asia IP

26

s a partner at Anderson Mori &

Tomotsune in Tokyo, Akihito

Nakamachi has the rare

distinction among Japanese lawyers

of having served as a partner both in

the United States and in Japan, and

possesses over 20 years of experience

as a practicing lawyer. He has special

expertise in IP and technology

transactions for technology-driven

clients, ranging from young start-ups

to fully-matured global enterprises.

Nakamachi represents clients operating

in a wide range of industries including

software, e-commerce, computer

gaming, computer equipment,

telecommunications, automobile,

semiconductor, pharmaceuticals,

biotech and medical devices. With

over 10 years’ experience at irst-tier national US law irms, Nakamachi has acquired knowledge of not only the

laws but also the “business culture” of

both the US and Japan, and utilizes his

AkihitoNakamachi Anderson Mori &

Tomotsune

A

ukukazu Hanamizu, a partner

at Yuasa and Hara in Tokyo, specializes in the areas of

corporate, IP, licensing, litigation and

alternative dispute resolution. With

more than 27 years of IP experience,

he has done numerous litigation cases

and drafted a countless number of

contracts for both domestic and foreign

clients.

“Most Japanese companies have

shifted manufacturing facilities to

their foreign subsidiaries rather than

licensing out to third parties concerning

their core IPRs,” Hanamizu says.

“They are more willing to license out

non-exploitive IPRs mainly for the

purpose of earning money or avoiding

infringement from third parties’ IPRs by

utilizing cross-licenses. Also, Japanese

companies are very interested in

evaluating their IPRs in light of how to

effectively utilize each IP. Finally, many

Japanese companies are drastically

changing their business structure

through M&A, etc, and accordingly

the transfer of IP has often taken

place. In order to meet this trend, the

position of patent licensees has been

strengthened from a legal perspective

and licensees can assert their rights

against new patent holders without any

license registration.”

Hanamizu says that trade secret

protection has been highlighted in

Japan because its value has increased

throughout the rapidly innovating

industries and its protection does not

require any registration. “No doubt

Japan is and will continue to be a

technically developed country and IP

will take on a more important role in the

future,” he says.

Yukukazu HanamizuYuasa and Hara

Y

expertise to assist clients in achieving

successful outcomes in cross-border

commercial transactions and dispute

resolution matters.

“I have worked on a large number

and wide variety of cross-border

licensing projects between Japan and

the US, and more recently, between

Japan and other Asian countries such

as India and China,” Nakamachi says.

“For instance, I recently worked on

a unique technology transfer deal

in which a California company (my

client) transferred substantial IP assets

(primarily patents and know-how) to

a Japanese company, but only to the

exact extent the Japanese partner

needed to operate its business in Japan

without any additional license from the

client, and the client retained all other

IP assets and rights so that it can

continue operating its own business

outside of Japan. The drafting of the

related agreements required a special

attention to ensure that the transaction

would be recognized as a sale of

assets, as opposed to a license of IP

rights, for US tax purposes to ensure a

favourable tax treatment for the client.”


March 2015 Asia IP

27

aoki Yoshida, managing partner of Finnegan, Henderson,

Farabow, Garrett & Dunner

in Tokyo, handles a broad range of

intellectual property matters including

litigation, patent portfolio management,

intellectual property due diligence,

client counseling, licensing and

negotiations, patent prosecution, and

pre-litigation strategic counseling.

Yoshida has represented both domestic and foreign clients in numerous patent

infringement actions before the US

district courts and the US International

Trade Commission. In particular, he

has extensive experience in all types of

discovery, depositions, motion practice,

and day-to-day case management.

Yoshida is engaged in various IP licensing agreements in the ields of electrical, chemical and mechanical

arts. His licensing activities often

involve global intellectual property

issues for multinational corporations.

“I once represented a major Japanese

semiconductor company in a

licensing negotiation against another

international semiconductor company

and successfully concluded the case

with a worldwide cross-license,”

Yoshida says. “I have also represented a major automobile manufacturer

and advised on its global licensing

strategies.”

Naoki Yoshida Finnegan, Henderson, Farabow, Garrett & Dunner

N hye Keat Chew was called to

the Malaysian Bar in 1987 after

graduating from the Faculty of

Law of the University of Malaya and

doing his pupillage with Raja, Darryl

& Loh in Kuala Lumpur. Chew has

worked with the irm since then and is now a senior partner in the ield of corporate and commercial law with an

emphasis on intellectual property, data

protection and competition law. He

holds a number of positions in important

intellectual property associations such

as the ASEAN Intellectual Property Association, APAA (Malaysia Group)

and AIPPI (Malaysia Chapter).

As part of Chew’s IP portfolio,

he handles licensing cases for the

irm merging his commercial law background with IP legal expertise.

“Recently I have advised on a major

bedding manufacturer wanting to go

into Sri Lanka as a green ield and prepared the relevant distribution

and licensing agreement for that. I

have also handled various franchise

agreements the latest of which was a

new pizza chain coming into Malaysia,”

Chew says. “On the patent front, I have

advised a patent holder owning a patent

in the ield of building technology on forming a consortium with contractors

and engineers to exploit the patent.”

Phye Keat Chew Raja, Darryl & Loh

P

ki Ryuka is a patent attorney

in Tokyo, certiied to not only practice IP litigation in

Japan but also as an attorney at

law in California, specializing in

electronics, semiconductors, software,

data communication, and radio

communication. Ryuka began his

career as an electrical engineer at

Canon and later joined Tani & Abe.

From 1995 to 1998, Ryuka worked in

the Washington ofice of what is now Pillsbury Winthrop Shaw Pittman.

“Since founding Ryuka IP, I have

lectured extensively in Japan and

abroad on IP topics and have also

published numerous articles including

detailing my irm’s invention consulting services such as patent visualization,”

Ryuka says. “I frequently visit clients

and attend conferences in the US,

Europe, and Asia to expand my horizon as well.”

Aki Ryuka Ryuka IP

A

esides being an attorney at law

and a patent attorney, Kazuhiko

Yoshida is managing partner at Nakamura & Partners in Tokyo,

where he handles intellectual property

litigation, opinion and negotiation,

licensing, international transaction,

sports and entertainment as well as

antitrust matters. Yoshida has been a partner of the irm since 2001 and a visiting professor at Tohoku University

since 2006. Outside the irm, he is a member of the Daini Tokyo Bar

Association, the Japan Federation of

Bar Association, the Copyright Law

Association of Japan, the Japan Patent

Attorneys Association, the Japan

Association of Industrial Property Law,

AIPPI-Japan and the Law Association

for Asia and the Paciic.

Kazuhiko Yoshida Nakamura & Partners

B

March 2015


Asia IP

28

reg West-Walker is a partner at

AJ Park in Auckland, where he

provides strategic intellectual

property advice in relation to technology

and product design, patentability

assessments and advice on strategy,

advice on the use of conidentiality and licensing for the protection of new

technology, freedom to commercialize

assessments internationally and

patent and design searching in New

Zealand and internationally. He also

provides strategic advice in relation to

intellectual property enforcement and

defense, advice on intellectual property

ownership issues and structures,

intellectual property preparation of

technology start-ups for investment,

intellectual property due diligence for

investors and, in relation to proposed

acquisitions, IP audits and assisting

companies to develop and implement

corporate IP strategies. The University

of Auckland and the University of

Canterbury are among his West-

Walker’s clients.

West-Walker is a regular speaker

on IP management and strategy. He

is also a past president of the New

Zealand Institute of Patent Attorneys

and an Australian government-

appointed member of the Professional

Standards Board for Patent Attorneys,

which is responsible for administration

of the requirements for qualiication as a patent attorney and discipline of the

profession in Australia.

GregWest-WalkerAJ Park

Gith a LLB (Hons) from University

of London in 2002, Michelle Loi

is a partner in the intellectual

property department of Shearn

Delamore & Co in Kuala Kumpur.

Loi’s area of practice is primarily

contentious in nature. She has acted

in court proceedings involving patent,

trademark, copyright and design

infringement, breaches of conidential information, and passing off. Her IP

litigation experience transcends across

a broad range of industries.

Loi also represents clients in the

Intellectual Property Corporation of

Malaysia’s opposition procedures

as well as trademark prosecution

proceedings, and advises on domain

name disputes. With respect to non-

contentious areas, Loi advises on

Personal Data Protection Act, Food Act

and Regulations, gaming regulations,

franchising, as well as the IP and IT

aspects of commercial transactions,

which include licensing and technology

transfers, software and computer

agreements. She has also conducted

various due diligences for acquisition

aspects for the corporate departments.

“I am also the secretary of the

Licensing Executives Society of Malaysia, and have written numerous

articles in international IP publications,”

says Loi.

Michelle Loi Shearn Delamore & Co

W

rian Law is a partner in the

IP practice group at Wong &

Partners in Kuala Lumpur. Law

is regularly consulted by clients from

various industries to provide strategic on

both contentious and non-contentious

IP matters. He is a registered

trademark, design and patent agent in

Malaysia, and is active in a wide range

of IP works involving commercial IP

such as acquisition and/or license of

IP rights, infringement and passing-off

litigation, and IP enforcement against

counterfeits and piracy. He has served

as president of Licensing Executive Society of Malaysia, past chairp of the

IP Committee of the Malaysian Bar

Counsel, as well as member of the

Asian Patent Attorneys Association and

the Malaysian IP Association.

“I am experienced in IP licensing and

negotiation of such agreements across

a vast range of industries, in particular

in the music and entertainment

industry. I have the know-how in

strategizing and enforcing the licensing

of performing rights for musical works

due to my previous experience as an

in-house counsel for a local performing

right society,” Law says. “An example

of my recent experience includes

assisting acquisition of an US patent by

a Malaysian company, which involves

advising on complicated issues such as

a post-acquisition licensing agreement,

third-party licensing rights negotiation

and negotiation on technology

transfers.”

Brian Law Wong & Partners

B

March 2015 Asia IP

29


s a registered patent, trademark

and industrial designs agent, Jin

Nee Wong is one the founding

partners of Wong Jin Nee & Teo in

Kuala Lumpur. Wong has represented

clients against cyber-squatters through

dispute resolution iled with WIPO. She has implemented anti-piracy and brand

protection programmes for various

multinationals and is very active in public

policy as well as engagement work

including lobbying for reform of IP laws

and procurements. She has advised

clients in the areas of information and

communication technology, digital

integrity and media, competition,

e-commerce and media/entertainment

on all aspects of commercial

exploitation of IP including negotiating

and preparing manufacturing,

information and communication

technology, franchising. licensing and

biotechnology agreements. She has

also assisted clients in conducting

audits to identify ownership and scope

of their IPRs.

Outside the irm, Wong is chair of the IP Committee of EUMCCI, past president of the Licensing Executives Society Malaysia (2000), former chair

of the Bar Council IP Committee

and is actively involved in various IP

associations. She is one of the panelists

appointed by Kuala Lumpur Regional

Centre for Arbitration for its Malaysian

Domain Name Dispute Resolution

Service and is also a certiied mediator on the panel of the Malaysian Mediation

Centre.

Jin Nee WongWong Jin Nee & Teo

A

Wong Jin Nee & Teo

13A-5, Level 13A,

Menara Milenium

8, Jalan Damanlela,

Bukit Damansara

50490 Kuala Lumpur, Malaysia

T: +60 3 2092 3322

F: +60 3 2092 3366

E: [email protected]: www.wjnt-law.com

March 2015


Asia IP

30

s the head of the IP department

at ACCRALaw in Manila,

Alex Ferdinand Fider assists

foreign and local clients in the

fashion, sportswear, cosmetics,

pharmaceuticals, lubricants,

housewares, electrical appliance,

music and food chain industries in the

protection and enforcement of their

IPRs in the Philippines. Fider has

advised international organizations

including the EC-ASEAN Intellectual Property Cooperation Program (ECAP II), the Japan Export Trade Organization and the International Rice Research

Institute on matters involving IPRs in

the Philippines. He is consistently cited

in publications such as Asia IP as a

leading Philippine IP lawyer.

Fider is former president of the

Licensing Executive Society of the Philippines and a current member of

INTA, APAA, the Intellectual Property

Association of the Philippines and the

British Alumni Association.

shraf Ali is a member of the IP

team at Abraham & Sarwana

in Karachi. Ali handles all

aspects of trademark, copyright, patent

and design work, including iling, prosecuting and defending opposition

proceedings before the Registrar of

Trade Marks and the Controller of

Patents as well as iling and defending infringement and passing off cases in

Pakistan’s high courts.

AlexFerdinand Fider ACCRALaw

Ashraf Ali Abraham & Sarwana

A

A

us Hazel is a partner at James

& Wells in Auckland where

he heads the irm’s legal team, specializing in litigation and

contentious matters concerning IP

and commercialization. Hazel is an

experienced litigator in both New

Zealand and Australia. His practice

focuses on litigation, alternative dispute

resolution procedures (mediation

and arbitration), commercialization,

regulatory issues and administrative

law. He has represented clients at all

levels of the New Zealand Court system

(District, High and Supreme Courts) and

he has also appeared before various

tribunals and non-judicial authorities

including the Intellectual Property Ofice of New Zealand, the Environmental Risk Management Authority and the

Environmental Protection Authority. Hazel acts for a wide array of top-tier

clients including those in the food,

apparel, agricultural, forestry and

building technology sectors.

The irm is frequently said to have New Zealand’s leading IP litigation

and dispute resolution practice. “I

have been involved in all aspects of

such licensing arrangements, in New

Zealand and Australia, and many

matters with international aspects

beyond Australasia,” Hazel says. “My

experience enables me to see both

opportunities and dangers in licensing

arrangements from a commercialization

and dispute perspective, which leads

to robust but commercially-relevant

options, outcomes and advice.”

Gus Hazel James & Wells

Ges Jones graduated from

Auckland University with a

degree in electronic engineering

in 1988. Jones commenced practise in

the intellectual property ield in 1989 with one of New Zealand’s leading

intellectual property irms, where he assisted Fisher & Paykel Appliances

and Fisher & Paykel Healthcare to obtain

IPRs during a signiicant period of new product development. He completed

his patent attorney examinations and

was registered as a patent attorney in

1992, following which he studied law at

the University of Auckland, graduating

in 2000. Jones has practised with

Baldwins since 2002 and is now a

partner leading a team of patent

attorneys and lawyers specializing

in electronics, communications and

mechanical engineering.

Jones was New Zealand regional

chair of the Licensing Executives Society of Australia and New Zealand

from 1994 to 1998 and a trustee from

1998 to 2000. He still assists on the

New Zealand regional committee

as treasurer. “My licensing practise

has primarily involved acting for

New Zealand licensors wishing to

commercialize IPRs offshore and is

increasingly focussed on building

patent portfolios for licensing,” Jones

says. “Recent work has involved acting

for Phitek Systems in the aviation

industry, and Auckland UniServices

(the commercial arm of New Zealand’s

largest university) to build and maintain

a licensed patent portfolio for wireless

power transfer – particularly wireless

electric vehicle charging.”

Wes Jones Baldwins

W

March 2015 Asia IP

31


atricia Bunye heads the

mining and natural resources

department and the energy

practice group, and is also a partner

in the IP department at Cruz Marcelo

& Tenefrancia in Manila. Bunye’s

IP practice focuses on trademarks

and commercialization, including

licensing and franchising, as well as

the registration of food, cosmetics,

and pharmaceutical products with

the Food and Drug Administration.

She is currently a vice president of

the Licensing Executives Society International.

Prior to her appointment to the

LESI Board, Bunye held positions in the Asia Paciic Committee of LES International, the most recent of which

was as chair for two consecutive

terms. She is also a past president

of LES Philippines, with speaking engagements in many countries on

IP licensing in the Philippines. Bunye

has served in the Integrated Bar of

the Philippines in various capacities,

including as Chapter President. She

obtained her Juris Doctor degree

from the Ateneo de Manila University

School of Law in 1993 and also holds

a degree in legal management from

the same university. Outside the irm, Wong is chair of the IP Committee

of EUMCCI, past president of the Licensing Executives Society Malaysia (2000), former chair of the Bar Council

IP Committee and is actively involved

in various IP associations. She is one

of the panelists appointed by Kuala

Lumpur Regional Centre for Arbitration

for its Malaysian Domain Name Dispute

Resolution Service and is also a

certiied mediator on the panel of the Malaysian Mediation Centre.

P

Cruz Marcelo & Tenefrancia

6th, 7th, 8th & 10th Floors

CVCLAW Center, 11th Ave. cor.

39th St., Bonifacio Triangle

Bonifacio Global City 1634

Metro Manila, Philippines

T: +63 2 810 5858

F: +63 2 810 3838

E: [email protected]: www.cruzmarcelo.com

Patricia BunyeCruz Marcelo &Tenefrancia

March 2015


Asia IP

32

heena Jacob is a leading

intellectual property and

technology lawyer and is head

of the IP practice at ATMD Bird & Bird

in Singapore. Jacob also currently

serves as the president of the Licensing

Executives Society (Singapore). Her practice covers a wide range of IP

concerns, from patent prosecution,

commercialization and licensing of

inventions and litigation counseling.

Jacob frequently advises multinational

clients on IP protection strategies to

meet the needs of their business. She

works with major technology companies

in protecting and asserting their IP in

the digital environment and navigating

the numerous legal issues posed by the

internet. Jacob also advises companies

on R&D and collaborations in the high-

tech and life sciences sectors.

“As far as huge licensing deals, I have

advised Disney on a range of IP issues

including IP licensing agreements as

well as JTC Corporation, Singapore’s

leading industrial infrastructure

developer, on a range of IP issues

including IP collaboration and licensing

agreements,” says Jacob.

Sheena Jacob ATMD Bird & Bird

S

Leslie AnneCruzCesar C Cruz

& Partners

eslie Anne Cruz is a partner

at Cesar C Cruz & Partners in

Manila, who provides proactive

advice to big and small businesses,

serving both multinational and domestic

clients. She is committed to providing

prompt, thorough work with a keen

eye on the client’s bottom line needs

and overall interests. Her strategic

counseling covers obtaining, protecting,

licensing and enforcing intellectual

property, as well as protecting

these rights before the courts and

administrative agencies. Recognized

for her discerning insight, particularly

on intellectual property issues, she

has been regularly invited to speak

on different IP legal issues at various

corporations and industry events.

Cruz also assists clients in setting

up corporations and organizations in

the Philippines, concluding various

commercial agreements, and providing

general corporate, taxation, and

border protection advice. She brings

to the practice a diverse international

experience, having interned at

Frommer Lawrence & Haug and Kaye

Scholer Fierman Hayes and Handler,

both in New York. “As part of my commitment to positive

social change in the community, I

actively help various non-governmental

and non-proit organizations regarding their legal issues,” Cruz says. “I

also serve as director and corporate

secretary of several corporations.”

L

ida Panganiban-Alindogan’s

practice includes the

management, prosecution

and enforcement of IPRs. She also

provides advice on competition law,

data protection and privacy, and

regulatory advice on food, beverage

and pharmaceutical products.

Panganiban-Alindogan serves as

the secretary of the Philippine Bar

Association, the oldest voluntary

national organization of lawyers in

the Philippines and as the assistant

treasurer of the Licensing Executives Society of the Philippines, where she

also serves as the chairperson of the

Trademark Committee and the IP

Valuation Committee. She is a member

of the Intellectual Property Association

of the Philippines, Philippines the

Integrated Bar of the, INTA and APAA.

VidaPanganiban-AlindoganSyCip Salazar

Hernandez & Gatmaitan

V

March 2015 Asia IP

33


erald Koh is a director in Drew

& Napier’s intellectual property

department. Koh has more

than 14 years of legal experience and

holds a specialist diploma in molecular

biotechnology. He specializes in both

contentious and non-contentious IP

matters and his practice includes

registration and enforcement of patents

and designs. He also handles IP

management for local enterprises and

renowned global corporations. Various

institutions and media organizations in

Singapore have invited Koh to speak

about IP registration and enforcement.

He is the co-author of the chapter on

Intellectual Property – Patents and

Inventions in the Singapore publication

of Atkins Court Forms. He also serves

on the Intellectual Property Ofice of Singapore’s committee for the Patent

Agent Qualifying Examination. “My work highlights include

representing a local company in a

cross-border design-and-manufacture

agreement relating to statues of

worship which had to be manufactured,

packaged and delivered in a unique

manner,” Koh says. “I also advised

a local educational institution on the

licensing of copyrighted educational

material, a local biomedical company on

the acquisition of a patent portfolio from

a German inventor and conducting due

diligence on the potential acquisitions,

and another domestic biomedical

company on the acquisition and

licence back of diagnostic technology

for infectious fungal agents from an

Australian company.”

Gerald KohDrew & Napier

G

Audrey YapYusarn Audrey

udrey Yap co-founded boutique IP & corporate law irm Yusarn Audrey in 1999, where she offers

an integrated suite of IP solutions.

Yap is a qualiied lawyer in Singapore and Malaysia, a solicitor of England and Wales and a registered patent

agent in Singapore. Yap was selected by WIPO to serve on a high level

expert panel in 2015 on international

technology transfer in Geneva to review

recommendations and studies by

leading professionals on the subject as

required under the WIPO Development

Agenda framework. Yap was the expert appointed under the EU trade-related assistance programme with ASEAN to design and implement a national

tech transfer network for Philippines in

2011. Yap served on the IPOS Steering Committee 2012-13 on Singapore’s

National IP Competency Framework

as well as on the IP subcommittee on

developing a vibrant market place for

IP transactions and commercialization”

for Singapore’s IP Hub Master Plan.

She was appointed WIPO regional

consultant for ASEAN 2004-2006 to lead a 10-nation study on harnessing

IP as an economic tool.

“I have designed a licensing

and franchising system for an F&B

enterprise for Asia resulting in

signiicant revenue growth of 15% year-on-year, assisted in a brand-licensing

model in merchandizing goods for

food manufacturer and facilitated

negotiations for patent licensing

medical apparatus in collaboration with

a lifestyle store,” Yap says.

Aavid Kim is a long-established

partner at You Me Patent & Law Firm in Seoul, and is considered

one of the irm’s top attorneys. His areas of technical experience are in

telecommunications and electrical

engineering, allowing him to represent

international clients by protecting and

enforcing their intellectual property

rights in South Korea. In addition, much

of Kim’s current practice is dedicated to

providing legal advice in infringement

and enforcement matters, as well

as undertaking legal work regarding

licensing and litigation. Kim is a member

of the California Bar Association, the

Order of the Barristers, INTA, IPO,

AIPPI, as well as treasurer of Licensing

Executive Society Korean Chapter. “I have represented multi-million

dollar licensing deals between

multinational companies, R&D centers,

and global NPEs; clients in UDRP actions and licensing agreements

relating to domain name; clients

before the US ITC 337 proceedings

and US courts in patent infringement

actions and following through with

license negotiations; clients before

the international arbitration courts in

product liability actions and breach of

contract actions leading to settlement

agreements; as well as international

clients in patent infringement actions in

Korean courts,” says Kim.

David Kim You Me Patent &

Law Firm

D


March 2015Asia IP

34

Dennis Huang Lee and Li

ennis Huang has been practicing

for more than 23 years and is a

leading partner of Lee and Li’s

IP section. Huang, who is chair of the

Taiwan Bar Association’s IP committee,

is mainly responsible for IP litigation,

licensing, and antitrust matters. He sits

on the editorial board of the Taiwan

Bar Journal, and has published many

articles and books on subjects relating

to IP and antitrust laws. He is also a

lecturer in several universities in Taiwan

and China. In a process patent litigation

suit in Taiwan, in which he represented

a US chemical company, NT$2 billion

(US$63.1 million) in damages was

awarded, a landmark in Taiwan’s IP

litigation history.

“I have handled multinational

corporations’ licensing-related works

for [a number of types of digital

products, including CD-R, CD-

RW, DVD-ROM, Blu-Ray, colour

televisions, PCs and notebooks

and handheld devices] with regard

to negotiation, agreement drafting,

infringement analysis, petitions for tax

exemption, patent poolers’ merger

iling, auditing of royalty payments, participation in reorganization and/

or bankruptcy proceedings, defensive

and/or offensive actions of antitrust

law violations, as well as petitions for

constitutional interpretation by the

Justices of Constitutional Court,” says

Huang.

D

s a partner at Kim & Chang

in Seoul, Duck Soon Chang’s

principal practice areas include

IP litigation, technology licensing,

antitrust and international arbitration.

Chang has been head of the IP

Training Institute of the Seoul Bar

Association since 2010. He also served

as an advisor to the Korea Fair Trade

Commission and the Korea Trade

Commission (an equivalent to the US

ITC) on IP-related policies and matters,

respectively. Chang graduated from

Seoul National University with an LLB

and received an LLM from Harvard Law

School. He is admitted to the Korean

Bar and the bars of the states of New

York and California. He was a foreign attorney at Latham & Watkins from

1999 to 2000.

“My licensing work goes back to

the early 1990s when I represented

the Korea Electronics and Telecommunications Research Institute

in negotiating a joint development

agreement, and subsequently a

consortium of Korean mobile handset

manufacturers, including Samsung

Duck Soon ChangKim & Chang

A

partner at YP Lee, Mock & Partners in Seoul, Jordan

Kim has a BA in Spanish from

Hankuk University of Foreign Studies in

1980 with a minor in international trade/

business. Kim also has a Master’s

degree in intellectual property law from

the University of New Hampshire and

was admitted to the Korea Patent Bar

in 1990.

Before entering the IP ield, Kim worked for Hyundai, a general trading

company and then joined the irm in 1991 and extended his career to foreign

IP practice while working for Morgan &

Finnegan in the US. His job includes

counseling for strategic IP management,

licensing, commercialization of

invention and litigation both for patents

and trademarks. He is also an adjunct

professor at the Hankuk University

of Foreign Studies and is involved in

IP-related organizations including the

Korea Patent Attorneys Association

(vice president), Asia Patent Attorneys

Association (council member and

co-chair of the anti-counterfeiting

committee), LES Korea (vice president) and FICPI Korea (board member),

AIPPI (member) and INTA (member).

and LG, in their respective license

agreements with Qualcomm, all relating

to the introduction of Qualcomm’s

code division multiple access (CDMA)

cellular system in Korea,” he says. “My

licensing work for these companies laid

the groundwork for the irst nationwide launch of CDMA service in Korea in the

irst half of 1996.” Since then, Chang has drafted

and negotiated hundreds of licensing

agreements and counseled clients on a

variety of licensing matters, particularly

in the areas of telecommunications and

pharmaceuticals. “I have also defended

a global IT company before the Korea

Fair Trade Commission when certain

licensing terms of the company were

challenged by the Korean antitrust

watchdog. This case is still regarded

as the leading case in Korea where

licensing terms were scrutinized from

the competition law perspective.”

Jordan Kim YP Lee, Mock & Partners

A


March 2015 Asia IP

35

homas Tsai is a renowned patent

professional in Taipei. Tsai was

previously a founding partner

of one of the country’s largest local IP

irms, and he saw irst-hand the growth of the country’s domestic technology

industries in the 1990s, which included

the development of electronic and

semiconductor-related technologies.

He had foreseen the need for

competent patent practitioners to assist

companies in their IP protection, and

founded Tsai Lee & Chen in 1995 with

other patent practitioners specialized in

various technology areas.

Tsai is the founding president

of the Taiwan Patent Attorneys

Association. He was also the former

president of the Asian Patent

Attorneys Association Taiwan Group

and former president of the Taiwan

Association of Information Technology

and Intellectual Property. “As part

of my commitment to positive social

change in the community, I actively

help various non-governmental and

non-proit organizations regarding their legal issues,” Cruz says. “I also serve

as director and corporate secretary of

several corporations.”

ory Liao is an attorney at

law and a patent attorney at

Tai E International Patent & Law Ofice in Taipei. With a MS in advanced technology management

from the University of South Australia

and an LLB from the National Taiwan

University, Liao’s specialties include

IP litigation, administrative law, patent

licensing, innovation and know-

how utilization, IP evaluation and

commercialization. In addition, he is a

member of the Taipei Bar Association,

Hsin Chu Bar Association and Taoyuan

Bar Association.

Thomas TsaiTsai Lee & Chen

Tory LiaoTai E International

Patent & Law Ofice

T

T

Pham Thi Thu Ha Investconsult Group

ham Thi Thu Ha was born in 1962

and graduated from Moscow

Communication University and

Hanoi Law University. She joined

Investconsult Group in 1989 and is now

deputy general director. After spending

nearly 30 years handling IP matters and

being one of the irst IP professionals in Vietnam, she has been involved in

a wide range of IP matters. In addition,

she provides service and training to

many famous clients. She is a member

of the Hanoi Bar Association, the

Vietnam Bar Association, the Vietnam

Intellectual Property Association and

APAA.

One of her signiicant licensing works is recording the trademark license

agreement at the National Ofice of Intellectual Property of Vietnam.

“In order to successfully record the

trademark license agreement at NOIP,

I carefully reviewed the agreement

provided by the parties and gave

advice based on the Vietnamese IP law

so that the refusal from NOIP can be

avoided,” Pham Thi Thu Ha says. “In

addition to the advice on the trademark

license agreement, I also advised my

client to increase its charter capital and

to register the change of the content of

Business Registration Certiicate – this is considered an important part of the

comprehensive consultation package.”

PAlan AdcockTilleke & Gibbins

lan Adcock is a partner in the

Tilleke & Gibbins intellectual

property and regulatory affairs

practice groups in Bangkok. Adcock

has extensive experience in IP

commercialization and due diligence

and is vice president of the Licensing

Association (Thailand), an organization

cofounded by the irm. “I regularly assist Asian clients as

they acquire IP assets around the

world,” Adcock says. During his irst 10 years of practice in China and Hong

Kong, he evaluated IP portfolios for

client licenses in transactions and for

outright acquisitions, often working in

conjunction with M&A and R&D teams

across multiple jurisdictions.

“For the past seven years in

Southeast Asia, my commercial IP

practice has taken me on numerous site

investigation visits in Europe, the US and Asia,” Adcock says. “My experience

in bio-energy and material acquisition

projects continues to expand as deal

volume in Southeast Asia increases

– I have advised on all IP aspects of

PTT Chemical’s equity participation in

Boston-based Myriant Technologies,

resulting in the establishment of bio-

succinic acid production plants using

natural raw feedstock.”

A

March 2015Asia IP

36


ham Vu Khanh Toan holds a BS

in physics, a BA in law and an

MIP. He is a registered patent

and trademark attorney and an attorney

at law. Pham was considered an expert

at the National Ofice of Intellectual Property from 1985 to 1988, and he

founded Pham & Associates in 1991

in Hanoi with branch ofices in Ho Chi Minh City, Da Nang and Hai Phong.

His practice areas include licensing,

franchising, dispute resolution and

litigation relating to IP rights. He is a

member of the Vietnamese Lawyers

Association, INTA, AIPLA, ECTA, IBA, FICPI, LES and LAWASIA. Pham has been invited to give lectures on

intellectual property at the University

for Science, Social and Humanity and

the Judiciary Institute in Hanoi and

comparative laws at the Law University

and the Economic University of Ho Chi Minh City. He is now vice president of

the Vietnam Anti-Counterfeit Goods

Association and the Ho Chi Minh City

Intellectual Property Association.

“I have been involved in complex

cases involving counterfeit goods and

patent and trademark infringement.

The latter includes X-Men characters,

Honda motorcycles and a Vietnamese

advertising company,” says Pham.

Pham VuKhanh ToanPham & Associates

P

Moviemakers Battle Online Pirates FEATURES

March 2015 Asia IP

37

ollywood might be a well-established, multi-billion-dollar

industry, but the business of ilmmaking is quickly catching up on the other side of the planet in Asia.

Dhruv Anand, a partner at Anand and Anand in Noida, says he

thinks the ilm industry in India is very successful. “It’s one of the fastest-growing in the world, and compared to economic growth,

it is growing even faster, particularly after 2000, when private

entrepreneurs began funding large projects,” he says. “Before

that, the industry used to be controlled by the underworld and the

maia, so because of that there wasn’t much transparency. That has now changed because enforcement agencies have cracked

down whereas they didn’t really take much action before.”

Anand notes that there are about 1,000

ilms coming out every year in India, which is one of the highest rates in the

world. “That is due to a mix of reasons

– a strong copyright regime, the whole

idea of going to the cinema and watching

a movie, and different familial values, for

example,” he says. “People can forget

about the stresses of everyday life when

they go to see a movie. The whole nature

of a Hindi movie is larger than life and

much grander these days.”

Thailand is another country in which

the movie industry is very successful. “It

is one of the most important industries

in Thailand,” says Suebsiri Taweepon,

a senior associate at Tilleke & Gibbins

in Bangkok. “It is part of the strategies

for restructuring the Thai economy in the Eleventh National Economic and Social Development Plan 2012-2016, which aims to promote a creative economy.”

In Myanmar, the production of ilms has seen signiicant improvements since the industry was privatized in 1989,

according to Pedro Jose Bernardo, a foreign consulting attorney

Across Asia, moviemakers release thousands of movies each year, often directly into the hands of

infringers. Jeffrey Lee reports on what lawmakers and enforcement agencies are doing to protect

this local industry.

Moviemakers BattleOnline Pirates

H

India’s ilm industry is very successful. It’s one of the fastest-growing in the

world, and compared to economic

growth, it is growing even faster.

- Dhruv Anand, partner,

Anand and Anand, Noida

“

”

March 2015Asia IP

38

FEATURES Moviemakers Battle Online Pirates

at Kelvin Chia Yangon. “Despite the lack of up-to-date equipment, Myanmar movie companies are producing colour sound ilms and motion pictures at a steady rate, depicting Myanmar

customs, patriotism, political aspirations and traditions,” he says.

“However, the ilm industry has shifted to producing lower-budget direct-to-video ilms, mainly comedies, which has undermined its quality.”

With the success of ilms comes all manner of copyright and piracy-related issues. The strength of the movie and

entertainment industry in any given jurisdiction seems, at least in

part, to be inluenced by the strength of the legal framework and copyright protection there.

Take Singapore, for example, which has solid copyright

protection laws as well as a decent theatrical sector. “Singapore

is considered a mature market in that it generally has a suficient infrastructure of existing cinema screens within close proximity

to virtually any neighbourhood, and

a steady enough stream of theatrical

releases to meet movie-goers’ overall

demands,” says Frank Rittman, senior

vice president, deputy managing director

and Asia-Paciic regional policy oficer of the Motion Picture Association. “Movies

are reasonably priced in comparison with

other forms of entertainment and theatre

facilities have all the modern amenities

that audiences have come to expect.”

Rittman says that by virtue of its

Free Trade Agreement with the United

States, Singapore’s copyright provisions

are already among the strongest in the

region and there is a speciic IPR branch within the police force to focus entirely on

copyright and trademark infringement.

“But more recently, Singapore enacted

further amendments that will allow

rights holders to petition for judicial

orders requiring network service providers to restrict local

consumers’ access to lagrantly infringing sites operating outside of Singapore without regard to the service provider’s liability for

any such infringement,” he says. “The amendments are based

on legislation already in place in the United Kingdom, and

could serve as a useful model for other regional jurisdictions to

consider. Once implemented, they should prove tremendously

helpful for the ilm and other copyright industries in Singapore.” The situation in India is a similar one in terms of the legal

protection available to copyright owners in the ilm sector. “I think it’s one of the best in the

world,” says Anand. “The Copyright Act

has been amended six times, the latest

being in 2012, with both civil and criminal

remedies. There is a unique provision in

the act which gives a plaintiff the option

of bringing a lawsuit in the place where

he or she resides – this is opposed to

what is said in the Civil Procedure Act

and is a huge advantage.”

Anand says that the Delhi High Court,

with a jurisprudence adopted from

English law, is one of the most IP-savvy and eficient courts. For example, it has the power to grant ex parte injunctions,

which can be extremely beneicial in copyright or trademark cases.

“The element of surprise is very

helpful,” he says. “Otherwise, if you

serve notice, then the pirate can just get

rid of the infringing goods right away,

destroying the evidence.”

An Anton Piller order can also be

granted, where the infringing goods are then locked and seized

together with the defendant, who is guilty of contempt of court

if the order is violated. Additionally, plaintiffs have the beneit of seeking John Doe orders, colloquially referred to as Ashok

Kumar orders in India. “This is extremely important because it

empowers IP owners to take action against unknown defendants,

such as cable operators showing illegal movies,” says Anand. “In

such cases, you would just need to ind them and serve the court order – a huge, huge advantage.”

Apart from these, there are other important provisions, such

as those allowing for the freezing of assets, as well as Sections

63-65 of the Copyright Act, which provide for punitive damages

Despite the lack of up-to-date

equipment, Myanmar movie

companies are producing colour

sound ilms and motion pictures at a steady rate, depicting Myanmar

customs, patriotism, political

aspirations and traditions.

- Pedro Jose Bernardo, foreign consulting attorney,

Kelvin Chia Yangon, Yangon

“

”

We ind that some Myanmar producers occasionally copy and produce

the same script from foreign ilms, especially in the music industry, but

no action is taken by the authorities

or relevant associations.

- Yuwadee Thean-ngarm, consultant,

Tilleke & Gibbins, Yangon

“

”

March 2015 Asia IP

39


to be awarded on top of compensatory damages.

Section 13 of the act is also important and deals with works in

which copyright can subsist. “This is a major provision covering

infringing ilms,” says Anand. “If a movie is heavily based on Hollywood and the characters and storyline are all similar, then

the ilm studios can sue the creators, saying that a substantial part is based on a prior work.”

In 2007, for example, the producers of the movie Hitch and

Sony Pictures Entertainment sued the producers of an Indian movie called Partner for remaking their movie without permission.

Similarly, in 2009, Twentieth Century Fox sued the director and

the production company of the Bollywood movie Banda Yeh Bindaas Hai for plagiarizing the movie My Cousin Vinny.

Meanwhile, in Myanmar, which is

very much a developing country, the

law regulating movies is still rather

rudimentary. “At present, Myanmar

has no consolidated or harmonized

intellectual property protection,” says

Bernardo. “Instead, intellectual property

rights covering ilms and videos can be found across various pieces of legislation,

mainly the Myanmar Copyright Act,

which came into force in 1914. General

copyright concepts applicable to ilms and videos can be found in this law,

but it generally does not provide for

the lexibility required for more modern media.”

According to Yuwadee Thean-ngarm, a consultant at Tilleke & Gibbins in

Yangon, some protection is also to be found in the Television and Video Law.

Under Section 33 in Chapter IX, the

distribution, hiring or exhibition of a copied

television programme transmitted by a

government department or organization

for commercial purposes and the copying, distribution, hiring

or exhibition for commercial purposes of a video tape which

has already obtained a video censor certiicate without prior permission are punishable with imprisonment for a term of up to

three years or a ine of up to K100,000 (US$97), or both. But the legislation alone is insuficient, says Thean-ngarm. “Due to the limitations on protection for ilms in Myanmar, ilm investors and businesses joined to set up the Myanmar Motion

Pictures Association,” she says. “At the request of members, the

MMPA takes action, in collaboration with the relevant government

entities, against copyright infringement in ilms.” The protection in Myanmar is also inadequate in another way.

While many countries are parties to the Berne Convention, which

requires member states to give equal treatment to both nationals

and non-nationals with regard to the protection of the rights of

authors in their literary and artistic works, Myanmar is not.

“The current Copyright Act only

protects works created in Myanmar by

Myanmar nationals, so foreign copyrights

are not recognized and cannot be used

to take legal action against an infringer,”

says Thean-ngarm. “Furthermore, the

relevant authorities and associations

place more emphasis on locally-

produced ilms and videos. Therefore, we ind that some Myanmar producers occasionally copy and produce the same

script from foreign ilms, especially in the music industry, but no action is taken by

the authorities or relevant associations.”

Apart from having a comprehensive

legal framework providing copyright

protection for the ilm industry, effective enforcement is also needed to ensure that IP rights are not

infringed upon.

According to Anand, the police in India were not very IP-

savvy a few years ago, but over the years, they have become

more aware of pirated CDs and DVDs coming into the country.

“Apart from police though, we also need better education and

awareness,” says Anand. “A few years back, when someone iled a complaint, the police would take the infringing work and punch

holes in it so that they could put it into their iles. The lack of awareness is deinitely something that needs to change.” The economic conditions in India are also a contributing factor.

“There is still a lot of poverty in the country,” says Anand. “Those

people living in villages don’t really know what piracy is, and

when they come to the city they take part in it.”

Taweepon says that, according to the Thai Intellectual

IP enforcement in Thailand, with

regard to ilms and the entertainment industry, is reasonably good.

- Suebsiri Taweepon, senior associate,

Tilleke & Gibbins, Bangkok

“

”

It might be that there is less

investment because fewer people

are going to cinemas and are turning

to other kinds of entertainment

instead, or because it’s too easy

to watch for free, which in turn is

because the protection system is

inadequate.

- Rosita Li, partner,

Mayer Brown JSM, Hong Kong

“

”

March 2015Asia IP

40

FEATURES Moviemakers Battle Online Pirates

Property Rights Coordination Center, the counterfeit products

that were most seized by the customs department in 2013 were

CDs, VCDs and DVDs, with an approximate value of B20 million

(US$617,000). “It can be seen that IP rights enforcement in

Thailand, with regard to ilms and the entertainment industry, is reasonably good,” he says.

In Myanmar, although there are no speciic mechanisms for the search, seizure and disposal of property relating to copyright, the

general provisions of the Criminal Procedure Code can be used,

says Bernardo. “Speciically, Sections 101 and 103 allow for any search to be made in the presence of at least two witnesses,

who are respectable inhabitants of the

locality and will be required to sign the

list to attest to its accuracy. Also, the

duration of the protection for literature,

dramas, musical and artistic work under

copyright extends to 50 years after the

author’s death,” he says. “Whether these

enforcement mechanisms are workable

in fact is yet to be seen as there have

been very little, if any, enforcement

actions involving copyright violations in

Myanmar.”

Opinions vary as to the exact nature

of the relationship between the movie

industry and the legal protection

available.

For Rittman, the success of the

industry is crucially dependent on how

well protected ilms are. “No country can provide a suitable environment

for ilmmakers or other creators without ensuring full and adequate

legal protection for their works. Strong

intellectual property rights, and their enforcement, are a sine

qua non for the creative industries,” he says. “Unless there’s

suficient government will to accord resources to both promoting and protecting intellectual property rights as a matter of national

policy – walking the walk as well as talking the talk – local creative

industries probably won’t survive.”

Taweepon also thinks that the protection of copyright is directly

related to the success of the domestic ilm industry. “According to The National Federation of Thai Film Associations, the second

greatest amount of income for the Thai ilm industry is from the sale of VCDs and DVDs,” he says. “Moreover, income from licensing

is one of the biggest sources of income. Therefore, enforcing the

law by eliminating counterfeit goods is

essential for the ilm industry.” But others say that there are more

considerations that come into play, such

as the cinematographic techniques of

the ilms themselves. “The success of the domestic ilm industry is not only due to the protection

in the country, but also the story, creation,

theme, technical aspects, actors and the

production overall,” says Thean-ngarm.

Rosita Li, a partner in the intellectual

property and information technology

practice at Mayer Brown JSM in Hong

Kong, says she thinks that the industry

has lost some of its former glory, but that

there are probably many other different

factors causing the decline besides legal

protection.

“This may be a bit of a chicken-and-

egg scenario,” she says. “It might be that there is less investment

because fewer people are going to cinemas and are turning to

other kinds of entertainment instead, or because it’s too easy to

watch for free, which in turn is because the protection system

is inadequate. Turning it the other way around, if the protection

system is good, then obviously that contributes to the success

of the industry, but it’s dificult to say which one actually comes irst.”

What is clear, though, is that technological advancements and

the internet are posing new challenges that are increasingly hard

to tackle.

“For example, in Singapore and other jurisdictions we see

innocuous-looking set-top devices that promote themselves as

enabling ‘web’ experiences for television consumers, but which

connect consumers’ television sets directly to infringing websites

providing pirated content,” says Rittman. “Depending on how

they’re developed or marketed, they can arguably fall into a grey

Indian courts need to catch up to

the Delhi court. The Madras court

is more receptive to change and

they’re trying to improve, so change

is happening as we speak.

- Tanvi Misra, senior associate,

Anand and Anand, Noida

“

”

Copyright review is an ongoing

process around the world and more

countries in Asia are understanding

the long-term social, economic and

cultural beneits of IPR protection for the creative industries.

- Frank Rittman,

senior vice president and deputy managing director,

Motion Picture Association, Singapore

“

”

March 2015 Asia IP

41


area that isn’t suficiently compelling for the police or prosecutors to get involved.”

A study released by Sycamore Research in March found that

Singapore ranked as the worst out of 15 Asian countries in terms

of online piracy per capita. About 61% of the people surveyed,

aged between 16 and 64, admitted to having participated in

movie, TV or music piracy. Among them, about 70% of 16-to-24-

year olds were active pirates.

While 66% of active pirates knew what they were doing

was wrong and agreed that piracy is equivalent to theft, 41%

of persistent pirates said that they do it because there are no

enforced laws to stop them, said the report. Additionally, 55% of

Singaporeans believed that there needed to be more regulation of

the internet to prevent individuals from downloading or streaming

pirated material.

Tanvi Misra, a senior associate at Anand and Anand, says

that any new legal developments have to include technological

measures to address growing online piracy. “It’s not an easy

task, but it needs to happen now,” she says. “Other courts like

the ones in Calcutta and Madras, as well as the district and lower

courts, need to catch up to the Delhi court. The Madras court

is more receptive to change and they’re trying to improve, so

change is happening as we speak.”

As for the years ahead, her colleague says he sees an

increasing amount of litigation. “There’s now so much money in

the business and more people are trying to get a piece of that

pie, so there’s a lot of chaos right now,” says Anand. “There

are multiple players in the industry and assignments have

to be very clear and speciic so there cannot be any room for misinterpretation. A lot of the big players and production houses

will start taking action in collaboration with Hollywood producers,

so I don’t think people would be able to make infringing ilms so easily now. Slowly, infringement should die down.”

Li, on the other hand, says she doesn’t think there will be too

many major changes in Hong Kong. “The ambit of copyright could

become wider, and there will also be closer monitoring to ensure

works are less easily pirated and IP rights are not infringed

upon,” she says. “I do think the law is capable of catching up with

technology.”

Although IP protection for the ilm industry across Asia varies widely, Rittman is optimistic as to the future. “It’s still early days,

at least metaphysically, in terms of IPR development for many

countries in the region. Some laws date back to the colonial era,

and several others still aren’t yet compliant with the threshold

requirements set out in the 1996 WIPO Treaties,” he says.

“But copyright review is an ongoing process around the world

– the United States is in the midst of a huge ongoing review,

for example – and more countries in Asia are understanding the

long-term social, economic and cultural beneits of IPR protection for the creative industries, so that’s encouraging.” AIP

Although IP protection for the ilm industry across Asia varies widely, experts are optimistic for the future. “More countries in Asia are understanding the long-term social, economic and cultural beneits of IPR protection for the creative industries,” says Frank Rittman, senior vice president, deputy managing director and Asia-Paciic regional policy oficer

of the Motion Picture Association.

February 2015Asia IP

42

FEATURES Social Media

wenty years ago, the social media world we now live

in was the stuff of science iction. Today, social media is a critical business tool creating unprecedented

opportunities for direct consumer interaction, brand

awareness, checking the pulse of key constituents and

so much more. This incredible opportunity is not risk-free,

however, and is the subject of new laws, application of old

laws to new situations, and a signiicant amount of murkiness. Fortunately, the risks can be managed by considering the

issues created by social media and that begins with asking

the right questions. Below is a discussion of ten important

questions every business can start with to better beneit from its social media presence.

1. What is my business agreeing to when it creates a

presence on a social media site?

It is usually signing up for more than it thinks. In addition to

terms of use and privacy policies applicable to all users of a social

media site, each social media network has additional contracts

for businesses. A business will at least be subject to a contract

governing its page on the social site. If the business has its own

website but uses social media plug-ins,

widgets, or log-in credentials, a different

contract (called Social Developer Rules)

will apply. Some of these rules are only

seen by the employee setting up the

business’ page or downloading a widget

– that is a problem because the rules will

still apply.

For example, a 2015 Facebook rule

says Facebook “can analyze your app,

content, and data for any purpose,

including commercial.” An older version

is more explicit: Facebook “can analyze

your app, content, and data for any

purpose, including commercial (such as for targeting the delivery

of ads on and off Facebook and indexing content for search).”

Failure to abide by the rules can have consequences even if

the social media site does nothing. In In the Matter of Jerk LLC et

al, the United States Federal Trade Commission (FTC) alleged

that Jerk.com engaged in deception by creating fake proiles of

Regulations and risks abound when a business wades into social media, but the risks are almost

always worth it. Holly K Towle and Kendra H Nickel-Nguy explain how to manage the risks inherent

in social media.

T

Social Media: 10 Questions All Businesses Should Consider About Their Online Presence

Failure to abide by the rules can have

consequences even if the social media site

does nothing.

“

”

March 2015 Asia IP

43

Social Media FEATURES

persons as “jerks” or “not jerks” and then offering a paid service

to have the proile changed. Part of the deception charged was Jerk.com’s “improper collection of Facebook data in violation of

Facebook’s agreed policies.”

2. Who has rights in content or data?

Lots of people. Generally, the business owns its own content,

but depending on the relevant contracts, the business usually

grants the social network or users a range of licenses or

permissions that can impact value, including the value of the

business’ data that is of interest to the social network or others

engaged in “Big Data” collection or analysis.

What about “user-generated content,” such as photos of happy

customers with your product? They are a great way to promote

the business’ brand, but are they free for the taking? No. The

person creating the content typically owns the copyright in it

and merely posting on the business’ page does not transfer the

copyright or create a license for re-posting or use in ads, etc.

That needs to be done by contracts. Privacy policies and other

laws (such as the rights of publicity that persons in the picture

may have) also impact the ability to use user-generated content.

What if the social network collects and

provides the content to the business

– can the business then assume that

it can do anything it wants with it? No.

Again, contracts count. To illustrate, the

Twitter ad policies say: “Do not include

another person’s content in Twitter Ads

without the person’s permission. Create

your own Tweets, or get permission from

the authors of the Tweets and Retweets

you use.” That is another way of saying

that businesses need to do their own

compliance legwork.

3. Are there data privacy and security concerns for the

business?

Yes. Privacy and data security laws abound. Most US businesses are impacted by enforcement actions brought by

the FTC under its interpretation of its power to prevent unfair

acts or deceptive practices. Between the FTC, other federal and

state regulators, industry trade organizations codes, contracts,

and sector speciic laws, privacy and data security rules can heavily impact social media activities (e.g., “Big Data,” behavioral

advertising, mobile apps) and data types (e.g., geolocation

information, IP addresses, and device identiiers). Children have special protections under the federal Children’s

Online Privacy Protection Act (COPPA). The act applies to online

services not only when they are directed to children, but also

when the site or service has actual knowledge that it has obtained

online information from a child. Consider an unsolicited photo of

an 8-year-old with a kitten and a message indicating the 8-year-

old sent it, or the video of and from four young fans at a concert

of a child celebrity – actual knowledge? Social developer rules

say things like “Don’t knowingly share information with us that

you [the business] have collected from children under the age of

13,” i.e., the social network does not want it. Neither should the

business unless it can comply with COPPA.

4. Should the business take steps

to protect its own trademarks,

intellectual property, “new” property,

or its reputation?

Yes. For example, the business should not only do the obvious (e.g.,

register copyrights and trademarks and

protect trade secrets) but also deal with

emerging types of property or rights

(e.g., that popular Twitter handle, those

loyal “followers,” and those blogs of

employees about the business or its

products). Litigation has begun regarding

who owns or controls those kinds of

“assets,” such as in cases where the employee quits or is ired. Similarly, new ways of clearing intellectual property rights are

emerging and should be considered. Taking months to clear

rights while a movie is being made is signiicantly different from clearing rights in a real-time social media campaign during

halftime at a major football game!

5. Can the business face liability for things users or third

parties might do on or through its pages?

Yes. However, the business can mitigate some risks, including by qualifying for the federal Digital Millennium Copyright Act’s

takedown provisions in case users post infringing items on its

social media page. What about users posting defamatory or

otherwise offensive comments? The federal Communication

Decency Act says that providers of an interactive computer

service will not be treated as the source of content provided by a

separate content provider. This is a very powerful defense. There

are ways to fail to qualify for it or to lose it, however, so relevant

procedures and contracts are advisable.

6. Can the technology used by social media networks

create an issue?

Yes, and in unexpected ways. Consider In re Hulu Privacy Litigation, 2014 U.S. Dist. LEXIS 59479 (2014). Hulu, an online provider of streamed content was sued for violating the federal

The business should deal with emerging types

of property or rights, such as that popular

Twitter handle those loyal ‘followers,’ and

those blogs of employees about the business.

“

”

While endorsements can be great for a brand,

it is important to be sure your business is using

them consistently with the law.

“

”

March 2015Asia IP

44

FEATURES Social Media

Video Privacy Protection Act by releasing personally identifying

information (PII) via a Hulu page with a “Like” button for the

video on that page. The “Like” technology created by Facebook

allowed Facebook to determine which Facebook member was

associated with the video, so even though the data actually sent

by Hulu did not include PII, the data held by Facebook did. In the

court’s view, Hulu could be liable if it knew or should have known

what data would go out to Facebook. The decision might not

survive appeal, but does illustrate that social media technology

can matter.

7. What issues might apply to a contest or sweepstake?

Tons. Social media can make sweepstakes and contests easy

to create, but the usual range of issues to consider still applies. A

description of some of those issues can be found from your K&L

Gates lawyer.

8. What issues might apply if users mention the business

or its products in social media?

While endorsements or testimonials can be great for a brand,

it is important to be sure your business is using them consistently

with the law. The FTC has updated its existing guidance

(which is really more like a requirement) on endorsements and

testimonials to be relevant to social media, including blogging.

Failure to comply can sting: in 2011, a company that advertised

its products through online afiliate marketers posing as ordinary consumers paid US$250,000 to settle with the FTC. We are not

just talking about obvious endorsements, such as by a celebrity

– regulatory action today tends to center around situations in

which “consumers” look like they are recommending a business’

product simply because they love it, but there is actually a

connection between them and the business that, if disclosed,

would affect how others evaluate the

endorsement (e.g., the endorser is

receiving free merchandise from the

business).

9. Does the business need to retain

records related to its social media

use?

Yes, if there is a requirement or other reason to do so, such as being able to

prove compliance with a law. Some

businesses believe that “social” means

that somehow a business gets a free

pass to do things online that it cannot do ofline. Examples would be a bank with a social media page that decides the setting is

so informal that it need not provide required legal notices about

whether a deposit product is FDIC insured, or a stockbroker

that “tweets” information he is forbidden to disclose in a formal

setting. Free passes do not exist, and

most regulators have issued guidance

about how businesses must operate in

social media.

What about a sole proprietor that has

valuable data on its social media page?

At death, will executors and heirs have

the passwords they need to get at that

data? Some states will be considering a

new uniform act, the Uniform Fiduciary

Access to Digital Assets Act, which is

intended to deal with that issue, but

which is also the subject of debate.

Regardless of ultimate solutions, the issue should be considered

both as to business records and also as to any user records the

business may hold (i.e., what obligations the business will have

to executors of users).

Finally, do not forget litigation. If the business gets sued and

needs to respond to discovery requests for information from its

social media pages, it will need to be able to impose a “litigation

hold” and comply with the “Electronically Stored Information” rules of the Federal Rules of Civil Procedure. That can be harder

than one would think (especially when the data is on a third-party

site), so advance planning is key.

10. With all these regulations and potential risks, why

should a business bother with social media?

Bank robbers rob banks because that is where the money is.

Businesses increasingly use social media because that is where

society is. While there are risks, they can be managed.

Holly K.Towle is a Seattle-based partner at K&L Gates.

Towle’s practice focuses on payment systems, privacy

and data security, electronic business issues such as

e-contracting structures for consumers customers and

for business processes, and software licensing and other

issues relating to information assets as distinguishable

from “goods” or “services”. She counsels national

and international businesses, merchants, inancial institutions, non-proits and educational institutions, including licensors and licensees, on a wide variety of issues regarding developments in and

compliance with laws regarding Internet and e-commerce, including payment

system and consumer regulatory compliance.

Kendra H Nickel-Nguy is an associate in the Seattle

ofice of K&L Gates. She earned her Master’s and Juris Doctor degrees from the University of Pennsylvania.

Some businesses believe that ‘social’ means

that somehow it gets free pass to do things

online it cannot do ofline.

“

”

Bank robbers rob banks because that is where

the money is. Businesses use social media

because that’s where society is.

“

”

AIP

March 2015 Asia IP

45

Protecting Your Inventions FEATURES

ringing a new drug to market requires the investment

of a great deal of time and money in research and

development. The cost of developing a new drug by

a major pharmaceutical company often ranges from

USD 4 billion to as high as USD 11 billion. As shown by the

Pharmaceutical Research and Manufacturers of America

(“PhRMA”) report, of 5,000-10,000 compounds under research,

only one will be approved by the FDA and be brought to market.

In addition, on average it takes 10 to 15 years to discover

and develop a new drug, as indicated by PhRMA. Therefore,

compared to other industries, the pharmaceutical industry is

very research-intensive, and the return-on-investment for a

drug often doesn’t start for a decade or more after the research

begins.

Incentives for Developing New Drugs Protecting the intellectual property of new drugs is complicated

but essential for pharmaceutical companies. In this respect,

patent are an important method to provide intellectual property

protection. However, patents, by themselves, do not always

suficiently create a favorable environment to encourage drug development. This is because even if a

company receives a patent for a drug,

the company cannot bring it to market

without FDA approval. To pass the FDA

review, clinical trials are needed for a new

drug and it typically takes six to seven

years at the clinical trial stage. By the

time the drug hits the market, the patent

may only have a few years of protection

left. In light of this, the Hatch-Waxman

Act was enacted in 1984 to allow for the

patent right term to be extended under

certain conditions and to provide for a

new form of protection known as “Data Exclusivity.” Data Exclusivity refers to protection of drug clinical data submitted to the FDA for market approval. Under the

protection of data exclusivity, such data cannot be relied on

by other companies for a limited period of time for obtaining

market approval without the holder’s authorization, though

other companies are not precluded from generating their own

data to obtain market approval. For example, in the US and

Bringing a new drug to market requires a great deal of investment in research and development.

Vivian Y. F. Chen looks at what patent holders can do in Taiwan to extend data protection and

enhance return on investment.

Patent and Data Protection in the Pharmaceutical Industry

B

Patents, by themselves, do not always

suficiently create a favorable environment to encourage drug development.

“

”

March 2015Asia IP

46

FEATURES Patent and Data Protection

Taiwan, a new molecular entity (“NME”) is given ive years of data exclusivity. However, after those ive years are up, other companies can apply for market approval using the same data,

and thereby avoid the costs associated with generating their

own data. Such data exclusivity doesn’t ultimately prevent other

companies from obtaining market approval, but it can slow them

down a bit to incentivize the original holder.

Competition and Cooperation between Patents and Data Exclusivity

(1) The Patent System is limited

In view of the high cost of developing a new drug, most drug

innovators make determinations as to the likelihood of obtaining

patents before further investing the time and money for the clinical

trials. If patent approval seems unlikely, they usually won’t invest

the considerable time and money needed to conduct multi-phase

clinical trials. As a result, potentially beneicial drugs may never come to market.

(2) Limitations Resulting from Patentability Requirements

A drug patent application may be denied for various reasons,

including: the early research results for the drug may fail to

prove its therapeutic eficacy, and thus fail to meet the utility requirement; the earlier disclosure of original failed research can

preclude patent protection due to the novelty requirement; or a

minor improvement to an existing drug may not meet the non-

obviousness requirement.

(3) Exercising Data Exclusivity

Due to the limitations resulting from patentability requirements,

such as utility, novelty and non-obviousness, as mentioned

above, companies may forgo pursuing patent protection for

some new drugs.

In such an environment, the data exclusivity mechanism ills the need, such that potentially beneicial drugs—though ones that may not be eligible for patent protection—can be given protection by another kind of intellectual property and brought

to market. Therefore, for drugs involving improvements that are

not signiicant enough to allow patent protection, seeking data exclusivity may be the way to go.

Data Exclusivity in Taiwan According to Article 40-2 of the Pharmaceutical Affairs Act, an

NME is given ive years of data exclusivity in Taiwan. In order to be eligible for data exclusivity, market approval must be sought

through Taiwan’s FDA within three years from the NME initially being approved for marketing in any other country. Although

Vivian Y.F. Chen is a Patent Attorney with Tsai Lee

& Chen in Taiwan, and Chief of Chemical Engineering of International Division. She has an M.S. in Chemical

Engineering from Pennsylvania State University, USA, and a B.S. in Chemical Engineering from National Taiwan University. Her areas of expertise include

Chemical engineering, environmental engineering,

pharmaceutical chemistry, polymer chemistry and

applied chemistry, and her practice areas include patent preparation and

prosecution, patent searches, and patent administrative litigation. She speaks

Mandarin, Taiwanese and English

Tsai Lee & Chen

11th Floor, 148 Songjiang Road

Taipei 104, Taiwan

T: +886 2 2571 0150

F: +886 2 2562 9103

E: [email protected]: www.tsailee.com.tw

For drugs involving improvements that are not

signiicant enough to allow patent protection, seeking data exclusivity may be the way to

go.

“

”

other generic pharmaceutical companies

may apply for market approval after three

years of data exclusivity by referring to

the same data, market approval for other

generic companies won’t be issued until

the exclusive ive years are up. Therefore, the provision of Pharmaceutical Affairs

Act provides a balance between

rewarding the holder of data exclusivity

and simplifying the procedure for other

generic companies to obtain market

approval for the same drug. AIP

Protecting Your Inventions FEATURESIP ANALYSTS

March 2015 Asia IP

47

Gladys Mirandah is

the director of mirandah

asia (singapore),

Malaysia, Vietnam,

Thailand, Indonesia

and Philippines. She

has been admitted to

practice in Singapore,

the UK and Brunei and brings with her more

than 35 years of IP experience in Asia. She

can be contacted at [email protected].

Rudina Ann Pescante

is an IP specialist

with mirandah asia

(singapore). She is a

registered chemist and

a registered patent

agent in the Philippines

with extensive

experience in patents, IP consultancy,

IP management, and freedom to operate

opinions.

ASEAN

the plaintiff and Fukuyama Netukan

only gave the plaintiff a license to

manufacture the machinery within the

territory.

The High Court, therefore, invalidated

MY124182A due to lack of novelty over JP2812353 and subsequently,

dismissed the infringement action iled by the plaintiff.

Conclusion

This decision has highlighted the

importance of expert opinion to bolster

an argument. Failure to submit an

expert opinion on the part of the plaintiff

to support its claim of infringement

inluenced the outcome of the case. Also, plaintiffs should be certain of its

rights over a patent before instituting an

infringement action in court. Otherwise,

an infringement claim could backire on the plaintiff.

Malaysian Patent Revoked Due to Lack of Novelty

In Suit No. 22NCVC-489-04-2012

between Fukuyama Automation

Sdn Bhd (the plaintiff) and Xin Xin

Engineering and Trading and Wong Thiam Fook (collectively referred to

as the defendants), the High Court

of Malaya invalidated the plaintiff’s

Malaysian Patent No. MY-124182-A due to lack of novelty in view of the prior

disclosure of the Japanese Patent No.

2812353 (JP2812353). Subsequently,

the High Court dismissed the

infringement case iled by the Plaintiff.

Background

The plaintiff, is a Malaysian company

which manufactures, sells and

installs glove stripping machines. The

Malaysian patent was originally owned

by Fukuyama Netukan Co Ltd, which

entered into an assignment agreement

with the plaintiff.

The defendants, Xin Xin Engineering and Trading, is a company based in

Malaysia. Wong Thiam Fook is the sole

proprietor thereof.

The plaintiff claimed that the

defendants infringed its patent,

MY124182A, by manufacturing, supplying and offering an apparatus

consisting of features similar to those

described in MY124182A. The defendants denied infringement

and counterclaimed that the plaintiff

was not the rightful owner of the

Malaysian patent, and that MY124182A lacked novelty in view of JP2812353.

The plaintiff claimed that MY124182A relates to a horizontal apparatus for

peeling off a thin ilm material, and that said patent is novel over JP2812353

since the horizontal feature of the

apparatus is not disclosed in the latter.

The plaintiff presented in court

a video clipping of the defendants’

infringing glove stripping machine. The

plaintiff claimed that the defendants

distributed the operation manual and

a certiicate of warranty of its machine to its customers. The plaintiff asserted

that it could institute court proceedings

against any infringer as it had obtained

all the rights to the patent by way of

assignment.

The defendants contended that the

Malaysian patent is invalid due to lack

of novelty and/or inventive step in view

of JP28112353 under Section 56(2)(a)

of the Malaysian Patents Act 1983.

The defendants argued that

the horizontal stripping feature in

MY124182A merely adapts the vertical stripping method for stripping glove

in the horizontal planes disclosed in

JP2812353. Thus, MY124182A is not novel over JP2812353.

The defendants also claimed that

the plaintiff failed to identify which parts

of the defendants’ machine infringed

MY124182A. The defendants added that the plaintiff must bring the actual

product into court and must submit

an expert opinion regarding the video

clipping to prove infringement.

Further, the defendants argued that

the plaintiff had no right to institute

proceedings in court since it was not

the rightful owner of MY124182A. The assignment only gave the plaintiff a

license to manufacture.

The High Court Decision

The High Court ruled that MY124182A is not novel over JP2812353. The High

Court stated that the plaintiff’s claim of

“horizontal apparatus” does not differ

from the vertical peeling apparatus

disclosed in JP2812353 since the

construction of the peeling apparatus

in MY124182A is basically the same as the vertical peeling apparatus

disclosed in JP2812353, which moves

in a horizontal direction. The plaintiff

did not show that its glove stripping

machine could work either vertically

or horizontally. Thus, the plaintiff’s

invention did not meet the requirements

of Section 14 of the Act in order to be

considered novel.

The High Court also said that

MY124182A was iled more than one year after the iling date of JP2812353. Hence, MY124182A could not claim priority over JP2812353. Therefore,

JP2812353 is considered prior art to

MY124182A. To assess infringement, the High

Court said that an actual product

must be presented in court. However,

the defendants’ machine was not

presented to show which parts

thereof had infringed the MY124182A patent. The High Court opined that

the plaintiff could not merely compare

the operational manual, certiicate of warranty and video clipping of the

defendants’ machine to prove patent

infringement.

The High Court also ruled that the

assignment entered into between

mirandah asia (singapore) pte ltd

formerly known as patrick mirandah co. (s) pte ltd

1 Coleman Street

#07-08 The Adelphi

Singapore 179803

T: +65 6336 9696

F: +65 6338 3739

E: [email protected]: www.mirandah.com

Asia IP

48

IP ANALYSTS

March 2015

most inventors particularly for the

pharmaceutical industry which is

already grappling with the stringent

requirement of local manufacturing

and public interest. Moreover, there

are strict procedural and substantive

requirements and litigation risks (e.g.,

prosecution history estoppel) because

the applicant must make submissions

and provide additional evidence in

support of its case.

It is also pertinent to note the word

ordinarily continues to ind a mention in the proposed Rule 24C for expedited

examination and may still pose issues

of delay at the patent ofice, as is the existing state of affairs. It would be

futile if even after paying additional

fees, collecting necessary funds,

establishing a local manufacturing

plant, the Applicant’s patent application

continues to collect dust at the Indian

Patent Ofice. Although the report of the committee

did not take into account many

recommendations and suggestions that

were made on behalf of the petitioner,

it is indeed a signiicant victory that through a single writ before the Delhi

High Court, substantial funds were

sanctioned to the Indian Patent Ofice.

Anand and Anand

First Channel Building

Plot No. 17 A, Sector 16 A

Film City, Noida 201301 (UP)

India

T: +91 120 4059300

F: +91 120 4243056 - 058

E: [email protected]: www.anandandanand.com

INDIA

Nitto Denko v. Union of India

While patent ofice delays and excessive backlog of pending patent

applications at the Indian Patent Ofice has been an issue of serious concern

for a while, it is only recently that the

issue has been seriously dealt with and

exposed vide two writ petitions before

the Delhi High Court iled by Nitto Denko Corporation, a company based

in Japan and represented by Pravin

Anand of Anand and Anand Advocates.

As per the mandate of Patent Law, the

First Examination report is to be issued ordinarily within six months from the

date of the request for examination or

six months from the date of publication,

whichever is later, under Rule 24B(3)

of the Patent Rules, 2003. However,

the word ordinarily is being stretched

to almost indeinitely, and currently the Patent Ofice is taking eight to nine years for a patent to be granted, thus

signiicantly reducing the term from 20 to 13 years. The writ petitions were

inally disposed of on October 9, 2014.

Outcome of the Order

The government has committed to

spending more than Rs30.96 million

(US$49.2 million) for recruitment of

fresh examiners and to solving all

related problems, including salaries,

attrition, etc.

Additionally, a committee was

constituted to deliberate upon:

a) Waiver of maintenance fees as a

compensatory measure for the delay in

patent grant;

b) Patent term extension to

compensate for the delay; and/or

c) Out-of-turn/expedited examination.

The Committee submitted its report

on February 27, 2015.

Waiver of Maintenance Fees/Patent

Term Extension Not Viable

With respect to waiver of maintenance

fees and patent term extension, the

committee concluded that the said

practices only exists in the United

States and nowhere else in the world,

and is not conducive to India.

The committee was of the view that

the 20 year patent term, which was

originally seven years and thereafter

14 years, already provides for delays

and therefore does not require a further

patent term extension, particularly

in India, where monopoly itself is

considered too long to block genuine

competition.

Out-of-turn Examination-Public

Interest/Local Manufacturing

The committee was of the view

that out-of-turn examination may be

considered as a viable option subject to

certain prerequisites:

a) Where the invention directly

contributes towards public interest, and

b) When the applicant sets up local

manufacturing capabilities utilizing the

invention as disclosed in the application

or undertakes to manufacture the same

within two years from the date of iling the request for expedited examination.

The committee proposed a new Rule

24C to incorporate such a measure.

As per the new rule, the patent

applicant would be required to provide

a corroborative statement from a bank

or inancial institution or auditor in India with evidence in support showing

applicant or his assignee or prospective

manufacturer has suficient capital to meet the reasonable public requirement

or that suficient capital or facilities will be made available within six months if a

patent is granted.

Likely Impact

While the said decision seemed

remarkable and a way forward towards

tackling the issue of unreasonable and

untimely disposal of patent applications

for the irst time in India, the Report of the Committee has, to an extent diluted

the impact and the objective of the writ

petitions.

The local manufacturing requirement

has been incorporated in the proposed

Rule 24C by the committee in a manner

which places undue burden on the

patent applicant. The committee also

grossly failed in deining the speciics that fall in the public interest domain

to be considered eligible for out of

turn examination. For example, in the

US, an applicant may ile a petition to make special where the invention

will materially enhance the quality of

the environment, develop or conserve

energy resources or counter terrorism.

The applicant’s age or health is also

considered as a standalone factor

for expediting examination in the US

whereas in some jurisdictions, potential

infringement may also be a ground.

Clearly, out-of-turn examination

of applications under this program

does not seem to be an option for

Pravin Anand is

managing partner of

Anand and Anand in

Noida, where his prac-

tice covers intellectual

property, litigation and

dispute resolution. He

has been a counsel in

several landmark IP cases involving the irst Anton Piller Order (HMV cases); the irst Ma-

reva Injunction Order (Philips case); the irst Norwich Pharmacal Order (Hollywood Ciga-

rettes case); moral rights of artists (the Jatin

Das case). He has been recognized for pro

bono work for grassroots innovators (National

Innovation Foundation Award).

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