Category Archives: South-East Asia IP Basics for SMEs

The Philippines: Application of The Doctrine of Equivalents

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patent-without backgroundToday’s blog post on the application of the doctrine of equivalents in the Philippines has been kindly drafted for us by our external expert Ms. Editha Hechanova from Hechanova & Co., Inc. In her article, Ms. Hechanova discusses a patent infringement case in the Philippines to demonstrate the applicability of the doctrine of equivalents in the Philippines IP system, which is essentially meant to help fighting patent fraud. The article first appeared in the Managing Intellectual Property. 

The doctrine of equivalents is provided under Section 75.2 of the IP Code of the Philippines (Republic Act 8293). However, in deciding actions for patent cancellation and infringement, the Intellectual Property Office (IPOPHL) as well as the Supreme Court rely for the most part on American case law. The recent patent infringement case of Eddie T Dionisio v Visita International Phils, Inc and Lal K Tulsiani (IPV No 10- 2013-00034, July 28 2016) citing a cancellation case also between the parties shows this.

Dionisio was the registered owner of utility model number 2-2011-000646 for a multi-purpose articulated ladder issued by the IPOPHL on June 6 2012. On December 20 2013, Dionisio filed an administrative complaint for patent infringement against Visita claiming that the latter sold ladders with specifications similar to Dionisio’s patented ladders. Visita countered that there was no infringement since it had its own earlier filed utility model registration 2-2009-000166 issued on December 28 2010. Continue reading “The Philippines: Application of The Doctrine of Equivalents” »

Validation of European Patent in Cambodia

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shutterstock_166598477Good news for the European SMEs wishing to do business in Cambodia, it’s now possible to validate European patents in Cambodia. Today’s blog post on validation of European patent in Cambodia has been kindly drafted for us by our external IPR expert Dr. Phin Sovath from Bun & Associates. In this blog post, Dr. Phin further explains the Agreement on Validation of European Patent between the Royal Government of Cambodia and the European Patent Office.

Summary

On 1st March 2018, the Agreement on Validation of European Patent (the “Validation Agreement”) enters into force in Cambodia. Henceforth, it is possible to request for validation of the European patent in Cambodia and thus obtain the same protection as national patent granted by the Ministry of Industry and Handicraft (the “MIH”).

In January 2017, the Royal Government of Cambodia and the EPO entered into Agreement on Validation of European Patent. In November 2017, the law on ratification of the Validation Agreement was promulgated. And from 1st March 2018 onward, the European patent holder may request for its validation in Cambodia through a simplified and accelerated procedure set forth in the Prakas No. 282 MIH/2017 dated 08 December 2017 of the Ministry of Industry and Handicraft (the “Prakas No.282 MIH/2017”).

In accordance with Prakas No. 282 MIH/2017, the validation procedure is applicable to both European patent and European patent application which refers to either the patent application filed with the EPO under the framework of the European Patent Convention (the “EPC”) or the international application for patent registration filed under the framework of the Patent Cooperation Treaty (the “PCT”) having designation of both the EPO and Cambodia. Moreover, the eligible European patent and European patent application will have a filing date on or after the date of entry into force of the Validation Agreement in Cambodia, i.e. 1st March 2018. Continue reading “Validation of European Patent in Cambodia” »

Design Rights Protection in South-East Asia

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shutterstock_385731427In today’s blog post, we are discussing the protection of design rights in South-East Asia. You’ll learn how to protect the aesthetic aspects of your products or how to protect some aspects of your product packaging. The article also gives an overview on how to enforce your rights once an infringement has occurred.

It is essential for SMEs doing business in South-East Asia to protect their intellectual property rights, as poor IP strategy often leads to the end of business endeavor in the region. Design rights are useful, but oftentimes overlooked means of protecting IP in South-East Asia.

An industrial design right, also known as a design patent in certain jurisdictions, is an exclusive right, which protects designs which give a competitive edge to the owner over competitors due to their aesthetic appeal. Industrial designs can take the form of either two- or three-dimensional shapes, configuration or patterns. Prominent examples include the iPod, shape of the Coca Cola bottle, computer icons, and even the design of mobile applications.

To obtain industrial design protection, SMEs must file an application to register the design in all the countries they foresee business activities, since design rights like other IP rights are territorial. Like patents, protection for industrial rights lasts for a limited period and the duration can vary from country to country. Generally, protection lasts for at least 10 years. Continue reading “Design Rights Protection in South-East Asia” »

IP Protection in the Philippines for the Food and Beverage Industry

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shutterstock_173260598In Today’s blog post we are taking a closer look at the IP protection in the Philippines in the food and beverage sector, which has recently also started to offer many business opportunities for European SMEs. You will learn more about how to protect your brand and your precious recipes. Besides brand protection, package design is also important in the Philippines, as consumers often make their purchasing decisions based on the attractiveness of the packaging. Finally, we’re also discussing the options for Geographical Indications’ protection.  

The Philippines’ rapidly growing food & beverage industry is one of the biggest contributors to nation’s economy making up about half of its manufacturing sector and contributing about 23-24% of the country’s GDP[1]. The Philippines is one of the Asia’s largest producers of food, with the value of food processing sector exceeding 24 billion EUR.[2] Given the Philippines’ government’s commitment to further developing the food and beverage industry as one of the priority industries and opening it further up to foreign investments, the Philippines’ F&B industry has become more attractive for European SMEs.

Propelled by increasing disposable income amongst the upper and middle classes and the proliferation of retail and shopping centers as well as by highly urbanized population, the Philippine’s domestic food and beverages market looks quite promising for the European SMEs. The Philippines’ consumers appreciate the high quality and healthy nature of European food and beverage products. As a general trend, the Philippines’ young and fast-growing consumer base is gradually becoming more health-conscious and is increasingly willing to try out new products. As the spending power of the upper-middle and middle class is increasing, there is also greater demand for imported premium products, which offers many business opportunities for the European SMEs.  Continue reading “IP Protection in the Philippines for the Food and Beverage Industry” »

Practical tips for protecting your IP in China and South-East Asia

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dreamstime_m_24720610Protecting your IP is extremely important when doing business in China or in South-East Asia, as inadequate IP strategy can often lead to the end of your business endeavor in both regions,  since counterfeiting and other IP violations are still commonplace in China and South-East Asia. In today’s blog post you can find some practical tips for protecting your IP in China and in South-East Asia,  allowing you to draft a sound IP strategy for both regions.

China and the majority of South-East Asian countries have recently shown considerable efforts in creating stronger intellectual property rights (IPR) protection systems and in bringing their existing intellectual property laws in line with, or closer to, international standards. However, counterfeiting, trade mark infringements and other IPR infringements remain one of the major issues both in China and in the South-East Asian region. When European SMEs enter these markets, there are some key points they need to look out for in order to ensure their IPR is effectively protected.

IP Laws are territorial, register your IP

European SMEs should be aware that IP laws are territorial (and this applies in both South-East Asia and China), meaning that IPR are only enforceable upon valid domestic registration. SMEs planning to enter the South-East Asian and Chinese markets are faced with the question of when to register their trade mark, patents or designs. The answer is as soon as a company considers internationalizing its sales and activities, they should take steps to register their trade marks and other IP in the countries of destination. Obtaining the relevant information and taking advance action is the key to effective protection. Continue reading “Practical tips for protecting your IP in China and South-East Asia” »