The CPTPP – What to Expect?

denver-business-law-firm-intellectual-propertyToday’s blog post has been kindly drafted for us by the South-East Asia IPR SME Helpdesk external expert Mr. Manh Hung Tran from BMVN International LLC, a member firm of Baker & McKenzie International. In his article, Mr. Manh Hung Tran discusses what signing the Comprehensive and Progressive Trans-Pacific Partnership means to its signatories in terms of IPR protection. 

At the November 2017 Asia Pacific Economic Cooperation Summit in Da Nang, Vietnam, the 11 countries remaining in the Trans-Pacific Partnership (TPP) took a significant step forward to finalize a new agreement now referred to as the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP).

In the absence of a key player – the United States – this new cross-border deal, the CPTPP is reported to have largely incorporated the TPP on the one hand but “suspended” certain intellectual property provisions on the other hand, in hopes of reviving them when the United States re-joins the agreement at some point in the future. Thus, although the final text has not been published, it is highly likely that the CPTPP has ceased the effect of many IP-related and/or drug-specific articles that the United States rigorously promoted when the TPP was being negotiated.

In light of the above, we think that the following important issues in Chapter 18 of the TPP, which concerns intellectual property, may have been included in the list of suspended provisions of the CPTPP. Continue reading “The CPTPP – What to Expect?” »

Indonesia: New Notice Allows for Revival of Lapsed Patents

patent-without backgroundGood news for the European SMEs whose patents in Indonesia have lapsed because of non-payment, it is now possible to revive these patents. Today’s blog post explaining the decision of Indonesia’s Directorate General of Intellectual Property about the revival of lapsed patents has  been kindly drafted for us by our South-East Asia IPR SME Helpdesk external expert Ms. Wongrat Ratanaprayul from Tilleke & Gibbins. 

Indonesia’s Directorate General of Intellectual Property issued a notice on December 28, 2017, addressing the revival of null and void patents. The notice allows patent holders, licensees, and intellectual property consultants to revive patents that have lapsed due to non-payment of annuities.

It is now possible to revive a lapsed patent by completing payment of annuity fees that were not paid on time according to the law. In order to do so, the patent holder must submit a declaration stating that they will not take any legal action against another party for infringement of the revived patent during the lapsed period.

There is no explanation as to whether third parties must immediately cease practicing a previously lapsed patent once it has been revived, or whether the patent owner would have the ability to take legal action against such a third party for ongoing infringement once the patent has been revived.

This notice leaves serious concerns about what happens to third parties who have started lawfully using a patent after it has lapsed. Since no further detail on this notice is available, the business implications for such third parties could be tremendous.

For holders of lapsed patents, however, the ability to recover such rights is a significant opportunity. Patent owners should therefore review their patent portfolios in Indonesia and assess whether to take advantage of this new opportunity to revive lapsed patents. Continue reading “Indonesia: New Notice Allows for Revival of Lapsed Patents” »

Vietnam: A New Dawn for Vietnam Domain Name Disputes?

shutterstock_167099189Today’s blog post has been kindly drafted for us by South-East Asia IPR SME Helpdesk external IPR expert Mr. Thomas J. Treutler from Tilleke & Gibbins and IPR expert Mr. Loc Xuan Le from T&G Law Firm LLC (TGVN), a licensed law firm and IP agent that partners with Tilleke & Gibbins for local filings in Vietnam. Mr Treutler and Mr. Le discuss the decision by Vietnam Internet Network Information Center to withdraw from the internet domain name registry the domain name www.bmw.com.vn, which had been used by a cyber-squatter. Both experts will also explain the implications of this decision to companies, including European SMEs worried about their internet domain names in Vietnam. This article appeared first in Managing IP Magazine.

April 21, 2017, was an important milestone in the settlement of IP infringement cases relating to “.vn” domain names in Vietnam. This was the day the domain name <www.bmw.com.vn> was withdrawn by the national domain name management agency, the Vietnam Internet Network Information Center (VNNIC), taking control of the domain away from the registrant by “flicking a switch” at the registry. It marked the first time under recently passed legislation that VNNIC had withdrawn a domain name at the request of the intellectual property infringement settlement agency, the Inspectorate of the Ministry of Science and Technology (MOST).

In this case, the BMW Group, owner of the world-famous BMW trademark and many <bmw> domain names, alleged that <www.bmw.com.vn> had been registered, appropriated, and used in bad faith by a cyber-squatter. The domain name had been registered by the infringing party for 12 years and BMW’s earlier attempts to regain the domain name had been unsuccessful.

Continue reading “Vietnam: A New Dawn for Vietnam Domain Name Disputes?” »

Indonesia Joins the Madrid Protocol

shutterstock_56485213More good news for the European SMEs wishing to register their trade mark in South-East Asian countries, as in addition to Thailand, Indonesia has also joined the Madrid Protocol. Today’s blog post explaining Indonesia’a accession to Madrid Protocol has been kindly drafted for us by our South-East Asia IPR SME Helpdesk external expert Ms. Wongrat Ratanaprayul from Tilleke & Gibbins. 

On October 2, 2017, Indonesia’s Ministry of Law and Human Rights submitted its instrument of accession to the Madrid Protocol, making Indonesia the 100th member state under the treaty. As a result, brand owners will be able to seek protection under the Madrid Protocol from January 2, 2018, onwards.

Once the Madrid System comes into force in Indonesia, the owner of an existing International Trademark Registration (IR) will be able to expand the scope of their protection by filing a subsequent designation to its existing IR, in order to seek additional protection in Indonesia. In addition, trademark owners will be able to file an IR in any other member country designating Indonesia, and trademark owners in Indonesia will similarly be able to file an International Trademark Application to seek protection of their trademark in any other member countries.

Indonesia has opted for an 18-month deadline, within which the registrar is obliged to issue a notification of refusal of international registrations. However, in the case where an opposition is raised by a third party, the Directorate General of Intellectual Property may notify the World Intellectual Property Organization of a notification of refusal after the expiry of the 18-month time limit.   Continue reading “Indonesia Joins the Madrid Protocol” »

China IPR SME Helpdesk External Expert Charles Feng Interviewed by South China Morning Post regarding Intellectual Property Protection for Foreign-invested Companies in China

trademarkToday we would like to share with you an interview with China IPR SME Helpdesk external expert Mr. Charles Feng  from East & Concord Partners that was published in South China Morning Post. You will find the link below following the interview summary kindly drafted by East & Concord Partners. 

In August 2017, US President Donald Trump executed an administrative order to initiate an investigation against China in accordance with Section 301 of the Trade Act of 1974, on the basis that “China has stolen plenty of intellectual properties from American companies as well as forced American companies which plan to enter Chinese market to build unfair joint venture relationship with Chinese companies”. Thereafter, on September 8, 2017, twelve Chinese government authorities related to intellectual property protection, including State Intellectual Property Office (“SIPO”), Ministry of Public Security (“MPS”), State Administration for Industry and Commerce (“SAIC”), Supreme People’s Court (“SPC”) and Supreme People’s Procuratorate (“SPP”), jointly issued the Action Plan on Intellectual Property Protection for Foreign-invested Companies, initiating a four-month nationwide campaign from September 2017 to December 2017 to combat infringements and criminal violations against intellectual property rights of foreign-invested companies. Whether a coincidence or not, the above two news may seem a little opposite, which draws much attention on the intellectual property protection for foreign-invested companies in China.

In preparation for its recent article Lessons from Donald Trump and Michael Jordan on Trademarking in China focusing on current status and strategies of trademark protection in China for foreign-invested companies, South China Morning Post (“SCMP”) interviewed several well-known experts in this field, including Charles Feng, partner of East & Concord Partners, and Liao Fei, partner at international law firm King & Wood Mallesons. Continue reading “China IPR SME Helpdesk External Expert Charles Feng Interviewed by South China Morning Post regarding Intellectual Property Protection for Foreign-invested Companies in China” »