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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
Managing EditorGregory GlassT: +852 3996 9541 E: [email protected]
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ContributorsPravin Anand Hannah HaJohn Hickin Gladys MirandahKendra H Nickel-Nguy Rudina Ann PescanteHolly K Towle Elvan Yang
Ofice ManagerKaren Barton
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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
COVER STORY Ambition Unleashed
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
Ambition Unleashed COVER STORY
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
COVER STORY Ambition Unleashed
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
Ambition Unleashed COVER STORY
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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.”
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
50 Licensing Lawyers You Should Know FEATURES
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
FEATURES 50 Licensing Lawyers You Should Know
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
Moviemakers Battle Online Pirates FEATURES
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
Moviemakers Battle Online Pirates FEATURES
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).