Strategic use of
intellectual property toenhance companies’
competitiveness in
ASEAN
Meijo University
by Fabrice Mattei
November 20, 2013

Rouse offices in South East Asia
Yangon office
Ho Chi Minh City and Hanoi
Offices

Bangkok Office

Manila Office

Jakarta Office© Rouse 2010

Topics
Intellectual Property (‘IP’) & ASEAN
Setting up IP strategies• IP searches & mapping• Protection of IPRs
• investigation & enforcement strategies• Publicities of raid actions• Litigation & forum shopping in ASEAN© Rouse 2010

Intellectual Property Rights - IPRs

Patents &designs

Copyrights

Geographical
Indications

Trademarks

Plant Varieties

Trade secrets

Traditional
Medicine Wisdom

Life cycle of IPRs

securecommercialize

investigate

enforce© Rouse 2010

Patents & designs
Invention: innovation orinvention which creates a new
and inventive product orprocess.
Design: configuration of a
product or composition of lines
or colors which gives special
appearance of a product© Rouse 2010

Case study• Registrable?

7

Copyright : idea vs. expression

Case study
PissaroCezanneTrade marks© Rouse 2010

Case study : distinctive

Similar Marks?
Decision
No.

Mark

Class

399/25531

560/2553

25

672/2553

18

756/2553

25© Rouse 2010

Not Similar Marks?
Decision
No.

Mark

Class

485/2553

25

594/2553

20/24

154/255312

650/2553

25© Rouse 2010Marketing/business: intellectual property = competitive asset

Accounting: intellectual property = intangible asset

assets- value -monetary assets
cash, investment

tangible assets
land, machinesintangible assets
IPRs, rights

Intangible assets© Rouse 2010

Strategy

PartiesSituation

StatusIP
Litigation
Outcomes

VHC v. AAPL,et al

VHC is for patent
infringement

On April 25, 2012, Judge Davis issued apreliminary Markman order signaling VHC
has a strong case.

© Rouse 2010

JETRO’s report
In 2004, the director of Japan’s External Trade Organization’s Intellectual Property
Rights Office in Beijing visited a leading Chinese company. The head of that
corporation’s IP division showed him a room with several dozen computers whose
exclusive purpose was to search the patent applications put up on the Internet by
the USPTO and its equivalent in Japan and Europe. The Chinese executive
explained it was easier and far less expensive to pull information from foreign
patent applications than to do their own research.

When informed of this, the Japanese Patent Office began monitoring the numberof hits its patent application files on the Net were getting. They counted 17,000
hits per day from China and 55,000 per day from South Korea.

© Rouse 2010 A geo-political and economic
organization of ten countries
located in South-East Asia
which was formed on 8
August 1967
 Members of ASEAN have a
combined population of morethan 580 million
Indonesia accounts for morethan 40 percent of theregion's population
AFTA: Common Effective
Preferential Tariff (CEPT):
goods originating within
ASEAN, ASEAN members are
to apply a tariff rate of 0 to 5
percent.
The ASEAN–China Free
Trade Area which is thelargest free trade area interms of population & 3rd inGDP.
2015: ASEAN Economic
Community AEC .

ASEAN IP harmonization: regional office vs. regional system
 ASEAN framework on Intellectual Property of 1995


Cooperative activities under this Agreement shall aim, among others, to strengthen
ASEAN intellectual property administration; to enhance ASEAN cooperation in
intellectual property enforcement and protection; and to explore the possibility ofsetting up the ASEAN patent and trademark systems
Activities to enhance intellectual property enforcement and protection: […] b. Cross
border measures cooperation

 ASEAN Agreement on Customs 1997
 to explore other appropriate intra-ASEAN cooperation arrangements inthe field of Customs, particularly in the prevention and repression of all
forms of smuggling and other Customs frauds
 ASEAN Framework Agreement on access to biological and genetic
resources of 2000
– the need to ensure the uniformity and consistency of access regulationsin the ASEAN region by setting minimum requirements for national
implementation and maximize opportunities for the conservation andsustainable use of biological and genetic resources.
 ASEAN Patent Examination Co-operation programme (ASPEC), ASEAN
Design Filing System (ADFS) 2009 : favouring ASEAN Regional IP Officeinstead of ASEAN Regional IP System/law as a model of IP harmonization.

© Rouse 2010

Business’ angle
Policy features associated with a strong increase in demand for patents are: i)policies aiming at attracting FDI; ii) low relative costs (or fees); and iii) a relative
impression of IP law harmonization (PCT, ASPEC, PPH);
Direct link between FDI and IP intensity;

Migration of companies/industry : impact on patent intensity;

Differences in the IP systems of ASEAN nations not as strong as differences
between the patent systems in Europe, the USA and Japan.

© Rouse 2010

IP’s angle
Filings are up, complexity is up, grant rate is still constantMore systematic early filing of unfocused inventions : increasing number of claims
and pages, low fees for excess claims/pages
Low opposition/cancellation rate in patents but high level in trade marks
Backlogs in examining and granting patents/trade marks – ASEAN IP ‘warming”
NPL published by ASEAN nationals increases at higher speed than patents filed
abroad by ASEAN nationals

No strict duty to disclose prior art/backward citation = patent watch/mapping is
critical
Disproportion between local and foreign applicants : patent for invention and utility
models/petty patent© Rouse 2010

USPTONPL© Rouse 2010

Petty patent / utility model© Rouse 2010

Petty patent / utility model© Rouse 2010

Average time for patent grant in 2010
Cambodia

Patent offices

Practitioners

3 years

Over 3 years

China

3-5 years

Indonesia

5.61 years via normal process; 4.92 years via
PCT

7-8 years

Laos

4 years

More than 5 years

Malaysia

1.6 years via fast-track basis without
objections; 5.41 years via Paris Convention;

4-6 years

2.15 years via PCT
Myanmar

None

None

Philippines

4-5 years

Singapore

3-4 years

3-6 years

Thailand

3 years

5-6 years

Vietnam

2-3 years

2-3 years© Rouse 2010

Patent examiner workload in 2010
300

Patent Applications per Examiner in 2010

Thailand**; 5,857 apps
250

200

Malaysia;
6,463 apps

150

Philippines; 4,005
apps
100

Cambodia; 104
apps
50

Laos; 20 apps
0
-20

0
-50

20

40

Vietnam; 3,666
apps

Indonesia;
5,652 apps

60

80

100

Number of Patent Examiners

Note: Thailand** - Applications include invention, design and petty patents, and number of examiners
includes assistants.
Data not available for Myanmar, China, and Singapore. Size of bubble = Number of applications© Rouse 2010

2. Strategies
a. IP information & searches
b. Drafting/filingsc. Commercializationc. Investigation & enforcementc. Litigation© Rouse 2010

IP information & searches
Countries

Languages

Search criteria

Indonesia

Bahasa Indonesian

Abstract, title, applicant/Owner
Inventor, patent numbers

Malaysia

Bahasa Malaysia or English

Abstract, title, applicant/Owner
Inventor, patent numbers

Philippines

EnglishAbstract, title, applicant/Owner
Inventor, patent numbers

Singapore

EnglishAbstract, title, applicant/Owner
Inventor, patent numbers

ThailandThai or English, but results are in Thai

Abstract, title, applicant/Owner, claims,
description, Inventor, patent numbers

VietnamVietnamese or English but the results are
in Vietnamese

Abstract, title, applicant/Owner
Inventor, patent numbers© Rouse 2010

IP mapping & mining© Rouse 2010© Rouse 2010

ASEANEPO

USPTO

Sufficient
disclosure/fullbasis of the claims







Incorporation byreferenceXxBest modexxMultiple
independentclaims

EstoppelΔX

 minimal detail toavoid estoppel issues

Equivalent

Δ literal infringement in mind

Δ literal infringement inmind

Prior artΔclaimsindependent claims inmeans plus function
form or two parts claims
with multiply dependant
claims dependant
thereon.

independent claims in meansplus function form or two parts
claims with multiply dependant
claims dependant thereon.

Additional claims should
be included to meet theneeds of the USA (i.e. anumber of independentclaims not using themeans plus function
terminology of varying
scope should be included)© Rouse 2010

Drafting & filings
Description of the patent:– Sufficient disclosure• Less detailed patent & hiding the invention?
• Higher verbosity in JP patents (description)– Ground of rejection vs. ground for invalidity• Failure to disclose sufficient information on the prior art can cause
rejection of the application and is a ground for invalidity after thepatent is granted
Philippines"Sec. 61. Cancellation of Patents. Any interested person may, upon paymentof the required fee, petition to cancel the patent or any claim thereof, orparts of the claim, on any of the following grounds […] That the patentdoes not disclose the invention in a manner sufficiently clear andcomplete for it to be carried out by any person skilled in the art[…]”
Singapore
A patent may be revoked if the specification does not disclose the invention
clearly and completely in a way that allows it to be performed by
the skilled addressee.
•© Rouse 2010

Claims’ formats• Variations– ‘Free style claims’ format’ vs. imposed format– Example of Two-parts claims• Thailand & Philippines© Rouse 2010

Controllable
Publication

Substantive examination

Uncontrollable

Thailand (to some extend) 18 months : IND, MY, PH,
SING, VN.

From publication date

From filing date

60 months - Thailand

SING: 21/39 months
MY, PH: 24 months
IND: 36 months
VN: 42 months© Rouse 2010

Publication of patent• Controlling publications:– Expedite publication?
– Submarine patents– Whole content destroying novelty only if
unpublished.
– Damages counting from publication date.

© Rouse 2010



Variables

X

Priority

Widely extended patents already examined

Focused and selective filing

Equivalents

Large patent families

Highly dependent on local substantive
examination

Number of claims andexcess claims

Detailed applications based probably on US
drafting style. Fall back positions (US: doc ofequivalent – ‘Insubstantial differences’ + amultiple dependent claim in USA cannot
serve as a basis for any other multiple
dependent claims+ best mode). if thedescribed effects are more detailed thannecessary, the scope of the patent rights
may be narrowed.

cannot add subject matter

Number of inventors

Large number (more than 3) : PSA

Low number : PSA

Claims lost in
examination

If due to subject matter, rather than novelty
or inventive step (i.e. software, medical
treatment method), impact is limited

If possible, consider voluntary divisional
patents to expand patent family

File wrapper available after publication ofpatentApplication has
divisionals

Unfocused patent, hiding parts, expanding
protection through doc of equivalents

Focused patent, narrow.

Backward citations

Intensively relying on prior art/prior art ismore identifiable

Smaller patent families, lowest risk of
opposition© Rouse 2010

Traditional Trademarks

Non -Traditional Trademarks© Rouse 2010

Right balance?
Local branding &innovation
development

Foreign investments.
ACTA/TRIPS +© Rouse 2010

Investigation & enforcement• Counterfeit or lookalike?
• Regulated industry?
• Trade channels and margins?
• IP legal environment?
• Health hazardous copies?
• Profile of the counterfeiter?
• Possibility to recover damages?
• Other options than enforcement?

© Rouse 2010© Rouse 2010

Thailand

Guangzhou

Beijing

Theatrical Release 16

May 19 (DVD)19 May (VCD, DVD)
21 May (DVD)May
19 May (VCD)The Asia PacificRegion
Korea

Theatrical Release 23 May

India

20 May (DVD-R)

Theatrical Release 13 June

20 May (VCD)
21 May (CD-R)

ShanghaiMay 22 (DVD)

TaiwanTheatrical Release

16 MayMay 23 (CD-R)

Shenzhen

Malaysia

May 18 (DVD)

Theatrical Release 15 May

18 May (DVD)

Hong Kong
Theatrical Release 22 May

Singapore

18 May (DVD)May 23 (VCD)

Matrix Reloaded

Indonesia
Theatrical Release[AKA MATRIX II]

Theatrical Release in
US 15 May 2003

28 May18 May (VCD)

Philippines
Theatrical Release 15 May

17 May (CD-R)
20 May (DVD)44© Rouse 2010

Counterfeit SHELL petrol station© Rouse 2010

Refilling of alcohol© Rouse 2010

Refilling of alcohol

Botoxhttp://www.manager.co.th/Crime/ViewNews.aspx?NewsID=956000005636
http://www.dailynews.co.th/crime/203587

© Rouse 2010© Rouse 2010

55

Investigation & enforcement• Case studies– PFIZER, VIAGRA– LVMH, Perfumes Dior, Kenzo, Givenchy,
Guerlain© Rouse 2010© Rouse 2010© Rouse 2010© Rouse 2010© Rouse 2010

ASEAN IP Enforcement systems:
diversity of legal systems
 Civil law systems: Cambodia, Laos, Indonesia,
Philippines, Thailand and Vietnam.

 Common law systems: Brunei, Malaysia,
Singapore and Myanmar.

© Rouse 2010

ASEAN IP Enforcement systems:
specialized IP Courts vs. regular Courts.
CourtsCountries

Specialized IP Courts

Thailand & Malaysia

Commercial Court (civil IP cases
only)

Indonesia & Philippines

Regular Court with IP trained
JudgesSingapore

Non specialized Courts with non
specialized Judges

Brunei, Cambodia (*), Laos,
Myanmar (*) & Vietnam

Best practice : Thailand & Malaysia© Rouse 2010

Administrative enforcement
 Most countries limit border customs controls to registered trade
marks and copyright as requested under Art. 51 of the TRIPS
Agreement. Very few countries cover registered designs or patents.
Best practice: Philippines & Vietnam
 Not all ASEAN countries cover in their legislation the prohibition ofimport, export and transit of counterfeit goods.
Best practice: Cambodia
 In most ASEAN countries, monetary fines are calculated according to
the values of the infringing goods and not the value of the original
goods. Some countries like Vietnam have amended their legislation inorder to tackle this issue. Under the IP law of Vietnam, monetary fines
in respect of administrative remedies shall not exceed five times thevalue of the infringing goods. The new IP law of Vietnam provides thatthe levels of administrative remedies applicable to IP rights
infringements shall be those set out by the Ordinance on Dealing with
Administration offences (max. Level of monetary fine is VND 500
million) or approximately USD 30,000).
Best practice: Vietnam© Rouse 2010

Administrative enforcement
When possible, ex-officio actions should be encouraged andsupported through trainings of the authorities. Countries like
Singapore and Thailand are particularly active in offering
customs ex-officio customs actions.
Best practice : Thailand© Rouse 2010

Criminal enforcement
 Unlike Malaysia where enforcement of IPRs is carried out by almost
one single enforcement agency, the Ministry of Domestic Trade,
Co-operatives and Consumerism (MDTCC), some other ASEAN
countries give to IPR holders a wider choice of enforcement
authorities for enforcing their IPRs.
Best practice : Vietnam
 It is important that decisions granted by administrative enforcement agencies
such as customs are reported and that goods are destroyed subsequently
to the issuance of the decisions against the counterfeiters.

Best practice : Vietnam© Rouse 2010

Criminal enforcement
Indonesia, Philippines, Myanmar; Singapore & Thailand: ‘overcriminalization’Criminal action is the principal enforcement route.
Procedure: initial enforcement action is taken through the Police, based on asimple complaint.

Brunei, Cambodia, Laos, Malaysia, & Vietnam: ‘decriminalization’Criminal actions are mostly limited to large scale infringement cases.
Administrative remedies are generally relied upon more heavily than civil andcriminal remedies.

© Rouse 2010

Criminal enforcement ofpatents and designs
 Narrow criminalization scope: Malaysia, Singapore, Myanmar
and Vietnam don’t provide criminal remedies in relation toregistered patent or design infringements.

 Medium criminalization scope: under the Philippines’ legislation
infringement to registered patent or design becomes a criminal
offence if infringement is repeated by the infringer or by anyone inconnivance with him after finality of the judgment of the court
against the infringer in the civil case. Brunei provides criminal
enforcement actions for registered designs.
 Wide criminalization scope: Cambodia, Laos, Indonesia, Thailand
provide criminal remedies for registered patent and design
infringements.
Best practices: Brunei & Thailand© Rouse 2010

Criminal enforcement
 In various ASEAN countries, search warrant is the conventional methodof enforcing IPRs. Philippines have set strict rules for obtaining search
warrants while Thai Judges apply uneven criteria when considering issuingsearch warrants and IPRs holders have regularly raised this issue as amajor problem for enforcing their IPRs in that country. The Enforcement
Officers of Malaysia have wide powers of investigation, search and seizure
under the Trade Description Act (TDA). The Enforcement Officers require
no search warrant to enter any premises other than premises used only as
a dwelling. Goods and documents seized will be kept in the custody of the
Enforcement Division until prosecution proceedings have been completed.

Best practice: Malaysia & Myanmar© Rouse 2010

Case study – Scholl shoes© Rouse 2010

Criminal enforcement•

Most ASEAN countries’ legislations provide for maximum punishments.
Minimum punishments should also be explored as a way to ensure than aminimum level of deterrent fines are imposed against counterfeiters,
especially repeating offenders.

•

Most ASEAN countries legislations have set the fines and imprisonments
according to the activity of the counterfeiter: distributor, manufacturer.
The imposition of the penalties depending on the activity of the counterfeitercan sometimes deliver wrong results in terms of consumer protection andpublic acceptance or awareness of IPRs. In this respect the legislation inforce in Vietnam is a good example/best practice of how to categorize
infringements and impose harsh penalties. What matters under theVietnamese Criminal Code is not the profile or activity of the counterfeiter
but whether the counterfeit goods are dangerous or not (Art. 157 of thePenal Code of Vietnam).
Best practice: Vietnam© Rouse 2010

Criminal enforcement

 Sentencing guidelines: few ASEAN countries have issued clear andtransparent guidelines regarding sentencing counterfeiters.
– the Task Force in Indonesia has launched an anti-counterfeiting program,part of it includes sentencing guidelines for criminal court judges.
– Enactment in Vietnam in March 2008 of a Criminal Circular offering
guidelines on criminal prosecution against acts of piracy andcounterfeiting on a commercial scale
Best practice: Indonesia & Vietnam
•
•
•
•
•
•
•
•

Quantity of seized goods CIPITC, decision no. 1015/2542
Counterfeit goods are hazardous to public health Supreme Court,
decision no. 6608/2541
Violence CIPITC, decision no. 509/2542
Activity & size of the counterfeiter CIPITC, decision no. 977/2546
Moral CIPITC decision no. 785/2542
Recidivist CIPITC decision no. 2208/2544
Ignorance is not an excuse CIPITC no. 1464/2541
Better quality of infringing goods is not an excuse CIPITC no. Aor 569
572/2542© Rouse 2010

[1] The Court can order document production in line with civil law traditions, and there is an evidence preservation procedure available (akin to an Anton Piller order although mo[2] Interim injunctions are described in the IP laws, but because no regulations exist none has yet been granted. The Supreme Court has been working on the regulations.

Country

Interim injunction?

Discovery
procedure?

Availability of criminal
action?

China

√

x

√ (also administrative
action by the local IP
Office)Hong Kong√√x

Indonesiax√√

Malaysia√√x

Philippines√ (but difficult to obtain in practice)√√

Singapore√√x

Thailand√ (but difficult to obtain in practice)√ (but limited)√

Vietnam√ (but difficult to obtain in practice)√ (but limited)√© Rouse 2010© Rouse 2010

Opportunities
2nd largest country
in South East Asia

Opening up toforeign investment• Population of approx. 60
million.
• English is well spoken.
• 85 % of the population
is Buddhist.

• New Foreign Investment
Law .
• New Anti Corruption
Law.
• New
Telecommunication Law.

Political stability

Economy• ASEAN leaderships in2014.
• General election in
201.5• USA, EU & Japan haverelaxed their restrictions
against Myanmar tohelp the country totransit to a modern andopen economy.

• GDP for 2013 : 6.8 %• Inflation : 5.7 %• Floated exchange rate
between USD and Kyat
• Major investors : China,
Japan, Thailand &Singapore• Imports: fabrics, crudeoil, plastics, fertilizer,
machinery, transport
equipment, cement.
• Exports: gas, wood
products, fish, rice,
clothing, jade & gems.

© Rouse 2010

Challenges

Poor
infrastructure

Heavy agenda
on reforms

Ethicalconflicts© Rouse 2010

Overview of IP frameworkNosubstantive
laws on IP

Relatedlaws• Registration Act (1908)• Penal Code (1860)• Merchandise Marks Act (1889)• Sea Customs Act (1878)• Specific Relief Act (1877)• Patents and Design (Emergency
Provisions) Act (1946)• Science and Technology
Development Law (1994)© Rouse 2010

Trade mark recordation Average time to complete
the recordation process is 4 weeks, documents required Declaration of
Ownerships and Power Of Attorney to be submitted at the filing time.
Recordation of theownership in a markwith the Registry Officeof Deeds andAssurances

Renewal of Registration
and/or re-publication of
the recorded markevery three years

Voluntary publication of
Cautionary Notice in a
local newspaper/magazine
to inform public on theownerships of a mark andwarn counterfeiters© Rouse 2010

Examples of cautionary
notices© Rouse 2010© Rouse 2010© Rouse 2010

Status of draft IP laws

WTO extended thedeadline to enact IP
laws from July, 1st 2013
to July, 1st 2021 for all
Least Developed
Countries incl.
Myanmar .

Committee responsiblefor drafting IP laws :TM, GI, Design, Patent,
Copyright.

IP Draft laws - strong
possibility for TM law
to be enacted at theend of December 2013
or beginning of April,2014.

Design, Copyright laws
should be enacted
after TM law, then
Patent Law should
follow.

© Rouse 2010

Recommendations
RECORD your KEY marks NOW & LOCALIZE them in
Myanmar languages
PUBLISH your mark in a local newspaper/Magazine as a
Cautionary notice only if you don’t use it in Myanmar

CONSIDER appointing a local distributor, it does notneed to be sole distributor
RE-APPLY for your mark within 3 years from the entry
into force of new Trade Mark Law.
© Rouse 2010

Pirated marks© Rouse 2010

IP & ASEAN – further
readings
An insight into the patent systems of fast developing
ASEAN countries by Tuan Anh Vu, World Patent Information
34 (2012) pp. 134-142

From Grain-sized Innovations to Triple-Test Patents in
ASEAN Patterns, Issues, and Implications in Development
and Competitiveness Ngo Van Lam and Thitapha
Wattanapruttipaisan ASEAN Economic Bulletin Vol. 22, No. 2(2005), pp. 117–43© Rouse 2010

Thank you
Rouse
Unit 1401-3 Fl 14, Two Pacific Place
142 Sukhumvit Rd., Klongtoey
Bangkok 10110• Tel: 02 653 2730
• Bangkok@iprights.com• www.iprights.com© Rouse 2010