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Friday, August 18, 2017

Protection of Traditional Knowledge and Genetic Resources

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Article 26 of 2016 Patent Law addresses protection rules about over and Benefit Sharing and disclosure requirements for the origin or sources of genetic resources and/or traditional knowledge. This is to implement the Convention on Biological Diversity and Nagoya Protocol.

Chapter V of the 2014 Copyright law protects Traditional Cultural Expressions – that is works of unknown authorship, which attract copyright under the law. WIPO has long been helping developing countries protect their Traditional Knowledge, something that Indonesia as a large country of many peoples has worried about at an IP level.

Now there are going to be 2 new Ministerial regulations. The first covers something a called Local Wisdom, and the second Communal IP data. The Local Wisdom Regulation defines Traditional Knowledge as part of the Local Wisdom of indigenous people and local communities which might be used in an IP context. A structure is created to require consent to use traditional knowledge and a benefit sharing system with local custodians.  These are reasonably complex rules. It will be hard to many remote local people to comply with them, but nevertheless IP holders conducting research and utilizing technologies from Indonesian resources, or producing copyrights or other IP from local traditional cultural expressions will need to comply with these rules.

The second regulation allows the Ministry of Law to collect Communal Intellectual Property Data to manage and preserve traditional knowledge, traditional cultural expressions, genetic resources, and potential geographical indications in the form of a database. On 27 July 2017, the Directorate General of Intellectual Property launched the Communal Intellectual Property Data Centre at present, only a handful of CIPs are already filed on the Database including a coffee, dance and music, textiles, and a fish

There will be a lot of complexity and possibly controversy around this. It is however impressive that Indonesia is making a start on this knotty area. Local disputes will arise with local communities over ownership, rights and definitions. After all who trusts a government to look after their property! In addition there are a host of other intersecting rules, for example, conservation laws, regional regulations, customary law, research permit rules, a proposed new Indigenous People's Rights law and foreign investment restrictions. Begin the process of studying this early if you are looking to use or rely on genetic materials or Traditional Knowledge from Indonesia.   

Monday, August 14, 2017

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Article 20 of the new Patent law, which repeats earlier similar provisions from the 2001 and 1992 laws, has never been enforced. It is a controversial provision, intended to drive foreign technology transfer investment and consequential employment to Indonesia. What it says is that a patent granted in Indonesia must be worked (that is the patentee must make products or use the process). 

There was previously an exception, essentially for when it was not economically viable to work the patent in a single market, but only at a regional level. So presumably if you had a factory in the region (where exactly was not clear), that would suffice. A formal consent had to be sought from the Ministry of Law to rely on the exception. However there was no clarity on the precise meaning of the whole provision nor implementation of the exception. As a result for the last 25 years, no one ever had to be concerned.

In the new 2016 law a specific sanction was introduced and now non-worked patents can be revoked by the government. This policy change triggered protests from various foreign governments and organisations. The international criticism stems from the fact that not every patent is capable of being worked in Indonesia. Highly complex and often very common products from electronics to biopharmaceuticals might not be capable of or economically viable to be produced in Indonesia. Some products have only a handful of production sites worldwide. And small companies simply cannot afford to make products everywhere.

In response to these protests, a draft Presidential Regulation providing clarity on Article 20 of the Patent Law is being prepared to ameliorate the drastic consequences of non-compliance with Article 20.  The draft regulation allows for patent holders to apply for postponement of putting their patent to use where they are incapable of doing so or it is not economically viable.  The IP Office is still receiving feedback on the detailed implementation of the draft regulations. 

Whilst there has been strong growth in patent applications, Indonesia generally does not  attract the volume of high tech patents applications that are filed say in China.  Whether the patent law can be used to drive up investment with a stick remains to be seen. Patentees presumably won’t just stop filing in Indonesia simply because they haven’t been able to manufacture locally. Indeed that is not something they may even know at the time of application. Smaller companies and inventors who cannot afford to open factories, will all need to apply for exemptions. The reality then may be that most patent application will need them upon grant. So the effect may just be to put the cost of patenting up.

For now patent holders will need to wait for further news on the regulation. Engagement in the lobbying process would also help. 

Tuesday, August 8, 2017

Thailand's Madrid entry

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It is now official, from November 7, 2017 applicants will have the choice when filing a mark in Thailand to either file it via the Madrid System or through filing a national application directly with the Department of Intellectual Property (DIP). The Thai trademark system can be complicated, regimented, and sometimes capricious due to over imaginative examiners. Can the one-size-fits-all Madrid System elide all of this and make registering a trademark in Thailand easy? it is too early to tell; however the following features should be considered:

  • International applications designating Thailand will be examined by a dedicated group of examiners different from those examining national applications. It remains to be seen if that group of examiners will be more liberal than those in charge of domestic filings.
  • Goods and services in international applications designating Thailand will be translated into Thai by the DIP itself. Even if the application goes smoothly the accuracy of the translated goods/services in Thai is likely to be a concern. Checking translated goods/services prior to the grant of applications may become part of the filing strategy.
  • It is still essential to conduct a pre-application trademark clearance search to assess the trademark’s registrability. Is the mark inherently distinctive? Does it run afoul of Thailand statutory prohibitions on trademarks? Does it conflict with any preexisting trademarks,. Thailand is somewhat notorious for trade mark squatters and counterfeits.
  • Finally assuming the screening results are clear, applicants must determine which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because the Thai system is picky on how goods and services must be itemized.

Monday, July 31, 2017

Improving Indonesia's trademark delays

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Indonesia’s IP office, the DGIPR currently has a backlog of 60,000 trademark applications. This stems partly from the old law, the system under which was rather slow, typically 3 years or more to registration. But now under the new law they need to speed up to improve and meet Madrid deadlines. So they have announced efforts to improve the speed.

The DGIP hopes to cut the claimed backlogs to 45,000 by the end of 2017. They say the main areas of delay are in consumer goods such as F&B, cosmetics and clothing. Indonesian businesses file 70% of trademarks so bear the brunt of the problem, especially with a growing economy. Currently there are only 60 trademark examiners, with each examining around 20 applications per day. DGIPR are trying to increase manpower by recruiting new trademark examiners.

Thursday, July 27, 2017

Myanmar draft IP laws published

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The IP world in Asia has been awaiting the promised new IP laws in Myanmar after the country began opening up several years ago. Most of its IP system dates from 50 years ago or more. A lot of initial activity tailed off. Exhaustion set in amongst many observers. Long drafting and consultation processes, elections and political difficulties meant that IP was not prioritized.
However final draft laws on Patent, Industrial Design and Trade Mark were published in two parts on July 27 and July 28, 2017 for public comments prior to being submitted to Parliament. This is expected to be the last chance for comments before the enactment.

Monday, July 17, 2017

Trumping ethics in the Philippines

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Eventually the allegations of Trump’s conflict of interests had to reach SE Asia! Many newspapers have been hard at work uncovering the Trump organisation's business networks around the world.
Businesses owned by the Trump family hired a Philippines law firm owned by a Philippines government officer to handle their IP work. Elpidio C Jamora Jr is a name partner at Manila law firm Carag, Jamora, Somera & Villareal. The firm files trademarks for the Trump Organization and Ivanka Trump’s personal brand. Jamora is also chairman of the largest state-owned construction company the Philippine National Construction Corporation (PNCC) and was sworn in by the President of the Philippines.  

Meanwhile Trump plans to open a tower in Manila, which is a project run by Jose EB Antonio, a Filipino developer who was also named by the Philippines government as special trade envoy to Washington in 2016.