Greater China IP Updates
TIPO offers free Copyright Holder Search Notice
The Taiwan Intellectual Property Office is now offering a free copyright holder search notice publication service. The initiative is aimed at promoting a more widespread use of copyrighted works whose authors are unknown. All applicants need to do is to email their application form to TIPO and the notice with all the relevant details will be published on TIPO’s website in the Licensing of Orphan Works section. This new service, started in October 2020, will allow applicants to more conveniently and efficiently follow the correct process for the use of works whose authors are unknown.
Taiwan Company Gogoro wins award
Gogoro, a Taiwanese company holding numerous patents, has recently received the Global Company of the Year Award. Frost and Sullivan, the California-based research and consulting firm, chose Gogoro based on the success of its Gogoro Network set up which provides a swappable battery for electric scooters. From 70 Gogoro battery swap stations in 2015 to 2000 this year, Gogoro has shown steady growth in its business model. Gogoro’s leading role in clean energy transportation is such that several large companies making electric scooters, like China Motor Corp, Yamaha, Aeon Motor Corp, PGO and Suzuki Motor Corp have joined its Powered By Gogoro Network. Gogoro has many patents such as apparatus, method and article for security, authentication and control of power storage devices, portable charging devices, connecting devices and vehicle and charger using the same and numerous others. Taiwan’s business and legal environment can take some credit as it provides a challenging and creative field for patent holders to optimize their duly protected inventions.
China Passes Copyright Law Amendment
On November 11, 2020, China approved amendments to the Copyright Law. They will become effective on June 1, 2021. The law has significantly widened the subject matter of a copyright. For example, cinematographic works has been expanded to audio-visual works and computer software was changed to computer program to add literary work protection over computer files. Punitive damages for intentional infringement, an increase in statutory damages, and an increase in civil fines for copyright infringements are the main changes. Intentional infringement when the infringement is serious will be punished by up to five times the loss amount in damages. In those cases where the royalties are difficult to calculate, the court will levy compensation of anywhere between 500 yuan and 5 million yuan. Like the newly amended patent law, the burden of proof falls more on the infringer. If the infringer does not provide the relevant account books and other materials to the court, the court will decide the compensation at its own discretion. The Copyright Office also has the power to confiscate illegal income and destroy infringing products and the machinery used to make them. These recent changes have been overseen by the National Copyright Administration in consultation with interested parties including China’s judiciary in response to the need to expand the recognition of copyright rights and international copyright norms.
China Patent Law Amendment Clause Prohibits Abuse of Patent Rights
To a certain extent, China already has regulatory tools to ensure that patent rights shall not be abused to damage public interests or the rights and interests of others. For example, the Anti-Monopoly Law can be used when patent rights are used in such a way to exclude or restrict competition. There is also the compulsory licensing system embedded in the Patent Law to enable a fair way for businesses to access IP they may need. The newly-added provisions clarify the relationship between the Patent Law and the Anti-Monopoly Law. Not just a patentee’s rights are protected by the new provisions but also the public interest and the legal rights of others. If a patentee abuses the patent right, in accordance with the relevant provisions of the Civil Code and the Patent Law, a judicial interpretation can be made to solve the issue.
The Hong Kong Intellectual Property Specialist List
All interlocutory applications and trials in IP cases are now handled by designated judges in specialized IP courts. This development, first promulgated in 2019, has been brought about due to unnecessary delays in IP cases going to trial. This upgrade to the legal system will put Hong Kong in closer alignment with China which has had specialized IP courts for several years. By having a specialized list of judges to oversee IP cases, it is now hoped that court cases can be tried within 18 months from filing. Swifter substantive determination of whether a product infringes or not is in the interest of not only the plaintiffs but also the relevant government departments as well. The Hong Kong government has been promoting the concept of being an innovation hub for the region, so effective enforcement of IP rights is necessary in a fast changing business environment.
Hong Kong sets up IP Training Programs
The Intellectual Property Department of the Hong Kong SAR has begun some programs to assist businesses, especially small and medium enterprises, to adopt good IP management into their overall business strategy and practice. The IP Training Program is a course that will help staff improve their knowledge base about the IP system and update their expertise and skills. The government hopes that this program will not only give enhanced clarity about how to protect a company’s IP but also encourage greater effort to exploit the creative potential therein. There will be a range of courses provided according to the specific duties and career development needs of potential IP Managers, such as Intellectual Asset Management, Management and Strategies of IP Commercialization, IP Basics, IP Management and Protection in the Mainland, Registration and Application Procedure of IP Rights in Hong Kong, Management and Strategies of Technology Transfer and Practical Workshop for IP Managers. Besides the courses, the IPD, with support from the Law Society of Hong Kong, will provide free one on one IP Consultation Service for Hong Kong SME managers to help them analyze their particular needs and interests. Such areas as IP Registration, IP Management, IP Licensing and IP Due Diligence will be covered. It can be seen that the Hong Kong IPD are making great efforts to make Hong Kong an IP hub.
TIPO Revises Pharmaceutical-Related Examination Guidelines
Some clarification about what can be patentable or not in the pharmaceutical field has now been determined by TIPO after comparing issues and cases from Japan, the U.K. and Europe. Firstly, an invention cannot be patented when the method directs to a living human or animal system, relates to a disease diagnosis or aims to obtain a diagnosis immediately. However, if a method does not aim at a diagnosis immediately, but is focused on collecting data such as blood pressure measurement, CT imaging and so on, then it is eligible for a patent. Secondly, methods which possess both therapeutic and non-therapeutic effects that are not separable are methods for treatment that are considered non-patentable. If the effects are separable and the patent claim is limited to be non-treatment in nature, then the claimed method is patentable. These new rules mean that cosmetic surgery and beauty treatment inventions might have an easier path to getting a patent, but essential therapeutic inventions will remain non-patentable.
Taiwan Intellectual Property Office Clarifies Disclaimer Issue
If an amendment or post-grant amendment has a disclaimer, it can only be made to exclude a part that overlaps with a single prior art or to exclude a statutory non-patentable subject matter. Some examples of prior art could be a citation that may prove that a claim is not novel, or a citation that may prove that a claim lacks novelty based on legal fiction, or a citation that may prove a claim violates the first-to-file principle. Also, an exclusionary amendment can be made to exclude a part involving humans from an article claim or a step implemented on living humans or animals from a method claim. TIPO believes that this new regulation will help applicants when filing their claims.
China Patent Law 4th Amendment – Damages and Rule of Evidence
A significant increase in punitive damages for infringements has been unveiled in the latest amendment which will come into force on June 1, 2020. Infringement with malicious intention will now be punished by up to five times the financial injury. Currently, this would be potentially one of the highest available punitive multiples among major IP countries. Statutory damages have also been raised from RMB 30,000 to RMB 5,000,000 depending on factors above and beyond the standard calculation basis for damages, such as the type of patent or the extent of the infringement. Concerning the rule of evidence, to calculate damages usually means the patentee has to supply documentary materials to the court. Now, as a supplementary measure, the court may order the defendant to present information from their side such as ledgers, or other financial records so as to get a more complete picture of the infringement and damage to the patentee. Also, a lawsuit against an infringer may be filed within three years from the time when the patentee first knows about it, as opposed to two years currently. Likewise, the patentee can now claim for reasonable royalty within three years as opposed to two years previously which will help enforce the invention application’s provisional right after publication but before grant. If these measures become law, China will be a much more supportive place for IP protection in the future.
The Open Licensing System in the Fourth Amendment of China’s Patent Law
According to the provisions of Articles 50 and 51 of the Patent Law, a patentee can declare to the CNIPA that it is willing to license its patent to any entity or individual. There are regulations about the method of payment and royalty rates after which a patent exploitation license will be granted. That license will be a general license not an exclusive one. Currently, in China the rate of transformation is just 30% which is much lower than in developed countries. By establishing an open licensing system, the CNIPA aims to help businesses reduce costs, improve efficiency and clarify interactions between licensor and licensee. One beneficiary is likely to be China’s universities which have a lot of patents but lack experience in developing patents commercially. From this amendment onwards, the open platform can be used by the patentee to publish information and complicated negotiations will be streamlined. An open license statement can be withdrawn later, but it will not revoke any ongoing or effective licenses. Also, under discussion is to reduce or exempt patent annuities for patents used under the open licensing system which will save costs for the patentee. These changes will go into effect on June 1st, 2021.
Hong Kong on track to join Madrid Protocol
Hong Kong is planning to join the international trademark registration system within two years. By aligning closer to international standards, the Hong Kong IP authorities hope to incentivize economic development in the Guangdong – Hong Kong – Macao Greater Bay Area (GBA) Plan. It is expected that the GBA will become a global innovation and technology hub. The HKSAR has committed funds to two InnoHK research clusters with an emphasis on software development for the application of a new wave of green technologies. Under the leadership of Director of Intellectual Property David Wong, various strategies are being put in place such as strengthening IP protection, encouraging innovation and promoting the Hong Kong Green Label Scheme so as to make Hong Kong a leader in the development of green technology. A trademark amendment bill is on the books and that will lead the way to implementing the Madrid Protocol. At the same time, the IP Department is building a dedicated information technology system to process applications and registrations. Applicants can file applications under the Original Grant Patent System, and various training courses and workshops have been set up to help expand awareness.
IPHatch Hong Kong Competition to encourage IP Development
IPHatch Hong Kong is an open innovation competition organized by the Hong Kong Trade Development Council and the IP investment bank Piece Future. It was originally launched in 2018 as part of the Business of Intellectual Property Asia Forum and is now an annual event. The event hosts startups and entrepreneurs to bring new business concepts to fruition with an emphasis on existing IP and technology. This year portfolios from Panasonic and Nokia were opened up for potential development with startups. Last year, Mood Aware Environment, or MAE, a Hong Kong startup was among the winners for its device adapting patented tracking technology which can collect biodata to analyze emotions. MAE’s new product innovation is now under development for commercial launch in 2021. This year’s pandemic crisis has made it apparent that change and challenge can motivate new and necessary developments, and as a city of innovation, Hong Kong is well placed through such events to be a front-runner in IP development in the coming years.