Issue No. 6, December 2017

Issue No. 6, December 2017APAA e-Newsletter

Patent Term Extensions in Australia for Pharmaceutical Substances Produced by Recombinant DNA Technology

Gavin Adkins and Malcolm Lyons, Griffith Hack (Australia)

Many countries, including Australia, grant patent term extensions (PTEs) aiming to compensate for delay in market entry caused by the process of obtaining marketing authorisation for new pharmaceutical substances.

Requirement and Procedure in Indonesia for Recordal of License on Intellectual Property

Rahajeng Handayani, SS&R Legal Consultants (Indonesia)

Even though provisions related to the recordal of licenses for patents and trademarks were introduced under Patent Law No. 6 of 1989 and under Trademark Law No. 19 of 1992, the actual recordal of licenses still could not officially proceed since the respective laws said that the filing procedure shall refer to a supported regulation, and the supporting regulation remained undeveloped until the issuance of Ministry of Law and Human Right Regulation No. 8 of 2016 on Requirement and Procedure for Recordal of License on Intellectual Property on 24 February 2016.

“TWG Tea” Infringement Case (Illegal Re-Packaging – Parallel Importation)

Megumi Saito, Fukami Patent Office, p.c. (Japan)

1. Issue
The issue in this case was whether a third party’s act of resale of re-packed (sub-divided) genuine parallel-imported products constituted trademark infringement.

Recent Trends Regarding Patent Court Cases Cancelling IPT’s Decisions in Korea

Gyung Ho SEO, MAPS Intellectual Property Law Firm (Korea)

The Intellectual Property Tribunal (“IPT”) in Korea examines cases on appeal against Final Rejections issued by the Korean Intellectual Property Office (“KIPO”) (i.e., ex parte cases); and invalidation actions against the grant of patents or amendments after patents are granted, and confirmation actions for the scope of patent rights (i.e., inter partes cases).

Patentability of Swiss Type Claims in Malaysia

Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)

A welcomed clarification by the High Court in Merck Sharp & Dohme Corp & Anor v Hovid Bhd [2017] MLJU 77

Merck Sharp & Dohme Corp (“Merck”) was the owner of Malaysian Patent No. MY-118194-A (“194 Patent”) relating to “Pharmaceutical compositions for use in inhibiting bone resorption.” The product was distributed under the trade name “Fosamax.” Merck also had an exclusive licensee who had the right to distribute, sell and offer to sell “Fosamax” in Malaysia.

Revocation of Singapore Patents Must be Made Before the Patent Registry – High Court has No Jurisdiction

Ravindran s/o Muthucumarasamy, Jevon Louis & Jon Chan Wenqiang, Ravindran Associates (Singapore)

In a landmark ruling, the High Court of Singapore in Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232 (“Sun Electric”) rendered a judgment wherein it decided that any application to revoke a Singapore patent must be made before the Registry of Patents (“Registry”) and not before the High Court.

Recent Changes in Taiwan Patent Practice (2017)

Albert W. H. Lee, Jamie C.C. Lu and Ronald Tsai, Wideband IP Office (Taiwan)

Several important actions have been implemented in Taiwan patent practice in 2017, including: (I) clarifying that an Examiner has an obligation to explain why two prior art references or more can be combined when raising an obviousness rejection in an office action (Effective on July. 1, 2017); (II) amending the Examination Guidelines pertaining to correction of a granted patent (Effective on Jan. 1, 2017); (III) extending the grace period from 6 months to 12 months after the date of disclosure (Effective on May. 1, 2017); (IV) amending the Examination Guidelines pertaining to invalidation requests (Effective on Jan. 1, 2017).

Settling Domain Name Disputes with “.vn” ccTLD in Vietnam – A Notable Case

Nguyen Thi Thu Ha, Vision & Associates (Vietnam)

Domain name disputes in Vietnam have been on the increase in recent years. For disputes involving the “.vn” ccTLD that is used for the jurisdiction of Vietnam, the settlement of these cases were put into a standstill for a long period of time, due to a “glitch” in cooperation between the Ministry of Science and Technology, who are in charge of handling domain name disputes, and the Ministry of Information and Communication, who are responsible for domain name registration and management. However, with the issuance of the Joint Circular No. 14/2016/TTLT-BKHCN-BTTTT dated 8 June 2016 (“Circular 14”) by the two Ministries on change and revocation of domain names as a remedy in a domain name dispute, the procedure for handling these types of IP disputes has been made clearer. The following case concerning the KOHLER trademark and the disputed domain name was one of the first cases successfully settled in light of the aforementioned Circular 14.

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