Issue No. 19, October 2020

APAA e-Newsletter

Obtaining an Extension to the Grace Period in Australia

Edward Quinn and Ernest Graf, Spruson & Ferguson (Australia)

After the filing of an Australian patent application, including after grant/certification, if an applicant/patentee becomes aware of a prior disclosure that occurred more than 12 months prior to the effective filing date of the application, the applicant/patentee may apply for an extension to the grace period, assuming the criteria for obtaining an extension under s223 of the Patents Act 1990 (Cth) can be met, in order to have the prior disclosure disregarded for assessment of novelty or inventive/innovative step.

Australian Designs – Proposed Changes to the Registered Designs System

Greg Whitehead, Shelston IP (Australia)

Introduction In Australia, the registered designs system is currently governed by the Designs Act 2003, which came into force in 2004. The operation and effectiveness of the designs system was reviewed by the Advisory Council on Intellectual Property (ACIP) several years ago, with ACIP’s findings and recommendations being published in its final report in 2015. … Continue reading

Damage Calculation System in the Revised Japanese Patent Act and Related IP High Court Decisions

Akiko Kurawaki, Tashiro & Etoh Patent Bureau (Japan)

In Japan, there has been discussion about whether a stronger suppression force should be imparted to the damage compensation system used in the case of patent infringement. As a result, a cabinet decision was made on March 1, 2019 to revise the Japanese Patent Act, and the bill passed the Diet on May 10, 2019. Thereafter, related IP high court decisions have been made.

Amendment to Korean Patent Law on the Calculation of Damages

Gyungho Seo, GVIP Law Firm (Korea)

In Korea, there have been discussions about insufficient patent protection because of the relatively low amount of damages allowed by Korean courts. Recently, the Korean government has tried to increase the amount of damages by making revisions to the Korean Patent Act.

Landmark Korean Supreme Court Case Applying “Catch-All” Unfair Competition Law to Sales of Luxury Goods

Youngsun YOU, Kim & Chang (Korea)

For the first time, the Supreme Court recently affirmed the application of the “catch-all” provision of the Unfair Competition Prevention and Trade Secret Protection Act (“UCPA”) in connection with sales of imitation luxury fashion goods. The “catch-all” provision is so named because it is intended to broadly address acts of unfair competition that do not … Continue reading

Protection of Therapeutic Monoclonal Antibodies in Singapore

Kian Hoe Khoo and Ken Simpson, Davies Collison Cave (Singapore)

Inventions directed to antibodies per se and their applications are generally patentable in Singapore, provided the requirements of novelty, inventive step and industrial applicability are met. This article explores some issues which may arise during examination of antibody-related patent applications in Singapore.

TIPO Published an Amendment to the Substantive Examination Guidelines for Design Patents

Cindy S.T. Hu, Hu and Wu Patent Office (Taiwan)

TIPO published an amendment to the substantive examination guidelines for design patents, which will be effective on November 1, 2020. Significant changes include the following aspects: 1. Relaxing the requirements of the description and drawings: Under the current examination guidelines, the default requirement for filing a design patent application is to submit a perspective view … Continue reading

Hague Agreement- How It Has Worked in Vietnam in the First Half of 2020

Nguyen Thi Thu Ha et al., Vision & Associates (Vietnam)

Introduction On 1st January 2020, the Hague Agreement officially came into force in Vietnam, 3 months after the submission of the instrument of accession to the World Intellectual Property Organization (WIPO). Vietnam is the 61st member of the 1999 Geneva Act and the 71st member of the Hague Union. As of 1st January 2020, companies … Continue reading

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