Issue No. 20, December 2020

APAA e-Newsletter

Case Note: Calidad Pty Ltd v Seiko Epson Corporation

Ayesha Lee and Sylvie Tso, Spruson & Ferguson (Australia)

The High Court of Australia adopted the doctrine of “patent exhaustion” to determine the nature and extent of monopoly rights of patent owners and departed from the “implied licence” theory, which had been used in Australia for more than 100 years. Calidad, a distributor of refurbished printer cartridges, won a long-standing battle with Seiko Epson Corporation in its final appeal to the High Court.

Patentable Subject Matter in Australia – a Life Science Perspective

Kieran Williams, Cotters Patent & Trade Mark Attorneys (Australia)

For an invention to be patentable in Australia, it must be a manner of manufacture, novel, inventive, useful, and not have been secretly used. While most of these requirements will be familiar to patent practitioners from other jurisdictions, the manner of manufacture requirement demands some explanation.

How to Identify Infringers Hiding Behind the Internet: Recent Trend toward Enhancement of Rights Protection

Akira Watanabe, Nakamura & Partners (Japan)

1. Laws that would help unveil infringers One of the key features of the Internet is anonymity. However, anonymity abets copyright and trademark infringement as well as fraud and defamation. In order to minimize such crimes and to help victims recover damages, laws in Japan mandate that some information about the sender who transmits infringing … Continue reading

Introduction of Unfair Trade Practice Investigation by Korea Trade Commission

Jongsun Kim, KLP IP Firm (Korea)

An investigation into unfair international trade practices can be requested and considered by the Korea Trade Commission in case there is an issue of infringement of intellectual property rights, such as patents, related to goods which are supplied into Korea from overseas or exported from Korea to a foreign country

Korea Embraces Punitive Damages for Trademark and Design Infringement

YoungJoo Song and Mizi Park, Yoon & Yang (IP) LLC (Korea)

Introduction Treble damages are now available for wilful acts of trademark and design infringement in Korea. On October 20, 2020, the revised Trademark Act and Design Protection Act, both of which include new punitive damage provisions, came into force. The amendments will have a significant impact on the protection and enforcement of trademark and design … Continue reading

New IP Online Arbitration Service

Tanakrit Tangburanakij and Praewpan Hinchiranan, Baker McKenzie (Bangkok Office) (Thailand)

The Thai Department of Intellectual Property (DIP) and the Thai Arbitration Center (THAC) signed a MOU to establish an online arbitration service for intellectual property disputes on 7 December 2020. The service has been introduced, in part, to fulfil the government’s policy on Thailand 4.0 by using new technology. More importantly, the online arbitration service … Continue reading

Positive Patent Examination Pilot Program for Startup Companies – Beginning in Taiwan on 5 January 2021

Allen Shih, Vivian Kao, and Francie Chen, IP Winner International Patent Office (Taiwan)

The Taiwan Intellectual Property Office (TIPO) has announced a “Positive Patent Examination Pilot Program for Startup Companies” to greatly expedite the patent examination process for startup company’s patent applications. The Pilot Program applies only to invention patent applications and will begin on January 5, 2021. According to the Pilot Program, TIPO allows applicants to conduct a new type of interview (a.k.a. “Positive Interview”) with the Examiner to discuss how to amend the invention patent application, so that the invention patent application can get granted in a very short period.

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