APAC IP Update – Winter 2023/24

China

China’s State Council releases Amended Implementing Regulations of the Patent Law

On 21 December 2023, China’s State Council released the Amended Implementing Regulations of the Patent Law.  The Implementing Regulations explained how several provisions of China’s amended Patent Law of 2021 are being implemented after going into effect on 20 January 2024.

The main changes include:

• minimum inventor remuneration for service inventions is raised to RMB 4,000 for invention patent and RMB 1,500 for design and utility model;
• patent term adjustment must be requested within three months from grant and is calculated as follows:
  • after four years from application date,
  • after three years from the date of filing the request for examination, and
  • minus the unreasonable delay from the applicant;
• patent term extension for pharmaceutical patents is calculated by deducting five years from the interval between the date of filing of the patent application and date of licensing of the drug;
• in patent invalidation proceedings, the patentee may amend the claims, and the manner of amendment is no longer limited, as long as it does not expand the scope of protection of the original claims and is no longer limited to the merger, deletion and other modifications to the claims.

In addition to the Amended Implementing Regulations, China National Intellectual Property Administration (CNIPA) announced several supporting regulations at the same time, including the Regulations regulating the act of applying for patents and the Patent Examination Guidelines. The introduction of this batch of regulations is a refinement of the key points in the fourth amendment to the Patent Law in June 2021, which together with the Patent Law should expedite the continuous improvement of China's patent system.

Chinese court issues landmark judgment in OPPO v. Nokia global FRAND rate case

The Chongqing First Intermediate People’s Court has issued a first instance judgment in the case filed by OPPO against Nokia over royalties for standard essential patents (SEPs). This landmark decision confirmed global fair, reasonable, and non-discriminatory (FRAND) licensing rates for Nokia’s portfolio of 2G, 3G, 4G and 5G SEPs, and is the first Chinese court decision setting global FRAND rates and the first to address 5G SEP rates.

While confidential data was redacted in the publicly announced decision, the key conclusions are clear. Specifically, the court determined FRAND royalties per handset for:

5G multi-mode mobile phone single unit licence fee:

• First Territory: USD 1.151
• Second Territory (including Mainland China) and Third Territory (other countries): USD 0.707

Single unit licence fee for 4G multi-mode handsets:

• First Territory: USD 0.777
• Second Territory (including Mainland China) and Third Territory (other countries): USD 0.477

The court rulings are much lower than Nokia’s proposed uniform rate of EUR 3/unit for 5G patent licensing.

Additionally, the Chinese court affirmed OPPO’s claim on a global cumulative royalty range of 4.341% to 5.273% for the handset sector implementing 5G SEP technologies. Relative patent value distribution across generations was set at 50:40:5:5 for 5G:4G:3G:2G.

The global patent dispute between Nokia and OPPO broke out in July 2021. The two parties have launched infringement litigation, rate litigation, patent invalidation, etc. in multiple jurisdictions including Germany, the UK, France, Finland, Sweden, India, Indonesia, and China.

This is the first Chinese court decision setting global FRAND rates and the first Chinese decision to address specifically 5G SEP rates. OPPO has issued a statement expressing its willingness to comply with and implement the global FRAND royalty rates determined by the court for Nokia patents. OPPO also stated that it hopes to resolve the patent royalty dispute with Nokia and expects Nokia to comply with the court decision. As of publication, there has been no response from Nokia.

Beijing Internet Court recognises copyright in AI-generated images

On 27 November 2023, the Beijing Internet Court issued a decision recognising copyright in AI-generated images. The plaintiff used the AI tool Stable Diffusion to generate the image involved in the case and published it on a Chinese social media platform. The defendant used the image generated by the plaintiff’s AI to accompany an article on another platform, and the plaintiff sued. The Court held that the artificial intelligence-generated image involved in the case met the requirements of “originality” and reflected a human’s original intellectual investment and should be recognised as works and protected by copyright law. It is worth noting that this decision is opposite to the main viewpoints of AI-generated content copyright in the UK and US.

In addition, the innovative court decision may be linked to the fact that the plaintiff is the one who directly set up the AI model and selected the images involved in the case. The images were directly generated based on the plaintiff’s intellectual investment and reflected the plaintiff’s personalised expression. Therefore, the plaintiff is the owner of the images involved in the case and owns the copyright of the images involved.

Hong Kong

Proposed fee reduction for the Designs Registry

On 5 January 2024, the government published the Registered Designs (Amendment) Rules 2024 for reducing the fee level of the services of the Registry specified in the Schedule to the Registered Designs Rules (Cap. 522A) in the Gazette. These Amendment Rules have been tabled before the Legislative Council for negative vetting and, subject to completion of the necessary legislative procedures, will come into effect on 1 March 2024.

The Amendment Rules reduce the fee level of the Designs Registry’s services specified in the Schedule to the Registered Designs Rules (Cap. 522A). The reduction of fees is one of the policy measures under the Chief Executive’s 2023 Policy Address to promote the further development of intellectual property trading.

Regional High-level Conference on IP Protection and 2nd Cross-Border IP Protection Forum

The National 14th Five-Year Plan supports Hong Kong to develop into a regional IP trading centre. In line with this, in March 2024 Hong Kong Customs will host the Regional High-level Conference on IP Protection to bring together IP experts and business stakeholders from the Asia Pacific region to share best practices and exchange experience on IP protection strategies. There will be a session dedicated to “government-to-business partnership” at the Conference, which aims to provide a platform for business stakeholders to share their expertise, engage in dialogues and jointly develop innovative strategies to protect IP in multiple aspects.

The Hong Kong Customs is also expected to sign a Memorandum of Understanding (MOU) with the Quality Brands Protection Committee (QBPC) (優質品牌保護工作委員會) at the Conference on 14 March 2024, which is subordinate to China Association of Enterprises with Foreign Investment (CAEFI) (中國外商投資企業協會) under the Ministry of Commerce. Founded in 2000, QBPC has a membership of over 200 foreign invested companies with renowned brands. Entering into a MOU with the QBPC promotes the joint effort in combating IP crimes through enhanced communication and cooperation, and fosters cross-boundary IP trading to further consolidate Hong Kong's position as a regional IP trading centre.

In addition, on March 15 Hong Kong will host the 2^nd Cross-Border IP Protection Forum in collaboration with the QBPC where mainland and overseas officials and stakeholders will forge further cooperation in cross-border anti-counterfeiting, which is essential in the development of Hong Kong as a regional IP trading centre.

India

India publishes Draft Geographical Indications of Goods (Registration and Protection) (Amendment) Rules 2023

On 17 October 2023, India’s Ministry of Commerce and Industry published the draft Geographical Indications of Goods (Registration and Protection) (Amendment) Rules 2023, which amends the Geographical Indications of Goods (Registration and Protection) Rules 2002.

The main amendments in this draft pertain to the reduction in the prescribed fees for the submission of several forms under the existing 2002 rules. Some of the reductions are substantial. For example, the fees required to be deposited on the application for registration of a geographical indication for goods in one class was reduced from INR 5,000 to INR 1,000. These amendments are expected to encourage more entities to file applications to register geographical indications.

Click here to view the draft rules.

Malaysia

Malaysia’s launches initiative to expedite certification and notification process for copyright

In December 2023, Malaysia’s Intellectual Property Corporation (MYIPO) introduced a new notification initiative known as Copyright to You (CR2U), which is expected to reduce the processing time of voluntary copyright notification applications from between three and six months to 30 minutes. Under Malaysian law, copyright registration is not a legal requirement but having copyright registration helps to establish ownership and enforce copyright against third party violations. Registration is obtained through the filing of a voluntary copyright notification with the MYIPO.

According to the chairman of the MYIPO, the introduction of this initiative is projected to increase the number of copyright registrations in 2024 by 30% to 40%. Currently, the number of copyright notification applications received in 2023 was just above 6,000, which showed that awareness in copyright registration was less than ideal. With this initiative, it signals that the MYIPO recognises copyright as a crucial asset in the Malaysian creative economy and shows the MYIPO’s commitment to facilitating the growth of the creative industry.

Philippines

Philippines issues implementing rules and regulations on the term of copyright protection and the public domain

In September 2023, the Intellectual Property Office of the Philippines (IPOPHL) recently issued Memorandum Circular No. 021 of 2023, which establishes certain rules and regulations governing various aspects of copyright protection under the Intellectual Property Code of the Philippines.

Known as the “Public Domain Rules”, these Rules make clear that: (a) authors and copyright owners have certain moral and economic rights with the former rights not being assignable or capable of being subject to a licence; (b) certain works belong to the public domain, such as any official text of a legislative, administrative or legal nature, and works with expired copyright protection; (c) no copyright subsists in any of the works of the government of the Philippines; (d) how any party can make a request for an assessment on whether a work is in the public domain with the Accreditation and Standards Division of the Bureau of Copyright and Other Related Rights; and (e) how any party can challenge the copyright claim of another party when prevented from using a work believed to be in the public domain.

Click here to view the rules.

Singapore

Singapore enacts Copyright (Collective Management Organisations) Regulations 2023

Following from the public consultation that ended in January 2023, the Singapore Ministry of Law and the Intellectual Property Office of Singapore (IPOS) published the new Copyright (Collective Management Organisations) Regulations 2023 on 31 October 2023. The regulations are aimed at ensuring that collective management organisations (CMOs) operate with high standards of transparency, accountability, efficiency, and good governance.

Some of the changes made in the finalised regulations include expanding the classes of ‘excluded persons’ that are not considered as CMOs and providing an alternative to publishing a list of every work and performance in the CMO’s portfolio. The new regulations will take effect on 1 May 2024, giving CMOs six months to implement changes in order to be compliant with the new regulations.

Click here to read our Law-Now update on the implications of the new regulations.

Singapore Court of Appeal’s first decision on the Singapore Geographical Indications Act 2014 (GIA)

The highest appellate court in Singapore considered the operation and interpretation of certain sections in the GIA for the first time in the case of Consorzio di Tutela della Denominazione di Origine Controllata Prosecco vs Australian Grape and Wine Incorporated [2023] SGCA 37. The respondent had applied to register “Prosecco” as a geographical indication (GI) for wines originating from the northeast region of Italy. The appellant filed an opposition against the registration.

The Court of Appeal’s decision largely focused on the interpretation of section 41(1)(f) of the GIA, which prohibits the registration of a GI if it contains the name of a plant variety and is likely to mislead the consumer as to the true origin of the product.

The Court of Appeal held that “Prosecco” was objectively the name of a grape variety but, based on the evidence presented to the court, it was unlikely that Singapore consumers would be misled about the true geographical origin of the “Prosecco” product. Therefore, the GI was allowed to proceed to registration.

A notable implication of the decision was that the Court stated that consumer surveys would have been a more direct way of proving that consumers would have been misled instead of relying heavily on advertising materials to try to prove that Singaporean consumers could be misled. The Court also stated that GIs and trade marks are distinct species of intellectual property and therefore the Court would be slow to import principles applicable to trade-mark law into the law of GIs and the interpretation of the GIA.

First successful mediation under the WIPO-Singapore ASEAN Mediation Programme

In 2023, the pilot WIPO-Singapore ASEAN Mediation Programme (AMP) was launched to help increase the accessibility of mediation for businesses in their IP or technology disputes. Under the AMP, businesses can benefit from subsidised mediation of up to SGD 8,000 for each mediation case to resolve their IP or technology disputes. The AMP is an initiative by the WIPO Singapore Office (WSO) and IPOS under the WIPO-Singapore Government Memorandum of Understanding. Interested parties can apply for AMP funding by making a request to the WIPO Centre until 31 December 2024.

In November 2023, the AMP saw its first successful mediation case, which involved the use of trade marks without consent or a valid licence. A settlement agreement between the parties was reached within a day. This resulted in significant cost and time savings for all parties since traditional litigation would have taken more than a year.