The office of the United States Trade Representative (USTR) annually prepares the ‘Special 301 Report’ which identifies countries that do not provide adequate and effective protection of Intellectual Property Rights and pose trade barriers to US companies and products.1The report contains countries considered to be providing inadequate and ineffective protection and the list of countries are categorized as ‘Priority Foreign Countries,’ ‘Priority Watch List,’ or ‘Watch List.’
‘Watch List’ countries have been identified by the USTR as having "serious intellectual property rights deficiencies" but are not yet placed on the ‘Priority Watch List’. Philippines was placed in the ‘Watch List’ category in 2006 while Vietnam was added to the list in 2011. However, numerous changes have been implemented by both countries to improve its protection and enforcement mechanisms of IP Rights over the years.
Two years after Vietnam’s accession to the World Trade Organization, Vietnam amended its Intellectual Property law in 2009. It corrected or supplemented several articles of the law with clearer definitions and amended its contents to make it more comprehensive and compatible with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). Since then, Vietnam has been consistently working towards ensuring the effective enforcement of Intellectual Property legislation in the country.2
In 2013, Vietnam passed several decrees and circulars to strengthen its IP protection and enforcement, as follows:
- For patent applications, Circular No. 05/2013/TT-BKHCN dated February 20, 2013 has clarified that the time period allowed for an Applicant to respond to a Notification will be excluded from the time period allocated for the formality examination. The excluded time period will be clocked from the date on which the Notification is issued to the date on which the Applicant responds or the time period stipulated in the Notification, including any extension of time granted.3
For Design applications, the circular also stipulates that in checking the novelty of the design applications, it is required to do the industrial design search upon, but not limited to, the mandatory industrial design information resource in respect of all industrial design applications received by the NOIP up to the time of checking, having the publication date, filing date or priority date (if applicable) sooner than filing date or priority date (if applicable) of the industrial design application in question; all industrial design applications and patents for industrial design published by other organizations, countries within the time of 25 years prior to the filing date or priority date (if applicable) of the industrial design application in question; and other industrial design information collected and kept by the NOIP.
Further, in checking the priority for the application of the first-to-file principle for complied trademark applications, it is required to do the trademark search upon the trademark information in respect of all trademark applications received by the NOIP, having the publication date, filing date or priority date (if applicable) sooner than filing date or priority date (if applicable) of the trademark application in question.
- Official Notification No. 5773/TB-SHTT dated Jul 2, 2013 provides the guidelines for the application of legal stipulation on the individual’s nationality, address and representative in the procedure of IP registration.
It stipulates that an Applicant must declare the Convention or WTO country to which he/she is a national or has a business foundation, in addition to providing details of residential address. Further, a Vietnamese national not living in Vietnam must file his/her application through a local IP agent or his/her business foundation in Vietnam. The Notification also requires a multi-national individual to choose a nationality when filing his/her application. The application will be dealt with in accordance to legal stipulations of the nationality chosen. Nevertheless, individual may also change the nationality provided during the examination stage or even after issuance of the Certificate.4
However, there has been little progress due to lack of resources and IP Rights expertise. Hence, Vietnam maintained its position as a ‘Watch List’ country in the 2013 ‘Special 301 Report.’
Yet, Vietnam shows that it is relentless in its fight against IPR violators. Recently, the Vietnam government has issued Decree No.99/2013/ND-CP containing more administrative sanctions against infringement. The decree came into effect on 15 October 2013 and brings forth four main changes in enforcing IP rights.
- Fine Level – The Decree imposes a fine ceiling of VND 250 million for individual infringers and VND 500 million for companies. For each act of infringement, a company is also subject to a fine twice as high as the one imposed on an individual infringer.
- Increased sanctioning power – The decree raises the sanctioning power for all of the competent authorities involved in IP enforcement by administrative route.
- Domain name enforcement – The decree shortens the time frame for a voluntary withdrawal of the disputed domain name and sets forth a stronger legal consequence in case of a failure to voluntarily change the infringing company name.
- Requirements for Power of Attorney – The decree clarifies and simplifies the requirement for the formality of POA in enforcement proceedings (emphasis added) so that competent authorities will have a uniform understanding. The POA in enforcement proceedings must be duly executed and notarized. In case of no notarization, the POA must be legalized.5
Furthermore, in February 2014, the Minister of Culture, Sports and Tourism of Vietnam Hoang Tuan Anh met with the Director General of the World Intellectual Property Organisation (WIPO) Francis Gurry. Among other things, short-term and long-term cooperation plans were discussed, including assessing the compatibility of Vietnamese laws with international conventions, assisting in raising public awareness of IP Rights and other related rights.6
Similarly, Philippines recognizes Intellectual Property protection as vital to the transfer of technology, foreign investments and ensuring market access for products. Hence the government has made it a State policy to protect and promote intellectual property rights. This policy is enshrined in the 1987 Constitution which expressly mandates that the State shall protect intellectual property.7 Accordingly, Philippines has continuously effected changes to streamline administrative procedures and improve its enforcement of intellectual property rights protection.
Some of the recent changes and improvements are as follows:
- In 2010, the Intellectual Property Office in Philippines (IPOPHL) established an Operations Centre to spearhead and coordinate policing operations by various law enforcement authorities.
- There have been serious efforts on the part of the Philippines’ enforcement agencies to combat infringement and to clamp down upon counterfeiting. The IPOPHL has consistently promoted the support and cooperation of IP Right holders for an effective enforcement system.8
For example, on February 28, 2013, President Aquino signed into law Republic Act No. 10372 entitled “An Act Amending Certain Provisions Of Republic Act No. 8293, Otherwise Known As The “Intellectual Property Code Of The Philippines”, And For Other Purposes” (hereinafter the “RA 10372”). RA 10372 amended sections of RA 8293 with regard to the organization of IPO specifically the duties of Director General and Deputy Director General, and Bureau of Copyright and Related Rights. It also revised and added some definition of terms like communication to the public, reproduction, technological measure and rights management information.
Furthermore, the Bureau of Trademark issued BOT Office Order No. 13-06, Series of 2013, on the Implementation Guidelines for Office Order No. 13-061, Series 2013, on Trademark Applications with Priority Right Claim on October 18, 2013. Among other things, the order laid out that a copy of the foreign application used as a basis to claim Convention Priority shall only be required if the fact of such filing cannot be verified by the Examiner of the Philippine application from the online trademarks database of the foreign IP offices. The Order affected all pending applications.
- The IPOPHL has also placed focus on increasing education and advocacy efforts to support IP Rights. In 2012 the Philippines Department of Justice in cooperation with the National Committee on Intellectual Property Rights crafted a Manual on Law Enforcement and Prosecution of Intellectual Property Rights to serve as the standard procedural guidelines for law enforcers and prosecutors handling cases of IPR violation.9
- Most recently, the IPOPHL noted the improvement in the convictions of IP crimes lodged. The IPOPHL only recorded six convictions from 2011 to 2013. IPOPHL Director General Ricardo Blancaflor sees this as an indication that the reforms implemented in the adjudication of IP cases are bringing in positive results.10
In light of the improvements and changes made, the IPOPHL formally submitted its request to be removed from the ‘Watch List’ in February 2014.11 The move has received international support. Nevertheless, whether the USTR agrees with the IPOPHL remains to be seen in May when the next Special 301 Report is due.