In 2013, several Southeast-Asian countries including Malaysia, Philippines and Singapore have seen some significant development in their respective Intellectual Property regime.
The Industrial Designs (Amendment) Act 2013 (IDAA 2013) came into force on 1 July 2013, amending the Industrial Designs Act 1996. IDAA 2013 serves to incorporate laws that are more in tandem with international standards. Registered designs are now recognised as personal property and may be the subject of assignment, transmission or a security interest transaction.
More significantly, registered designs rights holders may obtain protection for further consecutive terms of 5 years each above the current 15 year protection period. This means that such rights are valid for a total of 25 years, a step towards harmonisation with European Union’s Community design protection and UK laws.
In addition, worldwide novelty is promoted such that public disclosures are not limited to that in Malaysia and any prior art from outside the jurisdiction may be valid. This however remains subject to several limitations. If the industrial design appeared in an official or officially recognised exhibition or it has been disclosed by a person other than the applicant or his predecessor in title as a result of an unlawful act committed by that person or another, such design is not deemed as disclosed to the public.
The Office Order entitled “Trade Mark Applications with Priority Right Claim” which became effective as of 2 May 2013, records amendments to the Trademark Regulations which supplements the Intellectual Property Code of the Philippines.
Rule 202 of Trademark Regulations now provides that registration of a trade mark in the Philippines shall not be granted and publication withheld until it has been ascertained that the mark has been registered in the country or origin of the applicant.
For applications claiming priority right, the applicant is not required to submit a certified copy of the foreign application or registration that serves as basis for the claim of priority right. The requirement to submit a certified true copy of the priority application as per the old Rule 618 of Trademark Regulations has been dropped. The Examiner may verify the details of the priority application by checking the online database of the foreign IP Office. If the online database is not available, the applicant may submit a photocopy to the Examiner for reference.
If there are defects in the application with respect to the registration of the foreign application, allowances are given to remedy this. An extension of 12 months may be requested on top of the shorter initial period of 6 months (previously 12 months) from the mailing date of the notice of allowance.
Singapore continues to forge ahead in enhancing its reach into global markets and promoting information sharing and cooperation at the world stage.
In September, the Intellectual Property Office of Singapore (IPOS) and the German Patent and Trademark Office (DPMA) signed a Memorandum of Understanding (MOU) to foster future cooperative initiatives. Under the agreement, both offices will collaborate to inter alia, develop a patent prosecution highway (PPH) pilot program and training and development of staff to improve patent granting and dispute resolution procedures.
In October, IPOS and the State Intellectual Property Office of the People's Republic of China (SIPO) agreed to exchange intellectual property (IP) information and patent data. This provides Singapore-based businesses venturing into the Chinese market more certainty that their products and services do not infringe existing patents in China and a better chance of having their patents granted.
In December, IPOS and the Mexican Institute of Industrial Property (IMPI) signed an MOU, effective for two years, to benefit businesses seeking patent protection for their innovations in major markets worldwide through a PPH programme. This PPH serves to allow the sharing of patent search and examination reports between the offices to avoid duplication and to speed up the registration process for applicants in the two countries.
2014 undoubtedly looks to be promising as the region continues to execute Asean IPR Action Plan 2011-2015 including the facilitation of Asean countries' accession to WIPO treaties and global protection systems.