MCI (P) 031/02/2018Issn 0219 – 6875

KDn PPs 1867/10/2015(025606)

OFFSHORESTARSClients picktheir toplawyers

M&ASKILLSWhat in-houselawyers needto have

FLEXIFUTURENewLawcomes ofage in Asia

STARTME UPIndonesiaattractstech money

T H E B E S T L A W F I R M S F O R I N T E L L E C T U A L P R O P E R T Y

12 ASIAN LEGAL BUSINESS – MAY 2018 W W W.LEGALBUSINESSONLINE.COM

C O V E R S T O R Y

W W W.LEGALBUSINESSONLINE.COM

TE X T BY MARICEL ESTAVILLO

The brewing trade war between the United States and China over intellectual property (IP) policies and the unexpected sudden withdrawal of the former from the Trans-Pacific Partnership (TPP) agreement —an ambitious trade deal that sought for a new gold standard in IP protection—have not dampened the growth of IP transactions and enthusiasm for increased IP protection in most parts of Asia. If anything, these turn of events only proved the growing roles of IP and Asia, with China at its front and centre, in global trade.

In August 2017, the U.S., following the directive of its newly elected leader, Donald Trump, whose top policy agenda include protectionism, formally launched its investigation into what it described as China’s “unfair” IP policies. The U.S., for the most part, has blamed China for its huge economic losses from counterfeiting, piracy and trade secret thefts, which it estimated to have reached $600 billion annually.

The results of its Special 301 investigation into China, released in March this year, recommended the

CHINA DOMESTICPATENTS

TIER 1• CCPITPatent&TrademarkLaw

Office• FangdaPartners• JunHeLLP• King&WoodMallesons• ZhongLunLawFirm�

TIER 2• BeijingDentonsLawOffices,LLP�

• ChangTsi&Partners• DeHengLawOffices• WanhuidaPeksungIPGroup�

• Watson&BandLawOffices�

TIER 3• AllBrightLawOffices• Co-effortLawFirm• GlobalLawOffice• HanKunLawOffices�

• HengduLawFirm�

• LongAnLawFirm�

TIER 4• An,Tian,Zhang&Partners• BeijingDHHLawFirm*• HiwaysLawFirm• TahotaLawFirm• TianYuanLawFirm• ZhongwenLawFirm*

COPYRIGHT/TRADEMARK

TIER 1• CCPITPatent&TrademarkLaw

Office• FangdaPartners• King&WoodMallesons• ZhongLunLawFirm�

TIER 2• BeijingDentonsLawOffices,LLP�

• BeijingJinchengTongda&NealLawFirm

• ChangTsi&Partners• Co-effortLawFirm• GlobalLawOffice• HiwaysLawFirm*• JunHeLLP• LongAnLawFirm*• TianYuanLawFirm�

• WanhuidaPeksungIPGroup• Watson&BandLawOffices

TIER 3• AllBrightLawOffices• An,Tian,Zhang&Partners*• Boss&YoungAttorneysatLaw• DeHengLawOffices• GuantaoLawFirm• HanKunLawOffices• HengduLawFirm• HylandsLawFirm• Jingtian&Gongcheng• LlinksLawOffices*• TahotaLawFirm

CHINA INTERNATIONALPATENTS

TIER 1• Allen&Overy• AWAAsia*• BakerMcKenzie/BakerMcKenzieFenXun(FTZ)JointOperationOffice

• Bird&Bird• CMS�

• Deacons• Finnegan,Henderson,Farabow,Garrett&Dunner�

• HoganLovells• JonesDay• MayerBrownJSM• MorganLewis�

• Morrison&Foerster• NortonRoseFulbright• Orrick,Herrington&Sutcliffe• Ropes&Gray• Rose

TIER 2• DLAPiper• FreshfieldsBruckhausDeringer�

• MMLCGroup*• QuinnEmanuelUrquhart&

Sullivan• Skadden,Arps,Slate,Meagher&Flom

• Spruson&Ferguson• VivienChan&Co

TIER 3• CliffordChance• Dechert• Marks&Clerk• Oldham,Li&Nie• PerkinsCoie• Simmons&Simmons• SquirePattonBoggs• Wilkinson&Grist

COPYRIGHT/TRADEMARK

TIER 1• AWAAsia�

• BakerMcKenzie/BakerMcKenzieFenXun(FTZ)JointOperationOffice

• Bird&Bird• Deacons• CMS�

• Finnegan,Henderson,Farabow,Garrett&Dunner�

• FreshfieldsBruckhausDeringer*• HoganLovells• MayerBrownJSM• Orrick,Herrington&Sutcliffe• Rouse• Wilkinson&Grist

TIER 2• Allen&Overy• DLAPiper• JonesDay• MMLCGroup*• NortonRoseFulbright• Ropes&Gray�

• Spruson&Ferguson• QuinnEmanuelUrquhart&

Sullivan• Skadden,Arps,Slate,Meagher&Flom

• Simmons&Simmons• SquirePattonBoggs• VivienChan&Co

TIER 3• CliffordChance• Dechert• Marks&Clerk• Morgan,Lewis&Bockius• Oldham,Li&Nie

13ASIAN LEGAL BUSINESS – MAY 2018W W W.LEGALBUSINESSONLINE.COM 13ASIAN LEGAL BUSINESS – MAY 2018W W W.LEGALBUSINESSONLINE.COM

HONG KONGPATENTS

TIER 1• Baker&McKenzie• Bird&Bird• Deacons• HoganLovells

TIER 2• Barron&Young• DLAPiper• FreshfieldsBruckhausDeringer*• JonesDay• Marks&Clerk• MayerBrownJSM• Morrison&Foerster• NixonPeabody*• Oldham,Li&Nie• QuinnEmanuelUrquhart&

sullivan• Spruson&Ferguson• Wilkinson&Grist• VivienChan&Co

TIER 3• Dechert• EagleIP• NortonRoseFulbright• RobinBridge&JohnLiu• StephensonHarwood• SquirePattonBoggs

COPYRIGHT/TRADEMARK

TIER 1• AWAAsia�

• Baker&McKenzie• Bird&Bird• Deacons• HoganLovells• MayerBrownJSM• SIPS*• Wilkinson&Grist

TIER 2• Dechert• DLAPiper• FreshfieldsBruckhausDeringer*• NixonPeabody• NortonRoseFulbright• Oldham,Li&Nie• QuinnEmanuelUrquhart&

sullivan• RobinBridge&JohnLiu• StephensonHarwood• Simmons&Simmons• VivienChan&Co

TIER 3• Barron&Young• CliffordChance• JonesDay• Morrison&Foerster• Spruson&Ferguson• SquirePattonBoggs

INDIAPATENTS

TIER 1• AnandandAnand• Chadha&Chadha• K&SPartners• Lakshmikumaran&Sridharan• Luthra&Luthra• Remfry&Sagar

TIER 2• CyrilAmarchandMangaldas• FoxMandal&Associates• IndusLaw• Khaitan&Co• Khurana&Khurana• LallLahiri&Salhotra• Majmudar&Partners• R.K.Dewan&Co• Singh&Singh• Lall&Sethi• Subramaniam,Nataraj&

Associates

TIER 3• ALMTLegal• AZB&Partners• DePenning&DePenning• FidusLawChambers• Mason&Associates• PerfexioLegal• RNA,TechnologyandIP

Attorneys• SamvādPartners• Saikrishna&Associates• ZeusIPAdvocates

COPYRIGHT/TRADEMARK

TIER 1• AnandandAnand• AZB&Partners�

• Chadha&Chadha• CyrilAmarchandMangaldas�

• FoxMandal&Associates�

• IndusLaw• Krishnamurthy&Co(KLaw)• LallLahiri&Salhotra• Remfry&Sagar• Saikrishna&Associates

TIER 2• FidusLawChambers• Khaitan&Co• Khurana&Khurana• Lakshmikumaran&Sridharan• Luthra&Luthra• Majmudar&Partners• R.K.Dewan&Co• RNA,IPAttorneys• Singh&Singh• Lall&Sethi• Subramaniam,Nataraj&

Associates• ZeusIPAdvocates

TIER 3• DePenning&DePenning• K&SPartners• Krishna&SaurastriAssociates• Mason&Associates• PhoenixLegal• SamvadPartners,Advocates

INDONESIAPATENTS

TIER 1• AmBadar&Partners• Hadiputranto,Hadinoto&

Partners• Rouse/Suryomurcito&Co• SKCLaw• Tilleke&Gibbins

TIER 2• AcemarkIP• AMRPartnership• BarumunInternationalPatent• BiroOktroiRoosseno• GeorgeWidjojo&Partners• HadromiAdnanIPGroup• InterPatentOffice• JanuarJahja&Partners• K&KAdvocates• PacificPatentMultiglobal• Roosdiono&Partners

TIER 3• AssegafHamzah&Partners• BudidjajaInternationalLawyers• CitiusIntellectualProperty• Lumenta,Sitorus&Partners• Makarim&TairaS• Pulungan,Wiston&Partners• PrawiranegaraInternational

Patent & Trademark Law Office• SS&RLegalConsultants

COPYRIGHT/TRADEMARK

TIER 1• Hadiputranto,Hadinoto&

Partners• InterPatentOffice• JanuarJahja&Partners• K&KAdvocates• Roosdiono&Partners• Rouse/Suryomurcito&Co• SKCLaw• Tilleke&Gibbins

TIER 2• AcemarkIntellectualProperty• AmBadar&Partners• BarumunInternationalPatent• BiroOktroiRoosseno• BudidjajaInternationalLawyers• GeorgeWidjojo&Partners• HadromiAdnanIPGroup• PacificPatentMultiglobal

TIER 3• AssegafHamzah&Partners• CitiusIntellectualProperty• HeruLukito&Partners• Lumenta,Sitorus&Partners• Makarim&TairaS• Pulungan,Wiston&Partners• PrawiranegaraInternational

Patent & Trademark Law Office

JAPAN DOMESTICPATENTS

TIER 1• Abe,Ikubo&Katayama• AndersonMori&Tomotsune• MoriHamada&Matsumoto• NagashimaOhno&Tsunematsu• Nakamura&Partners�

• Oh-EbashiLPC&Partners

TIER 2• Abe&Partners• Atsumi&Sakai• FukamiPatentOffice• ITOHInternationalPatentOffice• Nishimura&Asahi• Ohno&Partners• OndaTechnoIntl.PatentAttys.• RyukaIPLawFirm• SeiwaPatent&Law• ShigaInternationalPatentOffice• SoeiIntellectualPropertyLaw• SugimuraInternationalPatent&

Trademark Attorneys• TMIAssociates

COPYRIGHT/TRADEMARK

TIER 1• Atsumi&Sakai�

• MoriHamada&Matsumoto• NagashimaOhno&Tsunematsu• TMIAssociates

TIER 2• AndersonMori&Tomotsune• FukamiPatentOffice• Nishimura&Asahi• Oh-EbashiLPC&Partners• SeiwaPatent&Law• ShigaInternationalPatentOffice• SugimuraInternationalPatent

&Trademark Attorneys• Abe,Ikubo&Katayama• ITOHInternationalPatentOffice• Ohno&Partners• OndaTechnoIntl.PatentAttys.• RyukaIPLawFirm• SoeiIntellectualPropertyLaw

JAPAN INTERNATIONALPATENTS

TIER 1• Baker&McKenzie�

• Finnegan,Henderson,Farabow,Garrett & Dunner

• HoganLovells• Morgan,Lewis&Bockius• Morrison&Foerster• Orrick,Herrington&Sutcliffe• QuinnEmanuelUrquhart&

sullivan• Ropes&Gray

TIER 2• Foley&Lardner• SquirePattonBoggs

COPYRIGHT/TRADEMARK

TIER 1• Baker&McKenzie• HoganLovells• Morrison&Foerster• Orrick,Herrington&Sutcliffe�

TIER 2• Finnegan,Henderson,Farabow,

Garrett & Dunner• Foley&Lardner• Morgan,Lewis&Bockius• SquirePattonBoggs

� Denotes the firm has risen one or more tiers since last year* new addition to the ranking

14 ASIAN LEGAL BUSINESS – MAY 2018 W W W.LEGALBUSINESSONLINE.COM

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14 ASIAN LEGAL BUSINESS – MAY 2018 W W W.LEGALBUSINESSONLINE.COM

MALAYSIAPATENTS

TIER 1• Marks&Clerk• ShearnDelamore&Co• Skrine• Wong&Partners• ZICOIP�

TIER 2• Christopher&LeeOng• KDJLaw*• RahmatLim&Partners• RajaDarryl&Loh• ShookLin&Bok• Tay&Partners

TIER 3• LeeHishammuddinAllen&Gledhill

• WongJinNee&Teo

COPYRIGHT/TRADEMARK

TIER 1• KDJLaw*• LeeHishammuddinAllen&Gledhill

• Marks&Clerk• RahmatLim&Partners�

• ShearnDelamore&Co• Skrine• Tay&Partners• Wong&Partners• ZICOIP�

TIER 2• Christopher&LeeOng• Raja,Darryl&Loh• WongJinNee&Teo

PHILIPPINESPATENTS/COPYRIGHT/TRADEMARK

TIER 1• ACCRALAW• CastilloLamanTanPantaleon&SanJose

• CruzMarceloandTenefrancia• QuisumbingTorres• RomuloMabantaBuenaventuraSayoc&delosAngeles

• SyCipSalazarHernandez&Gatmaitan

• Villaraza&Angangco

TIER 2• Baranda&Associates• BengzonNegreUntalan• BetitaCabilaoCasuelaSarmiento

• Carag,Caballes,Jamora&Somera

• MarksPro• PuyatJacinto&Santos

SINGAPOREPATENTS

TIER 1• Allen&Gledhill• AmicaLaw�

• Baker&McKenzieWong&Leow�

• Bird&Bird• DentonsRodyk• Drew&Napier• Donaldson&Burkinshaw�

• Lee&Lee• Marks&Clerk

TIER 2• DaviesCollisonCave• JoyceA.Tan&Partners• MorganLewis�

• OCQueenStreet*• Rajah&Tann• RavindranAssociates• RHTLawTaylorWessing• Spruson&Ferguson• Viering,Jentschura&Partner

TIER 3• CantabIP• ColinNg&Partners• GatewayLawCorporation• MirandahAsia• SamuelSeowLaw• StephensonHarwood*• WongPartnership

COPYRIGHT/TRADEMARK

TIER 1• Allen&Gledhill• AmicaLaw• Baker&McKenzieWong&Leow• Bird&BirdATMD• DentonsRodyk• Drew&Napier• Donaldson&Burkinshaw• Lee&Lee• WongPartnership

TIER 2• ColinNg&Partners• GatewayLawCorporation• EvershedsHarryElias*• JoyceA.Tan&Partners• OCQueenStreet*• Rajah&Tann• RavindranAssociates• RHTLawTaylorWessing• SamuelSeowLaw

TIER 3• DaviesCollisonCave• EllaCheong• MirandahAsia• MorganLewis• RobinsonLLC• Spruson&Ferguson• StephensonHarwood*

SOUTH KOREAPATENTS

TIER 1• Bae,Kim&Lee• Kim&Chang• Lee&Ko• Ropes&Gray�

• Shin&Kim• Yoon&Yang• Yulchon

TIER 2• Dr.AhnInternationalPatentLawOffice

• Finnegan,Henderson,Farabow,Garrett&Dunner

• LeeInternationalIP&LawGroup

TIER 3• AIPPatent&LawFirm• AJUKimChang&Lee• CENTRALIntellectualProperty&Law

• Cho&Partners• KasanIP&LawFirm• Kim,Choi&Lim• KoreanaPatentFirm• BarunIP&Law• YangjaeLawFirm• MuhannPatent&LawFirm• YOUMEPatent&LawFirm• YPLeeMock&Partners• 5TInternationalPatentLawFirm

TIER 4• CN-KnowHowIPGroup• GuantaoLawFirm• HengduLawFirm• TahotaLawFirm

COPYRIGHT/TRADEMARK

TIER 1• Bae,Kim&Lee• Kim&Chang• Lee&Ko• Yoon&Yang�

• Yulchon

TIER 2• AJUKimChang&Lee• Finnegan,Henderson,Farabow,Garrett&Dunner

• LeeInternationalIP&LawGroup• Ropes&Gray

TIER 3• BarunIP&Law• CentralInternationalLawFirm• Cho&Partners• Jipyong• Kim,Choi&Lim• MuhannPatent&LawFirm• YOUMEPatent&LawFirm• YPLeeMock&Partners

TAIWANPATENTS

TIER 1• Baker&McKenzie• Finnegan,Henderson,Farabow,Garrett&Dunner

• JonesDay• LeeandLi• SaintIslandInternationalPatent&LawOffices

• TaiEInternationalPatent&LawOffice

• TIPLO

TIER 2• Chen&Lin• FormosanBrothers• FormosaTransnational• Tsar&Tsai

TIER 3• Deep&Far• Eiger• Tsai,Lee&Chen• WinklerPartners

COPYRIGHT/TRADEMARK

TIER 1• Baker&McKenzie• Chen&Lin• Eiger�

• LeeandLi• SaintIslandInternationalPatent&LawOffices

• TaiEInternationalPatent&LawOffice

• Tsar&Tsai• TIPLO• WinklerPartners�

TIER 2• Deep&Far• Finnegan,Henderson,Farabow,Garrett&Dunner

• FormosaTransnational• FormosanBrothers• JonesDay• Tsai,Lee&Chen

� Denotesthefirmhasrisenoneormoretierssincelastyear* Newadditiontotheranking

15ASIAN LEGAL BUSINESS – MAY 2018W W W.LEGALBUSINESSONLINE.COM

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filing of a dispute case against the Asian economic giant before the World Trade Organization (WTO); imposing additional tariffs on certain products from China, to include aerospace, information and communication technology and machinery; and placing certain investment restrictions.

‘MADE IN ASIA’Interestingly, amid the IP theft accusation of the U.s. against China, the latest numbers from the United nations (Un) agency World Intellectual Property Organization (WIPO), painted a picture of a different China—one that was producing more inno-vations than ever before and was equally aggres-sive in seeking overseas protection for its inventions.

In 2017, China overtook Japan for the first time as the second largest source of international patent applications filed via WIPO’s Patent Cooperation Treaty (PCT)—the Un agency’s system used for filing international patent applications. The U.s. held the top spot in last year’s ranking. PCT applications in 2017 reached a total of 243,500, a 4.5 percent growth from the previous year. According to WIPO, this was driven primarily by the strong growth in applications from China and Japan.

China, with its 48,882 international patent filings in 2017, posted the strongest annual growth at 13.4 percent among the top 15 countries of origin of PCT filings. Top Chinese technology companies Huawei and ZTE filed the most number of interna-tional patent applications last year, beating Intel, Mitsubishi, and Qualcomm, which ranked third, fourth, and fifth, respectively.

“The rapid rise in Chinese use of the interna-tional patent system shows that innovators there are increasingly looking outward, seeking to spread their original ideas into new markets as the Chinese economy continues its rapid transformation,” says WIPO Director General Francis Gurry alluding to 2017’s WIPO global IP filings results.

He describes the rapid rise of China as a big producer of patents as part of a “larger shift in the geography of innovation, with half of international patent applications now originating in East Asia.”

Despite being outpaced by China, Japan—Asia’s original industrial powerhouse–also posted a solid growth in international patent applications at 6.6 percent, ending the year with 48,208 international patent applications. south Korea, ranked fifth in the top countries of origin of PCT filings, had a total of 15,763 international patent applications in 2017.

seven of the top 10 filers of international patent applications were from Asia. Joining Huawei and ZTE were Mitsubishi Electric and sony Corporation (Japan), LG Electronics and samsung Electronics (south Korea) and Boe Technology (China).

THAILANDPATENTS

TIER 1• Baker&McKenzie• DomnernSomgiat&Boonma• Rouse• Tilleke&Gibbins

TIER 2• Apisith&Alliance• Chavalit&Associates• Satyapon&Partners• SiamPremierInternational• VidonandPartners• ZICOIP

TIER 3• AnandaIntellectualProperty• Dej–Udom&Associates• DharmnitiLawOffice

COPYRIGHT/TRADEMARK

TIER 1• Baker&McKenzie• DomnernSomgiat&Boonma• Tilleke&Gibbins• ZICOIP

TIER 2• Apisith&Alliance• Chavalit&Associates• Rouse• Satyapon&Partners• SiamPremierInternational• VidonandPartners

TIER 3• AnandaIntellectualProperty• Dej–Udom&Associates• DharmnitiLawOffice

VIETNAMPATENTS

TIER 1• Baker&McKenzie• Pham&Associates• Tilleke&Gibbins• Vision&Associates

TIER 2• HoganLovells• IndochineCounsel• InvestConsultGroup• Rouse• SBLaw• ZICOLaw

TIER 3• Bross&Partners• IPMAXLaw• Phuoc&Partners

COPYRIGHT/TRADEMARK

TIER 1• Baker&McKenzie• HoganLovells• IPMAXLaw• Tilleke&Gibbins• Vision&Associates

TIER 2• Bross&Partners• IndochineCounsel• InvestConsultGroup• Pham&Associates• Rouse• SBLaw• ZICOLaw

TIER 3• LNT&PARTNERS• Phuoc&Partners

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HONG KONGHong Kong has taken the role of a “facil-itator” and a “promoter” amid the expected surge in bilateral trade with the mainland brought about by China’s ambitious Belt and Road Initiative and the development of the Guangdong-Hong Kong-Macao Bay Area.

The Belt and Road Initiative seeks to promote economic cooperation along the proposed Belt and Road routes while the Bay Area Initiative is aimed at deepening the connection of the mainland with its special administrative regions of Hong Kong and Macau.

Already known as a global financial centre, Hong Kong is also positioning itself as an international legal and dispute resolution services centre and as an international innovation and tech-nology hub. Hong Kong’s Chief Executive Carrie Lam 2017 Policy Address that was delivered last October included measures to spur the development

for innovation and technology and the creative industries. One of the targets was to double Hong Kong’s R&D expend-iture as a percentage of GDP to 1.5 percent from present 0.73 percent.

Top law firms were hand to assist the Hong Kong government in some of its new initiatives. Tier 1 law firm Hogan Lovells has been tapped by the Hong Kong Trade Development Council to help in the implementation of the Belt and Road project. Top firm Bird & Bird, on the other hand, has been tapped as the sole external advisor to the Hong Kong government as it seeks to reform its patent system, introduce the original grant patent system, and create its first-ever patent office.

some of the top IP cases handled by law firms in Hong Kong last year were on the “second medical use” in invention patents, multi-jurisdictional IP portfolio management, trademark infringe-ment and licensing disputes, and anti-counterfeiting activities. As previously

predicted, there has been a noticeable increase in the number of cases handled by law firms that involved brands and companies from mainland China.

INDIAHome to some of the world’s biggest generic pharmaceutical companies, India has continued to be under the watchful eye of governments of global creators and inventors, and in partic-ular big originator pharmaceutical companies.

In the sixth annual International IP Index of the U.s. Chamber of Commerce, India remained in the low 44th spot out of the 50 economies covered by the benchmark study. The industry group of Indian Pharmaceutical Alliance (IPA) has described the call for India to improve its overall IP practices as a “tirade and self-serving” on the part of the U.s. government.

nonetheless, the study lauded

AWARDS AND ACCOLADES

PRACTICE AREAS

Patents

Litigation and Dispute Resolution

Trademarks

Designs

Art and Antiquities

Competition / Antitrust

Compliance / Regulatory

Plant Variety

Biodiversity

Contractual and Commercial IP

Copyrights

IT law and Domain name disputes

Sports law

Fashion and Luxury law

Media and Entertainment law

Licensing and Franchising

Advertising law

Anti-Counterfeiting

Criminal law

Customs and Border Enforcement

Chambers Asia Pacific Band 1 Firm (India) 2018

Intellectual Property

Chambers Asia Pacific Band 1 Firm (India) 2018

Life Sciences

WTR 1000 - Gold Band 2016, 2017 & 2018IAM Patent 1000 - Gold Band 2016 & 2017 Asia IP – Firm of the Year

Copyright 2017

IBLJ - Law Firm of the Year (India)Intellectual Property 2017 & 2018

India Business Law Journal

Indian Law Firm Awards2017 - 2018

WINNER

ECLL TE UT AN LI PM RR OIF P 1 E RR TEI Y

T

The

LEGAL500

2 0 1 6

MIP - Firm of the Year 2018 (India)Patent Contentious

TM

MIP - Firm of the Year 2018 (India)Trademark Prosecution

IBLJ - Law Firm of the Year (India)Dispute Resolution 2017 & 2018

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C O V E R S T O R Y

India’s recent move to improve the patentability environment for technolog-ical innovations, following the release of the 2017 Guidelines on the Examination of Computer-Related Inventions. Among other changes, this omitted the require-ment for software to be in conjunction with novel hardware in claiming a patent.

Two of last year’s biggest landmark cases in patents demonstrated the continued liberal approach of Indian courts in IP protection. In Bayer Corp. v. Union of India, the Delhi High court ruled that the export of patented invention for experimental purposes is not to be considered as an infringement and in Bayer IP Gmbh v. Ajanta Pharma, the same court allowed the latter to manu-facture, distribute, and sell the generic version of Bayer’s patented drug Vardenafil for purposes of exports. The court noted that the commercial exports of prima facie infringing products covered by a non-worked Indian patent did not deserve injunctive relief.

INDONESIAWith its porous borders, IP protection has continued to be a big challenge for southeast Asia’s largest economy. still, Indonesia’s government has demon-strated some gains in implementing new measures to improve IP protection and enforcement within its borders.

Last year, the Indonesian govern-ment issued Regulation no. 20 of 2017 on “Control of Import and Export of Goods Resulting from IP Infringement.” The new regulation allows copyright and trademark owners to record their IP rights with the Customs Office, enabling border authorities to carry out customs restraint on imported or exported goods which are allegedly infringing on those recorded copyright and trademarks.

Top deals handled by law firms in Indonesia last year included launching freedom-to-operate searches for inven-tions, patent prosecution and portfolio management, trademark infringement

and buy-out for clients, copyright disputes in promotional videos and on the Internet, and licensing agreements.

There were also rare and unprece-dented cases which could test the limits of IP protection. Acting for a multina-tional client, Tilleke & Gibbins explored patent invalidation arguments supported by Articles 20 and 32 of Indonesia’s new patent law. The new patent law puts it that any patent is vulnerable to invalida-tion if the patent holder does not produce the products or use the process in the country. In trademark, trade dress also remains a greenfield area as this is yet to receive protection under Indonesia’s trademark law.

JAPANDespite losing for the first time the title of being the second largest producer of international patent filings to China, 2017 was a good year for Japanese IP.

In international patent filings made

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Baker & McKenzie (Gaikokuho Joint Enterprise)Ark Hills Sengokuyama Mori Tower 28F1-9-10, Roppongi, Minato-ku, Tokyo 106-0032, JapanTel: + 81 3 6271 9900Email: marketing.tokyo@bakermckenzie.com

www.bakermckenzie.co.jp/en/Kensaku TakaseHead of the Tokyo IP/IT Group

Kei MatsumotoPartner

Daisuke TatsunoPartner

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18 ASIAN LEGAL BUSINESS – MAY 2018 W W W.LEGALBUSINESSONLINE.COM

C O V E R S T O R Y

through the PCT, Japan posted a strong 6.6 percent annual growth to 48,208 patent applications in 2017 from 45,209 patent applications made the previous year. Latest government data also showed that IP revenues in 2017 soared to 4.41 trillion, a 74 percent increase from five years ago. IP creation and protection are listed as priorities in Prime Minister shinzo Abe’s long-term growth strategy.

Patent infringement cases continued to dominate the workload of top law firms in Japan in 2017. Interestingly, there has been a noticeable increase in the volume of cases for overseas clients, especially for and against Chinese companies. For some company clients, Japan was also used as the launchpad for regional anti-counterfeiting strategies and managing multi-jurisdictional anti-counterfeiting disputes.

Other prominent IP dispute cases handled last year were on licensing agreements, patent invalidation and infringement against generic drug

manufacturers by big pharmaceutical companies, assessment of damages in patent infringement, and licensing of trade secrets.

Kensaku Takase, the head of the Tokyo IP/IT Practice Group at Baker McKenzie, says that the firm’s strengths include the fact that it has a good balance of inbound and outbound IP practices, meaning it can help both overseas clients with their Japan IP needs and Japanese clients with their global IP needs. “We have a robust, sizeable team of bengoshi (lawyers), benrishi (trademark attorneys), and foreign qualified lawyers,” says Takase. “We are of course also able to harness the Baker McKenzie global network to assist with multi-jurisdic-tional IP work and strategies.”

Takase says that an interesting trend the firm is seeing is the demand from clients to have a diverse team to assist clients on their matters. “Fortunately, we do have a diverse team in terms of gender and ethnicity,” he notes. “In turn,

we are placing increasing emphasis on agile working.”

He adds the firm is increasingly looking at how it can improve the delivery of our services to clients. “We are looking at innovation to assist, and are considering new technology imple-mentation including cloud, AI and block-chain,” says Takase.

MALAYSIAThe latest move by the Malaysian government to improve access to a life-saving drug has put this southeast Asian country back on the global IP spotlight. Last year, it instigated a rare Rights of Government to issue a compulsory licence (CL) for sofosbuvir—a medicine to treat Hepatitis C developed by Gilead sciences. Meant to allow the produc-tion of the drug by non-patent holders without getting the patent owner’s consent, the CL mechanism could lower the prices of key medicines.

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The first time the Malaysian govern-ment instigated a similar action was in 2003 for the anti-retroviral drugs used to treat HIV infection. To prevent other countries in the same income category with Malaysia to also do the same, Gilead decided to include Malaysia and three more middle-income countries –Thailand, Belarus and Ukraine—in its sofosbuvir voluntary license. The voluntary license is traditionally given to lower-middle-income economies.

The rare government action resulted in Malaysia dropping four spots to 23rd place among the 50 countries ranked in the sixth annual U.s. Chamber International IP Index. “The issuing of a compulsory licence in 2017 has greatly damaged Malaysia’s national IP environ-ment and risks undermining much of the progress made since 2004, the last time the government issued a similar licence,” according to the report.

Outside the controversy over compulsory licence, Malaysia’s move

to transform itself into a regional capital investment hub for IP-heavy technology start-ups, a positioning similar to its neighbour singapore, has reaped gains last year. swiss company builder Mountain Partners has chosen Malaysia as its operations hub for its $100 million-fund start-up invest-ment venture into southeast Asia. Private equity firm Leonie Hill Capital and Japan-based IP Bridge have also tapped the country as the regional hub for investing in IP-based ventures and start-ups. The development of the tech-nology start-up industry in Malaysia could result in more IP applications and related actions.

IP cases which made Malaysia’s top law firms busy last year include patent and trademark prosecution, anti-coun-terfeiting efforts, raid actions for the top brands, and online infringement disputes.

Chew Kherk Ying, the head of the IP and dispute resolution practice at

Wong & Partners, a member firm of Baker McKenzie International, says the strength of the firm lies in the fact that it provides full IP offerings. “We have a leading IP litigation practice evidenced by the several landmark decisions which we have secured which have an impact on the market and industry,” says Chew. “We provide global portfolio manage-ment services with a state-of-the-art software database which allows full utilisation from clients’ end – no other firm has a similar offering ; we have a very strong IP commercial team and have been involved in leading IP trans-actions ; we are one of the only law firms who has IP valuation capability; we have extensive experience in managing IP enforcement across the region for multi-national companies; we are also one of the two law firms who has a technical team of patent professionals.”

Chew says that in the past year, he has seen clients requiring more specialist advice. “We are seeing a greater demand

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for IP experts in transactions involving acquisition of technology,” he notes. “With all new disruptive technologies such as AI, augmented reality, virtual reality and blockchain, there is also a need and demand for IP specialists to help manage legal issues arising such as ownership of data utilising these technologies.”

Finally, he says the firm is looking to grow all the traditional IP areas with a new way of delivering service, and looking to deliver more to clients. “We would grow the space via opportuni-ties created by new technologies,” says Chew.

PHILIPPINESsimilar to other developing economies with relatively new IP systems, the Philippines is also presently crafting the country’s national IP strategy which it targets to be implemented by this year. The strategy is envisioned to

enhance the innovation agenda of this fast-growing economy through the help of IP.

The government targets to reach at least 1,000 yearly patent applications before 2022. IP filings in the Philippines have been mostly trademarks with patent activities yet to pick.

In 2017, non-resident PCT filings were at 2,552; non-resident direct filings were at 248; and resident filings were at 284. Trademark filings, however, have been robust. Last year, non-resi-dent trademark filings through WIPO’s Madrid system were at 6,817; non-resi-dent direct filings at 7,236; and resident filings at 18,489.

SINGAPOREsingapore has launched new initiatives to support its bid to become a global IP hub in Asia, a target which largely leverages on its position as a gateway to the rest of southeast Asia.

At the start of 2017, the IP Office of singapore (IPOs) signed an agreement with China’s state IP Office and the Guangdong Provincial Government for a closer tripartite cooperation that banks on the sino-singapore Knowledge City (ssGKC) as an intellectual property (IP) reform pilot zone. The city-state is counting on the arrangement to help bolster its ambition as an entry point for Chinese companies entering the larger southeast Asian region.

As a testament to the growing regional role of the city-state in southeast Asia, law firms in singapore have been receiving more regional deals for multinational companies covering southeast Asia and neighbouring juris-dictions. Work spans from managing large-scale patent and trademark pros-ecution to launching anti-counterfeiting efforts in multiple jurisdictions.

According to Lim siau Wen, a director at Drew & Napier special-ising in intellectual property, the firm

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has the advantage of having one of the largest and most established IP practices in singapore. “We have always main-tained a dominant position in IP. Drew is a market leader in trademark, patent and design filings in singapore, thanks to the long-time support from our clients who come from a wide spectrum of indus-tries. We have also been singled-out for our in-depth experience in contentious IP matters and our lawyers are regularly instructed in high profile matters. As Drew is a full-practice law firm, we are also able to tap on the expertise of our colleagues from the other areas of specialisation, if required,” she says.

Lim says that on the patent front, the firm is seeing an increasing number of requests for substantive search and examination. “We also see more written opinions issued by the Patents Registry even for cases where the applicants have opted for supplementary exam-ination,” she says. “This is perhaps to prepare for 2020 when we will witness

significant changes in the patent regime in singapore. In particular, patent appli-cants will no longer be able to rely on the grant of a relevant corresponding application or positive IPRP. Drew has been preparing and will be ready for these changes in 2020. There is also a growing interest in the monetization and licensing of IP in the recent years.”

she adds that the firm will continue to strive to be on top of its game and is committed to delivering prompt, practical, and sound advice our clients. “We are also looking to expand our IP practice beyond singapore and have already established a number of IP offices in the southeast Asia region,” she says.

For Joyce A Tan, managing director of Joyce A Tan & Partners, the firm’s “stand-out strengths lie in our commer-cially pragmatic and holistic handling of our client’s IP needs - whether in building or looking after a global IP portfolio, monetising IP opportunities or enforcing

IP rights. It’s that seamless way we cut through the noise and treat IP in the real world business context. I believe clients come to us for our secret sauce which delivers on pure insight, clarity and solution, for example, when we negotiate an IP deal or design a corporate structure to protect and optimise IP opportuni-ties. “

Tan adds that she sees clients becoming more sophisticated in the way they play the IP game. “This makes them more engaged and proactive in their consumption of our services, which allows us to truly work alongside them as co-strategists,” says Tan. “Clients are moving away from the pure passive ‘I do what I’m told by the lawyer’ model to ‘let’s talk about the best way to do this and why’ approach.”

Going forward, Tan says that the firm does not plan to rest on its laurels, and instead be clear about the way it grows its business. The firm’s strategy is to be nimble, dynamic and responsive to the

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changing landscape. “This ninja strategy has allowed us to evolve, stay modern and heighten the quality of the projects we handle over the many years that we have been around,” she says.

SOUTH KOREAPatent and design-heavy south Korea knows that the 4th Industrial Revolution could bring changes to its IP rules. From a media interview, the new head of the Korean IP Office (KIPO), sung Yunmo, said his office is looking at improving its IP laws and systems to protect new technologies such as AI and Big Data.

Already, this Asian industrial power-house has seen increased creation and protection of such technologies. According to KIPO, the number of patents registered as core technologies of the 4th Industrial Revolution has grown to 5,107 in 2015 from 421 in 2010.

Last year, south Korea implemented some amendments to its design and

patent laws. Changes to its Design Protection Act include the extension of the novelty grace period to 12 months from previous six months to harmonize its rule with other jurisdictions; easing the requirement when submitting priority documentation; increasing the penalties for perjury and for false regis-tration marking; and certain changes in the examination guidelines. Changes to its patent law include the reintroduction of the post-grant opposition system and the reduction of the period for filing the examination request from five to three years from filing day.

The top patent cases handled by law firms in south Korea last year were on invalidation and infringement of phar-maceutical drugs, often between orig-inator pharmaceutical companies and generic drug manufacturers. It also saw disputes on the “second medical use” in pharmaceutical drugs and on the compensation provided to employee-inventors. Patent dispute cases also

extended to other sectors such as food and automotive.

Other top IP cases for last year were on unfair competition in design disputes; trademark infringement; trade secret misappropriation; and copyright cases on infringement in software, calcula-tion of damages, and copyright dispute involving a mobile phone game.

TAIWANThe small, but technology-heavy state of Taiwan reported a recovery in patent applications in 2017, a reversal to the yearly declines in filings since 2013. Patent applications reached a total of 73,791, an increase of 2 percent from the previous year’s number. Of the total applications, 62.5 percent were invention patents; 26.5 percent were utility model patents; and 11 percent were design patents, according to the latest statistics released by Taiwan’s Ministry of Economic Affairs.

In today’s world, information is king and innovations are valuable. Protecting your intellectual property will prevent the theft of your creations. With offices in Singapore, Malaysia, Myanmar and Vietnam, Donaldson & Burkinshaw LLP provides effective and affordable IP services throughout Southeast Asia. Let us assist you with the protection and exploitation of your intellectual property.

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In today’s world, information is king and innovations are valuable. Protecting your intellectual property will prevent the theft of your creations. With offices in Singapore, Malaysia, Myanmar and Vietnam, Donaldson & Burkinshaw LLP provides effective and affordable IP services throughout Southeast Asia. Let us assist you with the protection and exploitation of your intellectual property.

YOUR QUILLS AGAINSTIP INFRINGEMENT

One big decision coming from Taiwan’s Fair Trade Commission was the order for American company Qualcomm to pay a record of $778 million in penalty after it held the company’s patent licensing practices in violation of the state’s competition law. Unfair competi-tion was also used by one law firm, acting for a multinational consumer client, to prevent the trademark registration of a competitor.

Other big IP deals, handled by law firms in Taiwan were on patent infringe-ments in the pharmaceutical industry, cross-border patent infringements, and providing patent prosecution and opinions for overseas clients such as Chinese firms wanting to enter the local market.

THAILANDLast year, Thailand’s Department of IP released its 20-year IP Roadmap aimed at reforming the country’s system. The roadmap covers the creation of-based innovation; timely protection of IP; commercialization of IP; effective enforcement of IPRs; promotion of geographical indications; and the protection of genetic resources, tradi-tional knowledge, and traditional cultural expressions.

Thailand has gained some progress in IP protection and enforcement. In 2017, the results of the UsTR’s special 301 Out-of-Cycle Review of Thailand included its removal from the “Priority Watch List” to the “Watch List.” The review recognized the country’s progress

in resolving some of U.s. IP concerns in enforcement, patents and pharmaceu-ticals, trademarks, and copyright.

Copyright protection is one of the areas where the U.s. is pressing Thailand to continue to deliver improvements. The 2017 special 301 Report on Thailand cited the absence of an effective landlord liability provision in the 2014 Copyright Act amendments, the lack of adequate protection against the circumvention of technological protection measures and the unauthorized modification of rights management information, and proce-dural obstacles to enforcement against unauthorized video recording.

some of the biggest cases under-taken by the top law firms in Thailand last year were on copyright, in particular, facilitating customs seizures of infringed goods at the country’s ports and online enforcement.

Beyond IP protection and enforce-ment, Thailand’s IP Department is also banking on the IP system to promote the creation of innovative industries. The government launched last year the IP IDE Centre which seeks to provide entre-preneurs integrated counselling services in the areas of IP creations, protec-tion, and commercial exploitation. The government has also invested in an IP Mart website where inventors seeking to partner with investors can post their IP innovations.

VIETNAMHaving one of the fastest-growing economies in southeast Asia, Vietnam

is banking on a brand-new strategy on IP development to further drive inno-vation and grow its creative industries.

According to media reports, the strategy is near completion and is set to be submitted to the Prime Minister this year. Vietnam, through its Ministry of science and Technology (MOsT), sought the help of WIPO in building its very own national IP strategy last year.

Already, Vietnam has seen an increase in IP activities. In patents, for instance, the number of patents granted rose by 22.6 percent from the previous year to 1,745 patents in 2017, according to the country’s IP Office. The total number of protection titles for industrial designs in 2017 also increased to 2,267.

Domain name disputes were some of the top IP cases handled by law firms in Vietnam last year. With the rise in Internet penetration, which presently stands at about half of its popula-tion, and with the increase in trade activities, Vietnam is seen to get more domain name disputes. Tier 1 firm Tilleke & Gibbins handled one case for BMW last year, in which the domain name bnw.com.vn had been registered by a professional cyber-squatter. The firm was able to get MOsT order the national Internet Registry, Vietnam Internet network Information Centre, to cancel the cyber-squatter’s ownership of the domain name.

Other dispute cases handled last year were on trademark opposition, patent and industrial design applica-tions, anti-counterfeiting efforts, and cases of “lookalike” shops.