Even as the COVID-19 pandemic shook up the world, the IP landscape in the Asian region remained buoyant thanks to its agility and digital readiness. This was reflected in the best law firms for IP work, which went above and beyond when it came to servicing their clients in difficult times.

Two years into the disruptive pandemic, global intellectual property (IP) activities began to pick up speed and with Asia keeping its dominance in producing and protecting innovations.

Based on the latest statistics from the World Intellectual Property Organization (WIPO), global IP filings across patents, trademarks and industrial design posted record levels of annual growth in 2021.

Last year, global patent applications were filed through the WIPO’s Patent Cooperation Treaty (PCT) grew by 0.9 percent to reach the highest record yet at 277,500 applications. International trademark applications filed through its Madrid System increased by 4.4 percent to reach 73,000, another record annual growth achieved since 2005. Global industrial design applications filed through its Hague System made a recovery from the 2020 level and grew by 20.8 percent to 22,480, the fastest annual growth recorded since 2010.

Commenting on the 2021 results, WIPO Director General Daren Tang said: “These figures show that human ingenuity and entrepreneurial spirit remain strong despite the disruptions caused by the pandemic.”

In PCT filings, Asia accounted for 54.1 percent of the total applications, a notable increase from the previous year’s 38.5 percent share. China was the consistent largest user of the PCT. Two other innovation powerhouses in the region, Japan, and South Korea, joined China in the top five largest users of the PCT system, along with the U.S. and Germany. China’s Huawei Technologies was the top company filer in 2021.

In global trademark applications, China in third place and Japan in seventh place were among the top ten country filers. The U.S. was the top country filer of international trademark applications. China’s Huawei Technologies and Japan’s Shiseido Company were among the top ten Madrid applicants.

In international industrial design filings, South Korea, Japan, and China were among the top ten country filers. Samsung Electronics of South Korea was the consistent top company filer. Other Asian companies joining the top list were LG Electronics and Beijing Xiaomi Mobile Software.

PANDEMIC-DRIVEN INNOVATION

The COVID-19 pandemic has accelerated the speed of innovation, especially in pharmaceuticals.

In a separate report, WIPO reported that about 5,300 patent applications relating to COVID-19, covering therapeutics and vaccines, were filed globally in the first 21 months of the pandemic.

For COVID-19-related vaccine filings alone, the volume of patent applications filed by universities and public research organisations at 44 percent of the total almost matched the share of companies at 49 percent, the report showed.

China, South Korea, and India were among the top applicant locations for vaccine filings. They joined the U.S., Russia, the U.K., Germany, Austria, Switzerland, and Australia. For COVID-19 therapeutics, China and India were among the top origins for patent applications.

“This report underscores that the pandemic triggered an unprecedented mobilisation of the global scientific community, and it shines a light on the complementary and reinforcing roles played by companies, startups, universities and research institutions in the development of COVID-related treatments,” said WIPO’s Tang.

In Hong Kong, Tier 1 firm Ropes and Gray handled such COVID-19-related deals for Everest Medicines. The firm managed the company’s two separate agreements with Providence Therapeutics to license rights to Providence’s mRNA COVID-19 vaccine candidates in emerging markets in Asia and to establish global partnerships for mRNA products.

In South Korea, Tier 1 firm Shin & Kim successfully defended SD Biosensor (SDB), a COVID-19 antigen rapid test kit manufacturer, against domestic companies which filed for patent infringement over its client’s diagnostic kits. “This case is the largest patent damages case ever filed in Korea, with only a partial claim amount reaching $70 million. Also at stake is the availability of critical COVID-19 diagnostic kits should the aforesaid patent cannot be invalidated or avoided by SDB,” the law firm shared.

In Japan, while acknowledging the adverse effects of the COVID-19 pandemic on patent applications, a big blow for this patent powerhouse, Japan Patent Office (JPO) Commissioner Kasutani Toshihide said in JPO’s 2021 Annual Report that COVID-19 counter-measures have also brought in new business opportunities, in particular, acceleration of digitisation.

In Thailand, Tier 1 firm Tilleke Gibbins assisted Chulalongkorn University in filing for a patent application in the U.S. and the subsequent conversion to a PCT application for a COVID-19 diagnostic kit.

These COVID-19-related deals added to the usual portfolio of IP prosecution, enforcement, invalidation, and overall IP management activities handled by IP law firms across the region in 2021.

YEAR OF MANY FIRSTS

For the law firms handling IP cases in Asia, 2021 also saw many unprecedented deals and court decisions.

In Singapore, Tier 1 firm Shook Lin Bok has accepted an unprecedented case for Zenyum, an invisible orthodontic aligner product and service provider, against allegations of trademark infringement and breach of common law trademark rights. The trial is set for May 2022. “This case will be the first case in Singapore dealing with whether the use of a hashtag constitutes trademark infringement, which is a growing concern to businesses given the prevalence of social media and online advertising,” it shared.

In South Korea, Tier 1 firm Lee & Ko is handling a case for Novartis described as the first case in the country over complex patent, a new invention type for patents. Several domestic generic companies have filed patent non-infringement confirmation actions over Novartis’ Entresto, a heart failure drug. “A new Ministry of Food and Drug Safety (MFDS) guideline regarding the generic approval criteria based on the complex invention is expected, in which case a new precedent will be established about how the scope of the patent rights for complex invention should be interpreted,” according to the firm. The decision on this case is seen to have an impact on similar patent litigations over the Entresto patents in key jurisdictions abroad.

Another South Korean Tier 1 firm Yulchon successfully defended Chong Kun Dang Health in blocking the issu-ance of an injunction for a patent infringement case filed by Bayer over the manufacture and sale of a generic version of Bayer’s Xarelto drug. This makes the Korean pharmaceutical firm the sole generic manufacturer allowed to market Liroxia, a Xarelto generic before the expiration of Xarelto substance patents. “We expect this case to have significant precedential effect, as this case was the first decision by a court on whether a patent term extension extends to indications other than those listed in the regulatory approval for which the extension was granted,” Yulchon said. Generic pharmaceutical manufacturers are now banking on the decision in their go-to-market strategies.

In Malaysia, Tier 1 firm Wong Partners handled a landmark case for media operator Astro. The Kuala Lumpur IP High Court ruled that the sale of TV boxes and illicit streaming devices (ISDs) constitutes copyright infringement. “As a result of this important decision, civil action for copyright infringement can now be taken against those selling these TV boxes/ISDs which can provide unauthorised access to copyrighted works,” shared the law firm.

All these cases proved that despite the lingering pandemic, IP across the region has stayed resilient and vibrant.

HONG KONG

In 2021, Hong Kong’s IP Department granted the first standard patent under the new original grant patent (OGP) system that creates a direct route for innovators to seek standard patent protection in the city. This is considered a milestone in the development of Hong Kong’s patent system.

“The fact that a standard patent can be obtained directly in Hong Kong without going through first the registration process outside Hong Kong provides a convenient, direct and expeditious route for patent applicants and helps attract and facilitate more such applications,” Hong Kong’s secretary for commerce and economic development Edward Yau said.

INDIA

Amid the COVID-19 pandemic, India, along with South Africa, have taken the lead in demanding before the World Trade Organization for an IP rights waiver for COVID-19 vaccines and supplies.

While no progress has been made yet, due to strong opposition from developed countries two years into the proposal, this highlights India’s role in global pharma. Already it’s the largest producer of generic drugs in the world.

At home, India’s Supreme Court weighed in and ordered the central government to review its vaccine policy and raised questions on the differential pricing of vaccines for the central government.

Despite the pandemic, top law firms continued to handle a myriad of cases that range from prosecution, licensing, and enforcement.

India’s PCT filings in 2021 slightly increased to 2,100 from 1,907. Its international trademark applications also recorded some improvement to 343 from 336.

INDONESIA

Having the largest economy in Southeast Asia, Indonesia has a growing number of homegrown companies tapping overseas markets. IP prosecution and management for this type of firm has become a staple in top firms’ IP portfolios. Tier 1 firm Inter Patent Office handled one for Dexa Medica Group, one of the country’s largest pharmaceutical companies. It managed the client’s trademark portfolio in the country and overseas, in Southeast Asian countries, Middle Eastern countries, African countries, European countries, Canada and the U.S.

Top firm Assegaf Hamzah, representing PT Sekolah Cikal, handled a rare and complicated case that involved transferring the client’s trademark to the government, its Ministry of Education and Culture.

“It is very rare for a private entity to transfer IP rights to the government and indeed, this is one of such trans-actions. Besides being uncommon, this deal is also complicated as the client and ourselves had to attend multiple discussions with government officials to determine the right transaction scheme,” said the firm.

Enforcement also took up some of the law firms’ time especially those with multinational clients. KK Advocates has done work for Procter & Gamble and Gillete Company. The work included filling custom recordation, conducting investigations, drafting and sending clarification and warning letters, active online monitoring and filling take-down letters to the relevant marketplace; conducting the raid actions, and conducting negotiations with the infringer all for taking action against the allegedly infringing client’s products.

JAPAN

Based on WIPO’s latest PCT numbers, the patent-heavy jurisdiction saw its global patent filings slightly dip to 50,260 in 2021 from the previous year’s 50,578 applications. Mitsubishi Electric Corp., Sony Group Corp. and Panasonic IP Management were the Japanese companies among the top 10 PCT applicants last year.

Aside from IP prosecution, the top law firms handled the usual load of cases such as infringement actions, licensing of IPs, trade secrets and patent term extension applications. Among the Supreme Court IP decisions last year was the dismissal of the appeal by MRS Holdings in a patent infringement suit against mobile wallet company LINE Pay. This was a win for Tier 1 firm Abe, Ikubo &Katayama which represented LINE Pay.

There were also not common cases handled such as those connected to patent brokerage and cases related to the patent linkage system and SEPs.

Some firms also handled patent applications for AI, an increasing priority for Japan. In June 2021, the JPO hosted the virtual meeting of the IP5 Offices (with the U.S., the European Patent Office, China, and South Korea) that paved the way for a roadmap of cooperation in the fields of new emerging technologies and AI and launched new projects aimed at harmonising patent prosecution procedures and practices.

Commenting on the noteworthy developments in the past year, Masaru Nakajima, partner in charge of IP Information section at Seiwa Patent & Law, says that there have been significant changes in the IP landscape in Japan mainly via various reforms brought about by the 2021 revisions to the IP laws. “These include (a) In response to the expansion of COVID-19, various procedures at the JPO have been computerised and digitalised rapidly; (b) In view of the globalisation and digitisation of corporate behaviours, protection of IP rights have been enhanced via, e.g., tightening of regulations relating to counterfeit products from overseas and relaxation of requirement for reinstatement of IP rights; (c) The foundations of the IP system has been strengthened via, e.g., introduction of a system calling for third-party comments (so-called amicus briefs) and establishment of an inspection system as an evidence collection method in patent infringement lawsuits (introduced by the 2019-revisions to the IP Laws); (d) Harmonization of the IP system with overseas via, e.g., prohibition of multiple claim dependency from another multiple dependent claim in a patent application (introduced by the 2022-revisions to the METI ordinance); (e) Following the latest two IP high court decisions in 2019 and 2020, the articles stipulating the methods for calculating damages in IP infringement lawsuits were revised by the 2019-revisions, in an attempt to increase the amounts of damages,” he notes.

“Our firm has increased IT investment and increased the business efficiency significantly... We believe that our strength lies in our ability to respond to such changes quickly and appropriately.”

— Masaru Nakajima, Seiwa Patent & Law

When asked about the impact of such reforms and strengths of Seiwa Patents and Law, Nakajima adds, “In accordance with the rapid computerisation and digitalisation of the JPO procedures, our firm has increased IT investment and increased the business efficiency significantly. We have also shared information about the JPO’s various reforms to enhance the user convenience with our clients on time, and have advised our clients as to how to keep up with the JPO’s such changes. In fact, we have succeeded in reinstating several IP rights at the JPO. We believe that our strength lies in our ability to respond to such changes quickly and appropriately.”

MALAYSIA

Malaysia made notable updates to its IP regulatory framework last year. Its Dewan Negara, the upper house of Malaysia’s Parliament, passed three IP bills, namely the Patent (Amendment) Bill 2021, the Copyright (Amendment) Bill 2021 and the Geographical Indications Bill 2021. The patent amendments consider Malaysia’s commitments in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement on public health, the Regional Comprehensive Economic Partnership Agreement (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and include the provisions of the Budapest Treaty. The copyright amendments seek to ensure that the copyright law provides more efficient and effective protection in line with current demands and to fulfil the needs of the business community and stakeholders. The Geographical Indications Bill 2021, meanwhile, provides updates to the regulatory framework that considers the requirements in the TRIPS Agreement.

Among the cases handled by top law firms last year, the case handled by Rahmat Lim for Shopee, a leading e-commerce platform in Southeast Asia, stood out. Shopee is faced with back-to-back civil lawsuits launched simultaneously by local production film companies who filed direct copyright infringement claims for the alleged unauthorised sale and distribution of locally produced films by certain users on the platform. “These are landmark lawsuits as for the first time in Malaysia, a giant e-commerce platform is being sued directly for copy-right infringement flowing from the acts of its users. These lawsuits are significant and will become precedent setting in determining whether e-commerce platforms can be held directly liable as an intermediary for the infringing acts of its users. These lawsuits also explore the concepts of contributory and/or vicarious liability in the context of indirect copyright infringement and also the safe harbour provisions,” said the firm.

PHILIPPINES

The IP Office of the Philippines reported that in 2021 it received the highest number yet of counterfeiting and piracy reports and complaints from consumers and right owners at 151, a 25 percent increase from the previous year. Popular social media and sales platforms were tagged in the alleged IP violations.

In IP applications, the Philippines is more trademark heavy. Last year, it received its highest number of PCT filings yet at 45, a 137 percent increase from the year ago. “With the continued reopening of the economy, we hope to encourage more local inventors and companies to seek global opportunities,” the director general of the Philippine IP Office Rowel Barba said.

SINGAPORE

Singapore launched its IP Strategy 2030, its 10-year blueprint to strengthen its position as a global intangible assets and IP hub. This builds on its 2013 IP Hub Master Plan and recognizes the role of innovation, IA, and IP in driving economic growth.

The city-state also has a new copy-right law. Updates include granting creators default ownership of certain types of commissioned works, setting a requirement for the identification of creators and performers whenever their works or performances are used in public and outlawing the sales of devices and services used to access copyright-infringing work.

Since the establishment of Singapore’s new GI registry, GI-related cases increased. One such case was handled by Bird & Bird for the Consortium for Prosecco DOC Wines, the consortium of producers and winemakers of the Italian sparkling wine, against opposition to the GI registration in Singapore by the Association of Australian wine producers. The case is the first GI dispute that reached the Singapore High Court and is set to be similarly the first to be heard by the Appellate Division of the Singapore High Court.

Tony Yeo, managing director of Drew & Napier’s intellectual property practice, shares his view on some of the noteworthy development in the past year. “There have been so many changes in the IP landscape in Singapore. The Copyright Act 2021 came into force on Nov. 21, 2021. Major changes include that Collective Management Organisations must be licensed in order to continue operations (intended for further rounds of public consultation on CMOs in 2022 before these provisions come into force). The Intellectual Property (Amendment) Act 2022 came into force on Apr. 29, 2022, introducing changes to the Patents Act, the Trademarks Act, the Registered Designs Act, the Plant Varieties Protection Act, and the Geographical Indications Act 2014 to make it easier for businesses to protect and manage their intangible assets and intellectual property. The Intellectual Property (Dispute Resolution) Act 2019 partially came into force on Apr. 1, 2022. Most importantly, the recent changes amend several IP-related legislations, as well as the State Courts Act, to grant the High Court exclusive jurisdiction over most civil IP disputes, such as infringement of all forms of IP and passing off. The Supreme Court of Judicature (Intellectual Property) Rules 2022 came into force on Apr. 1, 2022. The effect of these SCJ(IP) Rules is to consolidate procedural rules for IP disputes.” Yeo talks further about changes in IPOs, “On May 4, 2022, IP Digital Hub will replace IP2SG as IPOS’ IP filing system. IPOS has introduced fee changes, which are effective from Apr. 29, 2022.”

As for the impact of such developments, Yeo says, “The changes to the Copyright Act have been very substantial. In essence, it is a new statute. In time, practitioners will be familiarising themselves with the new provisions in the Copyright Act. We at Drew & Napier have studied these changes and are advising our clients on the implications for their businesses and interests. The changes from the Intellectual Property (Amendment) Act 2022, Intellectual Property (Dispute Resolution) Act 2019 and Supreme Court of Judicature (Intellectual Property) Rules 2022 will only be felt when they all come into force in April and the months to come. These changes are also substantial and will affect the enforcement of IP rights in Singapore. Again, we have studied and continue to study these changes and will be advising our clients on any impact on their enforcement rights. As for the official fee changes at IPOS, we do not expect much impact as the changes are not substantial. So far, we have not had any negative feedback from clients on the official fee changes.”

“We have always maintained a dominant position in IP. Drew is a market leader in trademark, patent and design filings, thanks to the long-time support from our clients who come from a wide spectrum of industries.”

— Tony Yeo, Drew & Napier

When asked about the ways that Drew & Napier’s IP practice sets itself apart in the market, Yeo explains, “Drew & Napier has the largest and most established Intellectual Property (IP) practice in Singapore. We have always maintained a dominant position in IP. Drew is a market leader in trademark, patent, and design filings, thanks to the long-time support from our clients who come from a wide spectrum of industries. Besides Singapore, we are also able to assist our clients with IP filings throughout Southeast Asia through our Drewmarks offices in the region. 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. In short, we present a holistic experience to our clients which completely addresses all their needs when they come to us.”

SOUTH KOREA

South Korea kept for the second year its fourth top ranking in global PCT applications in 2021. Despite the pandemic, it registered the highest rate of increase at 3.2 percent in total global patent applications among the top five countries, China, the U.S., Japan, and Germany.

Patent cases in pharmaceuticals were some of the biggest cases heard by the courts last year. One of these cases was the Supreme Court appeal by Tier 1 firm Kim & Chang for Bristol-Myers Squibb for a patent on the drug apixaban in an invalidation filed by generic companies. In an April 2021 decision, the high court reversed the decision of the lower court and found the patent inventive and valid. “We expect this decision to significantly impact how selection inventions can be patented and enforced in Korea, affecting not only the pharmaceutical field but various other industries,” said the law firm.

“Our firm has an internal Data Science Lab, which provides specialized services in forensics, big data, MyData, and metaverse. This allows us to provide tailored solutions to a wide range of IP cases.”

— Jong Seon CHOI, DR & AJU

On the noteworthy developments in South Korea in the past year, Jong Seon CHOI, head of DR & AJU’s Intellectual Property PG says that, “The Unfair Competition Prevention and Trade Secret Protection Act was amended to introduce an enhanced damages system, which allows the court to determine the number of damages pertaining to intentional infringement on trade secrets and misappropriation of ideas within the scope of three times the original amount, and add unfair use of unstructured data not being kept confidential and unauthorised use of distinctive signs of celebrities to the scope of acts of unfair competition. These amendments strengthened the law as a protective device for victims of acts of unfair competition.”

On the impact of such amendments, CHOI explains: “We have expertise in unfair competition prevention with our accumulated experiences in the field. We are able to provide more satisfactory infringement prevention and damage recovery services to clients in line with the strengthening trend of unfair competition prevention.”

When asked about the ways that the firm sets itself apart in the market, CHOI says, “Our firm has an internal Data Science Lab, which provides specialised services in forensics, big data, MyData, and metaverse. This allows us to provide tailored solutions to a wide range of IP cases.”

TAIWAN

In 2021, Taiwan’s overall patent applications increased by 1 percent to 72,613 cases. Invention patent applications grew year-on-year by 5 percent and with the number of resident applications at 19,547 reaching the highest on record since 2014. “This was due to a 6 percent rise in the number of applications by corporations, with those filed by large enterprises alone increasing by 9 percent,” said its IP office. TSMC was the top domestic applicant for invention, utility model, and design patents, with a total of 1,950 applications filed. The company has held on to its lead for the sixth consecutive year now.

The total number of trademark applications at 95,917 cases were filed—the highest number recorded ever since TIPO was founded in 1999.

THAILAND

In Thailand’s patent filings, Tier 1 firm Tilleke Gibbins which handles prosecution work for a leading Thai university observed an increase in the number of Thai universities and professors collaborating with private investors to create and commercialise innovations. “In turn, these help boost the university’s national, regional, and global rankings,” it said.

Among companies, Tier 1 firm Backer McKenzie secured a favourable decision for a client from the IP & IT Court which agreed with its argument that a mark can contain an invented word which does not lead consumers to immediately understand the nature of the applied goods and, when used with the device, can allow consumers to distinguish goods under the mark from those of others.

Most law firms also got their hands dirty in IP enforcement actions. Based on its enforcement statistics, the Royal Thai police had 1,381 raids, with 920 related to trademark infringement. Customs seizures reached 484.

VIETNAM

Last year, the IP Office of Vietnam made an unprecedented move to cut by 50 percent the industrial property administration fee for a limited period and implemented automatic extension on expiring procedures such as renewal, submission of supplementary documents and responding to decisions and notifications to provide support to those affected by the pandemic.

In 2021, based on WIPO data, inter-national trademark applications from Vietnam slightly decreased to 137 from 175 the previous year. Its PCT filings increased to 35 in 2021 from 23 in 2020.

IP enforcement was one area that kept the top law firms busy last year. Tier 1 firm Vision Associates handled a successful seizure for the right owner of the LYN trademark owned by a Thai corporation Jaspal Company which has a subsidiary in Vietnam. Counterfeit products were found sold on a website (lyn. vn). Over a thousand counterfeit products were seized in a warehouse raid.

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