IP Asia 2020 A special report from Clarivate
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IP Asia 2020 A special report from Clarivate
Contents
3 24
Foreword .BRAND TLDs in the
Asia-Pacific region
4
Non-Practicing 30
Entities litigation New provisions on
in China punitive damages
for willful patent
10 infringement in
Rise of innovation South Korea
in Southeast Asia
32
14 How pursuing
Domain arbitration patents in Japan
trends in APAC has evolved over
the past decade
18
Snapshot: A look 35
into pharmaceutical Trademark
class filings for challenges facing
trademarks in the growing
Asia-Pacific Asia-Pacific
market
20
The view from 42
Beijing: Patent Domain
activity in management in the
Mainland China Asia-Pacific region
Foreword
By Rob Davey domain portfolios and discover
fascinating trends in the usage of
Welcome to IP Asia 2020, .BRAND domain extensions in the
a special report featuring insights region. They also explore the recent
from Clarivate™ IP experts. explosion of trademark filings both
within Asia and globally by Asian
As I write this, the majority of the world applicants, and dive into the critical
is working from home as part of an pharmaceutical sector. Our local
unprecedented response to the global patent experts dig into the numbers to
COVID-19 crisis. In some ways the uncover where innovation is thriving
pandemic has brought the world closer in China, Japan and Southeast Asia.
together, as countries work together Our IP litigation experts explore the
to fight the virus. Innovation is more impact of non-practicing entities
important than ever, and Asia’s place on the patent landscape in China,
in the global innovation ecosystem recent introduction of new provisions
has never been more critical. in relation to punitive damages in
South Korea and the latest domain
In this special Clarivate report, our IP arbitration news from across Asia.
experts share insightful commentary
on the IP trends and developments For the last decade or more,
evident within Asia across domains, analysts have pointed to Asia
trademarks and patents. as a rising IP powerhouse. That
time has arrived. As shown in this
Through the articles in this special report, Asia is now a major IP hub
report, you can learn how Asian – driving critical innovation both
companies are managing their for the region and the world.
3
Non-Practicing Entities
litigation in China
By He Yuanyuan and Luca Árpási as plaintiffs to enforce their patent
rights. Individuals and universities
are not included in this data.
Methodology The statistics presented below are
extracted from NPE litigation data
Patent lawsuits involving Non- in Mainland China, where at least
Practicing Entities (NPE), a group one party is an NPE. The data covers
of actors playing a unique role in a period between 2010 and 2019.1
the history of the IP industry, are All relevant actions involving the
becoming a global matter. With same parties on the same subject
the development of a Chinese matter are presented as independent
IP protection system, NPEs have litigation and will be referred to as a
taken more notice of China. This ‘case’ in the context of this paper.
paper presents the landscape of
NPE litigation in China, based on For example, if Party A filed an invalidity
exclusive data available through action against Party B before the CNIPA
the Darts-ip™ database. Patent appeal board, with a subsequent
appeal sent to the Beijing IP Court and
This report defines NPEs as: legal finally escalated to the Supreme Court,
organizations which benefit from this is still considered one case despite
patent rights but do not sell or there being three different rulings. As
manufacture goods or provide long as any document in a case was
goods-related services and take an made within the 2010 to 2019 timeframe,2
active role in infringement litigations the case will appear in the below data.
1
All numbers checked as of March 6, 2020.
2
This paper accounts for filing dates between 2010-2019, if filing date unavailable,
earliest known document's date in the case is referenced.
4
Figure 1: Evolution of NPE litigation3 and types
of action breakdown over the last decade
90
When it comes to 80
the types of action, 70
the proportion of 60
invalidity actions is Number of cases 50
by far the largest. 40
30
20
10
0
2010 2011 2012 2013 2014 2015 2016 2017 2018 2019
Type of action: Action related to contract Declaratory judgment for non infringement
Infringement Other action Invalidity action
Please note that the year indicated is the year of filing.
If this is unavailable then the earliest known document in the case is referenced.
Source: Darts-ip
Facts and figures
The evolution of NPE litigation far the largest. Invalidity actions account
in Mainland China for 80% of all actions in each year on
average. The smallest proportion (50%)
Figure 1 shows an undeniable, growing occurred in 2016. Infringement actions
trend of NPE patent-related actions increased suddenly after 2016, then kept
over time, although a few dips in the a steady rise. It can be inferred from the
year-over-year statistics do exist. The surge of invalidity actions in 2014 that a
number of cases increased significantly large amount of infringement actions
in 2014 and 2019. It is noteworthy that were initiated by NPEs in 2014 but were
there also exists a marked increase reflected after 2016, as the judgements
(by 62%) of NPE litigation in Europe of infringement actions were usually
in 2014. That year also happens to see made after those of invalidity decisions.
the first decline in patent litigation As a final thought to this point, it would
case volume in the United States. seem a safe assumption that since 2014,
NPEs have most likely shifted focus
When it comes to the types of action, from America to other countries or
the proportion of invalidity actions4 is by regions, such as Europe and China.
3
There are 250 NPE-related patent cases that have been entered in the Darts-ip case-law collection during the period of 2010 to 2019.
4
An invalidity action can be brought against a patent at any time in its lifecycle. The purpose of this action is to challenge a patent
and remove the protection granted to the holder. If the action is successful, a patent holder loses the protection and may have to
reevaluate licensing agreements and rights that may have been granted. Invalidity actions in China can only be brought before the
5 Re-examination and Invalidation Department of the Patent Office, China National Intellectual Property Administration (CNIPA).
The map of NPE litigation
Figure 2 outlines the areas where cases province (1 case). Among them,
are concentrated. NPEs prefer litigating six cases were finally heard by the
in well-developed Chinese provinces Supreme Court. And NPEs filed most
or cities, i.e. Jiangsu province of the litigations before the following
(13 cases), Guangdong province courts: Shenzhen Intermediate
(10 cases), Beijing city (10 cases), Court, Nanjing Intermediate
Shanghai city (7 cases) and Shaanxi Court and Beijing IP Court.
Figure 2: The geographical distribution of NPE litigation in Mainland China
Figure 2’s map presents geographical distribution of all actions except for invalidity actions.
The darker the purple is, the more cases occur in the area.
Source: Darts-ip
6
Technical fields of litigated patents
The technology of patents involved networks, as the result of the intensive
is mainly distributed in the field innovation, fierce competition and
of electronic communication rapid development of domestic
techniques, with the largest amount communication industry.
of cases in wireless communication
Table 1: Top 10 IPC classifications of litigated patents
IPC Technical fields Cases
1 H04W wireless communication networks 104
2 H04L transmission of digital information, e.g. telegraphic communication 84
3 H04B transmission 60
4 H04Q selecting 27
5 H03M coding, decoding or code conversion, in general 26
6 H04J multiplex communication 25
7 H01Q antennas, e.g. radio aerials 21
8 H03H impedance networks, e.g. resonant circuits; resonators 16
speech analysis or synthesis; speech recognition;
8 G10L 16
speech or voice processing; speech or audio coding or decoding
measuring force, stress, torque, work, mechanical power,
9 G01L 14
mechanical efficiency, or fluid pressure
10 H04M telephonic communication 10
The patents include both NPEs and non-NPEs (For example,
NPEs that filed an invalidity action against non-NPEs.)
Source: Darts-ip
7Right validity of NPE patents
The graphs below compare the right any reduction to the scope of
validity of NPE asserted patents to protection5 is 8% lower than with
general patents (understood here general patents, suggesting that
as patents belonging to any party, NPE patents are weaker. However,
regardless of their type). The bar the revocation rate for both general
graphs of Figures 3 and 4 illustrate and NPE patents is comparable.
the scope of protection extended
to the patents. Purple indicates a full Figure 4 suggests that NPE patents
scope of protection based on the considered valid, without any
application, dark green represents reduction to the scope of protection,
patents that have been granted is very low in South Korea, at 11%, and
protection but with a reduced very high in Japan at 40%, while China
scope, and light green represents is in between those numbers. When
revoked patent applications. looking at other jurisdictions, we can
see that the NPE patent validity rate in
According to Figure 3, the percentage China is close to that in the U.S., and
of NPE patents that are valid without significantly higher than in Europe.
Figure 3: Validity rate of challenged patents
owned by NPEs versus general patents
NPE 28% 20% 52%
General 36% 13% 52%
% of validity assessments
Right validity: Total Partial None
Source: Darts-ip
Figure 4: Validity rate of challenged patents owned by
NPEs in Mainland China versus other jurisdictions
China, Mainland 28% 20% 52%
Europe 17% 31% 52%
Japan 40% 52% 8%
South Korea 11% 11% 77%
U.S. 31% 46% 23%
% of validity assessments
Right validity: Total Partial None
Patent challenge actions including invalidity actions, oppositions,
inter-partes reviews and right assessments in infringement actions.
Source: Darts-ip
8 5
Represented by the purple section of the bar chart.Summary of trends
The analysis of the statistics examined above reveals
these key trends in NPE litigation in Mainland China:
• NPEs started to actively bring • The patents are mainly regarding
lawsuits in Mainland China as electronic communication technologies.
of 2014. The case volume has
seen a dramatic increase in 2019. • When a NPE patent is considered
valid, it is more likely to have a
• NPEs prefer litigating in reduction in the scope of protection
developed provinces or cities. and granted partial protection.
9Rise of innovation
in Southeast Asia
By Ridhma Dhar the fourth largest economy in the
world by 2030 after the United States,
Whether Southeast Southeast Asia is a growing market
of over 600 million consumers across
China and the European Union.
Asia will fulfill 10 countries with a collective GDP
of $2.986 trillion in 2018.6
Whether Southeast Asia will fulfill
its potential is no longer a question;
its potential is In August 1967, an economic and
rather how it will drive global growth
is a question worth exploring.
no longer a political alliance of five countries
– Singapore, Malaysia, Thailand, Research and innovation are the
question; rather Indonesia and Philippines – was formed
and named Association of Southeast
cornerstones of national and regional
strategy to develop a knowledge-
how it will drive Asian Nations (ASEAN). Subsequently
five countries were expanded to
based, innovation-driven economy.
global growth include a further five countries with
Cambodia as the latest member to join
In Southeast Asia, the ASEAN Economic
Community Blueprint (AEC) 20257 has
is a question in 1999. The core purpose of bringing
these countries together, as stated in
outlined an important role for science
and technology and intellectual property
worth exploring. the ASEAN declaration, was to provide
the members states a cohesive voice
in contributing to the achievement of
national and regional socio-economic
on a global platform and accelerate development goals. Under the ASEAN
economic growth, social progress, and Plan of Action on Science, Technology
cultural development in the region. and Innovation (2016 to 2025) the
importance of active R&D collaboration,
The member states – Singapore, public-private partnerships, technology
Malaysia, Thailand, Indonesia, commercialization and entrepreneurship
Philippines, Vietnam, Brunei, Laos, has been emphasized. The ASEAN IPR
Cambodia and Myanmar – are Action Plan (2016 to 2025)8 identified
geographically close but vary widely intellectual property as a fundamental
in their economic development. element in driving innovation.
The latter has been dictated
predominantly by government From analysis of patent filings over
infrastructure development, foreign the last ten years (2010 to 2019),
direct investment, and growth and domestic patent applications filed
diversification of local conglomerates. in Southeast Asia demonstrated
a compound annual growth rate
Today, as a single market Southeast (CAGR) of 13%, even though domestic
Asia/ASEAN holds tremendous applications occupy a smaller share
promise. With greater integration of total activity compared to those
and technological advancement, from foreign entities (measured non-
the region is predicted to become priority patent applications ASEAN).
6
www.vietnam.vnanet.vn/english/pm-launches-vietnams-2020-asean-chairmanship/434285.html
7
www.asean.org/storage/2016/03/AECBP_2025r_FINAL.pdf. www.aseanip.org/Portals/0/ASEAN%20IPR%20ACTION%20PLAN%20
2016-2025%20(for%20public%20use).pdf?ver=2017-12-05-095916-273
8
www.asean.org/storage/2016/03/AECBP_2025r_FINAL.pdf
10With widespread government respective countries. Following close
investment in research and were the research universities such as
development and emphasis on IP the National University of Singapore,
cooperation and protection throughout University Putra Malaysia, the University
the region, the most recent five years of Indonesia and Cebu Technological
witnessed an acceleration of this University in the Philippines.
trend with a staggering 87% growth
in domestic patent applications. Top Within the ASEAN region, Singapore is
domestic patent filers are a combination the front-runner with domestic patent
of key research institutes and academic applications steadily increasing with
institutions. The Agency for Science, 69% growth in the ten-year time-
Technology and Research (A*STAR) period (2010 to 2019). The growth
in Singapore; Malaysia’s national in patent applications is backed by
R&D Institution MIMOS and the the government’s commitment to a
Indonesia Institute of Sciences (LIPI), $19bn R&D spend under its Research
the National Science & Technology Innovation Enterprise 2020 Plan
Development Agency (NSTDA) and (RIE2020).9 The plan specifically aligns
the Vietnam Academy of Science with the country driving towards
and Technology led the pack in their becoming a Global IP Hub in Asia.
Figure 1. Timeline activity of patent filings in Southeast Asia
10,000
9,000
8,000
7,000
6,000
5,000
4,000
3,000
2,000
2,000
1,000
0
2010 2011 2012 2013 2014 2015 2016 2017 2018 2019
Source: Derwent
11 9
www.nrf.gov.sg/rie202082% of patent applications filed Petronas, a Malaysian Oil-major,
in Southeast Asia originated from entered a collaborative partnership
outside the region, demonstrating agreement with Kongsberg Ferrotech
a strong interest from global to leverage the patented Oktapous
organizations in protecting and IMR (inspection, maintenance
commercializing innovation in the & repair) robot to implement
region. Multinational corporations maintenance technologies for subsea
such as Hoya Corporation, Huawei and assets, revolutionizing the way
Halliburton, Toyota with research and industry conducts IRM-operations
development centers or manufacturing in the oil and gas industry. Viettel,
operations in the region dominate the largest state-owned military
the top global organizations. telecommunications company in
Vietnam, has been expanding its
Conglomerates or government- presence in Southeast Asia, Latin
linked businesses account for 40% America and Africa. Viettel recently
of the top listed stocks, playing announced it is developing its own
a major role in Southeast Asia.10 5G equipment, joining other players
In recent years, they have found such as Nokia, Samsung, Ericsson
new sources of growth through and Huawei; this caught attention and
international expansion, adoption raised concerns due to a formidable
of cutting-edge technologies patent barrier that already exists.11
and mergers and acquisitions.
Semiconductor companies in
They are embracing intellectual Singapore make up 11% of global
property protection, setting up market share.12 Singapore based Avago
world-class IP departments and Technologies bought Broadcom for
are emerging as top innovators $37bn in 2015 in the biggest-ever
in their respective countries. chip deal and followed it up with the
acquisition of Brocade for $5.5bn
Siam Cement Group and Sime Darby and CA Technologies for $18.9bn,
are great examples of conglomerates strengthening its patent position
that have expanded on the back significantly in sectors such as mobile,
of a well-developed domestic data centers and the internet of things,
business in Thailand and Malaysia making the company one of the
respectively to Southeast Asia and largest holders of patents amongst
beyond. Malaysia-based Purecircle semiconductor manufacturers.13
has jointly developed new forms of Another Singapore-headquartered
stevia, a sugar alternative, for future semiconductor company, STATS
beverages with Coca-Cola since 2012. ChipPAC, was acquired by China's
In 2018, eyeing further expansion, it Jiangsu Changjiang Electronics
moved its global headquarters from Technology Co Ltd (JCET) in a
Kuala Lumpur to Chicago, Illinois. $1.8bn deal from Temasek.14
10
www.bain.com/insights/how-conglomerates-in-southeast-asia-can-live-long-prosper/
11
www.thediplomat.com/2020/01/whats-next-for-vietnams-5g-ambitions/
12
www.straitstimes.com/business/companies-markets/glodal-semiconductor-demand-remains-strong-in-long-term-singapore-well
13
www.design-reuse.com/news/37582/avago-broadcom-patent-powerhouse.html
14
www.reuters.com/article/us-stats-jiangsu-m-a/temasek-to-exit-stats-chippac-with-1-8-billion-deal-with-chinas-jcet-
12 idUSKBN0IQ0YY20141106Figure 2. Top local conglomerates patent filers in Southeast Asia
Viettel Siam Cement Group PTT Group Sime Darby
Petronas
Telekom Malaysia
Source: Derwent
In 2019, the internet economy Patent offices are launching innovative
in Southeast Asia hit $100bn initiatives to accelerate application
driven by online travel, online to grant. Fintech Fast Track (FTFT)
media, ride hailing, e-commerce initiative expedites application-to-grant
and digital financial services. process for FinTech patent applications
to as fast as 6 months and Accelerated
The Masterplan15 on ASEAN Initiative for Artificial Intelligence (AI)
connectivity 2025 aims to seamlessly led to the grant of an AI related patent
connect and integrate member to Alibaba in record-breaking three
countries. It predicts digital months. Both initiatives are led by the
technologies could potentially be IP Office of Singapore (IPOS). As we
worth up to US $625bn by 2030 in the explore innovation enabled by the
region which is being hailed as the internet which is user-oriented and
next frontier owing to the booming is born out of collective co-creation,
internet economy and the presence a new model of open innovation
of unicorns with innovative and and intellectual property creation
localized business models such as and protection will be required.
Go-Jek, Grab, Razer and Lazada.
In the next few years, as the
Analysis of patent filing activity from member states continue to attract
2010 to 2019 also highlights the increased foreign direct investment
dominance of the technology area from multinational corporations,
of digital computers across markets. governments explore cross-regional
Within the area of digital computers, synergies that promote inter-country
software products and database research collaboration and highly
applications for information retrieval skilled talent is allowed to flow
were key focuses and the majority of within the region resulting in cross-
the patent protection in both areas pollination of ideas and dissemination
was led by Singapore. Singapore of knowledge, Southeast Asia will
also demonstrated focus in the areas lead with its unique innovation-
of telephone and data transmission led growth story – a story built
systems, followed closely by Vietnam. on diversity and cooperation.
13 15
www.asean.org/storage/2016/09/Master-Plan-on-ASEAN-Connectivity-20251.pdfDomain arbitration
trends in APAC
By Hazal Çisem Aynalı There are currently six ICANN-
accredited dispute resolution providers
There are currently As companies around the world
increase their online presence,
that adjudicate UDRP disputes around
the world: the World Intellectual Property
six ICANN- identification of IP rights in domain
names grows in importance –
Office (WIPO), the National Arbitration
Forum (the Forum), the Asian Domain
accredited dispute especially among companies
that are involved in e-commerce,
Name Dispute Resolution Centre
(ADNDRC), the Czech Arbitration Court
resolution providers providing goods and services
using valued trademarks online.
(CAC), the Arab Center for Domain
Name Dispute Resolution (ACDR) and
that adjudicate Accordingly, cases of cybersquatting
are rising year-over-year.16
the Canadian International Internet
Dispute Resolution Center (CIIDRC).19
UDRP disputes The rules that govern domain disputes
The supplemental rules, fees and the
duration of the proceedings may differ
around the world. vary in accordance with the extension17
of the domain name. Uniform Dispute
from one to another, but complainants
have the freedom to choose the UDRP
Resolution Policy (UDRP) sets out the provider they desire to use to hear their
rules to resolve the disputes of domain complaint about a domain dispute.
names with generic top-level domains
(gTLDs) and some country-code top- The focus of this article will be
level domains (ccTLDs),18 while other on the ADNDRC20 as well as the
ccTLD disputes are governed by their legal trends of ccTLD arbitration
own dispute resolution policies. instances in Australia and India.
16
www.wipo.int/amc/en/domains/statistics/cases.jsp
17
Domain extensions are also referred to as Top-Level Domains (TLDs).
They can be recognized in a website’s URL at the end. (i.e .com, .eu, .net, .club, etc…)
18
The info of which ccTLDs are under the competence of UDRP can be found here: https://www.wipo.int/amc/en/domains/cctld/
19
www.icann.org/resources/pages/providers-6d-2012-02-25-en
20
Asian Domain Name Dispute Resolution Centre
14Asian Domain Name Dispute
Resolution Centre (ADNDRC)
The Asian Domain Name Dispute While the statistics in this regard reveal
Resolution Centre, with its four that cases before the ADNDRC may
offices in Hong Kong (HKIAC), take longer, it’s still the preferred
Mainland China (CIETAC), Malaysia venue for Asian complainants and
(AIAC) and South Korea (IDRC);21 respondents. It is also worth highlighting
handles UDRP cases from all from Figure 2 that for complainants
around the world, regardless of residing in the Cayman Islands, the
the nationality of the parties. The vast majority of cases relate to the
complainants can choose with which complainant companies Alibaba
office of ADNDRC they will file the Group and Tencent Holdings.
complaint. The fees to be paid when
filing a complaint before an ADNRC The high number of respondents from
office vary from $1,300 USD to $3,300 Asia can be interpreted in multiple ways.
USD for disputes containing up to First, complainants domiciled outside
five domains, depending on the of the Asian continent prefer to file the
number of panelists requested. 22 complaints before ADNDRC when
the respondent is located near to one
Although there are certain time of its dispute providers. Knowing that
limits and procedural rules for the Mainland China has a record number
UDRP disputes, the duration of of registrants in the territory,23 such a
proceedings varies amongst UDRP result cannot be deemed surprising.
providers. In Figure 1 we illustrate
the average duration of ADNDRC Secondly, the data suggests that
compared to other UDRP providers. complainants who are domiciled in
Asia prefer to file UDRP complaints
Certain factors determine the with a provider with panelists of the
choice of a provider including same nationality as the respondent.
filing fees, geographical proximity This also confirms that geographical
and average duration of time proximity plays a significant role
for rendering a decision. when choosing a UDRP provider.
Figure 1: Average duration of UDRP proceedings by court
80
70
60
50
40
30
ADNDRC WIPO The Forum ACDR CAC CIIDRC
Source: Darts-ip
21
www.adndrc.org/about_us
22
www.adndrc.org/files/udrp/ADNDRC-Supplemental-Rules-for-UDRP.pdf
15 23
www.domainnamestat.com/statistics/country/othersFigure 2: Nationality/region of complainants,
defendants and their respective win rate
Top 10 Top 10
complainant respondent
nationalities nationalities
United States China, Mainland Germany Hong Kong United Kingdom
Cayman Island Japan South Korea France Switzerland
Malaysia Singapore India
Win rate
28%
Plaintiff Defendant
Source: Darts-ip
Deeper look into requirement that the complainant
auDRP and INDRP should prove the registration and use
of the domain name in bad faith,25
auDRP and INDRP take a different
Country code TLDs for India (.in) approach which finds either use or
and Australia (.au) are governed by registration to be sufficient for a ruling
INDRP and auDRP respectively. on bad faith.26 Accordingly, arbitration
instances have had completely
Although the filing policies and different rulings to the matter when
procedures may seem quite similar to deciding on a cybersquatting case.
UDRP, especially with auDRP since it Whereas in some UDRP cases WIPO
is deemed as a variation of UDRP,24 has made detailed assessment on
the main difference between some both use and registration in bad
Asia dispute providers and UDRP faith,27 other panels have 'inferred'
providers can be found in the bad bad faith registration from the use
faith assessment for the respondent. itself.28 In both scenarios however, the
While UDRP has a cumulative cumulative requirement is fulfilled.
24
www.wipo.int/amc/en/domains/cctld/au/index.html
25
UDRP para 4(a)(iii) see: https://www.icann.org/resources/pages/policy-2012-02-25-en
26
INDRP para 4(iii) & auDRP para 4(a)(iii) see: https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20
Policy%20%28INDRP%29 and https://www.auda.org.au/policies/index-of-published-policies/2016/2016-01/
27
darts-919-465-H-en-4: “(...) where a respondent registers a domain name before the complainant’s trademark rights accrue,
panels will not normally find bad faith on the part of the respondent. Although this technically ends the matter, as this element of the
Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the Disputed
Domain Name in bad faith. It appears the Respondent uses the Disputed Domain Name for business or personal purposes and there
is no evidence that this has been in bad faith.” darts-174-463-H-en-4: “The Panel finds bad faith in the use but not in the registration of
the Domain Name.”
28
darts-517-955-H-en: “The Panel therefore finds that the use of a domain name parking service constituted bad faith use of the
disputed domain name (...). Further, the Panel also observes that the Complainant’s interest in and fame of the (...) trademark
combined with the Respondent’s subsequent bad faith use of the disputed domain name would ordinarily be sufficient to allow the
16 inference that the said domain name was also registered in bad faith.”In contrast, INDRP and auDRP panelists In the absence of clear, harmonized
have stopped the assessment if either and strict rules for domain disputes
use or registration in bad faith is globally, and in light of the irrefutable
proven,29 referring to the difference as: effect of jurisprudence on decision-
“Unlike the UDRP, the requirements of making, it is more important than
registration in bad faith and use in bad ever to identify distinctions between
faith are disjunctive. It is only necessary the approaches of the courts to
for the Complainant to prove that the the same or similar legal disputes.
disputed domain name was either Having this in mind, we will see
registered or used in bad faith. It is not how the international nature of the
necessary to prove both elements.”30 internet will have an impact on the
perspectives of ADNDRC, the Asian
As per the comparison between INDRP office of UDRP and the ccTLD dispute
and auDRP, although there is no strict providers in the APAC region in
distinction as mentioned above for terms of harmonization. Within this
UDRP, Australian arbitration courts, context, a helicopter view of the
WIPO (for .au) and Indian tribunals legal tendencies as well as the data
have taken somewhat different revealing the different procedural
approaches to domain disputes and administrative statistics of the
as well. Figure 3 includes some arbitration instances will support
examples that highlight the difference decision and policy-making.
between three different arbitration
forums on the same subjects.31
Figure 3: Comparison of tendencies in different
rulings for AU,32 WIPO and .IN Tribunals
Similarity assessment - Addition of a generic term Similar Not similar
(regardless of if there is a link to the activity of the right holder)
AU
WIPO (.au)
India
Legitimate interest assessment Legitimate interest No legitimate interest
Registration of a generic/descriptive word
AU
WIPO (.au)
India
Bad faith assessment Bad faith No bad faith
Complainant trademark is well-known
AU
WIPO (.au)
India
Reverse domain name hijacking assessment RDNH No RDNH
AU
WIPO (.au)
India
Source: Darts-ip
29
darts-014-053-I-e: “...as the Respondent's action to register the said domain name is not bona fide,
therefore, the said registration is done in bad faith.”
30
darts-508-724-H-en
31
For this project, the decisions of auDRP providers which are located in Australia and DAU decisions of WIPO
are taken into account separately.
17 32
AU stands for the arbitration instances in Australia.Snapshot: A look into
pharmaceutical class filings
for trademarks in Asia-Pacific
By Robert Reading and Kinam Park However, the overall Class 5
numbers hide a fact that may be
The major export In a report released in July 2019,33 the
United States Agency for International
important for future developments
emanating from Southeast Asia.
users filing in Development (USAID) identified the
global threat posed by influenza viruses
While Class 5 is predominantly
viewed as the ’pharmaceutical’
Class 5 from of animal origin, particularly from
Southeast Asia, which had been the
class, it also covers other related
products, such as vitamins, baby
most Asia-Pacific source of previous outbreaks (Asian Flu
1957, Hong Kong Flu 1968, SARS 2003).
food and nutritional supplements.
countries are With COVID-19 dominating
The major export users filing in Class
5 from most Asia-Pacific countries are
not filing for global headlines at the start of
2020, trademark data may provide
not filing for pharmaceutical products
in Class 5, but for supplements
pharmaceutical insight to the challenges faced
by the Asia-Pacific region.
and nutritional foodstuffs.
products in Class 5, Trademark activity in the
Since 2015, the leading exporters
from Australia using Class 5 on
but for supplements pharmaceutical sector can be
identified by looking at Class 5
trademark registers around the
world are supplement/vitamin
and nutritional in the Nice Classification. For
applicants from a number of
producers such as Blackmores,
JBX, Max Biocare and infant milk
foodstuffs. major Asia-Pacific countries,
Class 5 is a key “export” class:
formula company Gotop Australia.
From New Zealand, the major
• Japan – third most frequently Class 5 exporters are dairy
used class for exports in 2019 companies producing infant
(after Class 9 and Class 3), formula and powdered milk,
especially into Mainland China –
• South Korea – fourth most The A2 Milk Company, Blue River
important export class in 2019 Dairy, Fonterra – or involved in
(after Classes 3, 9 and 35), the Manuka honey industry.
• Australia – fourth most The most prolific South Korean
important export class in 2019 filer around the world in Class 5 is
(after Classes 35, 9 and 41), Korean Ginseng Corporation, which
had a monopoly on the sale of red
• India – leading export ginseng in South Korea from 1899
class in 2019, and until 1996 and has since expanded
rapidly around the world.
• New Zealand – leading
export class in 2019.
18 33
www.usaid.gov/asia-regional/pandemic-influenza-and-other-emerging-threatsIndia has a more traditional Class 5 Hisamitsu Pharmaceutical. Trademark
export sector, dominated by activity strongly suggests that
pharmaceutical companies such as although the Asia-Pacific region has
Dr Reddy’s, Glenmark Pharmaceuticals much to gain from investing in and
and Sun Pharmaceuticals. commercializing novel pharmaceutical
products, the current focus is on
The Japanese export sector in nutritional supplements. This is in
Class 5 is similarly comprised direct contrast to major European
of traditional pharmaceutical countries and the United States,
companies such as Daiichi Sankyo, where pharmaceutical trademarks
Kabayashi Pharmaceuticals, have dominated supplement
Otsuka Pharmaceutical and trademarks even in recent years.
Figure 1: Trademark applications in Class 5 (2015 to 2019)
India
Switzerland
United States
Germany
United Kingdom
France
Japan
South Korea
Australia
New Zealand
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%
Pharma Supplement
Source: SAEGIS
Even in the two major countries where Due to difficulties with the allocation
traditional pharmaceutical companies of general subclasses to Mainland
dominate the sector, there have been Chinese trademark records, it was
challenges. In India the pharma sector not possible to include the Chinese
has been built on a strategy of producing trademark register in this analysis.
generic medicines cost effectively Mainland China has devoted
rather than through expensive R&D unprecedented resources in recent
and investment in product innovation. years to providing Chinese brands a
And Japan has missed opportunities to platform for global expansion. So far
commercialize research breakthroughs this has mostly involved consumer
– for example the class of drugs electronics, textiles, clothing and
known as statins were isolated by a household items, but the world could
Japanese researcher in the 1970s but benefit greatly if we see innovative
never marketed, allowing U.S. based Mainland Chinese pharmaceutical
companies such as Merck and Bristol brands start to appear on trademark
Myers Squibb to reap the benefits. registers around the world.
19The view from Beijing: Patent
activity in Mainland China
By Tianhan Wang (DWPI) patent families for invention
patents and utility models published
According to Mainland China has seen continued
rapid growth in patent filings
in Mainland China surged to an
impressive 440% in 2018 from
data from the throughout the last decade, accounting
for a significant portion of global totals
2010, in sharp contrast, volumes of
some of the world’s other largest
National Bureau and driving an overall upward trend.
As shown in Figure 1, while the total
economies, such as the United
States and Japan, remained almost
of Statistics, Derwent World Patents Index™ 34 constant or slightly declined.
Mainland China’s
R&D spending Figure 1: Growth rate in Mainland China and other jurisdictions by year
of basic publication, normalized to 2010 as baseline score of 100
has consistently 500
been above 2%
of its GDP for 400
the last five years.
300
200
100
0
2010 2011 2012 2013 2014 2015 2016 2017 2018
China, Mainland Global U.S. Japan
Source: Derwent World Patents Index
The surge of patent filings over the patent filing targets were provided in
years in Mainland China was boosted various related policies. According
by several factors, including national to data from the National Bureau of
innovation strategies, growing Statistics, Mainland China’s R&D
research and development spending spending has consistently been above
and incentive policies at both the state 2% of its GDP for the last five years,
and local levels. In Mainland China’s reaching a total of 1.97 trillion Chinese
Outline of the 12th (2011 to 2015) Yuan in 2018.35 The patenting trend
and 13th (2016 to 2020) Five-Year described above shows a strong linear
Plan for the National Economic and correlation with the R&D expenditure
Social Development, “innovation” during the same period, suggesting
became one of the key objectives for a positive output in the form of patent
national strategy. Specific metrics on filings from innovation activities.
34
www.clarivate.com/derwent/solutions/derwent-world-patent-index-dwpi/
20 35
www.gov.cn/guowuyuan/2019-08/30/content_5425965.htmIn the meantime, various subsidy A closer look at the patent data in
schemes implemented at different Mainland China reveals that, within
It is worth noting levels across the country certainly
provided additional incentives for
the total published volume each
year, approximately 40% to 50% are
that Mainland commercial entities, universities
and research institutions to rush
utility model patents. Compared
to invention patents, utility model
China has started to file patent applications. The
exploding volume of patents has
patents are small inventions for
protecting products, which have
to implement not gone unnoticed by authorities.
It is worth noting that Mainland
lower inventiveness requirements.
Further, utility model patents do not
various policies China has started to implement
various policies to regulate patent
require substantive examinations
before grant and provide a maximum
to regulate patent applications and examination
processes, attempting to shift the
of a 10-year protection period. With
limitations, utility model patents offer
applications and focus from pursuing 'quantity' to
'quality.' For example, patents filed by
a much faster route (usually less than
12 months per grant) and lower cost
examination universities are increasingly evaluated
by their ability to commercialize
to maintain. It is clear that utility model
patents are widely used as a strategy
processes. rather than by sheer volume. in Mainland China for IP protection.
Figure 2: Volume of utility model patents and invention patents published
in Mainland China, counted as DWPI families by year of basic publication
3,000,000
2,500,000
2,000,000
1,500,000
1,000,000
500,000
0
2010 2011 2012 2013 2014 2015 2016 2017 2018
Utility Models Invention Patents
Source: Derwent World Patents Index
Where are the innovation sources of increasing almost five-fold from 2010
these patents coming from? Figure 3 to 2018. Comparatively, the volume
compares patent publication volumes of patents originating from foreign
in Mainland China originating from jurisdictions and seeking protections
domestic organizations where priority in Mainland China has not changed
filings are also in China, to those where substantially, increasing by just 49%
priority filing jurisdictions are foreign. over the years. If we further break
It is not surprising to see filings from down by jurisdictions, the United States
domestic organizations delivering consistently ranks first, showing its
21 a large volume each year, in fact continued patent activities in China.It is not surprising Figure 3: Comparison of publications in Mainland China from
domestic and foreign sources, counted as DWPI families when priority
to see filings country is either China or foreign, by year of basic publication
from domestic 3,000,000
organizations
delivering a large 2,500,000
volume each year,
in fact increasing 2,000,000
almost five-fold
from 2010 to 2018. 1,500,000
1,000,000
500,000
0
2010 2011 2012 2013 2014 2015 2016 2017 2018
Priority filing is China, Mainland Priority filing is foreign
Source: Derwent World Patents Index
22In recent years Mainland China has China in 2018. The DWPI classification
led technology development in many system categorizes patent documents
industries, especially in the information into three broad areas: Chemical,
and communication technology (ICT) Engineering and Electronic and
sector, including telecommunications Electrical Engineering. Each of
and mobile internet. New technologies these is further divided into sections
and applications are being and classes which describe the
developed and commercialized technical area, or areas, covered
faster than ever before. by the patent. Digital computers
(electronic data processors, interfaces
A study on the classification codes and program control, mechanical
covered by patents published in digital computers) are ranked first
Mainland China reflects the same with more than 370k published
focus. Figure 4 lists the leading families. It is followed by industrial
DWPI classification codes36 ranked electrical equipment, and telephone
by publication volume in Mainland and data transmission systems.
Figure 4: Top-ranked DWPI classification code descriptions,
counted as DWPI families published in 2018
Digital computers
Industrial electrical equipment
Telephone and data transmission systems
Scientific instrumentation
Printed circuits and connectors
Fermentation industry
Natural products, polymers
Engineering instrumentation
Mechanical engineering and tools
Audio/Video Recording and Systems
0 1M 2M 3M 4M
Source: Derwent World Patents Index
Mainland China offers exciting market with the understanding of the overall
opportunities and at the same time intellectual property landscape in
a challenging environment. Having Mainland China will be one of the
a well-defined IP strategy in place key steps towards future success.
23 36
www.clarivate.com/derwent/dwpi-reference-center/dwpi-classification-system/.BRAND TLDs in the
Asia-Pacific region
By Heidi Zhang Usage of a .BRAND TLD
In the Asia-Pacific In 2012, when the Internet Corporation
for Assigned Names and Numbers
A .BRAND TLD provides brand
owners with the ability to control
(APAC) region (ICANN) launched its application
round for new gTLDs, 1,154 applicants
all content and use of a name
space to the right of the ’dot.’
of the world, from every continent across the globe
filed applications to operate new
With a .BRAND TLD, brand owners
can drive internet traffic to websites
105 companies gTLDs. Interestingly, many brand
owners also seized the opportunity
and relay information with very short
and memorable domains and also
applied for to apply for their own .BRAND TLDs
(for example, .MARRIOTT, .BMW,
save themselves trouble from
managing domains under
.BRAND TLDs. and .SONY) in order to create their
own internet real estate and promote
other generic TLDs. A .BRAND
domain name can be used to:
and protect their online identity.
• redirect traffic to an
In the Asia-Pacific (APAC) region of existing home page;
the world, 105 companies applied for • build a microsite;
.BRAND TLDs with some companies • launch new products;
applying for more than one. A total of • allocate brand SLDs to subsidiaries/
144 .BRAND TLDs were applied for by branches as their website;
companies in Asia-Pacific. This count • support marketing activities;
makes up 25.5% of the total .BRAND • deliver a themed program; and
TLD applications (565) filed in 2012.37 • create a new home page.
37
https://statshub.makeway.world/brand-detail-table.php
24Big companies, big .BRANDs
Among the 105 APAC applicants that filed for .BRAND TLDs, 38 belong to
Fortune 500 companies38 such as Nissan, Samsung and Toyota. A complete
breakdown of these applications is shown in the table below.39 Other notable
companies that applied for a .BRAND include Seiko, Nikon, ShangriLa and Baidu.
Organization No. of brand TLDs Country/region TLDs
Alibaba 4 China, Mainland .alibaba; .alipay; .taobao; .tmall
NISSAN 3 Japan .datsun; .infiniti; .nissan
Bridgestone Corporation 2 Japan .bridgestone; .firestone
China United Network Communications Corp Ltd 2 China, Mainland .unicom; .联通
CITIC Group Corporation 2 China, Mainland .citic; .中信
Industrial and Commercial Bank of China 2 China, Mainland .icbc; .工行
SAMSUNG SDS Co., LTD 2 South Korea .samsung; .삼성
Toyota Motor Corporation 2 Japan .lexus; .toyota
Canon Inc. 1 Japan .canon
Fujitsu Limited 1 Japan .fujitsu
Hitachi 1 Japan .hitachi
Honda Motor Co., Ltd. 1 Japan .honda
Hyundai Motor Company 1 South Korea .hyundai
KDDI 1 Japan .kddi
KIA Motors Corporation 1 South Korea .kia
Mitsubishi 1 Japan .mitsubishi
Mitsubishi Tanabe Pharma Corporation 1 Japan .mtpc
NEC Corporation 1 Japan .nec
NIPPON Telegraph and Telephone Company 1 Japan .ntt
Panasonic Corporation 1 Japan .panasonic
Reliance Industries Limited 1 India .reliance
Softbank Corp. 1 Japan .softbank
Sony Computer Entertainment Inc. 1 Japan .playstation
Sony Corporation 1 Japan .sony
State Bank of India 1 India .statebank
Suzuki Motor Corporation 1 Japan .suzuki
Tata Motors Ltd 1 India .tatamotors
TOSHIBA Corporation 1 Japan .toshiba
38
www.fortune.com/fortune500/
25 39
https://gtldresult.icann.org/applicationstatus/viewstatusAPAC .BRAND companies listed on the Fortune 500
TLD distribution than Japan, fewer companies in China
Applicants from applied for a .BRAND because most are
manufacturing companies that do not
Japan filed the Applicants from Japan filed the most depend heavily on an online presence
.BRAND TLD applications among in order to drive business. More
most .BRAND TLD all APAC countries/regions with 49. Japanese companies on the Fortune
Mainland Chinese companies followed 500 are technology and consumer
applications among with 22, and Australian applicants filed goods focused, sectors which tend to
for 19.40 This is partly explained by the understand better the importance of
all APAC countries/ industry sector of the Fortune 500 online brand presence and awareness
companies from each region on the and therefore would be more aware
regions with 49. list. Although Mainland China has more of the value of having a .BRAND.
Figure 1 .BRAND TLD distribution in different country/region
50
40
30
20
10
0
Japan
China, Mainland
Australia
Hong Kong
India
Saudi Arabia
South Korea
Singapore
Bahrain
Kuwait
United Arab Emirates
Israel
Taiwan
Thailand
Source: MarkMonitor
Industry segmentation made up It not surprising that the IT and the
more than half of the .BRAND TLDs banking and financial sectors were a
and spanned a variety of industry major focus, as these industries are often
sectors including telecommunications, the target of abuse and domain name
information technology, banking and infringement and they have multiple
financial and consumer electronics. portals to interact with internet users.
26 40
https://gtldresult.icann.org/applicationstatus/viewstatusFigure 2 .BRAND industry segmentation
1 2 3
4 5 6 7
8 9
12 13 14 15
10
11
17 18 19 20
16 21 22 23 24
1. Telecommunications 9. Education 17. Business Services
2. Banking and Financial 10. Real Estate 18. Health
3. Information Technology 11. Manufacturing 19. Internet Services
4. Consumer Electronics 12. Energy 20. Logistics
5. Automotive 13. Retail 21. Clothing and Accessories
6. Industrial 14. Travel 22. Insurance
7. Media 15. Associations 23. Miscellaneous
8. Pharmaceutical 16. Manufacturing 24. Sports
Source: MarkMonitor
Launching a .BRAND TLD
The first launched .BRAND TLDs were 2019, 86 of the 144 .BRAND TLDs had
.citic and (.中信), in 2014 soon after launched. Half of APAC’s .BRAND TLDs
they were delegated. As of the end of were launched in 2015, 2016 and 2017.41
Figure 3.
Year (.BRAND TLDs)
2014 (4)
2015 (37)
APAC .BRAND
2016 (25)
TDLs launch
2017 (11)
status
2018 (7)
2019 (2)
Not launched (58)
Source: MarkMonitor
27 41
https://newgtlds.icann.org/en/program-status/sunrise-claims-periodsFigure 4. Website resolution
Redirecting, registered only and resolving by country/region
Australia
Japan
Kuwait
Hong Kong
China, Mainland
India
Saudi Arabia
Singapore
Thailand
Israel
Bahrain
South Korea
Taiwan
United Arab Emirates
Registered Only Redirecting Resolving
In the picture above, you can see the top down ranking of resolving, redirecting
and registered only domain volume in 14 countries and regions in APAC.42
Registered only
Country/region Resolving domains Redirecting domains
domains
Australia 101 120 329
Bahrain 0 0 2
China, Mainland 43 8 380
Hong Kong 3 14 17
India 35 7 85
Israel 6 3 12
Japan 179 51 373
South Korea 3 0 33
Kuwait 4 35 13
Saudi Arabia 4 5 8
Singapore 1 5 5
Taiwan 0 0 0
Thailand 5 4 33
United Arab Emirates 1 0 0
Total 385 252 1,290
28 42
https://statshub.makeway.world/brand-detail-table.phpChallenges to know that they have a .BRAND TLD to
.BRAND operation make use of. If anyone needs to apply
for a domain name under a .BRAND,
the internal process can be difficult.
As seen in the table above, there
are 1,927 second level domains Finally, some brands just want to wait
registered under APAC .BRAND TLDs, and see how others are using their
but only 637 active domain names .BRAND TLDs and learn from their
that resolve or redirect and that are successes or failures. The learning curve
actively in use. The percentage is is steep and brand owners are generally
only 33%, while the global number cautious. The more .BRANDS they see
is 65.6% (total registration is 19,550 in the marketplace, the more inclined
while 12,833 domain names are they may be to launch their own.
resolving or redirecting).
Why aren’t more companies using their
.BRAND TLDs? The reasons are many. Looking ahead
First, many companies are concerned .BRAND TLDs provide brand owners
they might lose traffic if they switch from the opportunity to use their brand
their current domain name (most likely names as their top-level domain and
a .COM or .CN) to a .BRAND. A second manage the internet space under it.
reason is that the new gTLDs strings are Based on the current status of how
not well recognized or supported by .BRAND TLDs are used, there is still
browsers. Sometimes a domain name work to be done in socializing domain
with a new gTLD cannot be opened knowledge and engaging .BRAND
and causes a bad user experience. TLD operators in industry discussions.
As time goes on, we will see more
In addition, operational policies for and more .BRAND TLDs come online
a .BRAND take planning and effort and serve brand owners better.
to develop and many companies
don’t have resources to commit to Although some brand owners took
this effort. As companies have unique the initiative and applied for their
business models, organizational brand TLDs in 2012, there are many
structures and product features, companies that missed this opportunity
there is no single universal .BRAND and must wait for the next round
usage pattern for brand owners to of new gTLD applications to open,
refer to. It is very challenging for expected sometime in 2022. In the
brand owners to develop operational meantime, brands will benchmark
policies and procedures due to lack against their peers and the pioneers
of proficiency and resources. in .BRAND TLD usage. Because the
first round of new gTLDs covered a
A fourth reason for the lack of usage can lot of generic and short words, the
be an absence of communication within number of .BRAND applications in
the brand company. For example, the the next round is expected to surpass
technical or marketing team may not the number of generic TLDs.
29New provisions on punitive
damages for willful patent
infringement in South Korea
By Jeeyoon Park v) how frequently and how
long the infringing activity
The new The biggest IP news of 2019, as
selected by IP experts in South Korea,
was committed;
legislation on is the introduction of new provisions
in relation to punitive damages, which
vi) the criminal penalty for
the infringing activity;
punitive damages took effect in July 2019.43 According to
these provisions, a court can award up vii) the infringer’s financial
is expected to to triple the amount of compensatory
damages in the case of a patent and
status; and
prevent defendants utility model infringement,44 where
‘willfulness’ is confirmed. The new
viii) what efforts the infringer
has made to reduce
and others from legislation on punitive damages is
expected to prevent defendants and
the harm to the patent owner.
exploiting any others from exploiting any patented
item without the permission of the
In the past, patent owners had
a heavier burden of proof than an
patented item patent holder beforehand, by imposing
harsher punishments for alleged
accused infringer in infringement
litigation. The lawsuit would be
without the infringers. The newly-added provisions
can be found in article 128 (claim for
filed with evidence such as a
scope of infringement and infringing
permission of compensation for damages) of the
Korean Patent Act, new paragraphs
products, which was considered
impossible to prove when the
the patent holder 8 and 9 which state the following: infringer refused to submit this
data. Furthermore, even if proven
beforehand. 8) Notwithstanding paragraph 1, the
court may award damages up to
to be a patent violation, the amount
of compensation from the act of
three times the amount of damages infringement is, in most cases,
determined pursuant to paragraphs ironically smaller than the
2 to 7, if the activity infringing profits gained by the infringer
the patent right or the exclusive during their illegal conduct.
license right is found to be willful.
In the United States, where punitive
9) The court shall consider each of the damages have been enforced
following factors in considering the for a long period of time, judges
damages pursuant to paragraph 8: impose a more significant amount
of compensation for damages in
i) whether the infringer has patent infringement than in South
a dominant position; Korea. As a matter of fact, according
to data sourced from Darts-ip, the
ii) whether the infringer knew number of cases involving damages
the act of infringement would of more than $10,000 USD in patent
cause harm to a patent owner; infringement actions is approximately
five times higher in the United
iii) the significance of any States than in South Korea.45 Thus,
such damages; the damage compensation laws
prior to the reform did not have any
iv) the economic benefits to the particular influence in discouraging
infringer from the infringement; potential infringers in South Korea.
43
The system is defined by about 16 other provisions, including the Patent Act, the Unfair Competition Prevention and Trade Secret
Protection Act, etc., but this article focuses on patent and utility model infringement.
44
The patent infringement mentioned throughout this article includes utility model infringement.
30 45
app.darts-ip.com, The cases ruled more than 10,000 USD of the compensation for damages between 2010 and 2019.The newly-added provision is also records and arguments” (darts-793-
meaningful in terms of supporting 587-B-ko). This is clearly insufficient for
small and medium-sized enterprises determining the ‘intention’ as multiple
(SMEs). The Korean Intellectual factors are involved in a broad concept.
Property Office (KIPO) enforces
many policies for the sake of SMEs, Nevertheless, it should be pointed
for example, the reduction of patent out that an infringement trial usually
application and/or registration fees. becomes divided into two parts in
In this regard, the introduction of the South Korea. On one hand, a patent
new provisions can be interpreted as infringement is a criminal proceeding
being favorable to SMEs, protecting that entails certain penalties, such as
against the ‘intentional’ patent imprisonment or fines to an accused
violations by large multinational infringer. On the other hand, the
corporations. Consequently, a compensation comes as a result of
guideline46 has been published by a civil proceeding and must be filed
the KIPO, primarily for SMEs, to separately by a patentee in order to get
provide instructions for preventing compensated up to triple the amount.47
infringement as well as informing For this reason, there has been some
how to confront large companies, as opposition to the new damage provision,
SMEs usually lack the resources to as it could lead to confusion between civil
do so on their own. Furthermore, it and criminal laws resulting in potential
is noteworthy that stronger penalties double punishment of the infringers.
can be imposed in the context
of malicious, willful infringement In conclusion, the guidebook48
where large corporations abuse their addresses several cases49 that may
dominant position on patents held be identified as acts of infringement
by SMEs or private patentees. committed ‘knowingly and purposely’;
however, the judgment may vary
However, this new legislation does depending on experts’ views and
give rise to an important question: judges’ discretion. Opponents of this
how can 'willfulness’ be defined? new measure claim that the punitive
damage implementation may create
Most of the cases to date cite a Supreme abuse by patentees, and the divided
Court decision on May 27, 2005 (2004 proceedings between civil and
다60584), stating that “the damages criminal trials might put an additional
can be calculated by comprehensively burden on both patent holders and
considering the circumstances and infringers. Therefore, the introduction
background of the infringement of these provisions seems to favor small
of the patent rights, the nature and patent holders and SMEs; however,
market conditions of the operation, it may be different in practice. As
the duration in which the infringement we proceed through 2020 with this
of the patent rights was sustained, the change, it will be important to develop
attitude or the willfulness of infringers concrete cases in order to promote
during the infringement dispute and mutual growth and fair judgement
other circumstances shown in the in the field of patent infringement.
46
“A preventive guideline for SMEs of the introduction of punitive damages resulted from willful patent infringement”, KIPO, Jan.2020.
47
www.junggi.co.kr/article/articleView.html?no=24597
48
Referenced in footnote 29.
49
1) an act of Infringement after receiving a warning letter or a lawsuit has been filed
2) an act of infringement after the termination of the license contract
31 3) an act of infringement in cases to believe that he was well aware of the patent.You can also read
