Latest Legal Update Express [Intellectual Property] | The Hong Kong Advantage | IP Legal Development
“The intellectual property situation is getting from bad to worse. To be a programmer, it requires that you understand as much law as you do technology.” - Eric Allman
It has long been said that innovation without the guarantee that the creator will be able to enjoy one’s fruits of labour is the ultimate contraception to innovation. It has also long been observed that countries failing to ensure proper IP protection carries grave consequences, ranging from massive brain drain (its environment not conducive to innovative minds) to wars breaking out (e.g. monetary drain as a result of rampant IP thefts).
Accordingly, the country which offers the best protection will naturally attract young businesses as they also offers the best springboard for entrepreneurs to make the jump from start-ups to corporatization.
To understand how each jurisdiction offers intellectual property protection, the following is a brief analysis of the various latest IP Law developments across the globe:
Pursuant to the Trade Marks (Amendment) Ordinance 2020 gazetted on 19 June 2020, a new Part XA was added to the Hong Kong Trade Marks Ordinance providing a basis for the application of the Madrid Protocol in Hong Kong.
The new sections in the Trade Marks Ordinance relating to Madrid Protocol will come into force on a day to be appointed by the Secretary for Commerce and Economic Development after completing the relevant preparatory work. The current roadmap is to implement the Madrid Protocol in Hong Kong by 2022-2023 the earliest.
2. People’s Republic of China (“PRC”)
The fourth amendment of the Chinese Patent Law (2020) will shortly come into effect, on 6th June 2021. Significant points of the new law includes: (1) A partial design system is introduced into the law; (2) The protection period of design patent sis extended to 15 years; (3) A domestic priority system for design patents is provided for.
3. United Kingdom (the “UK”)
2021 marked the end of the transition period for the UK’s departure from the EU. Whilst around 2 million registered EU rights have been automatically cloned onto the UK register, applicants are reminded that any EU trade mark / design applications that were pending on 31 December 2020 will require further action. Should protection in the UK be required from these pending applications, it will be necessary to re-file nationally at the UK IPO (at normal costs). If this is done within a nine-month grace period ending on 30 September 2021, these rights will be back-dated to the EU filing date. Such applications will be examined separately under UK law by the UK IPO.
4. United States of America (the “USA”)
The COVID-19 relief and government funding bill that became law on December 27, 2020, incorporates three sections focused on intellectual property-related measures: the Copyright Alternative in Small-Claims Enforcement Act (“CASE Act”), which amends certain provisions of the Copyright Act, 17 U.S.C. § 101 et seq; amendments to the Federal Criminal Code that make it a felony to engage in unauthorized streaming of copyrighted content (commonly referred to as the Protecting Lawful Streaming Act); and the Trademark Modernization Act, which includes revisions to the Lanham Act, 15 U.S.C. § 1051 et seq.
It has been announced that the official fees for various IP matters in Australia will be increasing with effect from 1st October 2020, while a small number of fees will decrease. Of particular significance for patent cases are increases in excess claim fees and in the renewal/maintenance fees. The latter will increase on a sliding scale up to AUS$2650 per year for standard patents and up to AUS$8000 for pharmaceutical patents that have been extended beyond their 20-year term.
For trademarks, the increases affect, inter alia, the filing fees for applications that do not utilise IP Australia’s pick list of goods and services, as well as the cost of designating Australia as part of an International Registration (the latter taking effect from 7th November 2020). Vis-à-vis design cases, the fee changes include increased renewal fees and the addition of a new fee for incorporating more than one individual design of the same category into a design application.
There is an old saying that there is only one chance to make a good first impression. Hong Kong being prime common law the gateway into China is in reality the sole city in a position to provide such first impression to the world.
The latest developments has shown how Hong Kong is quickly catching up to its contemporary counterparts in terms of providing good IP protection to businesses. Whilst Hong Kong it has an advanced filing system that facilitates registrations and IP actions, but in terms of IP legislation it is still catching up (e.g. just recently considered applying the international Madrid Protocol).