Best Law Firms for Patents, Trademarks and More

MCI (P) 029/02/2019 issn 0219 – 6875 KDN PPS 1867/10/2015(025605) IP RANKINGS 2019 BEST LAW FIRMS FOR PATENTS, TRADEMARKS AND MORE

PLUS: CLIENTS PICK THE BEST OFFSHORE LAWYERS / NORTH ASIAN INVESTMENT POURS INTO INDONESIA / WHAT TO MAKE OF THAILAND’S RECENT ELECTION? / THE WINNERS AND THE PHOTOS FROM THE MALAYSIA LAW AWARDS COVER STORY

CHINA INTERNATIONAL* PATENTS

TIER 1 • Allen & Overy • Baker McKenzie/Baker McKenzie IP RANKINGS 2019 FenXun (FTZ) Joint Operation Office As Asia becomes a major innovation hub, and the • Bird & Bird • CMS filing of patents and trademarks continues at pace, • Deacons • Finnegan, Henderson, Farabow, law firms specialising in intellectual property are finding Garrett & Dunner • Hogan Lovells themselves increasingly in demand. In the 2019 edition of • Jones Day • Mayer Brown its annual list, ALB once again picks the top firms for • Morgan, Lewis & Bockius • Morrison & Foerster IP work across the region. • Norton Rose Fulbright • Orrick, Herrington & Sutcliffe • Perkins Coie BY ASIAN LEGAL BUSINESS • Ropes & Gray • Rouse

TIER 2 sia’s rise as an innovation hub has surpass the current PCT country leader, the • DLA Piper been building up in recent years, U.S., within the next two years. In 2018, the • Freshfields Bruckhaus Deringer • MMLC Group but it was in 2018 when the region U.S. filed 56,142 PCT applications and China • Stephenson Harwood became officially the world’s biggest trailed close with 53,345 PCT applications. • Skadden, Arps, Slate, Meagher & Flom source of next-generation inno- They were followed by Japan which ended • Spruson & Ferguson vations, producing more interna- the year with 49,702 PCT applications. • Quinn Emanuel Urquhart & Sullivan tional patent filings than Europe and North India, despite its still relatively smaller • Vivien Chan & Co AAmerica combined. number of PCT applications with 2,013 The United Nations (UN) specialized PCT applications in 2018, was one of the TIER 3 • Clifford Chance agency for intellectual property (IP), the two countries, along with Finland, which • Dechert World Intellectual Property Organization achieved double-digit growth at 27.2 percent • Marks & Clerk • Oldham, Li & Nie (WIPO), reported that more than half of among the top 15 origins of PCT applica- • Simmons & Simmons the record-breaking quarter-million inter- tions. Asia’s top three industrial leaders all • Squire Patton Boggs national patent applications last year were grew by a single digit in their PCT filings • Wilkinson & Grist filed by innovators from Asia. in 2018 with China growing by 9.1 percent, COPYRIGHT/TRADEMARKS “Asia is now the majority filer of interna- South Korea by 8 percent and Japan by 3.1 TIER 1 tional patent applications via WIPO, which percent. • Baker McKenzie/Baker McKenzie is an important milestone for that econom- Six companies from Asia were in the FenXun (FTZ) Joint Operation ically dynamic region and underscores the top ten list of top company applicants for Office • Bird & Bird historical geographical shift of innova- PCT filings in 2018. These were Huawei • CMS tive activity from West to East,” said WIPO Technologies, Mitsubishi Electric, ZTE, • Deacons • DLA Piper Director General Francis Gurry. Samsung Electronics, BOE Technology • Finnegan, Henderson, Farabow, Of the total 253,000 patent applications Group and LG Electronics. China’s telecoms Garrett & Dunner • Freshfields Bruckhaus Deringer filed in 2018 with WIPO’s Patent Cooperation giant Huawei Technologies was the top • Hogan Lovells Treaty (PCT), the system used by individ- corporate filer last year with 5,405 PCT • Mayer Brown uals and organizations to file simultaneous applications. On the other hand, the other • Morgan, Lewis & Bockius • Orrick, Herrington & Sutcliffe patent applications in multiple foreign juris- Chinese corporate giant ZTE, which was the • Perkins Coie dictions, Asia cornered 50.50 percent share top applicant in 2016, saw a 29.8 percent • Rouse • Stephenson Harwood of the total. Europe had 24.5 percent of the drop in the number of PCT filings in 2018, • Wilkinson & Grist total while North America had 23.1 percent of marking the second straight year of declines • Vivien Chan & Co the total. Total PCT filings in 2018 increased in PCT filings for the company. TIER 2 by 3.9 percent from the previous year. A new first for China last year was that • Allen & Overy Among Asian jurisdictions, China, while for the first time in WIPO’s PCT history, • Eiger • Jones Day posting its slowest growth in PCT applica- Chinese universities started to appear in the • MMLC Group tions since 2002, was seen by WIPO as set to top 10 list of universities with the greatest • Norton Rose Fulbright • Ropes & Gray • Spruson & Ferguson *For the China domestic rankings, see the May 2019 edition of Asian Legal Business China

18 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY

• Quinn Emanuel Urquhart & • Robin Bridge & John Liu • Mason & Associates TIER 3 Sullivan • Simmons & Simmons • R.K. Dewan & Co • Assegaf Hamzah & Partners • Skadden, Arps, Slate, • RNA IP Attorneys • Citius Intellectual Property Meagher & Flom TIER 3 • Singh & Singh Lall & Sethi • HeruLukito & Partners • Simmons & Simmons • Barron & Young • Subramaniam, Nataraj & • Lumenta, Sitorus & Partners • Squire Patton Boggs • Clifford Chance Associates • Makarim & Taira S. • Jones Day • ZeusIP • Pulungan, Wiston & Partners TIER 3 • Morrison & Foerster • Prawiranegara • Clifford Chance • Spruson & Ferguson TIER 3 • Stephenson Harwood • Dechert • Squire Patton Boggs • DePenning & DePenning • Marks & Clerk • K&S Partners • Oldham, Li & Nie • Krishna & Saurastri Associates • Mason & Associates JAPAN DOMESTIC INDIA • Phoenix Legal PATENTS HONG KONG PATENTS • Samvād: Partners, Advocates TIER 1 PATENTS TIER 1 • Abe, Ikubo & Katayama • Anand and Anand INDONESIA • Anderson Mori & Tomotsune TIER 1 • Chadha & Chadha • Mori Hamada & Matsumoto • Baker McKenzie • Khaitan & Co PATENTS • Nagashima Ohno & Tsunematsu • Bird & Bird • K&S Partners • Nakamura & Partners • Deacons • Lakshmikumaran & Sridharan TIER 1 • Oh-Ebashi LPC & Partners • Hogan Lovells • L&L Partners • Am Badar & Partners • Orrick, Herrington & Sutcliffe • Remfry & Sagar • Dwipo Lubis Baskoro & Partners TIER 2 • HHP Law Firm • Abe & Partners TIER 2 TIER 2 • Rouse -Suryomurcito & Co • Atsumi & Sakai • AWA Asia • Ajay Sahni & Associates • SKC Law • Fukami Patent Office • Barron & Young • Beruar & Beruar • Tilleke & Gibbins • Itoh International Patent Office • DLA Piper • Cyril Amarchand Mangaldas • Nishimura & Asahi • ELLALAN • Fox Mandal & Associates TIER 2 • Ohno & Partners • Freshfields Bruckhaus Deringer • IndusLaw • Acemark IP • Onda Techno Intl. Patent Attys. • Jones Day • Khaitan & Co • AMR Partnership • RYUKA IP Law Firm • Mayer Brown • Khurana & Khurana • Barumun International Patent • Seiwa Patent & Law • Morrison & Foerster • Rahul Chaudhry & Partners • Biro Oktroi Roosseno • Shiga International Patent Office • Nixon Peabody (formerly Lall Lahiri & Salhotra) • George Widjojo & Partners • Soei Intellectual Property Law • Oldham, Li & Nie • Majmudar & Partners • Hadromi Adnan IP Group • Sugimura & Partners (formerly • Quinn Emanuel Urquhart & • Mason & Associates • Inter Patent Office Sugimura International Patent & Sullivan • R.K. Dewan & Co • Januar Jahja & Partners Trademark Attorneys) • Stephenson Harwood • Singh & Singh Lall & Sethi • K&K Advocates • TMI Associates • Wilkinson & Grist • Subramaniam, Nataraj & • Pacific Patent Multiglobal • Winston & Strawn+ Associates • Roosdiono & Partners COPYRIGHT/TRADEMARKS • Vivien Chan & Co TIER 3 TIER 3 TIER 1 TIER 3 • ALMT Legal • Assegaf Hamzah & Partners • Anderson Mori & Tomotsune • Dechert • AZB & Partners • Budidjaja International Lawyers • Atsumi & Sakai • Eagle IP • DePenning & DePenning • Citius Intellectual Property • Mori Hamada & Matsumoto • Morgan, Lewis & Bockius • Fidus Law Chambers • Lumenta, Sitorus & Partners • Nagashima Ohno & Tsunematsu • Norton Rose Fulbright • Mason & Associates • Makarim & Taira S. • Nakamura & Partners • Oldham, Li & Nie • Perfexio Legal • Pulungan, Wiston & Partners • TMI Associates • Robin Bridge & John Liu • RNA IP Attorneys • Prawiranegara International • Stephenson Harwood • Samvād: Partners Patent & Trademark TIER 2 • Squire Patton Boggs • Saikrishna & Associates • SS&R Legal Consultants • Anderson Mori & Tomotsune • ZeusIP • Stephenson Harwood • Fukami Patent Office COPYRIGHT/TRADEMARKS • Nishimura & Asahi COPYRIGHT/TRADEMARKS COPYRIGHT/TRADEMARKS • Oh-Ebashi LPC & Partners TIER 1 • Seiwa Patent & Law • AWA Asia TIER 1 TIER 1 • Shiga International Patent Office • Baker McKenzie • Ajay Sahni & Associates • Assegaf Hamzah & Partners • Sugimura International Patent & • Bird & Bird • Anand and Anand • HHP Law Firm Trademark Attorneys • Deacons • AZB & Partners • Inter Patent Office • Abe, Ikubo & Katayama • DLA Piper • Beruar & Beruar • Januar Jahja & Partners • Itoh International Patent Office • ELLALAN • Chadha & Chadha • K&K Advocates • Oh-Ebashi LPC & Partners • Hogan Lovells • Cyril Amarchand Mangaldas • Roosdiono & Partners • Ohno & Partners • Mayer Brown • Fox Mandal & Associates • Rouse - Suryomurcito & Co • Onda Techno Int. Patent Attys. • Orrick, Herrington & Sutcliffe • IndusLaw • SKC Law • Ryuka IP Law Firm • SIPS • Khaitan & Co • Tilleke & Gibbins • Soei Intellectual Property Law • Stephenson Harwood • K Law/Krishnamurthy & Co • Wilkinson & Grist • Rahul Chaudhry & Partners TIER 2 • Vivien Chan & Co (formerly Lall Lahiri & Salhotra) • Acemark IP • L&L Partners • Am Badar & Partners JAPAN INTERNATIONAL TIER 2 • Remfry & Sagar • Barumun International Patent • Dechert • Saikrishna & Associates • Biro Oktroi Roosseno PATENTS • Freshfields Bruckhaus Deringer • Budidjaja International Lawyers • Nixon Peabody TIER 2 • Dwipo Lubis Baskoro & Partners TIER 1 • Norton Rose Fulbright • Fidus Law Chambers • George Widjojo & Partners • Baker McKenzie • Oldham, Li & Nie • Khurana & Khurana • Hadromi Adnan IP Group • Finnegan, Henderson, Farabow, • Quinn Emanuel Urquhart & • Lakshmikumaran & Sridharan • Pacific Patent Multiglobal Garrett & Dunner Sullivan • Majmudar & Partners • Hogan Lovells

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 19 COVER STORY

• Morgan, Lewis & Bockius • Lee & Lee • Ropes & Gray • Morrison & Foerster • OC Queen Street • Orrick, Herrington & Sutcliffe PHILIPPINES • Rajah & Tann TIER 3 • Quinn Emanuel Urquhart & PATENTS • WongPartnership • Barun IP & Law Sullivan • CENTRAL International • Ropes & Gray TIER 1 TIER 2 Law Firm • ACCRALAW • CNP Law (formerly Colin Ng & • Cho & Partners TIER 2 • Castillo Laman Tan Pantaleon & Partners) • Jipyong • Foley & Lardner San Jose • Eversheds Harry Elias • Kim, Choi & Lim • Mayer Brown • Cruz Marcelo and Tenefrancia • Joyce A. Tan & Partners • Muhann Patent & Law Firm • Squire Patton Boggs • Quisumbing Torres • Ravindran Associates • Stephenson Harwood • Romulo Mabanta Buenaventura • RHTLaw Taylor Wessing • YOU ME Patent & Law Firm COPYRIGHT/TRADEMARKS Sayoc & De Los Angeles • Samuel Seow Law • YP Lee Mock & Partners • SyCip Salazar, Hernandez & TIER 1 Gatmaitan TIER 3 • Baker McKenzie • Villaraza & Angangco • Davies Collison Cave • Hogan Lovells • Mayer Brown TAIWAN • Morrison & Foerster • Mirandah Asia TIER 2 PATENTS • Orrick, Herrington & Sutcliffe • Baranda & Associates • Morgan Lewis • Robinson LLC • Bengzon Negre Untalan TIER 1 TIER 2 • Stephenson Harwood • Betita Cabilao Casuela • Baker McKenzie • Finnegan, Henderson, Farabow, • Spruson & Ferguson Sarmiento • Finnegan, Henderson, Farabow, Garrett & Dunner • Carag Caballes Jamora & Somera Garrett & Dunner • Foley & Lardner • MarksPro • Jones Day • Mayer Brown • Puyat Jacinto & Santos • Lee and Li • Morgan, Lewis & Bockius SOUTH KOREA • Squire Patton Boggs • Saint Island International PATENTS Patent & Law Offices SINGAPORE • Tai E International Patent & Law TIER 1 • TIPLO MALAYSIA PATENTS • Bae, Kim & Lee • Kim & Chang TIER 2 PATENTS TIER 1 • Lee & Ko • Chen & Lin • Allen & Gledhill • Ropes & Gray • Formosan Brothers TIER 1 • Amica Law • Shin & Kim • Formosa Transnational • Marks & Clerk • Baker McKenzie Wong & Leow • Yoon & Yang • Tsar & Tsai • Shearn Delamore & Co • Bird & Bird ATMD • Yulchon • Skrine • Dentons Rodyk TIER 3 • Tay & Partners • Drew & Napier TIER 2 • Deep & Far • Wong & Partners • Donaldson & Burkinshaw • C&S Patent and Law Office • Eiger • ZICO IP • JurisAsia+ • Dr. Ahn International Patent • Tsai, Lee & Chen • Lee & Lee Law Office • Winkler Partners TIER 2 • Marks & Clerk • Finnegan, Henderson, Farabow, • Christopher & Lee Ong • Rajah & Tann Garrett & Dunner COPYRIGHT/TRADEMARKS • LAW Partnership • Royal Patent & Law Firm • Rahmat Lim & Partners TIER 2 • Lee International IP & Law Group TIER 1 • Raja Darryl & Loh • Davies Collison Cave • Baker McKenzie • Shook Lin & Bok • Eversheds Harry Elias TIER 3 • Chen & Lin • Joyce A. Tan & Partners • AIP Patent & Law Firm • Eiger TIER 3 • Mayer Brown • AJU Kim Chang & Lee • Lee and Li • Lee Hishammuddin Allen & • Morgan Lewis • Barun IP & Law • Saint Island International Gledhill • OC Queen Street • CENTRAL Intellectual Property Patent & Law Offices • Wong Jin Nee & Teo • Ravindran Associates & Law • Tai E International Patent & Law • Cho & Partners • RHTLaw Taylor Wessing • Tsar & Tsai COPYRIGHT/TRADEMARKS • Kasan IP & Law Firm • Spruson & Ferguson • TIPLO • Kim, Choi & Lim • Viering, Jentschura & Partner • Winkler Partners TIER 1 • Koreana Patent Firm • LAW Partnership • Muhann Patent & Law Firm TIER 3 TIER 2 • Lee Hishammuddin Allen & • Stephenson Harwood • Cantab IP • Deep & Far Gledhill • CNP Law (formerly Colin Ng & • Yangjae Law Firm • Finnegan, Henderson, Farabow, • Marks & Clerk Partners) • YOU ME Patent & Law Firm Garrett & Dunner • Rahmat Lim & Partners • Gateway Law Corporation • Y.P. Lee Mock & Partners • Formosa Transnational • Shearn Delamore & Co • Mirandah Asia • 5T International Patent Law Firm • Formosan Brothers • Skrine • Samuel Seow Law • Jones Day • Shook Lin & Bok • Stephenson Harwood COPYRIGHT/TRADEMARKS • Tsai, Lee & Chen • Tay & Partners • WongPartnership • Wong & Partners TIER 1 • ZICO IP COPYRIGHT/TRADEMARKS • Bae, Kim & Lee • Kim & Chang THAILAND TIER 2 TIER 1 • Lee & Ko • Christopher & Lee Ong • Allen & Gledhill • Yoon & Yang PATENTS • Raja Darryl & Loh • Amica Law • Yulchon • Wong Jin Nee & Teo • Baker McKenzie Wong & Leow TIER 1 • Bird & Bird ATMD TIER 2 • Baker McKenzie • Dentons Rodyk • AJU Kim Chang & Lee • Domnern Somgiat & Boonma • Drew & Napier • Finnegan, Henderson, Farabow, • Rouse • Donaldson & Burkinshaw Garrett & Dunner • Tilleke & Gibbins • JurisAsia LLC+ • KBK Patent Law Office • ZICO IP • Gateway Law Corporation • Lee International IP & Law Group

20 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY

TIER 2 number of PCT applications. Joining the global companies. The latest amendment to • Apisith & Alliance • Chavalit & Associates U.S.-dominated list that was led by the the city’s IP arbitration law, which clarifies • Satyapon & Partners University of California were the four Chinese that all disputes over IPs could be resolved • Siam Premier International • Vidon & Partners universities: Shenzhen University, South by arbitration, took effect at the start of last China University of Technology, Tsinghua year. TIER 3 • Ananda IP University, and China University of Mining • Dej – Udom & Associates and Technology. THE FUTURE OF ASIAN IP • Dharmniti Law Office Now considered as the biggest source of • Mayer Brown ASIA AS CENTRE OF GLOBAL IP global innovations and the priority market COPYRIGHT/TRADEMARKS PROTECTION for IP protection by foreign companies, Asia

TIER 1 WIPO’s “IP Indicators 2018”, using IP filing is set to continue to stretch the boundaries • Baker McKenzie numbers in 2017, showed that Asia has of IP development and protection. New • Domnern Somgiat & become the centre of IP protection for global developments led by the now ubiquitous Boonma • Tilleke & Gibbins technologies, brands and designs. This illus- buzzwords of AI (artificial intelligence), • ZICO IP trates the growing investments of global fintech and blockchains, to name a few, are TIER 2 companies to protect their businesses and seen to continue to shape the future of IP • Apisith & Alliance IP’s in the world’s fastest-growing region. prosecution, enforcement and litigation in • Chavalit & Associates Commenting on the report, WIPO’s the region. • Rouse • Satyapon & Partners Gurry has noted: “Demand for IP protection is Some IP offices in the region are getting • Siam Premier International rising faster than the rate of global economic ready. • Vidon & Partners growth, illustrating that IP-backed innova- For one, Taiwan’s IP Office released last TIER 3 tion is an increasingly critical component of year an analysis report on fintech-related • Ananda IP • Dej – Udom & Associates competition and commercial activity.” patent applications made in the last decade • Dharmniti Law Office From patents and trademarks to indus- to be able to “find out the direction of tech- • Mayer Brown trial designs, China received the biggest nology development and application for the number of applications filed worldwide. fintech industry in the future.” “The fintech VIETNAM China’s IP office received the highest number industry has boomed in many countries and of patent applications in 2017 at 1.38 million, the number of fintech patents has been on PATENTS the highest volume of trademark filings the increase over the years. In contrast, the TIER 1 at 5.7 million, and the highest number of number of fintech-related patents in Taiwan • Baker McKenzie • Pham & Associates design applications at 628,658 or about is relatively low and the island lacks many • Tilleke & Gibbins 50.6 percent of the world total. of the core technologies to develop the • Vision & Associates Combined, Asian IP offices received 65.1 industry,” read part of the report. TIER 2 percent of all applications filed worldwide In Japan, its IP office published last • Hogan Lovells in 2017; 66 percent of all international year its “Guide to Licensing Negotiations • Indochine Counsel • InvestConsult Group trademark filing activity; and 67.9 percent involving Standard Essential Patents.” • Rouse of all designs in applications filed worldwide. With the aim of being used to facilitate SEP • SB Law With Asian companies expanding at (standard essential patents) licensing nego- • ZICO Law full speed outside the region, global and tiations, the report analysed case laws and TIER 3 local law firms alike have been tapped to guidelines relevant to SEP in major countries • Bross & Partners • IPMAX Law register their IP rights abroad, negotiate and to identify those elements requiring consid- • Phuoc & Partners close licensing agreements, and work on eration in negotiations. • Mayer Brown infringement cases and enforcement initi- The rise of biosimilars and the aggres- COPYRIGHT/TRADEMARKS atives, among others. siveness of generic pharmaceutical Acting for Alibaba, Tier 1 firm Mayer companies are also seen to shape the future TIER 1 • Baker McKenzie Brown worked on several trademark and of patent litigation in Asia’s most tech- • Bross & Partners domain name disputes for the Chinese nology-heavy jurisdictions. • Hogan Lovells • IPMAX Law e-commerce giant in China and in a number In China, one development that is seen • Tilleke & Gibbins of jurisdictions in Asia and also in Europe. to drive the increase in the number of patent • Vision & Associates Outside China, Hong Kong and disputes is the clinical trials being conducted TIER 2 Singapore have been increasingly used as by local generic pharmaceutical companies. • Indochine Counsel strategic launch pads for IP prosecution and Along with the rapid migration of trade • InvestConsult Group • Pham & Associates enforcement to the rest of jurisdictions in activities from the physical stores to the • Rouse the Asia Pacific. online and digital environments, these are • SB Law Hong Kong is strengthening its position to make Asia an even exciting region for IP • ZICO Law as a preferred location for IP arbitration for in the coming years.

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 21 BROUGHT TO YOU BY ANAND AND ANAND Q&A with Pravin Anand, managing partner, Anand and Anand

What do you feel sets your firm apart from the top damages orders on compensatory, your peers? punitive and aggravative damages, contempt a) The ability to collaborate with persons from jurisprudence and the development of unique different disciplines, for example, lawyers remedies (the tree planting order, providing the and engineers or departments such litiga- sanitary towels to adolescent girls in govern- tion, trademarks and patents department ment schools, providing sports equipment’s or to form teams with competing firms on such as footballs to underprivileged schools and big matters installation of water purifiers) which go beyond b) A multi-disciplinary approach. Apart from Pravin Anand the standard statutory reliefs, have created a knowledge of law, our ability to have an Managing Partner strong intellectual property enforcement wave. additional skill (e.g. law and engineering/ E: [email protected] This is a step towards promoting public interest science or law and finance for valuation giving full advantage to the IP owner for their and commercialization or law and business corporate social responsibilities. Perhaps it is management etc.). mind set of judges in the back drop of the for the first time that public interest has been c) A third skill is what we seem to have Commercial Courts Act and other changes that a focal attention through IP enforcement. The inculcated -namely a curious mind. Our have added huge speed in the dispute resolution firm’s involvement in assisting in policy and firm members are keen in learning and process; the hunger for high technology and legislative work along with its efforts to create acquiring skills in diverse fields creating a its smart use; and behavioural understanding love for IP is unsurpassed. right atmosphere for innovation. in an increasingly intolerant and competitive environment. Anand and Anand What is the key to being a successful firm in First Channel Building Plot No. 17A, Sector 16A, the IP space in your market? What are some notable example of work that Film City, Noida, Uttar Pradesh 201301, India The firm has consciously developed deeper your firm has done in the past year? T: (91) 120-4059300 understanding of both structural and cultural In the last two years alone 3 of the top finally F: (91) 120-4243056 barriers towards innovation. This understanding decreed cases namely, Merck v. Glenmark, W: www.anandandanand.com helps in taking full advantage of the modern Roche v. Cipla and Philips first SEP Judgment,

structuring in China. The American Deacons; Hogan Lovells; Mayer Brown; HONG KONG fast-food giant is preparing to divest Orrick, Herrington & Sutcliffe; SIPS; An important amendment to Hong its Hong Kong, China, and Macau busi- Stephenson Harwood; and Wilkinson Kong’s IP arbitration law took effect nesses to CITIC and Carlyle. & Grist. at the beginning of 2018. This is seen Like anywhere else these days, the to further strengthen the bid of the protection of copyright on the Internet former British colony as a global arbi- is also one of the biggest challenges tration hub for IP disputes. Passed by for businesses in Hong Kong. Last year, INDIA the city’s Legislative Council in June Tier 1 firm ELLALAN won an injunction Asia’s third-largest economy remains a 2017, the arbitration ordinance clarifies for jewellery maker Pandora in what is bustling market for a variety of IP-related that all disputes over IPs, whether these described as the first trademark infringe- activities. IPs are registered or subsisting within ment case in the city involving the unau- In 2018, India broke two new records or outside Hong Kong, may be resolved thorised use of the protected mark as in international patent filings. In PCT by arbitration. Google Adword. “The injunction has a applications, India joined China as Already, the strategic geographic worldwide impact, covering more than the only two middle-income countries location of Hong Kong as a gateway to 33 websites and social media sites and among the top 15 origins of international China and to the rest of Asia makes it an 70 plus jewellery items,” according to patent applications. Of the top 15 origins, ideal launch pad for IP prosecution and the firm. India, with a growth of 27.2%, was one licensing and enforcement strategies to In patents, the Tier 1 firms were of the two countries to record double- the mainland and to rest of the region, Baker McKenzie; Bird & Bird; Deacons; digital annual growth last year. especially to the Chinese-speaking Hogan Lovells; and Orrick, Herrington The total number of PCT applica- neighbours of Macau and Taiwan. & Sutcliffe. tions from India last year was at 2,013. As an example, Tier 1 firm in In copyright and trademarks, DLA On the other hand, the total Madrid copyright and trademarks DLA Piper is Piper; ELLALAN; and Vivien Chan applications for the year was not close working with McDonald’s on the restruc- & Co joined the Tier 1 firms of AWA at 308, but an increase from 234 in 2017. turing of its IP licensing and franchising Asia; Baker McKenzie; Bird & Bird; This proves that India, with its thriving

22 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM BROUGHT TO YOU BY CHADHA & CHADHA Artificial Intelligence and Intellectual Property Rights

Artificial intelligence (AI) is growing at a fast claim working method of the device that used pace, and across industries. The creative and the AI. intellectual potential offered by AI is endless. An important aspect surrounding AI is the Liability: evolving Intellectual Property jurisprudence. As AI is able to create independently, there are The existing statutes do not exhaustively cover certain liabilities associated with such creation. the legal issues surrounding newer technolo- AI that analyses a company’s investment strategies which leaves room for ambiguity in their gies, numbers or personalizes customer data interpretation. for advertisement, might be subject to claims Sonal Madan Shivarpita Nailwal of infringement of copyright, trade secrets, or Copyright and AI: Partner Partner even data privacy. The Indian Copyright Act protects only those E: sonal.madan@ E: shivarpita@ works that involve some degree of creativity. iprattorneys.com ipattorneys.com Conclusion: Further, as per the Act, an author for computer IP protection of AI brings with it several issues generated works is the person who causes the Patents and AI: which need immediate attention. Therefore, it work to be created. According to the WIPO Technology trend report is important to create an innovation friendly While creation of work through AI may of 2019, “India is emerging as a new target for framework for AI inventions and at the same require some degree of human intervention, patent filing in the field of AI and was ranked time determine that such hi–tech inventions do what needs to be determined is whether the eighth for first filings in 2015”. not impact future human innovation and lead same is sufficient to term him/ her as the AI involving software are difficult to patent. to atrophy of human intelligence. author of the work. Needless to say, the position The Indian Patent Office follows Computer- becomes even more complex if the work created related Inventions (CRIs) guidelines that Chadha & Chadha through AI is completely autonomous. prohibit computer programmes or algorithms Level 18, One Horizon Center, Golf Course Road, As the jurisprudence on copyrights will take from being patented. The same guidelines apply DLF Phase 5, Sector 43, Gurgaon, Haryana some time to evolve, the ambiguity surrounding to technologies based on AI. Thus to obtain 122002 (National Capital Region), India the ownership may have severe consequenc- protection in an AI based software in India, it T: (91) 124 668 8014 es for a party seeking to monetize the works may be advisable to describe the hardware F: (91) 124 668 8020 created through AI. components along with the AI algorithms and W: www.iprattorneys.com

pharmaceutical industry, among others, “The improvement reflects opposition proceedings and previously remains a patent-heavy jurisdiction. important reforms implemented by used compulsory licensing for commer- In 2017, India was one of the top 10 Indian policy makers toward building cial and non-emergency situations. IP offices receiving the highest number and sustaining an innovation ecosystem “If India can surmount the serious of patent applications filed worldwide for domestic entrepreneurs and foreign challenges that remain, including with at 46,582, according to WIPO’s World investors alike,” the report card, released regard to patent eligibility and enforce- IP Indicators 2018. by the U.S. Chamber of Commerce’s ment, it can build a robust innovation- In terms of IP transactions, IP law Global Innovation Policy Center (GIPC) led growth model for other countries to firms in India took on a variety of deals, in February, pointed out. emulate,” Kilbride said. from the rudimentary IP prosecution, to “The reforms that helped improve For the second year in a row, India’s opposition, and to complex IP infringe- India’s ranking include its accession to the score represented the largest gain of ment and enforcement cases. WIPO Internet Treaties, the agreement any country measured on the index, Interestingly, fintech has started to initiate a Patent Prosecution Highway which covers over 90 per cent of global to appear in the deals handled by IP with international offices, a dedicated gross domestic product, the report said. law firms in India. Fintech companies, set of IP incentives for small business Last year, India had ranked 44th of 50 domestic and foreign, have begun to look and administrative reforms,” said Patrick economies in the index. into protecting their IPs related to tech- Kilbride, senior vice-president of GIPC. Among law firms, Tier 1 firm in nology-enabled financial services and The report also focuses on thorny copyright and trademarks Ajay Sahni & cryptocurrency. issues. According to the report, the Associates has entered into a strategic Acknowledging the improvement in key problems in India include barriers partnership with Swedish blockchain India’s innovation ecosystem, the U.S. to licensing and technology transfer, pioneer iDefendo, said to be the first law Chamber of Commerce has moved India strict registration requirements, limited firm in the country to offer blockchain up eight places in its international intel- framework for the protection of bio- enabled IP protection services. lectual property index by ranking it 36th pharmaceutical IP rights, patenta- In industrial design, Kohler, a global amongst 50 countries in 2019. bility requirements outside interna- leader in the kitchen and bath design, tional standards, lengthy pre-grant has initiated a design infringement case

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 23 COVER STORY over unauthorized copying of one of its trademarks Inter Patent Office managed The number of trademark applica- oldest registered designs. the company’s trademark portfolio not tions last year also fell to 184,483 from Its law firm, Beruar & Beruar, only in Indonesia, but in the rest of 190,939 in 2017 while the number of believes that this is a case law in the South East Asia, African and European registered trademarks grew to 116,547 making: “This matter will perhaps also countries, Canada and the U.S. from 111,180 in 2017. lay down the application of the law Increasingly as well, law firms In IP laws, Japan is pushing to amend related to the conundrum of function- in Indonesia have started to handle its Patent Act to further strengthen its ality in designs.” emerging technologies such as fintech IP litigation system, improving evidence In patents, Khaitan & Co. moved and insurtech. Working for China’s Ping collection procedures and changing up to Tier 1, joining Anand and Anand; An Technology, the tech incubator and damages collection methods. A bill to Chadha & Chadha; K&S Partners; AI research and development arm of amend the Design Act has also been Lakshmikumaran & Sridharan; L&L the insurance giant, Tier 1 firm Tilleke submitted to extend protection to Partners; and Remfry & Sagar. & Gibbins handled fintech-related graphic image designs, protection of In copyright and trademarks, patent applications. “Our work for this spatial designs and expansion of related Khaitan & Co. and L&L Partners client involves preparing and submit- design systems. joined the Tier 1 firms of Ajay Sahni & ting abnormally complex patent appli- “With not only functionality but Associates; Anand and Anand; AZB & cations for emerging software devel- also aesthetics now considered to play Partners; Beruar & Beruar; Chadha & opments as they arise, which requires a key role, there is also a growing need Chadha; Cyril Amarchand Mangaldas; in-depth understanding and a high level to protect store designs and designs Fox Mandal & Associates; IndusLaw; of technical expertise,” shared the firm. based on a consistent concept,” wrote K Law/Krishnamurthy & Co; Remfry & In patents, the Tier 1 firms were Am JPO Commissioner Naoko Munakata in Sagar; and Saikrishna & Associates. Badar & Partners; Dwipo Lubis Baskoro JPO’s report for 2019. & Partners; HHP Law Firm; Rouse/ In IP litigation, law firms in Japan Suryomurcito & Co; SKC Law; and Tilleke worked on a wide range of cases from & Gibbins. patent infringement, some of which INDONESIA In copyright and trademarks, the extend to new areas such as biosimilar Southeast Asia’s largest economy Tier 1 firms were Assegaf Hamzah & drugs, software-related infringement continued to be an attractive destina- Partners; HHP Law Firm; Inter Patent and trademark and trade secret disputes. tion for international brands. In 2018, the Office; Januar Jahja & Partners; K&K From Japan, Tier 1 international country’s economy expanded by 5.17% Advocates; Roosdiono & Partners; firm Baker McKenzie handled one of year-on-year. Rouse /Suryomurcito & Co; SKC Law; the big transactions last year as the In trademarks, prosecution, moni- and Tilleke & Gibbins. exclusive legal counsel to Yildiz Holding toring and opposition to applications and Godiva on the sale of its retail and dominated last year’s transactions distribution operations in Japan, South for law firms. Tier 1 firm in copyright Korea, Australia and New Zealand and trademarks Assegaf Hamzah & JAPAN which includes the sale of the Godiva Partners said companies in Indonesia In domestic IP prosecution, Japan’s filing production facility in Brussels. The deal usually tapped law firms to monitor and registration numbers suffered slight is expected to close in the middle of this and oppose applications which could declines in almost all categories last year. infringe their trademarks. In one case, year. Among domestic firms, the Tier the law firm has been asked to establish Based on the latest annual status 1 firms were Abe, Ikubo & Katayama; evidence supporting the argument that report of the Japan Patent Office (JPO), Anderson Mori & Tomotsune; Mori the client’s trademark is a well-known patent applications in 2018 reached Hamada & Matsumoto; Nagashima trademark which has been used for a 313,567, a drop from the previous year’s Ohno & Tsunematsu; Nakamura long time prior to an application and that total of 318,418. Patent registrations also & Partners; and Oh-Ebashi LPC & it was filed in bad faith. slightly dropped to 194,525 from the Partners. In copyright and trademarks, Based on the latest data from WIPO, previous year’s 199,577. the leading firms were Anderson Mori there were 47 Madrid applications from The number of utility model applica- & Tomotsune; Atsumi & Sakai; Mori Indonesia last year, an increase from tions declined to 5,388 in 2018 from the Hamada & Matsumoto; Nagashima only one application filed in 2017, a total 6,106 in 2017 while the number of Ohno & Tsunematsu; Nakamura & testament to an increasing number of utility model registrations totalled 5,303 Partners; and TMI Associates. local companies seeking protection for from the previous year’s 6,024. The Among international firms, the Tier their trademarks abroad. number of design applications was at 1 firms in patents were Baker McKenzie; Acting for one of the country’s 31,406 in 2018, lower than 2017’s 31,961 Finnegan, Henderson, Farabow, Garrett largest pharmaceuticals Dexa Medica while registrations slightly increased to & Dunner; Hogan Lovells; Morgan, Lewis Group, Tier 1 firm in copyright and 27,618 in 2018 from 27,335 in 2017. & Bockius; Morrison & Foerster; Orrick,

24 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY

Herrington & Sutcliffe; Quinn Emanuel by the Malaysian IP Office last year of the work of most IP law firms in Urquhart & Sullivan; and Ropes & Gray. grew to 7,493 from the previous year’s Malaysia. Tier 1 firm Eversheds Harry In copyright and trademarks, the Tier 7,278 applications. Foreign applications Elias got its hand dirty with a series of 1 firms were Baker McKenzie; Hogan accounted for the bulk of the filings at raid for a Singaporean apparel brand. Lovells; Morrison & Foerster; and Orrick, 6,245. The total number of patents Acting for two of the world’s top designer Herrington & Sutcliffe. granted last year was at 4,382. In trade- brands, another Tier 1 firm Rahmat Lim & marks, the number of applications grew Partners conducted nationwide blitz raid to 43,656 in 2018 from 41,093 in 2017. actions, from night markets to shops in More than half came from foreign appli- the country’s small rural towns. MALAYSIA cations at 23,793. The total number of In litigation, Tier 1 firm LAW Despite being hit by domestic issues, registered trademarks was at 34,566. Partnership handled a trademark dispute IP prosecution continued to thrive in Unlike patents and trademarks, for the Sri Paandi group of restaurants Southeast Asia’s third-largest economy. industrial design applications barely which has dragged on to become one of Last year saw Malaysia surprising the changed at 1,845 from the previous the country’s longest IP trials. It won the world with the election of then 92-year old year’s 1,814, of which 1,317 of the appli- case in the high court, but the defendant former prime minister Mahatir Mohamad cations last year were foreign applica- has filed an appeal. “This is easily one of who promised to crack down on corrup- tions. The number of registered indus- the longest IP trials in the country where tion and to restore order in one of the trial designs was at 1,475. the trial took 26 days to complete and region’s most successful economies. The In international IP filings, the the parties had called 20 witnesses to halt in the rollout of some government numbers were almost unchanged in testify in court. It involves a series of projects by the new administration pulled 2018. PCT applications from Malaysia complex issues and novel points of law down economic growth to 4.7% in 2018 increased to 143 last year from 141 the that had not been determined before in from previous year’s 5.9%. previous year while Madrid applications Malaysia,” said the law firm. Still, domestic IP filings increased fell to nine from 13 in 2017. In patents, Tay & Partners moved in 2018. Patent applications received Enforcement was front and centre up to Tier 1, joining Marks & Clerk;

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 25

A5 版（仕上寸法 148×210）

A4 版（仕上寸法 210×297） A4*1/3 版（仕上寸法 99×210）背景青Ｃ:M:Y:K=100:100:30:00 ～事務所ロゴＣ:M:Y:K=90:90:00:00 COVER STORY

Shearn Delamore & Co; Skrine; Wong deposits, at 7%, based on the data from the compounds Etoricoxib, a COX-2 & Partners; and ZICO IP. the Philippine IP Office. inhibitor for pain relief used by patients In copyright and trademarks, By type of IP, utility model filings suffering from arthritis, and Sitagliptin, a the Tier 1 firms were Eversheds Harry reached 2,124; trademark filings were DPP IV enzyme inhibitor for the manage- Elias; KDJLaw; LAW Partnership; Lee at 35,602; patent filings at 3,946; indus- ment and treatment of diabetes. “The Hishammuddin Allen & Gledhill; Marks trial design filings at 1,521; and copyright successful invalidation of these patents & Clerk; Rahmat Lim & Partners; Shearn deposit recordation filings were at 1,268. will open the doors for Innogen’s Delamore & Co; Skrine; Shook Lin & Bok; As for international applications commercialization of generic alterna- Tay & Partners; Wong & Partners; and from the Philippines, the numbers tives in the Philippines and ensures ZICO IP. remained low, based on the latest WIPO access to affordable drugs by millions data. In 2018, PCT applications from the of less privileged Filipinos suffering Philippines were unchanged at 18 while from arthritis or diabetes. These cases Madrid applications fell to 49 from 54 will also further enrich Philippine patent PHILIPPINES in 2017. jurisprudence especially on pharmaceu- With a largely consumption-driven In patents, the top field for patent ticals, which regrettably remains rela- economy, IP prosecution, licensing and applications last year remained in phar- tively undeveloped as of date,” said the enforcement were the top activities of maceuticals. Last year saw an inter- firm. law firms involved in IP-related trans- esting trend of generic pharmaceutical The Tier 1 firms were the big law actions in the Philippines. companies getting aggressive in chal- firms of ACCRALAW; Castillo Laman Tan In 2018, total IP filings from Filipino lenging the patents of originator drug Pantaleon & San Jose; Cruz Marcelo and and foreign nationals increased by 15% firms. Tenefrancia; Quisumbing Torres; Romulo year-on-year to 44,461, putting the Tier 1 firm Villaraza & Angangco Mabanta Buenaventura Sayoc & De Los five-year growth rate of IP filings, to has worked on at least two of such Angeles; SyCip Salazar, Hernandez & include patents, utility models, indus- cases. In one case, it is pursuing the Gatmaitan; and Villaraza & Angangco. trial designs, trademarks and copyright invalidation for its client Innogen of Susan D. Villanueva, senior partner

(Infringement, Unfair Competition, Opposition and Cancellation, and Intellectual Property Violation cases)

IP Valuation

26 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY at Cruz Marcelo & Tenefrancia, says that represented In-N-Out Burger, Inc. in the ground of public interest [E.I. Dupont unlike its peers, her firm’s IP depart- an unfair competition case that led to vs. Director Emma C. Francisco, G.R. No. ment can provide the full spectrum of “In-N-Out” being declared as the first 17437931 August 2016].” value-added IP services since it makes internationally well-known trademark Villanueva further notes that her a conscious effort to further expand its by the Philippine Supreme Court firm’s IP department is also the rare practice to new specializations. [Sehwani, Inc. and Benita’s Frites, Inc. vs. Philippine practice that has the capa- “Our IP department does not only In-N-Out Burger, Inc., G.R. No. 171053, 15 bility to draft patents for our clients. handle the filing and prosecution of October 2007]. The Supreme Court also “We have recently been chosen, after patent and trademark applications or upheld the jurisdiction of the Philippine a stringent selection process, by the copyright deposit but also IP litigation, Intellectual Property Office over admin- Department of Science and Technology patent drafting, patent valuation and istrative cases for unfair competition (DOST) to draft and file patent appli- commercialization,” she says. and infringement in a related case cations for DOST funded innovations. She adds that Cruz Marcelo’s IP we handled for In-N-Out Burger, Inc. We have also done patent valuation department handles all IP litigation, [In-N-Out Burger, Inc. vs. Sehwani, Inc. studies for DOST funded technologies,” whereas the other firms parcel it out to and/or Benita’s Frites, Inc., G.R. No. she adds. their general litigation department. 179127, 24 December 2008]. We success- “This gives us a key litigation fully defended before the Supreme advantage over other firms because Court search warrants issued against we are intellectual property lawyers suspected infringers in an enforce- SINGAPORE who fully understand the substantive ment action for the liquefied petroleum Supportive of Singapore’s ambition aspect of the case unlike general liti- gasoline industry. [William C. Yao, Sr. vs. to become a regional IP hub bid is its gators,” notes Villanueva. “Our solid The People of the Philippines, G.R. No. investment in fintech. Last year, the IP track record proves this. Our lawyers are 168306, June 19, 2007]. We also success- Office of Singapore (IPOS) granted the responsible for key landmark IP cases in fully argued before the Supreme Court to first accelerated patent to Philippine- the Philippines. Our lawyers successfully affirm the abandonment of a patent on based Voyager Innovations under its

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 27 COVER STORY

“FinTech Fast Track“ initiative cutting one of the pioneering transactions from Baker McKenzie Wong & Leow; Bird & the time of waiting from application to the scheme, advising the bank on taking Bird ATMD; Dentons Rodyk; Drew & grant which normally takes at least two ownership of the patents, valuation of Napier; Donaldson & Burkinshaw; to four years. Voyager got its patent after the patents, and the sale of the patents. JurisAsia; Lee & Lee; and Marks & Clerk. seven months from application. Singapore also saw law firms In copyright and trademarks, four “The community of over 1,200 working on new types of IP cases, new firms made it to the Tier 1 list. FinTech enterprises in Singapore and stretching the boundaries of IP litigation. These were JurisAsia; Gateway Law the region can tap on IPOS’ FinTech Fast In trademarks, Tier 1 firm Drew Corporation; OC Queen Street; and Rajah Track accelerated process to bring their and Napier was involved in trademark & Tann. They joined Allen & Gledhill; FinTech ideas to the market in a much dispute case that could decide on Amica Law; Baker McKenzie Wong & shorter time,” according to IPOS. whether a trademark that is an inverted Leow; Bird & Bird ATMD; Dentons Rodyk; Already, Singapore is the biggest image of another trademark could be Drew & Napier; Donaldson & Burkinshaw; source of international patent filings in considered an infringement. Lee & Lee; and WongPartnership. Southeast Asia. Last year, PCT applica- In copyright, Tier 1 firm Allen & Tony Yeo, managing director and tions from Singapore increased to 930 Gledhill took on a pioneering case head of intellectual property at Drew & from 867 in 2017. Madrid applications involving a software program when Napier, says that the firm has the largest also increased to 667 in 2018 from 517 it represented payroll outsourcing and most established IP practice in the previous year. company Nice Payroll. Tier 1 firm Singapore. “We have always maintained The IP financing scheme program in copyright and trademarks OC a dominant position in IP,” he says. of the government has also started to Queen Street acted for 99.co against “Drew is a market leader in trademark, bring in new types of transactions for law PropertyGuru in a landmark copyright patent and design filings, thanks to the firms in the city-state. Launched in 2014, infringement case that has clarified the long-time support from our clients who the scheme gives IP right owners access law on watermarked photographs. come from a wide spectrum of indus- to financing. Last year, Tier 1 firm Rajah In patents, Rajah & Tann joined the tries. Besides Singapore, we are also &Tann handled for United Overseas Bank Tier 1 list of Allen & Gledhill; Amica Law; able to assist our clients with IP filings

Dentons Rodyk’s Intellectual Property practice is ranked Tier 1 once again.

We thank our clients for their support.

28 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY throughout Southeast Asia through our medical devices. Meanwhile, in the maximum value from. We see IP as a Drewmarks offices in the region. We have trademark space, Drew has acted for the driver for business growth,” notes Jacob. also been singled-out for our in-depth statutory board Sentosa Development According to Jacob, having a global experience in contentious IP matters and Corporation in a trademark infringe- outlook with a local perspective is the key our lawyers are regularly instructed in ment matter involving the iconic Sentosa to be a successful firm in the IP space high profile matters. As Drew is a full- trademark; acted for Apple Inc in a matter in your market. “Our IP service philos- practice law firm, we are also able to involving the iWatch trademark against ophy is not Singapore or Asian-based tap on the expertise of our colleagues Swatch; acted for Isetan Mitsukoshi but is a truly global one yet importantly from the other areas of specialisation, Ltd in defending a trademark oppo- understanding the differences that exist if required.” sition brought by The Scotch Whisky in local markets. Being part of an inter- As for the keys to the firm’s success, Association against its application for national law firm, and with our network Yeo cites three: “Continuing to strive the mark ISETAN TARTAN; and acted of trusted advisers, we deliver results to be the best at everything that we for Adidas International Marketing B.V. for clients across the globe,” she notes. do; committing to delivering prompt, in a trademark opposition suit against She says that in the past year, the practical and sound advice to clients; Lutong Enterprise Corp. firm has worked with clients to put and expanding the IP practice beyond Meanwhile, Sheena Jacob, partner at together deals to protect and commer- Singapore and in the Southeast Asia JurisAsia, says that the firm is dedicated cialize their IP in a number of markets region.” Notable examples of patent to providing high-value IP services to including creating complex IP trust work that the firm has done in the past companies. “Whilst we can handle IP structures. “We have also helped our year include acting for IIa Technologies registration and litigation, it is our unique international clients deal with a broad against De Beers in a patent infringe- strategy for IP portfolio management range of challenging IP issues in devel- ment matter involving the patents for that is geared towards realizing a higher oping markets such as China and Russia, the growth of diamonds; and acting valuation for the client’s IP that makes us and have represented AI Singapore in for Becton Dickinson against Braun in a trusted partner for companies building creating its licensing model for AI tech- a patent infringement matter involving an IP portfolio that they can extract nology,” Jacob adds.

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 29 COVER STORY

Another firm in Singapore’s Tier 1 in an invalidation case for a patent for a is Dentons Rodyk & Davidson. Gilbert SOUTH KOREA sustained release formulation containing Leong, a senior partner at the firm says Since the implementation of the patent- octreotide that was filed byS outh Korean that what distinguishes the firm is its market approval linkage system in pharmaceutical company Dongkook. The “ability to fathom the client’s needs at 2015, invalidation actions have multi- Supreme Court reversed the decision of that moment coupled with professionals plied in South Korea. Last year was no the Patent Court and declared the patent who would deliver the unvarnished truth different. Tier 1 firms found themselves as valid. “This decision is significant to clients in a forthright but empathetic at opposing ends again in some of the because the Supreme Court clarified manner.” biggest generic versus originator drug what kind of data in the patent spec- In 2018, Dentons Rodyk successfully cases heard by the Supreme Court. ification would be sufficient to satisfy represented TOWA Corporation at the “Many global innovator pharmaceu- the description requirements for a Singapore Court of Appeal, where the tical companies have been subject to sustained release formulation invention decision of the High Court (also in favour countless invalidation and scope confir- by applying legal principles regarding of TOWA Corporation) was upheld. mation challenges by domestic generic description requirements for a product “What sets this case apart is the CA’s pharmaceutical companies seeking to invention,” said the law firm. affirmation of the purposive construction market and sell their generic versions Some local generic drug manufac- of patent specifications, and how that of brand name drugs,” observed Tier turers also scored big wins last year. approach was applied in the niche area 1 firm Lee & Ko which took on a case In one case, Tier 1 firm Yulchon won of semi-conductor moulding machine for Novartis. It is now waiting for the a favourable decision from the Korean technology. Damages are currently Supreme Court decision on a patent Supreme Court for its client Celltrion, being assessed for the case, which is also invalidation case filed by a local generic a biosimilar company whose manufac- expected to be a landmark decision given drug company over the blockbuster drug turing plant is located in South Korea. the relative dearth of cases on assess- Myfortic. The battle involved two separate cases ment of damages (in patent cases) in In another case, Tier 1 firm Kim & of patent infringement and invalida- Singapore. Chang successfully represented Novartis tion against Roche’s breast cancer

TOP TIER IP EXPERTISE

Our internationally-ranked lawyers are leading experts in their field and help clients conduct business across the region and the world by providing high quality, innovative and commercial advice to a wide range of industry sectors. This expertise has helped the firm gain a top tier ranking in Asian Legal Business.

Our intellectual property team advises national, international and global companies and through our association with international law firm Gowling WLG, we support our clients’ interests both in Singapore and around the world. Through this relationship we can deliver world-class legal advice from 18 cities in the UK, Canada, Continental Europe, China and the Middle East.

JurisAsia LLC is an independent law practice affiliated to Gowling WLG (UK) LLP www.jurisasiallc.com

30 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM COVER STORY drug Herceptin. In the end, the Korean and Tilleke & Gibbins. In copyright Supreme Court ruled last year that the THAILAND and trademarks, last year’s list was amended Herceptin patent was invalid, As one of Southeast Asia’s bigger unchanged with Baker McKenzie; vacating a lower court decision. economies, Thailand is almost always Domnern Somgiat & Boonma; Tilleke The lists of Tier 1 firms were part of the pan-regional IP prosecution & Gibbins; and ZICO IP as the leading unchanged from last year. In patents, and management strategies of global firms. the top firms were Bae, Kim & Lee; Kim companies. & Chang; Lee & Ko; Ropes & Gray; Shin Tier 1 firm ZICO IP handled one such & Kim; Yoon & Yang; and Yulchon. case for Chubb Limited, the world’s In copyright and trademarks, the top largest property and casualty insurer, VIETNAM firms were Bae, Kim & Lee; Kim & Chang; in which Thailand was part of the six Vietnam’s economy grew by 7.08% in Lee & Ko; Yoon & Yang; and Yulchon. Southeast Asian countries for trademark 2018, surpassing the government’s year- portfolio management. The deal covers on-year target of 6.7% and posting its the filing of new trademark applications, fastest rate of growth in 11 years. assignment of trademarks, renewal, With an economy that is now valued TAIWAN opposition and cancellation. at $238 billion, Vietnam has become a Last year, Taiwan implemented a new Also like most jurisdictions in the lucrative market for global brands. In system in hearing patent invalidity cases, Southeast Asian region, Thai companies 2018, the country’s GDP per capita a testament to the importance of settling are exporting more brands than innova- increased by $198 to $2,587. patent disputes in Taiwan, a tiny island tions. In 2018, Madrid applications from More domestic companies are also but a global technology powerhouse, Thailand grew by 460 percent to 140 expanding their markets abroad. Madrid especially for semiconductor and elec- from 25 in 2017. On the other hand, PCT applications from Vietnam increased to tronics. Major changes include the intro- applications fell to 105 in 2018 from 156 159 in 2018 from 91 the previous year. The duction of the public hearing and a panel the previous year. rate of growth was not the same for inter- made up of three examiners. In addition to IP prosecution, raid national patent filings from the country “By introducing practices such as actions, trademark opposition and as the number of PCT applications was panel and public hearing, it is hoped that going after counterfeits on the Internet almost unchanged to 22 last year from the accuracy of examination results on consumed most of the work last year of 23 in 2017. patent invalidity cases will improve and the top law firms in Thailand and with Some of the works done by IP law that people will develop a greater trust in some firms taking on landmark cases. firms included trademark filing and the decisions,” according to the Taiwan In a landmark decision, Tier 1 from opposition, IP licensing, trademark and IP Office. The first public hearing on a Tilleke & Gibbins won a high court case copyright infringement, patent filing and patent invalidity case happened in July. for Panasonic against an “infringer for infringement and raid actions. Patent prosecution, patent infringe- passing off that was based on trade There were more IP disputes seen ment and trade secret cases still dress used in bad faith.” The firm believes online. In one domain name dispute case accounted for the bulk of the work of that this could “serve as a landmark for BMW against an individual who had top IP law firms in Taiwan last year. trademark case in Thailand.” “Although registered domain names with “bmw and For the second year in a row, filings the Thai Trademark Act provides protec- motorrad” in them, a Vietnamese court for invention patents grew by 3 percent tion for passing off, filing a lawsuit to awarded its most severe punishment yet, year-on-year to 47,429 applications in defend an IP owner’s unregistered rights said BMW’s law firm Tier 1 firm Tilleke & 2018. can still pose certain challenges. This Gibbins. “The VND 200 million (about For domestic companies with global is especially true where two registered $8,600) in legal fees is quite significant reach such as TSMC, cross-border litiga- trademarks are different, but the product to an individual in Vietnam. Also, to the tion cases are common. packaging designs of both marks are best of our knowledge, this is the first In patents, the Tier 1 firms were confusingly similar,” it said. time a Vietnamese court has formally Baker McKenzie; Finnegan, Henderson, Seizures of transhipment of recognized a well-known trademark,” Farabow, Garrett & Dunner; Jones Day; infringing goods also occupied author- it said. Lee and Li; Saint Island International ities and law firms last year which were In patents, the Tier 1 firms were Baker Patent & Law; Tai E International Patent made possible by the recent amendment McKenzie; Pham & Associates; Tilleke & Law; and TIPLO. in the customs law which permitted & Gibbins; and Vision & Associates. In In copyright and trademarks, the transhipment seizures. This is seen to copyright and trademarks, the Bross Tier 1 firms were Baker McKenzie; Chen shape IP enforcement in an increasingly & Partners was the latest addition to & Lin; Eiger; Lee and Li; Saint Island connected Southeast Asian market. the Tier 1 group of firms that included International Patent & Law Offices; Tai In patents, ZICO IP moved up to Baker McKenzie; Hogan Lovells; IPMAX E International Patent & Law; Tsar & Tsai; join the Tier 1 firms of Baker McKenzie; Law; Tilleke & Gibbins; and Vision & TIPLO; and Winkler Partners. Domnern Somgiat & Boonma; Rouse; Associates.

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 31 THAILAND

sector, it’s business as usual.” In the firm’s experience, this is due, in part, to fact that solid investment and business mechanisms are already in place, which STAYING THE COURSE play a role in helping to alleviate client concerns and support continued invest- The outcome of Thailand’s first national election since ment flows. “We believe business operators a 2014 military coup might be still unclear, with final and investors look more to the long- results only due on May 9. However, lawyers say that standing legal system as a solid platform despite the uncertainty, little should change for foreign for starting and advancing operations with confidence, plus the country’s track investors in the country. BY ELIZABETH BEATTIE record of continuing growth for decades with little impact from political changes,” Jessada says.

INFRASTRUCTURE ON TRACK While the lack of political certainty may not have stimulated a great deal of change when it comes to client concern or enthusiasm, upcoming connectivity projects are paving the way for easier investment in the future. One big game-changer piquing excitement is Thailand’s ambitious infrastructure plan, which includes four significant projects, developed with the goal of promoting the nation’s cache as an important Asia trade hub. These major works, which have gained approval under the Eastern Economic Corridor Project Implementation (EEC) programme, are being keenly watched as significant developments in this area. Among the early promising indicators, Jessada notes, is that the Board of Investment has already approved over 150 EEC regional projects, while the Eastern Economic Corridor Office of Thailand (EECO) has successfully invited 40 EEC potential investors to partici- pate in development projects in targeted markets. The first election to follow Thailand’s in the past, they don’t expect the March But there are also other projects on 2014 military coup took place on March 24 election to diminish investor appetite. the horizon, which will help to ensure 24, but official results aren’t expected “This is not the first general election the country’s infrastructure is up to date. to be released until May 9. But while the after a military coup as there have been “In addition to the ongoing EEC Project election outcome remains uncertain, eight military coups in Thailand since Implementation, large infrastructure lawyers feel that when it comes to we started our firm in 1974,” explains projects continue, for example, the 200 business and investor confidence, there Jessada Sawatdipong, senior partner billion baht [$6.2 billion] high-speed should be very little impact, if any. at the firm. “Experience tells us that railway linking three major airports: Don This is the view held by Bangkok- military coups and general elections Mueang, Suvarnabhumi and U-tapao, based Chandler MHM, which has a long have had little impact on private sector U-tapao Airport ‘aerotropolis,’ and history in the country. Having followed business and the investment landscape expansion of some of Thailand’s largest the impact of politics on client outlook here. Despite these events, for the private industrial estates,” Jessada says.

32 ASIAN LEGAL BUSINESS – MAY 2019 WWW.LEGALBUSINESSONLINE.COM THAILAND

BRIGHT FUTURE FOR ENERGY announced. The contents that have development, so progress on particu- While infrastructure enables better been made public indicate that Thailand larly, EEC projects, many of which are connectivity and provides peripheral will continue to explore alternative, already approved, is likely to continue support to investment, there are other renewable energy sources, in an ongoing without interruption,” Jessada notes. opportunities which continue to grow. attempt to lessen reliance on fossil fuels, Offering advice for and investors, One particularly hot area in Thailand is particularly natural gas,” Jessada says. including in areas of “interpreta- the energy space. Having spent three “After the previous PDP was announced tion of Thailand’s Foreign Business years revising its updated power devel- in 2014, there was a concerted effort to Act; potential impact of the new PDP opment plan, the country has pushed to push through a significant number of program; PPP matters; merger control embrace renewable energy on a large projects. This could also be the case once under the Trade Competition Act, new scale. Last year a partnership between an the new PDP is made official. We view BOI promotions,” and others, continue Australian blockchain company and Thai future energy development in Thailand as normal. renewable energy business launched a as very positive.” “One ongoing incentive for infra- peer to peer renewable energy trading structure investors in Thailand has been trail in Bangkok. While this arrangement INVESTOR MOOD the PPP Fast Track program, a govern- hints at the ambition of local players in It’s not just energy which is putting ment initiative that aims to eliminate red the market, the government has also investors in an optimistic mood. Ongoing tape and bottlenecks commonly asso- eased the way for similar types of invest- developments, including the aforemen- ciated with the approval and development, although the specifics are, as yet, tioned infrastructure work has kept the ment of major infrastructure projects. It unknown. Yet for investors, there are a mood buoyant – particularly as they can be anticipated that the new govern- few developments to continue to monitor remain secure long-term projects in light ment, when confirmed in May, is likely going forward. of political uncertainty. to continue to support implementa- “A new Power Development Plan “On the topic of future infrastructure tion of the infrastructure projects high- (PDP) was approved in early 2019, projects, we sense a positive outlook. lighted above – and, similar projects in although it has not yet been officially All political parties favour infrastructure the future,” Jessada says.

WWW.LEGALBUSINESSONLINE.COM ASIAN LEGAL BUSINESS – MAY 2019 33