China IPR SME Helpdesk Stakeholder Meeting - ASEAN

Introducing the
ASEAN IPR SME Helpdesk:
Free Support for EU SMEs in ASEAN
Practical, first-line intellectual property advice for
EU SMEs in ASEAN
Jakub Ramocki
STI Days, Bangkok, 22. January 2014
A project funded by the European Union
Overview of Presentation
• Introduction and Helpdesk Initiatives
• Snapshot of FREE Services: Confidential Helpline,
Materials, Training & Webinars and Online Portal
• Introduction in the IP landscape in ASEAN
• ASEAN-wide challenges in terms of IP protection
and enforcement
• Tips for the IP Strategy in ASEAN
Introduction
• ASEAN IPR SME Helpdesk is a EU-funded project - launched in 2013
• Initiative of DG Enterprise and Industry
– China IPR SME Helpdesk (www.china-iprhelpdesk.eu)
– EU IPR SME Helpdesk (www.iprhelpdesk.eu)
– MERCOSUR IPR SME Helpdesk (www.mercosur-iprhelpdesk.eu)
• FREE business-focused advice, information and training service for EU
SMEs and intermediaries relating to Intellectual Property Rights in South
East Asia
• Project implemented by 3 partners
 Development Solutions
 EBO (visibility and outreach in Europe)
 EuroCham Indonesia (visibility and outreach in South East Asia)
Helpdesk Objectives
 Information and services free of charge for SMEs
 Practical first-line advice
 Raise awareness and prepare SMEs for IPR issues in Southeast Asia: “know before you go”
 Deliver IPR business tools and self-help solutions (guides, E-learning)
 Enable EU SMEs to make informed IPR decisions (protection, enforcement, IP management)
 Facilitate the further internationalization of EU SMEs
 From first quarter of 2014 : Individual EU MS country reports highlighting activities and
engagement with each MS (types of enquiries received from each MS) reports/statistics reports
 Report and analyse certain trends with regards to the enquiries received and reporting them to
the European Commission via policy input reports/interim
ASEAN IPR
SME
Helpdesk
Provides
feedback for
Policy Input
EU/ASEAN
dialogue
Target Groups and Beneficiaries
• European SMEs that export, source, invest or
manufacture in ASEAN countries, or plan to do so.
• Organisations representing European SMEs
– EU Member State Chambers of Commerce in
ASEAN countries
– SME associations and networks
– Industry associations
– Trade and export promotion agencies
• Coordination with MS, EC, IPR and SME support
services (incl. China IPR SME Helpdesk, Enterprise
Europe Network, European IPR Helpdesk, ASEAN
Business Centres)
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Most Common IP Issues Affecting SMEs
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Lack of awareness of importance of protecting IPR
Lack of IP strategy or wrong IP strategy
Territorial nature of IP rights is misunderstood
Selection of the right business partner
Protection of trade secrets
Lack of understanding of IP landscape in ASEAN
Theft of the IP assets by the local players
SMEs do not fully exploit their innovative potential
4. Snapshot: Free Helpdesk Services
Confidential
Enquiry Helpline
E-learning &
Business Tools
Website & Blog
Training Workshops
& Live Webinars
IP Guides &
Newsletters
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Free Helpdesk Services
(i) Confidential First-line Advice Service
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Available for EU SMEs and SME intermediaries FREE OF CHARGE
Confidential first line advice on IPR matters across ASEAN
Delivered by IPR specialists
Accessible via email, telephone, face-to-face
[email protected]
or
+62 21 571 1810
(ii) Information & Materials
• Library of publications (coming soon):
– IP specific guides, incl. patents & trade marks
– Industry specific guides, incl. textiles, machinery, creative industries
– Business guides, incl. protecting your online IP
• Quarterly Helpdesk newsletters
• Article placement
• Topical blog posts
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(iii) ASEAN IPR SME Helpdesk Training and Webinars
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Workshops and live webinars across Europe and the ASEAN region
Organised in partnership with SME intermediaries
Addressing both general IPR and industry-specific IPR matters
Tailored to the needs of each SME audience
Conducted in various languages by ASEAN IPR SME Helpdesk
experts
(iv) Online Portal
www.ASEAN-iprhelpdesk.eu
www.yourIPinsider.eu
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Practical IPR guides
ASEAN country IPR factsheets
Case study and FAQs
Helpdesk newsletters, videos and blog
Event information
Helpdesk videos and ELMs
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Recent Developments on the Helpdesk…
 A Flavour of Recent Activities
Completed Helpdesk Activities, Events and New Publications in November & December 2013
Training Events:
• ‘How to avoid common IP strategy mistakes in Indonesia’,
Jakarta, 19 November
• ‘IPR Protection Strategies for the Clean-tech Industry’,
Helsinki, 28 November
• ‘IP Enforcement: Challenges faced and new enforcement functions of the
IPO in the Philippines’,
Manila, 6 December
• Other events took place in Belgium, Latvia, Italy, Lithuania, Vietnam and
Singapore
Webinars:
• ‘Protection of Online IPR in Southeast Asia’,
14 November
• ‘Intellectual Property Rights Protection Strategies in the Philippines
for EU SMEs’,
28 November
• ‘How to Effectively Protect Your IP While Doing Business in
Malaysia’,
5 December
• ‘Intellectual Property Rights Protection Strategies for Italian SMEs in
Southeast Asia Webinar’,
11 December (Italian language) – in association with EEN Italy
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New Publications:
• ASEAN IPR SME Helpdesk Guides on ‘How to Protect your Trade
Mark in ASEAN’, ‘Trade Secrets in ASEAN’ and ‘IP Country Factsheet
on Brunei’
Coming soon…
• ASEAN IPR SME Helpdesk Guides on ‘Copyright Protection in
ASEAN’ and ‘Protecting your Online IP in South East Asia’
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Introduction to the IP landscape in
ASEAN
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IP landscape in ASEAN - Background
Association of Southeast Asian Nations (ASEAN) is an attractive
market:
• average economic growths of ASEAN's member nations
(1989–2009): Singapore - 6.73%, Malaysia - 6.15%, Indonesia 5.16%, Thailand - 5.02%, the Philippines - 3.79%.
• OECD optimistic forecast: average of 6% economic growth
per year until at least 2015.
• If ASEAN were a single entity, it would rank as the eighth
largest economy in the world.
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The ASEAN Economic Community (AEC)
• The goal of regional economic integration by 2015.
• In future: a region with free movement of goods,
services, investment, skilled labor and freer flow of
capital.
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ASEAN Working Group on Intellectual Property
Cooperation (AWGIPC)
• established in 1996 pursuant to the ASEAN Framework Agreement
on Intellectual Property Cooperation
• Target: transform ASEAN into an innovative and competitive region
and ensuring that the region remains an active player in the
international IP community
• Establish standards of protection and enforcement among AMSs
• Specific activities are foreseen for SMEs (training modules on
acquisition of IP rights, exploitation and enforcement, cost-effective
IP search and registration, strategic plans for innovation etc.
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Goals of the ASEAN IPR Action Plan 2011-2015
• Accession to Protocol relating to the Madrid Agreement Concerning the
International Registration of Marks by all AMSs by 2015
• Accession to the Hague Agreement Concerning the International
Registration of Industrial Designs by at least 7 AMSs by 2015
• Accession to Patent Cooperation Treaty by all AMSs by 2015.
• Reduction of average turnaround time for the registration of trade marks
• Implementation of the ASEAN Patent Search and Examination
Cooperation
• Capacity building for patent, trade mark and design attorneys and
examiners
• Regional Action Plan on IPR Enforcement
• Protection of geographical indications (GIs)
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ASEAN Patent Examination Co-operation (ASPEC)
• Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines,
Singapore, Thailand, and Viet Nam have launched an ASEAN
Patent Examination Co-operation (ASPEC) programme.
• first regional patent co-operation programme which
commenced on 15 June 2009.
• Purpose: to share search and examination results between
the participating IP offices
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IP landscape in the 10 ASEAN countries –
international conventions
Country
Paris Convention
Berne Convention
TRIPS (WTO)
Singapore
1995
1998
1995
Malaysia
1989
1990
1995
Philippines
1965
1951
1995
Indonesia
1950
1997
1995
Thailand
2008
1931
1995
Vietnam
1949
2004
2007
Brunei
2012
NO
1995
Cambodia
1998
1953
2004
Laos
1998
2012
2013
Myanmar
NO
NO
1995
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Filing routes/international application systems
in the 10 ASEAN countries
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ASEAN-wide IP Protection and
Enforcement Challenges
• Backlog and lack of efficiency of IP registration systems (ex.
patent application process even 5-7 years)
• first-to-file jurisdictions in case of trade marks designs and
patents
• Legal systems in ASEAN countries relatively underdeveloped in
terms of protecting trade secrets.
• Counterfeiting - low deterrence of fines
• Enforcement authorities (lack of training, resources, high
turnover and corruption issues)
Tips for the IP Strategy in ASEAN
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IP Strategy in ASEAN
• Applying one global IP plan is a mistake.
• Identification of IP assets and prioritization of needs
– Is there IP in your industry?
– What types of IP fit to your organisation?
– Different ways of protection
• Geographical scope of protection
• Remember about the first-to-file principle
• Check the freedom to operate
• Non Disclosure Agreements during negotiations
• IP Ownership
• Exploit and enforce your IP rights
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Applying one global IP plan is a mistake.
• One global IP plan doesn’t work, because each ASEAN country
is unique
• Learn about specificities of each country/territory and learn
how to make best use of available tools (ex. filing routes,
enforcement)
• legal peculiarities (ex. Necessity of registering the copyright,
trade secrets, utility models)
• geography, demographics, culture
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Identification of IP assets and prioritization of
needs
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Geographical scope of protection
• In which countries are your products to be
manufactured, marketed or sold?
• Which countries have the potential to
manufacture?
• Which countries are otherwise strategically
important to your organisation?
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Remember about the first-to-file principle
• The ASEAN IP system is generally understood to adopt the
“first-to-file” system
• important to register your IP assets before entering a market
of interest
• trade mark piracy due to bad-faith registration is a serious
problem in South East Asia
– Bad-faith registrations exist when a third party, not being the
legitimate owner of the brand, registers the mark first in the region,
thereby preventing the legitimate owner from registering it.
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Check the freedom to operate
• Before manufacturing or importing goods into a country, you
should first ensure that your organisation has the freedom to
operate in that country.
• determine whether a particular action, such as testing or
commercialising a product, can be done without infringing
valid intellectual property rights of others
• Perform IP searches
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Non Disclosure Agreements during negotiations
• legally binding contracts establishing the conditions under
which one party (the disclosing party) discloses
information in confidence to another party (the receiving
party);
• All types of information can be transmitted in these
agreements, such as ideas, know-how, description of
inventions, chemical formulas, research or business
information and negotiations, among other;
• The common characteristic: the disclosed information is
valuable for the disclosing party to the extent that it must
be kept away from the public;
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Commonly used provisions in NDAs
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Definition of confidential information
Permitted purpose
Limitation of disclosure
Information excluded from confidentiality
Term
Choice of law and jurisdiction
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IP Ownership
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Clauses in working contracts
Rights and obligations of the inventor
Rights and obligations of the company
Ownership of IP developed by/ in cooperation with
contractors,
visitors or any other third party
• Important in case of collaborative projects
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Exploit your IP rights
• Exploit your IP rights either in further research or by
commercial use
• Develop and sell own products/services
• Develop and sell products/services by starting up a spin-off
company
• Sell IP rights
• Sell the (IP based) business
• Licensing IP rights (out-licensing)
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Enforce your IP rights
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Administrative actions (ex: Vietnam)
Criminal actions (ex. Indonesia)
Civil litigation
Customs procedures (effective in the countries with
recordal systems)
• informal options: warning letters, negotiation,
mediation
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The ASEAN IPR SME Helpdesk provides free, confidential, business-focused ASEAN
IPR advice to European Small and Medium Enterprises (SMEs).
For more information about our services and how the ASEAN IPR SME Helpdesk can add value
to SMEs, please contact:
Telephone: +62 21 571 1810
Email: [email protected]
Online: www.ASEAN-iprhelpdesk.eu
Thank you!
Please visit our website or sign up to our newsletter to get the very latest
information on all Helpdesk events in ASEAN.

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