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

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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)

Most Common IP Issues Affecting SMEs • 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

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4. Snapshot: Free Helpdesk Services

Confidential Enquiry Helpline

IP Guides & Newsletters

E-learning & Business Tools

Training Workshops & Live Webinars

Website & Blog

(i) Confidential First-line Advice Service

• 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

Free Helpdesk Services

question@asean-iprhelpdesk.eu

or

+62 21 571 1810

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(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

(iii) ASEAN IPR SME Helpdesk Training and Webinars

• 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

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(iv) Online Portal

www.ASEAN-iprhelpdesk.eu

www.yourIPinsider.eu

• Practical IPR guides

• ASEAN country IPR factsheets

• Case study and FAQs

• Helpdesk newsletters, videos and blog

• Event information

• Helpdesk videos and ELMs

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

Recent Developments on the Helpdesk…

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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

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 in the IP landscape in ASEAN

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IP landscape in ASEAN - Background

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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.

• 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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The ASEAN Economic Community (AEC)

• 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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ASEAN Working Group on Intellectual Property Cooperation (AWGIPC)

• 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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Goals of the ASEAN IPR Action Plan 2011-2015

• 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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ASEAN Patent Examination Co-operation (ASPEC)

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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 2006 1995

Cambodia 1998 NO 2004

Laos 1998 2012 2013

Myanmar NO NO 1995

IP landscape in the 10 ASEAN countries – international conventions

Filing routes/international application systems in the 10 ASEAN countries

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• 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)

ASEAN-wide IP Protection and Enforcement Challenges

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Tips for the 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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IP Strategy in ASEAN

• 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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Applying one global IP plan is a mistake.

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Identification of IP assets and prioritization of needs

• 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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Geographical scope of protection

• 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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Remember about the first-to-file principle

• 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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Check the freedom to operate

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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

• Definition of confidential information

• Permitted purpose

• Limitation of disclosure

• Information excluded from confidentiality

• Term

• Choice of law and jurisdiction

• 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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IP Ownership

• 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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Exploit your IP rights

• 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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Enforce your IP rights

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: question@ASEAN-iprhelpdesk.eu

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.

Sources • http://www.asean-iprhelpdesk.eu

• Targeting the ASEAN Market - IP Protection and Risk Mitigation Strategies for SMEs; Franck Fougere (Ananda IP)

• http://www.asean.org

• http://www.aseanip.org/

• http://en.wikipedia.org/wiki/Indonesia

• http://www.wipo.int/

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