Thailand’s Department of Special Investigation (DSI) has recently changed the criteria for accepting cases under their jurisdiction, which greatly benefits intellectual property (IP) owners who wish to bring legal action before the DSI. Issued on June 9, 2022, and taking effect the following day, the Notification of the Board of Special Cases (No. 8) B.E. 2565 (2022) lowered the minimum threshold for the market value of IP-infringing goods from THB 10 million (approx. USD 242,400) to THB 5 million (approx. USD 121,200). DSI Jurisdiction The Special Case Investigation Act B.E. 2547 (2004) (as amended) and subsequent regulations lay out the DSI’s jurisdiction over “special cases,” giving DSI officers the authority to handle certain trademark, copyright, and patent infringement cases (among others). In order for the DSI to get involved, the alleged offender must be involved in, or suspected of involvement in, the manufacturing or purchasing of the items in question, or in relevant distribution facilities, warehouses, or importing businesses. Another condition for the DSI having jurisdiction is that the total market value of the articles or products possessed for use in the offense, acquired from the offense, or the possession of which is an offense, must exceed the minimum threshold specified in regulations. This minimum market value has now been lowered from THB 10 million to THB 5 million. The damages that can be reasonably expected from the commission of an offense have also been lowered from THB 10 million to THB 5 million. Impact of the New Criteria on IP Owners The DSI has substantial experience handling complex IP-infringement cases, and they have been especially active in fighting online infringement over the past several years. The lowering of the minimum benchmark to file a case from THB 10 million to THB 5 million means that more IP owners
Indonesia has issued a continuation of its debt relief program—which covers settlement of unpaid patent annuities—from 2021. The debt relief program, which Indonesia has named its “Crash Program,” has been adjusted to make it more practical for debtors and responsive to their needs. The updated “Crash Program” is laid out in the Ministry of Finance’s Regulation No. 11/PMK.06/2022 regarding Settlement of State Receivables through the Crash Program Mechanism, which was issued on February 21, 2022, replacing a similar notification from the previous year. Patent annuities are “state receivables” and thus are an object of the Crash Program. According to the Directorate General of Intellectual Property (DGIP), as of March 2022, outstanding unpaid patent annuities due amounted to IDR 211 billion (approx. USD 14.5 million). The DGIP is thus promoting the Ministry of Finance’s Crash Program as a way for patent holders to pay their unpaid patent annuities. Under the Crash Program, debtors owing unpaid patent annuities can request the following types of debt relief: Waiver of all of debt interest, penalties, and other charges; 60% off debt principal; and From the remaining principal amount, additional deductions of: 40% if settled by June 2022; 30% if settled from July to September 2022; 20% if settled from July to December 20, 2022. The key aspects of the Crash Program under the new regulation are outlined below. Foreign Debtors The original Crash Program regulation from 2021 lacked specific information on requirements for foreign debtors to participate in the program. The new regulation, however, allows foreign debtors to obtain a letter of reference from their foreign consulate in Indonesia or authorized institution in the country of origin to fulfill requirements for supporting documentation in order to participate in the Crash Program. The letter of reference must confirm the debtor’s inability to pay the
On June 16, 2022, the latest amendment of Vietnam’s Intellectual Property Law was finally ratified with the consent of 95.58% of the members of the National Assembly. The amendment has received much attention from not only IP rights holders but also law enforcement authorities, as changes have been made in respect of both IP ownership and enforcement. Notably, under the amended IP Law, Vietnam will recognize sound marks, which shows the country’s efforts to comply with international treaties and agreements to which it is a party, such as the EVFTA and CPTPP. Although there will be challenges in protecting sound marks, this adoption hopefully will provide IP rights owners with one more useful type of protection for their intellectual assets in the developing era of technology. Regarding copyright, the criteria for co-authorship have been clarified with more details regarding the number of authors (from two authors and above), the contribution of the authors, the intent of the authors, etc. These criteria are similar to other legal systems such as those of the U.K. or U.S. As the definition of co-author plays an important role in determining the ownership of the work, this change promises a better scenario with fewer disputes concerning the ownership of collaborative works. Unsurprisingly, the National Assembly agreed to keep administrative sanctions as one of the measures to deal with IP infringement. This is in contrast to one of the previous drafts of the amended law in which administrative sanctions were no longer listed as a way to protect IP rights. This removal had received strong negative feedback from many scholars and legal practitioners, who argued from the practical aspect that the civil litigation process often takes longer and has higher costs than administrative sanctions and, thus, would discourage owners from protecting their rights. Further, IP
Lawyers from Tilleke & Gibbins and its associate firm TGVN provided the Vietnam chapter of the Practical Law Patent Litigation Global Guide. The 2022 edition provides an overview of how patent disputes are handled in 33 jurisdictions worldwide. Tilleke & Gibbins also contributed the Thailand chapter of the guide. The Vietnam chapter of the guide covers the following topics in Practical Law’s signature Q&A format: Sources of law Court system Substantive law Parties to litigation Enforcement options Competition and antitrust Procedure in civil courts Preliminary relief Final remedies Appeal procedure Litigation costs Standard essential patents (SEPs); fair, reasonable, and nondiscriminatory (FRAND) licensing; and antisuit injunctions Practical Law, which is owned by Thomson Reuters, is the world’s leading legal know-how resource for business lawyers, publishing a wide range of guides covering hundreds of jurisdictions and practice areas. The full Vietnam overview from the Patent Litigation Global Guide can be accessed on the Practical Law website.