In this article originally published by World Trademark Review, Tilleke & Gibbins senior associate David Mol shares advice on how to collaborate effectively with customs officials at Cambodian border points and ports, offering a guide on how to successfully monitor for—and enforce against—counterfeit and grey market goods.   Can rights holders record trademark and brand-related IP information with Customs and, if so, how?   At present, there is no formal customs IP recordal system in place in Cambodia. However, rights holders may consider: a request letter to Customs; or recordal of an exclusive distributorship. Request letter to Customs A request letter to Customs would be an effective measure in cases where a rights holder is aware of a specific customs checkpoint that is being used to smuggle infringing goods. The rights holder may request to set up a meeting with Customs at the checkpoint to provide officials with: guidance on the issue; the IP rights involved; and information on product identification. The rights holder may further request the official’s assistance in monitoring shipments for certain goods. Customs has been open and cooperative in the past, setting up direct communication lines between rights holders and border officials. Officials then: monitor shipments; exchange sighting reports; and set up inspections where applicable. However, this option is not directly regulated under any laws or regulations, and can only be considered as an ad hoc approach in cases where the rights holder is aware of issues at a specific checkpoint. We usually do not recommend using this approach to alert all checkpoints in Cambodia, as it is rather time-intensive, requiring close cooperation and active liaison with officials. Instead, targeting specific checkpoints has proven to work in our experience. A request letter to Customs may apply to all types of intellectual property. However, a recently issued regulation that addresses suspensions

A Resounding Victory The last days of October brought some excitement for one of the leading pharmaceutical companies in the world, Novartis, when its patent litigation case in Vietnam against a local generic manufacturer, which had stretched over more than eight years, finally came to an end. The background of this case is quite simple. Novartis was the owner of a patent protecting the active ingredient vildagliptin, which was commercialized through its Galvus® product, a medicine used to treat type 2 diabetes. In 2015, the company found that a drug manufacturer in Vietnam’s Binh Duong province on the outskirts of Ho Chi Minh City was producing a medicinal product containing the vildagliptin active ingredient—an infringement of its patent. Novartis first submitted a request to the Ministry of Science and Technology (MOST) to apply administrative sanctions on this infringer. Subsequently, the MOST Inspectorate concluded in July 2015 that the defendant had committed patent infringement and ordered them to stop producing the infringing drugs and recall them from the market. However, the defendant did not comply with the conclusion, and sought an appeal while it continued to produce the infringing medicine. Realizing that administrative sanctions were not strict enough to deter the defendant, Novartis continued to protect its legitimate rights and interests by initiating a lawsuit at the provincial court where the defendant was headquartered, Binh Duong. Novartis claimed that the defendant had infringed the patent and requesting the defendant to compensate for damages at the highest level allowed by law, pay attorney fees, and publicly apologize to Novartis in specialized newspapers. This began a long journey full of challenges that finally ended with the second appellate judgment declared by the High People’s Court of Ho Chi Minh City on October 17, 2023. The court accepted all claims raised by the

In its ongoing efforts to enhance Indonesia’s intellectual property e-filing system, the country’s Directorate General of Intellectual Property (DGIP) has consistently introduced improvements to the online system. In recent months, the DGIP has implemented several noteworthy changes that differ from previous versions of the system. These changes bear significant importance for applicants who intend to file IP applications, and include the changes highlighted below for designs, patents, and trademarks. Designs File format and view limitation. Under current rules, all design drawings must be submitted in JPG format, and only one view is permitted per page. No refund requests. Once the application payment has been made, refund requests are no longer an option. Figure limitation. Only one figure is allowed for each design view, with an exception made for reference and perspective views. Patents Title consistency. If an invention is already registered outside Indonesia through the Patent Cooperation Treaty (PCT), the title in the Indonesian registration application must match the title registered with the World Intellectual Property Organization (WIPO). Bibliographic data matching. In national phase applications, it is essential for all bibliographic data to mirror the information from the PCT international phase as listed on WIPO’s website. This conformity is crucial for a seamless application process. Excess claim fees. A new requirement stipulates that excess claim fees must be paid at the time of filing the patent application. Trademarks Goods and services selection. The DGIP requires applicants to choose their desired goods and services from a predefined list, and the provided list is not editable. The DGIP periodically updates this list, but there is no fixed schedule for these updates. Moreover, these updates can sometimes entail removal of items from the list, and requesting the addition of goods or services is often challenging, especially if a similar alternative already exists

Indonesia and South Korea have opened a patent prosecution highway (PPH) mechanism that allows applicants to seek patent protection in Indonesia by basing their application on a granted Korean patent. The PPH was opened following the conclusion of two memoranda of understanding (MOUs) between Indonesia’s Directorate General of Intellectual Property (DGIP) and the Korean Intellectual Property Office (KIPO) on September 8, 2023. One of the MOUs is about comprehensive cooperation in the field of intellectual property, while the other spells out the details of the PPH mechanism. When requested, the PPH will help applicants speed up the examination process for their patent applications in Indonesia using the substantive examination results issued by the KIPO. This can substantially shorten the amount of time required for the examination process period from approximately two years (from the substantive examination request) to less than one year (from the PPH request). Similar to a PPH request under Indonesia’s existing PPH agreement for Japanese patents, applicants can file a PPH request based on a granted Korean patent after the Indonesian patent application is published and before the issuance of the first office action. Requests must be accompanied by the official fee of IDR 5 million (approx. USD 315) for filing a PPH request. The scope of cooperation between the DGIP and KIPO, as described by the other MOU, includes increasing the countries’ capacity, framework, protection, inspection, and utilization of intellectual property, as well as other cooperative activities. The countries will also exchange information on how to increase public awareness about the importance of protecting intellectual property. For more information on this new bilateral cooperation, or on any aspect of patent protection in Indonesia, please contact Tilleke & Gibbins at [email protected] or +6221 2971 8088.