© European Union, 2019. Reuse is authorised provided the source …€¦ · Reuse is authorised provided the source is acknowledged. The reuse policy of European The reuse policy

© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.


IPR Protection in China and South-East Asia for the Software Industry

Moderator:

Marta Bettinazzi

IP Business Advisor

South-East Asia IPR SME Helpdesk



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Erik Rodenbach

Programme Coordinator

ITEA 3


Elio De Tullio

IPR Expert

De Tullio & Partners


Time Agenda Speaker

10:00 – 10:05Introduction to the webinar and services of IPR

HelpdesksNora Bihari, SEA IPR SME Helpdesk

10:05 – 10:10 Overview of the ITEA project Erik Rodenbach, ITEA

10:10 – 10:50IPR Protection in China and SEA for the Software

IndustryElio De Tullio, De Tullio & Partners

10:50 – 11:00 Q&A

Agenda

Overview of ITEA 3

Erik Rodenbach

ITEA Programme coordinator

[email protected]


EUREKA Cluster ITEA 3Software innovation

ITEA is the EUREKA Cluster programme for software innovation, enabling a large international community to collaborate in funded projects that turn innovative ideas into new businesses, jobs, economic growth and benefits for society.

ITEA is open to large industry, small and medium-sized enterprises (SMEs), start-ups, academia and customer organisations. SMEs represent 45% of all participants.

Its bottom-up project creation ensures that the project ideas are industry-driven and based on actual customer needs.

https://itea3.org


▪ Consortium building – Project Outline Preparations Days event

▪ Submit a Project Outline (PO)

▪ Short project overview: project goals, innovation, targeted business impact and consortium

▪ Project Outlines which are positively evaluated are invited for the second step

▪ Submit a Full Project Proposal (FPP)

▪ Description of project plan, management and execution

▪ Approved FPPs will receive the ITEA label

▪ Funding & Project Start-up

▪ Each ITEA project partner can apply for national funding in their own country

▪ Project start-up after national approvals

Yearly call processHow to participate?

IPR Protection in China and SEA for the Software Industry

Elio De Tullio

IP expert


Elio De Tullio is an Italian lawyer admitted at the bar of Bari and trademark attorney. After 10years of experience in IP matters, he founded in 2005 the law firm De Tullio & Partners, withoffices in Rome and Bari and a liaison office in New York. Managing Partner of De Tullio &Partners, he acts as trademark attorney in the strategic assessment of IP protection and inprosecution and opposition processes at domestic and international level. He is also alitigation lawyer before the Italian Courts specialized in Intellectual Property. He specializeson trademark, design and patent issues, from a strategy, business intelligence, competition,filing and prosecution perspective. He has written some articles on Italian and European lawon intellectual property rights which have been translated into Chinese and South-East Asialanguages.

Name Elio De Tullio

Company De Tullio & Partners

Location Rome, IT

Email [email protected]

IP Expert


Poll Question

Have you implemented any measure to protect your Intellectual Property in China

or SEA?

❑ Yes, in China

❑ Yes, in South-East Asia

❑ No

General Information


Protection of Software in China and SEA

• Copyright (source code)

• Patent for invention (Algorithms – Inventive Step)

• Trade Secret

• Design (GUI)


Copyright Protection of Software

• Copyright protects the expression of ideas, and not the ideas per se.

In other words, copyright does not protect the ideas underlying the

software that is often the source of commercial value. However,

copyright provides protection against any unauthorised running,

copying, modifying or distribution of the software.

• It is advisable to include copyright notices on the software sold to

the end users (i.e. the symbol © or “Copyright” followed by the year,

the company name and the phrase ‘All rights reserved’. Such a

notice should be affixed to the wrapping, disks and first page of the

screen when the software programme is launched on a computer.


Copyright Protection of Software / Ownership

• Generally, an author of a work owns the copyright for that work.

However, when it comes to software development, copyright

ownership can be more complex.

• If software is created by a developer during employment, the

employer usually owns the economic rights to the works, while the

employee owns the right of attribution of authorship. It, however,

depends on the particular country. For example, in Indonesia, the

copyright for works created by an employee during employment,

does not automatically belong to the employer.

• As such, before entering China and the South-East Asian countries,

EU SMEs should consult EU legal counsels and draft employment

contracts that clearly define the ownership of the copyright in the

works created by their local employees.


Patent for software-related inventions

• For an invention to be patentable, the invention must meet the

following three requirements: (1) novelty, (2) inventive step, and (3)

industrial applicability. A patent must be applied for in the all the

jurisdictions of interest.

• However, EU SMEs should note that not all countries in South-East

Asia offer patent protection for computer software.

• In the Philippines and Thailand, for example, it is explicitly provided

in IP laws that computer software or programs are not patentable.

• On the other hand, other countries such as Singapore and

Cambodia, software may be patented.


Patent for software-related inventions

• Obtaining a patent may take a long time and require substantial

resources to prosecute the applications through to grant.

• EU SMEs should thus avail themselves of the ASEAN Patent

Examination Cooperation (ASPEC) Programme as well as any other

Patent Prosecution Highway Programmes between the national

patent offices. Such programmes allow the sharing of search and

examination results between the participating patent offices, thereby

allowing applicants in participating countries to obtain corresponding

patents faster and more efficiently.

• Furthermore, it can be wise to use the Patent Cooperation Treaty

(PCT) international patent filing route. By filing one international

patent application under the PCT, applicants can simultaneously

seek protection in a very large number of countries, including all

South-East Asia countries except for Myanmar.


Trade Secrets protection for software

• Another way is to protect a software as a trade secret. While

copyrights and patents are made public and are limited in duration,

trade secrets are private and can last indefinitely, if proper measures

are put in place to ensure the confidentiality of such trade secrets.

• In this regard, EU SMEs should develop trade secret protection

strategy for their software. For example, a proper protection strategy

will require entering into confidentiality agreements with the EU

SMEs’ employees, independent contractors or other third parties

that may have access to the software, ensuring limited access to the

source code, and having password protection or another encryption

method for documents containing the source code.

• In China and South-East Asia trade secrets are only enforceable, if

they are appropriately protected, thus a comprehensive trade secret

protection strategy combining the above is necessary.

THE INTERDEPENDENCE OF IP RIGHTS


• Old approach: IPRs are separate entities

• New approach: IPRs (patents, designs, copyrights, trade secrets etc.) are interconnected and interdependent

• Multiple layers of protection for products

• Dynamic valorization and exploitation of rights

• Different possibility of enforcement in China and SEA countries


Example of IPR interdependence

• Tablet computers and Smartphones contain several software (i.e. touch screen applied to the display, capable to offer the user the possibility to surf on the web, to start software and to reproduce multimedia contents.

• They are examples of interdependence of IP rights and multi-layer protection of software that can includes, and is composed of, several IPRs like patents, copyrights, trade secrets etc.


China

Copyright Legislation 1/2

China is a member state of the Berne Convention for the Protection of Literary and Artistic Works:

1. Copyright is a right that arises automatically at the time of creation of the work

2. Any work published in China by a Chinese citizen or a foreign subject, automatically enjoys protection

3. If the work has been published in a foreign country, it enjoys automatic protection if it is also published in China or if the author is a national of a country that is party to international agreements in this field (i.e. the Berne Convention).

Copyright can be registered voluntarily at the Copyright Protection Centre of China:

• Even if the protection is automatic, voluntary registration provides clear proof of ownership of the right that is useful in the event of a future dispute;

• In addition, registration is strongly recommended if the copyright concerns rights of particular importance to the company (think of websites, catalogs, customer databases, software...) or when licensing the protected work is planned.


Copyright Legislation 2/2

Duration of protection:

1. The duration of the protection for the patrimonial rights and the moral right to publication isequal to the author's life plus 50 years after his death;

2. The period of protection for all other moral rights (right of paternity, right to disclosure,modification and integrity of the work) is unlimited.

Registration procedure:

1. Filing of the application (the form is available online) at the Copyright Protection Centre ofChina (CPCC).

2. The application can be made directly or through an agent (in this case the applicationmust be accompanied by the agent's documents and the legal power of attorney issued bythe holder of the right);

3. The applicant must send to the CPCC a series of documents: the completed applicationform, his/her own identification documents, any document proving the ownership of theright and a brief description of the work, containing an explanation of the creative processand the requirements that allow the work to be registered;

4. CPCC checks the documents and determines the registration fees that vary depending onthe type of work;

5. Consequently, the applicant will receive a certificate of registration;

6. The registration process takes about 30 working days.


Copyright Protection Requirements 1/3

Requirements:

• Biographical details of the owner, including name and address.

• Copy of proof of identification of owner, for example business

registration certificate of a company.

• Details of the software program including:

• Date of establishment;

• Operating environment, including details of hardware requirements

and operating system;

• Programming language used;

• Substance of the software, which can be submitted in either the form

of ordinary deposition or exceptional deposition.


Copyright Protection / Ordinary 2/3

• Ordinary deposition

• First and last 30 pages of:

• Source code;

• Specification/operation manual or the entirety of the

documents if these have less than 60 pages each.


Copyright Protection/Exeptional 3/3

In an exceptional manner:• First and last 30 pages of source code with confidential portions concealed, but the total concealed

portions not exceeding 50% of the submitted source code.

• First 10 pages of source code, plus any consecutive 50 pages of any other portion of the source

code.

• First and last 30 pages of source code, plus any consecutive 50 pages of any other portion of the

source code.

• To ensure efficient proof of ownership and infringement by a third party, it is desirable to insert

some specific identification, for example the name of the owner into the source code. China

Copyright Law clearly provides that where there is no evidence to the contrary, the citizen, legal

entity or organisation whose name is shown on a work shall be deemed the author of the work.

• Copyright protection in China costs between 240 and 345 EUR, depending on the number of

documents involved and the registration process takes around 30 days from when the CPCC

accepts the application.


It is advisable to reveal minor parts of the software’s source code by means of an exceptional

filing, which obscures the confidentiality areas and/or requires the "sealing" of the source code

and of the documentation.

Repository of the software before a Notary Public

Chinese copyright law allows the software owner to obtain proof of

copyright ownership by depositing the source code before a public

notary.

In the event of infringement by a third party such deposit can

be used as evidence.


Patent Legislation 1/3

Patent rights are enforceable from the date of publication of the patent in the Gazette.

• Types of patent (art. 2 Patent Law):1. Patent for invention: a new technical solution concerning a product, a

process or the improvements resulting from it, which can be applied in practice. To be patentable, an invention must be "new" and must not have previously been patented or disclosed to the public abroad or in China (exception: 12 months before filing in a Paris Convention country).

2. Utility model patent: a new technical solution relating to the shape and/or structure of a product, or a combination thereof, which is suitable for practical use. Such patents are granted more quickly but the term of protection is shorter.

3. Ornamental design patent: original designs concerning the shape, pattern or combinations thereof, or combinations of colours and shapes which have an individual character and are possible for industrial application; protection does not cover the functional parts of a product.



Duration of protection (Articles 42-43 Patent Law):

• Patent for invention: 20 years from the date of filing (subject to payment of theannuities);

Although the term of protection starts from the date of filing of the application, only afterthe publication of the registration are the patents really protected (Articles 39-40 PatentLaw).

Registration procedure:

• Chinese Patent Application: It can be made by any natural or legal person who hashis or her residence or registered office in China; under Section 19 of the Patent Act,foreign persons not resident or not resident in China must appoint a Chinese agent(designated by the Patent Administration Department Under the State Council) to acton their behalf.

• PCT Application: International patent application under the Patent Cooperation Treaty(PCT), including China among the designated states.



Examination

CNIPA first carries out a formal preliminary examination to verify the

procedural requirements of the filed application.

Then, within three years from the date of the filing, the applicant must apply for

a further examination on the merit to verify the existence of the requirements

for the protection of the invention (novelty, inventive step and industrial

application).

If the applicant fails to comply with this deadline without a legitimate reason, the

application is deemed to have been withdrawn (Art. 35 et seq. of the Patent

Law)


Examination Guidelines 1/2

The 2006 Examination Guidelines states that the followings are considered to be the

rules and methods for mental activities under Art. 25.1(2) of the Patent Law and are

excluded from patentability “pure rules and methods for mental activities, such as a

computer program relating only to an algorithm or rule for mathematical computing

rules, or computer programs per se, or computer programs recorded in mediums, or

rules or methods for games”. If a claim is defined by rules and methods for mental

activities in the whole contents, it shall not be granted a patent right.

The Guidelines explain that the following categories fall into this exclusion:

“methods of examining patent applications; methods of managing

organization; traffic rules; methods of deduction; rules of classifying books;

rules of editing calendar; operating instructions; grammar; computer

languages; short-cut arithmetic methods; mathematical theories and methods

of conversion; methods of psychological test; methods of teaching; methods

of games; methods of statistics; music books, food recipes or chess manuals;

methods of keeping fitness; methods of disease survey; methods of

presenting information; and computer programs per se”.


Examination Guidelines 2/2

While computer programs “per se” may not be patentable, it is possible

for an invention that incorporates a computer program to be patentable

subject matter.

The 2006 Examination Guidelines state that a computer program may be

patentable if ‘the combination of software and hardware as a whole can

really improve prior art, bring about technical results, and constitute a

complete technical solution’.

Following Article 2 of the Patent Law and Rule 21 of the Implementing

Regulations, an application relating to a computer program is only the

subject matter of patent protection if it constitutes a technical solution.

To satisfy this requirement, the application must: (i)solve technical problems (ii)

use technical measures, and (iii) be capable of producing a technical effect. An

application will only constitute a technical solution when it meets all three of

these criteria.


Amendments to the Guidelines for Patent Examination by CNIPA

Significant changes to the Patent Examination Guidelines came into force on 1 November 2019. The amendments concern:

• Inventiveness

• GUIs Design Application

Other important amendments are related to:

• The applicant now has the option to defer the substantive examination for 1, 2 or 3 years;

• The examiner may discuss substantive issues in an application with the applicant/patent agent in a face-to-face interview, a telephone interview, an email exchange or a video conference;

• The examiner must follow three steps to carry out a prior art search:

1. Preliminary search based on information about the patent family, the applicant and the inventor;

2. A regular search based on the technical field of the application;

3. An extended search based on similar functionalities.


Amendments to the Guidelines / Inventiveness

There is a standard analysis, often called the "three-step method", for a Chinese examiner to determine whether a claim is inventive in view of the prior art:

1. Determining the closest prior art reference;

2. Determining distinguishing technical feature(s) not disclosed by the closest prior art reference and technical problem(s) to be solved by the distinguishing technical feature(s);

3. Assessing whether the distinguishing feature(s) are obvious in view of another reference or the Common General Knowledge (CGK).

Regarding the Inventive Step and the CGK, the Amendments to the Guidelines for Patent Examination by CNIPA involve:

• A restriction for the examiners from arbitrarily alleging that a feature is CGK by requiring examiners to provide evidence when a feature accountable for solving the technical problem is considered as CGK.

• If the applicant raises an objection against the CGK alleged by the examiner, examiners will now be required to provide evidence of the CGK or explain the reasons for the objection.


Proposed Amendments to the Guidelines for Patent Examination on Inventions Incorporating Algorithmic Features or Business Rule and Method Features

These amendments regards patent applications incorporating elements such as:

• AI

• Internet+

• Big data

• Blockchain

Examination shall be directed to the solution claimed.• Technical features and algorithmic features or business rules and

method features shall be considered as a whole. Thus, the patent examination regards every element constituting the patent.

• If the claim describes technical aspects relevant to laws of nature for the resolution of a technical problem, and if a technical effect is obtained according to laws of nature, the solution of the claim is a technical solution.



Art.22 Examination on novelty and inventiveness:

• All characteristics (including technical characteristics concerning algorithms, business rules or method features) must be taken into account for the purpose of examining novelty.

• Algorithms, business rules and method features that "functionally support each other and have an interaction relationship" with the technical characteristics, are considered together with the technical characteristics.

Art.25.1 Examination on rules and methods of mental activities

• If a claim relates to abstract algorithms or rules of pure business and methods, and does not contain any technical characteristics, then this claim belongs to the rules and methods of mental activity and cannot be patented.

• If, on the contrary, the application embodies additional business rules, working methods or algorithms, these elements can be evaluated during the substantial examination and can therefore be considered patentable.




METHOD FOR DETECTINGTHE FALLING STATE OF AHUMANOID ROBOT

Based on a multi-sensorsystem in combination withfuzzy logic

System of planning of multi-robotic paths based oncooperative geneticalgorithm of co-evolutionand multi-population,through the optimization of aMessy genetic algorithm[Does not involve anyinventive step].

ALGORITHM

METHOD OF LOGISTICSDISTRIBUTION Where theserver determines allinformation based on user IDsand shipping notifications fromshippers sent via mobiledevices

Computer device that establishesthe degree of emotional belongingand automatically builds ageometric layout of an emotionalvisual chart.

[There is no INVENTING STEP,Classification rules do NOTfunctionally support or haveinteractions with specificvisualization means]

BUSINESS MODEL

APPs / Preliminary searches

• When developing APPs for China, it is important to ensure that the relevant

APP has not already been registered by local developers,

• Thus, preliminary it is necessary to:

• Ask your EU IP Expert to carry out a search, extract relevant data and

issue a legal opinion on inherent protectability and novelty

• OR:

1. Carry out a state-of-the-art Patent search;

2. Carry out a Copyright search in relation to possible copyright

registrations which might be relevant.


App Store Resolution

After a violation of an APP:

• The resolution process is initiated by contacting the App Store and

verifying infringing products.

• The developers having Copyright registration, fill out an online

form asking for the removal of the content that infringes the

intellectual property right.

• The stores offer an online content resolution service but

sometimes this service is only available in Chinese language. It

would therefore be recommended to contact your EU legal

counsel.

• The notarization of evidence is necessary to start an infringement

action and to request compensation.


South East Asia

Copyright Protection of software programme in SEA

• Copyright protection arises automatically as soon as a work is created.

• Furthermore, as soon as any copyrightable works are created in any country which is a signatory to the Berne Convention, copyright protection automatically arises in every other country which is also party to the Convention.

• There are currently 171 member countries of the Berne Convention for the Protection of Literary and Artistic Works, which includes all EU Member States and all ASEAN countries except for Cambodia and Myanmar.

• Except for Myanmar, the Philippines and Thailand, software programme are expressly protected by copyright in South-East Asia.

• Formalities must be checked locally with your EU attorneys that will liaise with a local agent



Copyright protection in SEA

Copyright Protection of software programme in SEA

• Although registration is not required in terms of territorial protection, copyright registration is very helpful in proving ownership in case there could be need for enforcement actions.

• Authorities prefer to rely on copyright registrations as evidence of ownership before accepting a case from the complainant who claims to be the copyright owner.

• It is recommended that SMEs register their copyright in the South-East Asian countries that allow voluntary registrations and where they have potential or actual business dealings.

• Copyright registration is normally not expensive, with official fees varying from EUR 4 to EUR 35, depending on the type of work and on the country.

• In most South-East Asian countries copyright owners can register their rights with the support of their EU agents. However in Thailand and Malaysia, they will need to appoint local agents,.


Copyright Enforcement in SEA

• Although the legal framework in most countries in South-East Asia is

relatively developed, there are still many issues with enforcing copyrights.

Many South-East Asian countries lack experienced judges, experts and

law-enforcement authorities.

• Enforcing IP rights in the South-East Asia region can be challenging, but

not impossible.

• Depending on the country, rights holders may enforce their copyrights

through administrative, civil, customs, or criminal routes. In different

South-East Asian countries different enforcement routes tend to be most

efficient and most cost-effective. In many South-East Asian countries in

general, and in Indonesia in particular, mediation and out of court

negotiations can be the fastest and most cost-effective enforcement routes

and should be considered before other types of enforcement.



Are computer software patentable subject matter?

• Cambodia Possible (CII)

• Indonesia No

• Malaysia No

• Philippines No

• Singapore Possible (Business Methods)

• Thailand No

• Vietnam No

Source: https://www.rouse.com/magazine/news/patenting-artificial-intelligence-in-china-and-south-east-asia/Rouse The Magazine – 7 August 2019Patenting artificial intelligence in China and South-East AsiaAuthors: Fabrice Mattei Kin Wah Chow Yen Vu Edmund Baranda Thitiya Lueabrassamee Sokunvannary Tep

https://www.rouse.com/magazine/news/patenting-artificial-intelligence-in-china-and-south-east-asia/


Examination Guidelines on AI/CII/CDI/software

• Cambodia No

• Indonesia No

• Malaysia Partially covering AI related inventions through 2011

Examination Guidelines

• Philippines Yes

• Singapore Yes

• Thailand Partially covering AI related inventions through the

Examination Manual 2019

• Vietnam Partially covering AI related inventions through 2011

Examination Guidelines


Computer software or algorithm form part of a widerpatentable invention

• Indonesia Yes

• Malaysia Yes

• Philippines Yes

• Thailand Yes

• Vietnam Yes

Conclusions

Key Recommendations

✓ Choose your strategy according to a preliminary assessment based oninvestigations and searches

✓ Start protecting your IPR before entering the market

✓ Prepare a strategy to develop your IPR protection

✓ Carry out your preliminary searches at worldwide level

✓ Take care of your first filing, even the national one

✓ Collect all the documents related to your IPRs and create a database with allrelevant materials

✓ Monitor markets and competitors’ behaviors

✓ Activate, through your IP attorney, a worldwide surveillance system

✓ Monitor IP gazettes and legal actions

✓ Verify compliance of contracts providing local legislation as applicable law

Thank you!

[email protected]


Questions & Answers


@ChinaIPR@seaiprhelpdesk

@iprchina@iprSEAsia

www.youripinsider.eu www.ipr-hub.eu

Stay connected!

@chinaipr-hd@seasiaipr

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© European Union, 2019. Reuse is authorised provided the source …€¦ · Reuse is authorised provided the source is acknowledged. The reuse policy of European The reuse policy