Responses to the pandemic have included closing down physical offices and limiting or suspending in-person appointments. However, measures have been taken to counteract the practical challenges the COVID-19 pandemic has brought onto the IP community, with the promotion of e-filing systems, online payments and upgrading of online databases being made available in more locations. Such measures taken by IP offices have brought real progress for online IP registration amongst jurisdictions in Asia. We outline some of these key changes and the positive effects resulting from the measures taken by the following jurisdictions.
The Department of Intellectual Property of Cambodia (“DIPR”) encouraged IP agents and applicants to file documents through its e-filing system as a preventive measure against the spread of COVID-19. Cambodia’s online IP registration system was implemented in 2017 and has been a common route and preferred method of filing and communication between the public and the DIPR. The e-filing system has received continuous upgrades and improvements to its features and functions to be ready for internal use and external filings. It has now become a beneficial tool as it lessens unnecessary physical communications and paperwork and saves time and costs. The DIPR continues to work on further improvements to its system by working with external firms and individual agents. In addition, agents can seek immediate help from the stand-by technical officer when encountering any difficulty or wishing to report any issues occurring during the e-filing. This shows the DIPR’s responsiveness in optimising the e-filing system to better use.
Since the launching of the e-filing system in 2017, there have been limited delays and difficulties in filing applications to the China Trademark Office (“CTMO”). The system has provided flexibility for submitting applications at any time of the day. The e-filing system was further upgraded to cover a wider variety of applications, including priority filings, new applications with non-standard items of specification and appeals for refusal. The CTMO also promotes e-filing over physical filing with a shorter examination period (1-2 months less) and a 10% discount on the official fee enjoyed by online filings.
The e-filing system allows batches of filings for one applicant or registrant, and for submissions of multiple applications and registrations for changes of personal details (i.e. name, address, agent), recordal of licence or assignment, and renewals in one request. Examination periods in China were not substantially delayed by COVID-19 and there has been an increase in both e-filings and paper filings.
Due to the pandemic, the Trade Marks Registry provided for limited counter service but allowed for electronic filings. With the e-filing system, filings and meeting deadlines can continue to be conducted through electronic means. In addition, communications with the Registry, already conducted electronically, have remained uninterrupted. While courts in Hong Kong have been closed during COVID-19 outbreaks, operations are still open for urgent and important matters. In addition, the Hong Kong judiciary has provided remote hearings for civil cases and aims to implement electronic options for handling court-related documents. As a result, urgent IP matters could still be entertained in Hong Kong.
Indonesia’s online IP registration system was officially launched in 2016 and aimed to encourage innovation and transparency while reducing time and effort. A new and mandatory e-filing system was later launched in 2019 by the Indonesia Directorate General of Intellectual Property (“DGIP”). The DGIP’s digital initiative proved beneficial when the COVID-19 pandemic occurred as the world had to readjust to remote operations. The Indonesian IP office absorbed the impact of the pandemic on its operations with the help of the online system and re-adjusting the system to accept electronic documents and setting up virtual counters for payment for the first time in Indonesia.
The DGIP’s efforts coupled with the steady interest in Indonesian market for IP filings reflects in the filing statistics for the first half of 2020. Trade mark filings from January to June 2020 increased by 7% compared to the same time last year. The DGIP has made sure that the online IP system is continuously evolving and upgrading to encourage IP protection despite the disruption. For instance, the newest feature in the online system offers the ability to delete goods or services at any time from the specification of an application that is already filed. Online counters or virtual counters were established by May 2020 to support patent annuity and excess fee payments during substantive examination. The Indonesia patent office now sends examination letters to local agents via email, keeping the pace of patent prosecution in the jurisdiction steady.
In the Philippines, the Intellectual Property Office of the Philippines (“IPOPHL”) quickly shifted all filings, correspondence and payments to an online system. This includes trade marks, patents and case filings. Online hearings via video conferencing are also now required. The IPOHL has also relaxed certain formalities. For example, instead of filing original documents, scanned copies of filed documents are accepted in the interim. Inquiries sent by email are now being entertained. The IPOPHL has also extended deadlines for papers, pleadings, documents and payments as a remedial measure from the pandemic.
In Thailand, the e-filing system was further upgraded and developed during the pandemic to better support social distancing policy. Actions submitted online via e-filing are now examined faster than responses filed physically. The e-filing system has also saved time and costs by reducing cost of transportation and paperwork. The streamlined examination process allows providers to revert to clients faster. The COVID-19 pandemic has accelerated the adoption of the e-filing system by both the public and the Trademark Office, where priority is now shifted to handle filings and submissions submitted online rather than physical filing. E-filing has now become the “new normal” in Thailand due to COVID-19.
Discussed in our previous insight, we further explore the effects of COVID on IP in Thailand.
The Intellectual Property Office of Vietnam (“IP Vietnam”) has placed more importance on online IP registration by issuing more detailed guidance on online filing which addresses issues occurring before COVID-19. The online registration system in Vietnam has been in operation since 2017 but did not support all IP services. In particular, procedures such as cancellation and appeal still required completion in-person. Therefore, applicants and IP agents would still have to go to IP Vietnam for direct submissions and receipt of notifications.
When IP Vietnam temporarily shut down due to the COVID-19 pandemic in April 2020, it issued an official notification providing more detailed guidance on the online registration system and allowed online filing of almost all IP services. In addition, all communications between IP Vietnam and applicants and IP agents are now conducted via email and postal services rather than requiring collection from IP Vietnam’s offices. Finally, IP Vietnam has started accepting online fee payments and charges for filings, reducing paper waste and further streamlining the e-filing system.
The impact of the COVID-19 pandemic has caused a significant shift towards electronic systems in the IP community in Asia, not just for simple transaction, but for most aspects of the interaction between IP offices and their clients. While the immediate aim in all cases has been to implement social distancing in the face of COVID-19, the shift has brought about unintended positive effects such as streamlining IP application and examination procedures amongst the jurisdictions. As the pandemic continues to negatively impact legal services worldwide, the improving accessibility for online IP registration among the jurisdictions provides a beacon of light in the IP community.
With contributions from our teams across Asia.