Question: Can you confirm that for patents, it is possible to pay annuities late by 3 years by paying surcharge?
Answer: Except for year 18, 19 and 20 where it is not possible to file restoration? As stipulated under Article 115 paragraphs (2) of the Patent Law no: 14/2001 as shown herein below:
Article 115
(1) If within 3 (three) consecutive years a Patent Holder has not paid the annual fees as stipulated in Article 18 and Article 114, the relevant Patent shall be deemed void commencing from the date constituting the time limit for the payment for the third year.
(2) If the failure to meet the obligation regarding the payment of annual fees concerns with the payment of annual fees for the eighteenth (18th) and subsequent years, the relevant Patent shall be deemed void on the time limit for the payment of annual fee for the relevant year.
(3) The revocation of a Patent on the grounds as referred to in paragraph (1) shall be recorded and announced.
the Indonesian Patent Office has announced that the payment of annuity for the year of 18th (eighteenth), 19th (nineteenth) and 20th (twentieth) shall be made right on time within its due date and no possibility of late payment even though accompanied with a surcharge. Failing to comply with such rule, the Patent Office will not accept the payment and issue the receipt thereof and the patent will be void accordingly.
In the case that the final deadline is not yet due, there is still possible to pay for the annuity with surcharge. Please see the following example:
Annual fee II (April 1, 2008 – March 30, 2009) will be payable and shall be settled no later than January 5, 2010;
Annual fee III (April 1, 2009 – March 30, 2010) will be payable and shall be settled no later than January 5, 2011;
Annual fee IV (April 1, 2010 – March 30, 2011) will be payable and shall be settled no later than January 5, 2012.
The annuity payment with surcharge for the above still can be made before the final deadline of 5 January 2012. Payment after the aforementioned final deadline is not possible and the annuity is deemed void.
Delayed payment of Annuities for Indonesia Patents
Indonesian Trademark Renewal
Q1: We would like to ask about reinstate of expired trademark registered in Indonesia.
In Indonesia, trademark has 10 years validity. If registered owner forgets renew and it expires, then is there any reinstatable period or immediately abandoned? How long reinstatable period? In your website says non- reinstatable after expiry.
A1: There are no provisions to apply for extension of time for late renewal payment or re-instating a mark after its expiry date. The Indonesian Trade Marks Office does not permit or accept any renewal application request after the actual renewal due date.
If clients are interested in the expired mark, the only option available is to re-file the application in Indonesia.
Streetdirectory.com will stay alive
SINGAPORE: They have it all mapped out.
At a meeting on Saturday after it lost its case in the High Court, shareholders of Virtual Map (VM) decided to continue running its website. They also decided not to refund the parties VM had fined for unauthorised use of its maps.
These decisions came after the company's appeal against the Singapore Land Authority (SLA) over copyright infringement was thrown out last month.
VM managing director Firdhaus Akber said the website, streetdirectory.com, will be up and running again this week, but he declined to say exactly which day. And he would not comment on how exactly VM will go about putting the maps together without falling afoul of copyright infringement again.
At the meeting, two key topics were debated. There were the strength of public hostility towards the company — VM had fined or threatened legal action at about 500 businesses — and if the site is still a worthwhile investment.
Since it was taken offline last Wednesday, more than 2,000 users have appealed for it to be put back online, said Mr Firdhaus, who also said that "only a small minority hates the company".
"We understand it is painful for them," he said. "If there is anything we can do to lessen their pain, please inform them to contact us. But we will not refund any money as the monies have gone back into building better products and services and the running of the site."
So far, no one has demanded that VM refund the money it collected from its previous lawsuits, he added.
As to whether those parties are entitled to do so, copyright lawyer Siew Kum Hong said it was a "tricky" issue that is dependant on the terms of the settlement.
In cases such as these, the "alleged infringer" should have gotten a warranty agreement from VM that says it is authorised to grant a license to them to continue using the maps, said Mr Siew, who is also a Nominated Member of Parliament (NMP).
But he pointed out that now that VM has been found guilty of infringing the SLA's maps, VM could be found to be in breach of that warranty because it did not have the right to grant the licence in the first place.
As for the possibility of the SLA going after the parties who have been using VM maps, the NMP said they can then turn to VM to compensate them or indemnify them.
"It is legitimate for these companies that were previously sued by VM to feel ripped off," said Mr Siew. "Even if the settlement agreement did not specify that VM is authorised to grant these licences of use, it is likely that this can be implied and if they wanted to, they could go after VM."
- TODAY/so
Street map website down after lawsuit loss
Title: Street map website down after lawsuit loss
Source: Straits Times
Author: Chua Hian Hou
Legal News Archive
A POPULAR website that features interactive street maps of Singapore has been taken offline after its parent company, Virtual Map, lost a court battle against a government agency, which accused the firm of copying state charts.
The site, streetdirectory.com, has been down since Tuesday, said Virtual Map's managing director Firdhaus Akber.
But the company is currently working on a set of replacement maps, and hopes to bring the site back online in 'about two days', he said.
In January last year, the Singapore Land Authority (SLA) sued Virtual Map for copyright infringement, accusing the firm of using government maps after a licensing agreement between them had expired.
Virtual Map lost the suit in the district court, and was ordered to stop using the infringing materials. It appealed to the High Court, but lost again.
The company is appealing to the Republic's highest court, the Court of Appeal, to reverse the decision, Mr Firdhaus said.
He said the private company has called for a meeting of its shareholders some time 'in the next couple of days'.
This will be to decide whether the company continues to provide what he claimed were 'the best online maps in Singapore', or quit the business here and 'focus our efforts elsewhere'. Virtual Map also offers online maps in countries such as Indonesia and Malaysia.
Mr Firdhaus said his company has spent 'millions' putting in value-added data like points of interest, on top of the maps that SLA had provided.
The new site will use maps created via the company's own surveys, he said.
Alternative online maps are available at sites such as SLA's StreetMap (www.map.gov.sg/StreetMap) and Show Nearby (www.shownearby.com).
chuahh@sph.com.sg
Virtual Map loses out to Singapore Land Authority
Street map vendor Virtual Map (VM) has once again had its appeal dismissed. VM had appealed against the District court’s decision that it had infringed the copyright of Singapore Land Authority’s (SLA) maps and therefore was worthy of an injunction restraining it from infringing SLA’s works. On 25 March 2008, the High Court upheld the injunction granted by the District Court prohibiting VM from reproducing, distributing or selling reproductions of SLA’s street directory maps.
Background
VM entered into seven non-exclusive licence agreements with SLA between 1999 and 2003 regarding the use of the Authority’s maps and address point data to produce maps available on VM’s website www.streetdirectory.com. However, the licence agreements were terminated on 10 July 2004 in accordance with the terms of the termination clause in the licence agreements. Even after termination of the licence, VM continued to use SLA’s maps and data and sell maps that were reproductions of its copyright works. On 20 July 2005, SLA wrote to VM demanding that it stop using and provide a written agreement that it would stop using data that was reproduced from SLA’s works. VM denied that is was in breach of SLA’s copyright and claimed that its maps were independently created; hence the proceedings that ensued.
Licence Agreements
VM claimed that even after termination, the licence agreements actually allowed for the continual use of SLA’s copyright works that had already been utilised in the creation of VM’s maps. it even went so far as to claim that it no longer had to pay SLA royalties for marketing products derived from SLA data, and that even after the termination of the licence, was still able to continue using SLA’s data loaded onto its maps. There is however nothing in the agreements to support VM’s assertions, expressly or implied. Also VM’s claim that SLA was estopped from taking any legal action because of the delay in actually protecting its copyright was unfounded. VM claimed that SLA did not take any action to protect its copyright for some time after the termination of the licence agreements, even with the knowledge that VM continued to sell its online maps to the general public.
Copyright
In the District Court, VM claimed that the SLA did not own any copyright in the copyright works; but during the appeal hearing, VM’s counsel stated that VM was prepared to accept that SLA had copyright in the compilation of the street directory and address point data, but continued to assert that no occurrence took place of copying or substantial copying of SLA’s data. In order for the breach of copyright to be proven, it had to be shown that VM’s work was indeed objectively similar to the copyright works and that the similarity resulted from the copying of the copyright works.
For copyright infringement, the burden of proof lies with the plaintiff (Creative Technology Ltd v Aztech Systems Pte Ltd [1997] 1 SLR 621. In this case all that was required was a substantial reproduction by VM of SLA’s copyright works. Section 10(1)(b) of the Copyrights Act (Cap 63, 2006 Rev Ed) states that a reference to a ‘reproduction, adaptation or copy of a work’ shall include a reference to a ‘reproduction, adaptation or copy of a substantial part of the work’. It could be argued that the copying in this case was actually ‘altered’ copying because VM’s maps were not exact replicas of SLA’s works. For altered copying, the test for copyright infringement is whether or not the infringer has ‘incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work’.
Although SLA claimed that VM substantially reproduced its copyright works, VM contended that its online maps from 2004 were independently created through the use of GPS data and high resolution satellite imagery. SLA pointed out that far too many ‘fingerprints’ of its copyright materials showed up in VM’s maps and this proves that there was substantial copying as opposed to independent creation. ‘Fingerprints’ determine whether copyright infringement has taken place and many national mapping organisations place deliberate errors in their maps in order to detect infringement.
“Fingerprints”
There were a number of groups that the ‘fingerprints’ in VM’s maps were categorised into. The first group concerned phantom or ghost details; and these are non-existent objects purposely placed by SLA in its maps in order to expose infringers. Examples of these are non-existent buildings in SLA’s maps that were replicated in VM’s maps. Interestingly enough, even genuine mistakes on SLA’s part for example in terms of road direction arrows, were repeated in VM’s maps and if VM had in fact been doing a proper job in its independent map-marking exercise, it would have noticed these mistakes. Another type of ‘fingerprint’ was incorrectly-named buildings and building numbers of which were also replicated in VM’s maps. The same could be said for the similarities in shapes, as several examples were identical or extremely similar. On top of that shapes that were omitted on SLA’s maps in relation to buildings were also omitted in VM’s maps. The address point database as well as some 58 address point co-ordinates were also identical.
Because VM had prior access to SLA’s data through the licence agreements, it was VM’s duty to prove that the “fingerprints” were not a result of copying of SLA’s data. VM’s task of proving that the new maps were indeed the result of its own independent creation was made more difficult by the fact that the two people most involved in the map-making exercise both held no qualifications in land survey or any experience in cartography. Since VM failed to explain why there were many inexplicable “fingerprints” in its maps and failed to establish that its maps were its own independent creation, the next question was whether VM’s copying was substantial.
Substantial Copying
VM’s counsel admitted that even if copying had taken place, it was not substantial copying, occasionally referring to the fact that copying, if any, was not substantial if compared to VM’s overall work. However, copied features need not form a substantial part of the defendant’s work in order to be considered a substantial part of the copyright work; and even if the overall appearance of the defendant’s work is different from the copyright work, this does not mean that the defendant’s work is not infringing the plaintiff’s copyright.
The High Court, on the other hand, agreed with SLA and asserted that not only had copying taken place, but ‘widespread or wholesale copying’. Although VM had ‘improved and beautified’ SLA’s data, the fact still remained that VM’s map-making process relied heavily on SLA’s data and it actually provided the basis for VM’s maps.
Conclusion
The High Court dismissed VM’s appeal against the District Court judgement with costs. The company is planning to file an appeal with the Court of Appeal if the High Court gives permission to do so. The ironic thing is that VM for years brought lawsuits against a multitude of companies in Singapore for using its maps; and now what about all those people who paid licensing fees to VM? This creates many complexities because, if VM infringed on SLA’s copyright, then this makes the available VM maps pirate copies. If that is the case, the question then raised is if all licensees to VM’s maps are actually in possession of illegal copies and showing them to the world? Also if VM’s last attempt at an appeal fails, it will have to remove the maps from the internet, and this will have an incredible impact on all those organisations and companies with maps that are linked to www.streetdirectory.com.