technopreneurship & innovation symposium & exhibition (tise) 2012 21 november 2012...

TECHNOPRENEURSHIP & INNOVATION SYMPOSIUM & EXHIBITION (TISE) 2012

21 November 2012Technology Park MalaysiaBukit Jalil, Kuala Lumpur

Protecting Your IdeasBy

ONG CHUI KOONRegistered Patent, Trade Mark & Industrial Design Agents

Commissioner For OathsSenior Principal Consultant & Senior General Manager

Intellectual Property CentreSIRIM Berhad

SIRIM Berhad… YOUR PARTNER TO GLOBAL TRADE

Outline of Presentation

Divided into 2 parts:

a). How to Protect Your Ideas

The concept of property, why we must protect our ideas, what is IP, how is IP protected, the different IP laws in Malaysia, and the scope of protection afforded under each law.

b). The Malaysian Intellectual Property System

Laws governing the IP system –trade secret, patents,Trade marks, Copyright, Industrial Designs How to apply for a patent in Malaysia and overseas, the do’s

and don’ts when applying for patents, rights conferred by a patent.


1). The Concept of Property

Divided into 2 categories:

a). Tangible property

Examples: land, cars, house, table, camera, etc. Can be seen and can be touched Have ownership and can be sold or transfer to another

party for money consideration or as a gift.

b). Intangible property

Examples: Ideas, knowledge, information, experiences. Cannot be seen and cannot be touched. Have ownership and can be sold or transfer to another

party for money consideration or as a gift.


2). Ideas

According to The Concise Oxford Dictionary (Ninth Edition) (1995)

Clarendon Press, Oxford

Idea means conception or plan formed by mental effort or a concept

of pure reason which transcends experience.

Which means:

- For an idea to come about, it involves mental effort (mind)

-An idea is a creation of the human brain

-Experience plays a role for creation of ideas


3). Why Must We Protect Our Ideas

- Let say you have an idea on how to make diamond

- You spent time and effort in coming up with that idea

- The idea can help you to generate an income

- Definitely you don’t want someone else to steal that idea

- Hence you need to protect it

- Why you need to protect it ?

- Because you own it

- It is your property

- What we called intellectual property


4). What is Intellectual Property (IP)?- Intellectual property refers to creations of the mind

- Can be invention, literary, artistic and musical works,

symbols, images, and designs used in commerce.

- Basically, intellectual property relates to pieces of

information which can be incorporated in tangible objects

at the same time in an unlimited number of copies at

different location anywhere in the world.

- The property is not in those copies but in the information

reflected in those copies


5). How is Intellectual Property Protected?

- Protection is effected using IP laws

- Give rise to ownership i.e. IP rights

- IP rights are commonly accorded on a national basis

- IP rights are normally limited in time

- Scope of protection and the requirements for obtaining IP

rights vary from country to country

- Minimum standards to be fulfilled in obtaining these IP

rights

- Minimum standards came about as a result of the TRIPS

Agreement of which Malaysia is a member


6). Laws Relating to the Protection of Intellectual Property in Malaysia

Trade Secret – By Contract or Common Law

Patents - Patents Act 1983

Trade Marks- Trade Marks Act 1976

Industrial Designs (ID) - ID Act 1996

Copyright - Copyright Act 1987

Geographical Indications (GI) -GI Act 2000

Integrated Circuits (IC) - Layout Designs of IC Act 2000

Elaborate on trade secret, patents, trade marks, industrial

designs and copyright.

Particular focus on “The Malaysian Patent System”.


7). Trade Secret

The easiest way to protect an idea is to keep it as a secret

No registration is required

Protection is forever as long as the idea remains undisclosed to the public

If you want to share the idea with someone else, bind that person with a contract

Infringement is based on breach of the contract or breach of confidence/Common Law

Remedies - sue for damages and injunction

Disadvantage: Other people can come up with the same idea and can also work on it.

Examples : Coca-Cola formula, KFC recipes, Dom Benedictine


8). Patents

Protect new and useful inventions.

Meaning of an invention (section 12,Patents Act, 1983) An invention means an idea of an inventor which permits in

practice the solution to a specific problem in the field of technology.

Inventions can be products, processes or a combination of products/processes and apparatus.

Scope of protection is to exclude others from making, using or selling the invention or using the process of the invention

Protection is obtained by applying for a grant of a patent

Patent is granted for invention which is new, involve an inventive step and is industrially applicable


8). Patents

Term of protection is for 20 years from the date of filing of the patent application and subject to payment of annuity

Protection is based on country by country basis

Unauthorized manufacture, storing, sale of devices or use of process embodying the invention cover by the patent is an infringement

Remedies - sue for damages, injunction, delivery up of infringing products

Examples: Double pulsator in washing machine, use of sildenafil citrate for the treatment of erectile dysfunction


9). Trademarks

Protects commercial identifications of goods or services

TM can be words, designs, slogans, logos, symbols, signature, label, name or combination thereof.

Protection is against creating a likelihood of confusion and deception in the minds of the buying public and to protect the owners against unfair competition

Protection is obtained by registering the mark or use of the mark in commerce

Basis for registration is bona fide intention to use followed by actual use or actual use in commerce


9). Trademarks


Term of protection can be forever as long as the mark is used and remains distinctive, and is renewed once every 10 years

Unauthorized use of the trademark which will create a likelihood of confusion or deception as to source is an infringement

Remedies - sue for damages, injunction and delivery up of goods bearing the trade mark

Examples of TM: Macdonald’s, KFC, Nestle, Gucci, Rolex, Pensonic,Genting City of Entertaiment.


10). Industrial Designs

Protects new or original features of shape, configuration, pattern or ornament applied to the article

Scope of protection is to exclude others from making, using or selling articles bearing the registered design

Protection is afforded by registration

Basis for registration of design is based on features in the finished article which appeal to and are judged solely by the eyes.


10). Industrial Designs

Period of protection is initially for 5 years from the date of application and extendable to another two 5 year periods, making the total duration of protection 15 years.


Unauthorised manufacture, use or sale of article embodying the registered design is an infringement

Remedies - sue for damages, injunction and delivery up of articles bearing the designs

Examples : shape of the Coca cola bottle, Proton Savy, designs on textiles and furniture (Osim massage chair)


11). Copyright

Protects original expression of ideas

Cover literary works, artistic works, musical works, sound recording, software, architecture works, sculptures, songs.

Scope of protection is against copying

No need for registration

Copyright subsists when an original work is created and is fixed in a tangible form (eg. on paper, diskette, film, CD)

Period of protection is generally the life of author plus 50 years after death of author


11). Copyright

Protection in all Berne Convention countries

Unauthorized copying of a copyrighted work is an infringement

Remedies - sue for damages, injunction and delivery up of pirated copies

Examples : Microsoft Windows, songs sang by Theresa Teng, The Famous Seven by Enid Blyton (story book).

Proof of ownership is by preparing a statutory declaration or by mailing the original manuscript to your own self using registered mail. Alternatively you may do a voluntary copyright registration at MyIPO – started this year.


12). THE MALAYSIAN PATENT SYSTEM

(a). What is a patent?

A government issued document that provides its owner with rights to prevent others (for example, competitors) from exploiting the invention defined by the patent claims for a fixed duration of time (i.e. the patent term) in return for the disclosure of the invention (i.e. the publication of the patent specification) to the public.


(b). What is an invention

According to The Concise Oxford Dictionary (9th Edition), an invention is “a contrivance, especially one for which a patent is granted”.

According to the Malaysian Patent Act, 1983 (Act 291), an invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology, and an invention may be or may relate to a product or process.


To qualify as an invention under the Malaysian Patents Act, the invention must “permits in practice the solution to a specific problem in the field of technology” and can be made or used in any kind of industry.

(c). What are patentable inventions?

According to the Malaysian Patents Act, an invention is patentable if it is new, involves an inventive step and is industrially applicable

An invention is only patentable when these 3 patentability criteria are met.

This patentability criteria is used world wide.


(d). Patentability Criteria

New

New means that it must not be anticipated by prior art.

What is prior art?

everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;

the contents of a domestic patent application having an earlier filing/priority date than the patent application filed above.


Inventive step

An invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the prior art, such inventive step would not have been obvious to a person having ordinary skill in the art.

What is “Obvious”?

“Obvious” means easily seen or recognized or understood


Who is the “Person having ordinary skill in the art”

“Person having ordinary skill in the art” means someone who is working in the same field of technology. For example, a cobbler is deemed to know all the technology about making shoes; a mechanical engineer is deemed to know all the technology related to the working of an internal combustion engine.

Industrially applicable

An invention shall be considered industrially applicable if it can be made or used in any kind of industry. This means that a prototype of the invention can be made and the working of the invention can be demonstrated.


(e). What are Non-Patentable Inventions

Not all inventions are patentable in Malaysia. The Malaysian Patents Act, 1983 specifically laid down certain inventions to be excluded from patent protection. Under the law, the following shall not be patentable:

Discoveries, scientific theories, and mathematical methods,

Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living microorganisms, micro-biological processes and the products of such microorganisms processes;

Schemes, rules or methods for doing business, performing purely mental acts or playing games;

Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.


(f). How to Obtain a Patent in Malaysia

Who may apply for a patent

Any person may make an application for a patent or a certificate either alone or jointly with another.

The word “person” is not limited to natural persons, but also includes a company

thus application can be made by the inventor or innovator or company

Where the applicant is not the inventor, a “Statement justifying the applicant’s right to the invention” must accompany the request for Patent.


Patent or Utility Innovation

the decision as to whether to apply for a patent for an invention or a certificate for a utility innovation or both, is for the applicant to decide.

However, only a patent or a certificate will be granted for the same invention/innovation

Under the law, the applicant can convert a patent application to a utility innovation application and vice-versa upon payment of a fee

a patent is granted for an invention or an innovation which satisfies the criteria of newness, inventive step and industrial application

a certificate is granted for an invention or innovation which satisfies the criteria of newness and industrial application only


(g). The Patent Application

Must be accompanied by

a request for a patent (Form 1) or a certificate (Form 14) a description a claim or claims a drawing or drawings, where required an abstract fee The request form must contain the names of the inventors, the name of the applicant, the addresses of the inventors and applicant, nationality of the applicant, and name of a common representative if the application is submitted through a patent agent The Registrar of Patent shall issue a Certificate of Filing once the above items are in order and the formal requirements are met.


(h). What you should do before filing a patent application

Documenting the invention

Record experimental protocols and results in a notebook For patent purposes, the notebook should also contain

written records of when the idea of the invention was first conceived and how the idea was successfully carried out Each page of the notebook should be dated and signed by the inventors and witnessed Identify who are the actual inventors (the persons who actually contributed to the invention) Identify the co-applicant (if it is a joint project) The inventors and applicants are being bound by confidentiality agreements


Determining whether patenting is appropriate

After an invention has been documented, a decision has to be made:

whether to patent or to keep as a secret? a patent should only be pursued if the invention has sufficient commercial potential to merit the costs and effort involved patenting is a very expensive process, hence adequate funds should be made available factors such as size of market, whether infringing alternatives are available, ease and cost of production, life span of the product, etc need to be considered determine whether the invention is patentable by conducting a novelty search if patenting is not to be considered, and trade secret protection is not appropriate, then consider publication.


(i). What you should NOT do before filing a patent application

No publication

No exhibition

No posting of the invention on a web-site

No sale or use of the invention in public

If need to test the invention, do it in an enclosed place and not

to be seen by public

If need to discuss invention with colleague, sign Non-

Disclosure Agreement (NDA).

If need to discuss invention with collaborators, sign NDA

No demonstration of the invention on TV, shows etc.

Grace period in Malaysia


(j). How are foreign patents obtained

Requirement of section 23A, “must be filed in Malaysia first”

An offence to file outside Malaysia without permission

Imprisonment and fine

Filing of patent application outside Malaysia only after two

months of Malaysian filing

Submission of Priority document

Territorial nature of patent

National filing or Regional filing

Patent Cooperation Treaty (PCT) filing

Factors to consider when filing overseas, example - cost,

translation, 12 months period under Paris Convention.


(k). Rights conferred by a patent

the rights conferred by a patent can be enforced in Court (in Malaysia it is the High Court) by the patent owner against unauthorized users (for example, competitors). The patent owner can seek an injunction (i.e. a Court order) and/or damages from any party infringing a valid claim of the patent.

the rights conferred by a patent can also be contracted to another party either by an assignment or by licence agreement.

a patent is an intangible asset, and depending on what it covers, can be very valuable (for example, the patent on the drug, Sildenafil citrate owned by Pfizer).


(l). Patents Granted in Malaysia

As on 31 July 2011:

Total number of patent applications received (foreign & Malaysian): 110,968

Total number of patent granted (foreign & Malaysian): 44,056

Total number of patent applications filed by Malaysian: 9,483

Total number of patent granted to Malaysian: 1,883


Reasons for low number of patents granted to Malaysian:

Applications abandon by applicants due to lack of funds, etc.

Applications refused by Registrar for failing to meet the requirements of the Patents Act

Application cleared for grant but applicant did not pay grant fee.

Low innovative activity in Malaysia - output from Universities and Research Institutions still low

SIRIM Berhad… YOUR PARTNER TO GLOBAL TRADE-

Contact Details:

ONG CHUI KOON P.J.K.Registered Patent, Trade Mark and Industrial Design AgentCommissioner For Oaths, High Court of MalayaSenior Principal Consultant and Senior General Manager Intellectual Property CentreSIRIM Berhad1, Persiaran Dato’ Menteri,Section 2,40000 Shah Alam Malaysia.Tel: ++ 603 – 55446134Fax: ++ 603 – 55446146Email: [email protected]

technopreneurship & innovation symposium & exhibition (tise) 2012 21 november 2012...

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