Question 1a
Questions in an effort to identify ways that we can reduce unnecessary spending and improve the efficiency of our prosecution in Malaysia? Is there a point where additional claims no longer add value?
Answer 1a
No.
Question 1b
Does it matter whether the claims are independent or dependent with respect to costs?
Answer 1b
No.
Question 2
What types of pharmaceutical-related Claims are allowable in Malaysia?
Answer 2
1. Composition claims (product claims)
2. Process claim
3. Swiss-type use claim (in the format of “Use of substance X in the manufacture of medicament for the treatment of condition Y”)
Question 3
What types of pharmaceutical-related Claims are NOT allowable in Malaysia?
Answer 3
1. Method of treatment of human or animal body by surgery or therapy (can be overcome by amending this type of claims to be read as Swiss-type use claims).
2. Omnibus claims (which is in the format of; “An X as shown Figure Y” or “Apparatus as described in the description”)
Question 4
Does the Intellectual Property Corporation of Malaysia (MyIPO) restrict the scope of claims based on the examples and/or data present in the application at the time of filing? e.g. will the Examiner require the scope of a compound claim to be restricted to exemplified examples?
Answer 4
According to Malaysian Patents Act, examples are preferred embodiments of the specification and variations are allowed so long as it does not go beyond the scope of the claims. Examples are also does not restrict scope of invention.
Question 5
Are there limitations on the scope that one can claim for a biologic or antibody?
Answer 5
Biologic materials such as therapeutic antibodies against protein or genetic sequence are generally considered to be patentable and qualify as an invention so long as the antibody gene sequence are novel, involve an inventive step, and industrially applicable. Plant or animal varieties or essentially biological processes for the production of plants or animals; other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes; are considered not patentable, microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation can be considered man-made organisms and is patentable only if it is new, involves and inventive step and is industrially applicable.
Question 6
Will the Intellectual Property Corporation of Malaysia (MyIPO) accept claims that have been granted in other countries? If yes, what countries?
Answer 6
Yes. Prescribed countries; Australia (AU), Japan (JP), Korea (KR), Great Britain (GB), USA and EPO.
Question 7
Can you delay prosecution until claims grant in one of these countries?
Answer 7
Yes, we can file for deferment of request for substantive examination; and the maximum delay is 5 years from the filing date.
Question 8
If there a pro forma response that could be filed to address nuisance oppositions filed by Generic companies?
Answer 8
In Malaysia, there is NO provision for oppositions during the prosecution of patent application stage. However, generic companies may file for Non-infringement declaration (NID) and / or revocation after the patent has been granted. In this case, there is no pro forma response as NID and / or revocation are court proceedings.
Tuesday
Divisional Application In USA
Question 1
If the applicant decides to elect to amend the claims to contain only 1 group, when is the deadline to file for divisional application(s)?
Answer 1
There is not a specific deadline to file a divisional application; however, the divisional application must be filed before either the parent application issues as a patent or goes abandoned.
Question 2
What is the difference in continuation in part and divisional application?
Answer 2
A continuation in part application is one that claims priority to an earlier application but also typically includes new matter that was not described in the earlier application. The priority date of the earlier application is given to any claims whose subject matter was described in the earlier application and any claims with new matter are deemed to have the priority date of when they were filed.
A divisional application is an application that is filed with respect to non-elected claims in a previously restricted application and the claims in the divisional application are given the priority date of the claims in the previously restricted application (assuming no new matter is added to the divisional application).
Question 3
Our initial proposed response will be to divide the parent application (by using claims of group 1 only) to another 2 child application (where claims of group 2 and 3 divided accordingly). Would you think this is a more viable solution. Would you take similar action?
Answer 3
Our suggestion is to elect to desired group of claims in the present application and have them examined per the standard course of action. Please also note that you will also need to elect a species of a particular compound in which the Examiner poses 4 questions and one disorder or disease must also be elected. Then we would propose that you file a divisional application or applications for any non-elected claims. This may prove to be the most efficient solution as drafting and filing fees would likely be lower that the filing of two new child applications. Additionally, it may be possible to amend some of the claims in groups 2 and 3 so as to put them into one application and avoid a future restriction requirement.
If the applicant decides to elect to amend the claims to contain only 1 group, when is the deadline to file for divisional application(s)?
Answer 1
There is not a specific deadline to file a divisional application; however, the divisional application must be filed before either the parent application issues as a patent or goes abandoned.
Question 2
What is the difference in continuation in part and divisional application?
Answer 2
A continuation in part application is one that claims priority to an earlier application but also typically includes new matter that was not described in the earlier application. The priority date of the earlier application is given to any claims whose subject matter was described in the earlier application and any claims with new matter are deemed to have the priority date of when they were filed.
A divisional application is an application that is filed with respect to non-elected claims in a previously restricted application and the claims in the divisional application are given the priority date of the claims in the previously restricted application (assuming no new matter is added to the divisional application).
Question 3
Our initial proposed response will be to divide the parent application (by using claims of group 1 only) to another 2 child application (where claims of group 2 and 3 divided accordingly). Would you think this is a more viable solution. Would you take similar action?
Answer 3
Our suggestion is to elect to desired group of claims in the present application and have them examined per the standard course of action. Please also note that you will also need to elect a species of a particular compound in which the Examiner poses 4 questions and one disorder or disease must also be elected. Then we would propose that you file a divisional application or applications for any non-elected claims. This may prove to be the most efficient solution as drafting and filing fees would likely be lower that the filing of two new child applications. Additionally, it may be possible to amend some of the claims in groups 2 and 3 so as to put them into one application and avoid a future restriction requirement.
Singapore Patent Litigation
Question 1
A has recently notified B of a potential issue with respect to the corresponding Singapore patent. Can pre-notice acts done by B constitute an infringement? Pre-2007, there were many B sales. 2007-2009: not so many B sales.
Answer 1
Yes. Pre notice acts done by B constitute an infringement as prima facie the right of the patent belongs to the patentee. There isn't a need for A to issue a notice to B as there is a provision for Groundless Treats in Singapore Patents Act (Section 77). Thus, regardless of the volume of B's sales (pre-2007, high volume of sales; 2007-2009: low volume of sales); all action taken/done by B is considered to be infringing.
77.—(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars,
advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person
aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4),
bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).
Question 2
Types of damages? Measure of damages: Statutory, punitive, standard (plaintiff’s lost profits, i.e. put the patentee in the position he would have been in had the patent not be infringed), account for profits etc? Is discovery available for damages inquiry?
Answer 2
Yes. Discovery is available for damages inquiry wherein it depends on the result of infringement /destruction of the infringing material. It is measured by the profits made by the infringer from the infringing activity wherein the patentee's financial loss is irrelevant and it is meant to prevent unjust enrichment.
Question 3
If C had obtained and paid for licences to A for overall use of patents in C’s product, would that reduce the amount of damages payable if B is found to have infringed A’s patent. Which is for a component?
Answer 3
No. There will be no reduction in the amount of damages payable if B is found to have infringed A's patent in a case where C had obtained and paid for licenses as exhaustion of rights is applicable in this scenario (in relation to parallel import). According to exhaustion of rights, the patentee has made use of the statutory exclusive right of exploiting the patent (possibly through his licensee) and thereby has used it up so that he cannot prohibit subsequent activities of exploitation. Thus, in relation to this matter, if the software used in B's chip is patented by A, B is to pay royalty/damages directly to A even if C had obtained and paid for licenses as it is only applicable for the initial stage of transaction.
Question 4
Defences to infringement e.g. undue delay, laches, statute of limitations (6 years) or any other statutory defences?
Answer 4
Expiration of the patent could be considered as a form of defence as B’s Singapore patent has expired in mid-2009.
Question 5
Would a process or method claim be infringed if the software was put on the chip but the software did not actually run? E.g. passed through assembly line only.
Answer 5
Yes. A process or method claim is considered as direct infringement. In the manufacturing scenario wherein the software is loaded into the chip; also known as embedded system, the program/software that is written for embedded systems are known as firmware. For example, B's chip will be loaded with A's software/program. However, A's software is only loaded in the chip and is not activated. It will only be activated based on respective application/use-for wifi's technology or an application which requires Bluetooth's protocol. In my opinion, it is considered as direct infringement although A's software is only loaded and not activated into B's chip with an intention of use.
A has recently notified B of a potential issue with respect to the corresponding Singapore patent. Can pre-notice acts done by B constitute an infringement? Pre-2007, there were many B sales. 2007-2009: not so many B sales.
Answer 1
Yes. Pre notice acts done by B constitute an infringement as prima facie the right of the patent belongs to the patentee. There isn't a need for A to issue a notice to B as there is a provision for Groundless Treats in Singapore Patents Act (Section 77). Thus, regardless of the volume of B's sales (pre-2007, high volume of sales; 2007-2009: low volume of sales); all action taken/done by B is considered to be infringing.
77.—(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars,
advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person
aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4),
bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).
Question 2
Types of damages? Measure of damages: Statutory, punitive, standard (plaintiff’s lost profits, i.e. put the patentee in the position he would have been in had the patent not be infringed), account for profits etc? Is discovery available for damages inquiry?
Answer 2
Yes. Discovery is available for damages inquiry wherein it depends on the result of infringement /destruction of the infringing material. It is measured by the profits made by the infringer from the infringing activity wherein the patentee's financial loss is irrelevant and it is meant to prevent unjust enrichment.
Question 3
If C had obtained and paid for licences to A for overall use of patents in C’s product, would that reduce the amount of damages payable if B is found to have infringed A’s patent. Which is for a component?
Answer 3
No. There will be no reduction in the amount of damages payable if B is found to have infringed A's patent in a case where C had obtained and paid for licenses as exhaustion of rights is applicable in this scenario (in relation to parallel import). According to exhaustion of rights, the patentee has made use of the statutory exclusive right of exploiting the patent (possibly through his licensee) and thereby has used it up so that he cannot prohibit subsequent activities of exploitation. Thus, in relation to this matter, if the software used in B's chip is patented by A, B is to pay royalty/damages directly to A even if C had obtained and paid for licenses as it is only applicable for the initial stage of transaction.
Question 4
Defences to infringement e.g. undue delay, laches, statute of limitations (6 years) or any other statutory defences?
Answer 4
Expiration of the patent could be considered as a form of defence as B’s Singapore patent has expired in mid-2009.
Question 5
Would a process or method claim be infringed if the software was put on the chip but the software did not actually run? E.g. passed through assembly line only.
Answer 5
Yes. A process or method claim is considered as direct infringement. In the manufacturing scenario wherein the software is loaded into the chip; also known as embedded system, the program/software that is written for embedded systems are known as firmware. For example, B's chip will be loaded with A's software/program. However, A's software is only loaded in the chip and is not activated. It will only be activated based on respective application/use-for wifi's technology or an application which requires Bluetooth's protocol. In my opinion, it is considered as direct infringement although A's software is only loaded and not activated into B's chip with an intention of use.
Terminal Disclaimer
Question 1
What is a Terminal Disclaimer (TD)?
Answer 1
A binding statement made with the Patent Office in a case where more than one patent has been obtained by the inventor on the same invention. The disclaimer will state that the later patent will expire at the same time as the former patent and the later patent will be enforceable only as long as both the patents are commonly owned.
What is a Terminal Disclaimer (TD)?
Answer 1
A binding statement made with the Patent Office in a case where more than one patent has been obtained by the inventor on the same invention. The disclaimer will state that the later patent will expire at the same time as the former patent and the later patent will be enforceable only as long as both the patents are commonly owned.
Filling Of An Improvement Of An Initial Application In Malaysia
Question 1
Suppose if any inventor come up with an improvement over already applied application and the applied application acts as a citable prior-art for improve invention by means of barring the novelty feature, then how inventor will proceed for filing application in Malaysia?
Answer 1
If the applicant has filed a non-provisional application in US, and later filed for continuation in part (CIP), which is an improvement from the initial application, the applicant can file the application in Malaysia subject to the 2 scenarios below:
Scenario 1: No added subject matter
Provided the improvement does not go beyond the original disclosure of the already applied application in Malaysia (parent application), the applicant may file a divisional application (encompassing the improvements). However, this divisional application must be filed within 3 months from the first Office Action or anytime before the issuance of the Office Action.
Scenario 2: Added subject matter
Should the improvement have added subject matter and goes beyond the original disclosure of the already applied application, the applicant may file a fresh application claiming priority of the CIP application filed in US.
Suppose if any inventor come up with an improvement over already applied application and the applied application acts as a citable prior-art for improve invention by means of barring the novelty feature, then how inventor will proceed for filing application in Malaysia?
Answer 1
If the applicant has filed a non-provisional application in US, and later filed for continuation in part (CIP), which is an improvement from the initial application, the applicant can file the application in Malaysia subject to the 2 scenarios below:
Scenario 1: No added subject matter
Provided the improvement does not go beyond the original disclosure of the already applied application in Malaysia (parent application), the applicant may file a divisional application (encompassing the improvements). However, this divisional application must be filed within 3 months from the first Office Action or anytime before the issuance of the Office Action.
Scenario 2: Added subject matter
Should the improvement have added subject matter and goes beyond the original disclosure of the already applied application, the applicant may file a fresh application claiming priority of the CIP application filed in US.
Questions On Enforcement In Malaysia
Question 1
Is it possible to license a granted patent?
Answer 1
Yes.
Question 2
Is it possible to grant a know-how license?
Answer 2
Yes.
Question 3
Are there any requirement for granting a license? Notification to the government, for example. If yes, what is it?
Answer 3
Yes.
Recording a license at the Intellectual Property Corporation of Malaysia (MyIPO).
A licensor may apply to the Registrar in accordance with the regulations as prescribed by the Minister for an entry to be made in the Register that any person may obtain a license. Then, any person may apply to the licensor through the Registrar for a license. When a license contract has been concluded between the parties, the contracting parties shall inform the Registrar accordingly and the Registrar shall record such fact in the Register, Upon a request in writing signed by or on behalf of the contracting parties, the Registrar shall, on payment of prescribed fee, record in the Register such particulars relating to the contract as the parties thereto might wish to have recorded, provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.
Question 4
Are there any laws for regulating license contract items? If yes, what is regulated?
Answer 4
Yes.
(e.g.) License term :No
Scope if license :No
Confidentiality obligation :Yes
License fee :No
Remittance :No
Any clause or condition concerning restrictions against the scope, extent or duration of exploitation of the patented invention, or the geographical area in, or the quality or quantity of the products in connection with the patented invention may be exploited, and, obligations imposed upon the licensee to abstain from all acts capable of prejudicing the validity of the patent, shall be deemed invalid clauses in license contracts.
Question 5
Is there any system for avoiding a double taxation (credit for foreign taxes) in Malaysia?
Answer 5
Yes.
In Malaysia, Double Taxation Agreement (DTA) exists between Malaysia and other agreed countries to provide investors with certainty and guarantees in the area of taxation. Double Taxation Agreement (DTA) is an agreement between two countries seeking to avoid double taxation by defining the taxing rights of each country with regard to crossborder flows of income and providing for tax credits or exemptions to eliminate double taxation.
The objectives of Malaysian DTA are as follows:
i. to create a favorable climate for both inbound and outbound investments;
ii. to make Malaysia’s special tax incentives fully effective for taxpayers of capital exporting countries;
iii. to obtain a more effective relief from double taxation compared to relief gained under unilateral measures; and
iv. to prevent evasion and avoidance of tax.
Question 6
Does the double taxation treaty exist between Malaysia and Japan?
Answer 6
Yes
The Government of Malaysia and the Government of Japan have concluded an Agreement for the avoidance of double taxation and the prevention of fiscal exasion with respect to taxes on income. The Double Taxation Prevention Treaty, in principle, enables offsetting tax paid in one of countries against the tax payable in the other, in this way preventing double taxation.
The taxes which are the subject of this Agreement are:
a) In Malaysia:
(i) The income tax;
(ii) The supplementary income tax, that is, tin profits tax, development tax and timber profits tax and
(iv) The petroleum income tax.
b) In Japan
(i) The income tax; and
(ii) The corporation tax.
In the Double Taxation Prevention Treaty, Japan is subjected to withholding tax at the rate of 10% for royalties and certain rentals and withholding tax of nil or 10% rate of the interests.
Is it possible to license a granted patent?
Answer 1
Yes.
Question 2
Is it possible to grant a know-how license?
Answer 2
Yes.
Question 3
Are there any requirement for granting a license? Notification to the government, for example. If yes, what is it?
Answer 3
Yes.
Recording a license at the Intellectual Property Corporation of Malaysia (MyIPO).
A licensor may apply to the Registrar in accordance with the regulations as prescribed by the Minister for an entry to be made in the Register that any person may obtain a license. Then, any person may apply to the licensor through the Registrar for a license. When a license contract has been concluded between the parties, the contracting parties shall inform the Registrar accordingly and the Registrar shall record such fact in the Register, Upon a request in writing signed by or on behalf of the contracting parties, the Registrar shall, on payment of prescribed fee, record in the Register such particulars relating to the contract as the parties thereto might wish to have recorded, provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.
Question 4
Are there any laws for regulating license contract items? If yes, what is regulated?
Answer 4
Yes.
(e.g.) License term :No
Scope if license :No
Confidentiality obligation :Yes
License fee :No
Remittance :No
Any clause or condition concerning restrictions against the scope, extent or duration of exploitation of the patented invention, or the geographical area in, or the quality or quantity of the products in connection with the patented invention may be exploited, and, obligations imposed upon the licensee to abstain from all acts capable of prejudicing the validity of the patent, shall be deemed invalid clauses in license contracts.
Question 5
Is there any system for avoiding a double taxation (credit for foreign taxes) in Malaysia?
Answer 5
Yes.
In Malaysia, Double Taxation Agreement (DTA) exists between Malaysia and other agreed countries to provide investors with certainty and guarantees in the area of taxation. Double Taxation Agreement (DTA) is an agreement between two countries seeking to avoid double taxation by defining the taxing rights of each country with regard to crossborder flows of income and providing for tax credits or exemptions to eliminate double taxation.
The objectives of Malaysian DTA are as follows:
i. to create a favorable climate for both inbound and outbound investments;
ii. to make Malaysia’s special tax incentives fully effective for taxpayers of capital exporting countries;
iii. to obtain a more effective relief from double taxation compared to relief gained under unilateral measures; and
iv. to prevent evasion and avoidance of tax.
Question 6
Does the double taxation treaty exist between Malaysia and Japan?
Answer 6
Yes
The Government of Malaysia and the Government of Japan have concluded an Agreement for the avoidance of double taxation and the prevention of fiscal exasion with respect to taxes on income. The Double Taxation Prevention Treaty, in principle, enables offsetting tax paid in one of countries against the tax payable in the other, in this way preventing double taxation.
The taxes which are the subject of this Agreement are:
a) In Malaysia:
(i) The income tax;
(ii) The supplementary income tax, that is, tin profits tax, development tax and timber profits tax and
(iv) The petroleum income tax.
b) In Japan
(i) The income tax; and
(ii) The corporation tax.
In the Double Taxation Prevention Treaty, Japan is subjected to withholding tax at the rate of 10% for royalties and certain rentals and withholding tax of nil or 10% rate of the interests.
Questions On Design Registration System In Malaysia
Our client, a company incorporated in Japan, request to provides information to the following Q + A:
Question 1
Is there design registration system in Malaysia?
Answer 1
Yes
Question 2
What are the requirements for your design registration system?
Answer 2
Article : Yes
Form or configuration of an article : Yes
Visibility : Yes
Aesthetic sense : Yes
Others? (Must fit, must match provision).
Question 3
What is the average time frame from an application to decision to grant a design registration?
Answer 3
1 year from the application date.
Question 4
What is the existing term for a design registration?
Answer 4
3 terms with a period of 5 years for each term.
Question 5
Is there the design registration system which includes a prior user’s right in? If yes, what are the basic requirements for a prior user’s right?
Answer 5
Yes. Prior user’s right applies only if the said design has been registered by the prior user as only local novelty is applicable in the Malaysian Design registration system.
Question 1
Is there design registration system in Malaysia?
Answer 1
Yes
Question 2
What are the requirements for your design registration system?
Answer 2
Article : Yes
Form or configuration of an article : Yes
Visibility : Yes
Aesthetic sense : Yes
Others? (Must fit, must match provision).
Question 3
What is the average time frame from an application to decision to grant a design registration?
Answer 3
1 year from the application date.
Question 4
What is the existing term for a design registration?
Answer 4
3 terms with a period of 5 years for each term.
Question 5
Is there the design registration system which includes a prior user’s right in? If yes, what are the basic requirements for a prior user’s right?
Answer 5
Yes. Prior user’s right applies only if the said design has been registered by the prior user as only local novelty is applicable in the Malaysian Design registration system.
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