Question 1
Are there requirements for working a patent in your country? If so, what are they? Are there any reporting requirements required working in your country?
Answer 1
There is no requirement for working a patent in Malaysia. However, non-working patent is subject to compulsory license.
Question 2
What are the consequences to the patentee for not working a patent in your country? (Invalidity, shortened term, opens to compulsory licenses, etc.)\
Answer 2
Non-working patent is subject to compulsory license under Section 49 of the Malaysian Patents Act 1983.
Question 3
Is importation of a patent product sufficient to satisfy your country's working requirements? For process patents, must the process be executed within the country, or is importation of a product made by the patented process sufficient?
Answer 3
There is no requirement for working a patent in Malaysia. However, in accordance to Section 49 of the Malaysian Patents Act 1983, compulsory license will not be granted if there is use of the patented product or application of the patented process in Malaysia. In addition, when a patent is not worked, a third party can apply to the Intellectual Property Corporation of Malaysia (MyIPO) for a license or rights.
Question 4
Are the laws in your country in compliance with the provisions of GATT/TRIPS? If not, are there efforts to being them into line with GATT/TRIPS?
Answer 4
Malaysia is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO). Malaysia's Intellectual Property Laws are in conformance with international standards and have been reviewed by the TRIPs Council.
For countries with compulsory license provisions for patents:
Question 5
What is required for a third party to obtain a compulsory license? Is direct negotiation between the third party and the patentee required before application for a compulsory license (or is the fact of non-working sufficient)?
Answer 5
Direct negotiations between the third party and the patentee is required before application for a compulsory license wherein the person/ a third party shall only apply for compulsory license when the third party has made efforts to obtain authorization from the owner of the patent on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time.
However, subject to subsection (1) of Section 49 of the Malaysian Patents Act 1983, any person may apply to the Registrar for a compulsory license at any time after the expiration of three years from the grant of a patent, or four years from the filing date of the patent application, whichever is the later, under any of the following circumstances:
(a) where there is no production of the patented product or application of the patented process in Malaysia without any legitimate reason;
(b) where there is no product produced in Malaysia under the patent for sale in any domestic market, or there are some but they are sold at unreasonably high prices or do not meet public demand without any legitimate reason.
Question 6
Have there been any compulsory license applications in your country?
Answer 6
No.
Question 7
Have there been any compulsory licenses granted?
Answer 7
No.
Question 8
What is the compensation given to the patent holder if a compulsory license is granted?
Answer 8
In accordance to Section 52 of the Malaysian Patents Act 1983, the amount and conditions of the royalty due from the beneficiary of the compulsory license to the owner of the patent is determine by the Intellectual Property Corporation of Malaysia (MyIPO).
Question 9
What can a patentee do to counter a request for a compulsory license?
Answer 9
The patentee/owner of a patent should prove that the grounds for a request for a compulsory license have not been met.
Question 10
After grant of a compulsory license, can the patentee negate/cancel/nullify the compulsory license? If so, how?
Answer 10
The Intellectual Property Corporation of Malaysia (MyIPO) shall cancel the compulsory license upon request of the patentee/owner of the patent based on the following grounds in accordance to the provisions of subsection (2) of Section 54 of the Malaysian Patents Act 1983.
(a) if the ground for the grant of the compulsory licence no longer exists;
(b) if the beneficiary of the compulsory licence has, within the time limit fixed in the decision granting the licence, neither begun the working of the patented invention in Malaysia nor made serious preparations towards such working;
(c) if the beneficiary of the compulsory licence does not respect the scope of the licence as fixed in the decision granting the licence;
(d) if the beneficiary of the compulsory licence is in arrears of the payment due, according to the decision granting the licence.
Question 11
Are there any unusual or unique circumstances/requirements, specific to your country relating to the application for and/or grant of a compulsory license?
Answer 11
There are no unusual or unique circumstances/requirements in Malaysia which relates to the application for and/or grant of a compulsory license.
Tuesday
Information Disclosure Statement In Malaysia
Question 1
Is there a “duty of disclosure” according to Malaysian Patent Law? Is a patent application required, upon filing of an application or anytime afterwards, to actively disclose to the Malaysian Patent Office any references or Search Reports that the applicant knows about?
Answer 1
Please note that in Malaysia, there is no requirement for, or “duty of disclosure” (of references etc) by law, at the present time. The same is true for search reports, but the applicant is strongly advised to offer search reports to the Malaysian Patent Office as they will be very useful to expedite the prosecution of the application. The Malaysian patent system is rather similar to the UK system in many ways, and often dissimilar to the US system.
Is there a “duty of disclosure” according to Malaysian Patent Law? Is a patent application required, upon filing of an application or anytime afterwards, to actively disclose to the Malaysian Patent Office any references or Search Reports that the applicant knows about?
Answer 1
Please note that in Malaysia, there is no requirement for, or “duty of disclosure” (of references etc) by law, at the present time. The same is true for search reports, but the applicant is strongly advised to offer search reports to the Malaysian Patent Office as they will be very useful to expedite the prosecution of the application. The Malaysian patent system is rather similar to the UK system in many ways, and often dissimilar to the US system.
Compulsary Licensing In Singapore
Question 1
Our licensee is about to make a pitch to a major electronics company in order to get the tray business. We might consider sending a notice to all the electronics company. What are the rules in Singapore?
Answer 1
As far as the notice to be sent to all the electronics company:
1) it must not contain a "groundless threat" under Singapore Law
2) it is a must to mention to all the electronics company that you have recorded the licensees under Singapore Law, my written advice is as follows:
Intellectual Property Rights are often involved in transactions in the modem business environment Contracts and Agreements to assign rights are very common especially where the Patents are Part of a Intellectual Property portfolio including other forms of Property Rights. Such contracts and agreements may also include the granting of licenses.
A license for the working of the invention may be granted under a patent. The license may permit the making of sub-licenses may be even assigned or mortgaged when appropriate terms are present in a contract/agreement.
An exclusive license is a license from the proprietor of or applicant for a patent conferring on the licensee or to the exclusion of all other persons including the proprietor or applicant)' any in respect of the invention to which the patent or application relates.
An exclusive licensee has the right to bring proceedings in respect of any infringement of the patent after the date of the license agreement
Recordal of transactions:
Most transactions involving Patents must be registered with the Registrar. Section 43(3) lists the type of transactions that must be registered.
They are:
(1) an assignment of the Patent or application for a patent;
(2) a mortgage of the patent or application;
(3) the grant or assignment of a license or sub-license or mortgage of a licensee or sub-license, under the patent or application;
(4) the death of the Proprietor or one of the proprietors of the patent or application or any person having a right in or under the patent or application and the vesting by an assent of personal representatives of a patent or application or any such rights; and
(5) any order/directions of a court/competent authority transferring a patent or application or any right in or under it to any personal or that an application should proceed in the name of any person together with registration of the event under which the court/authority had the power to make the order or give the directions.
Under s 43(1), the above transactions must be registered because once a person claims not to know of an earlier transactional instrument, or event:
(1) the registration of acquisition of property in a patent or an application defeats earlier transactions, instruments or events that have not been registered (registration provides proof of ownership);
and
(2) the subsequent proprietor (from the original proprietor) of the patent or an exclusive licensee may be unable to obtain damages or an account of profits for any infringement of the patent.
Under s 75 where a person becomes the proprietor or an exclusive licensee of a patent by virtue of a transaction instrument, or event to which s 43 applies, that person shall not be entitled to recover damages or an account of profits in respect of infringement subsequent to the transaction, instrument or event if a recordal was not done with the Registrar within six months of its date. Six months is an arbitrary period, as the Registrar and courts are receptive to recordals after longer periods as long as it was shown that a recordal was not practicable to be done within six months, and the recordal was sought as soon as practicable.
This view was followed by Lee Sieu Kin JC (as he was then) Contour Optik Inc v Pearl's Optical Co Pte Ltd, Lee JC commented;
The Plaintiffs submit that although the instruments were not registered within the six month window, the registrations were done within a reasonably practicable time thereby falling within s 75รพ). However, this is a bare submission and the Plaintiffs did not adduce any evidence of their registering the instruments as soon as it was practicable to do so.
Our licensee is about to make a pitch to a major electronics company in order to get the tray business. We might consider sending a notice to all the electronics company. What are the rules in Singapore?
Answer 1
As far as the notice to be sent to all the electronics company:
1) it must not contain a "groundless threat" under Singapore Law
2) it is a must to mention to all the electronics company that you have recorded the licensees under Singapore Law, my written advice is as follows:
Intellectual Property Rights are often involved in transactions in the modem business environment Contracts and Agreements to assign rights are very common especially where the Patents are Part of a Intellectual Property portfolio including other forms of Property Rights. Such contracts and agreements may also include the granting of licenses.
A license for the working of the invention may be granted under a patent. The license may permit the making of sub-licenses may be even assigned or mortgaged when appropriate terms are present in a contract/agreement.
An exclusive license is a license from the proprietor of or applicant for a patent conferring on the licensee or to the exclusion of all other persons including the proprietor or applicant)' any in respect of the invention to which the patent or application relates.
An exclusive licensee has the right to bring proceedings in respect of any infringement of the patent after the date of the license agreement
Recordal of transactions:
Most transactions involving Patents must be registered with the Registrar. Section 43(3) lists the type of transactions that must be registered.
They are:
(1) an assignment of the Patent or application for a patent;
(2) a mortgage of the patent or application;
(3) the grant or assignment of a license or sub-license or mortgage of a licensee or sub-license, under the patent or application;
(4) the death of the Proprietor or one of the proprietors of the patent or application or any person having a right in or under the patent or application and the vesting by an assent of personal representatives of a patent or application or any such rights; and
(5) any order/directions of a court/competent authority transferring a patent or application or any right in or under it to any personal or that an application should proceed in the name of any person together with registration of the event under which the court/authority had the power to make the order or give the directions.
Under s 43(1), the above transactions must be registered because once a person claims not to know of an earlier transactional instrument, or event:
(1) the registration of acquisition of property in a patent or an application defeats earlier transactions, instruments or events that have not been registered (registration provides proof of ownership);
and
(2) the subsequent proprietor (from the original proprietor) of the patent or an exclusive licensee may be unable to obtain damages or an account of profits for any infringement of the patent.
Under s 75 where a person becomes the proprietor or an exclusive licensee of a patent by virtue of a transaction instrument, or event to which s 43 applies, that person shall not be entitled to recover damages or an account of profits in respect of infringement subsequent to the transaction, instrument or event if a recordal was not done with the Registrar within six months of its date. Six months is an arbitrary period, as the Registrar and courts are receptive to recordals after longer periods as long as it was shown that a recordal was not practicable to be done within six months, and the recordal was sought as soon as practicable.
This view was followed by Lee Sieu Kin JC (as he was then) Contour Optik Inc v Pearl's Optical Co Pte Ltd, Lee JC commented;
The Plaintiffs submit that although the instruments were not registered within the six month window, the registrations were done within a reasonably practicable time thereby falling within s 75รพ). However, this is a bare submission and the Plaintiffs did not adduce any evidence of their registering the instruments as soon as it was practicable to do so.
Thursday
Malaysia's Patent Law
Question 1
a) If the filing date is on or before 16 August 2006 must a petition for examination be filed 24 months from the filing date?
b) When are annuities due for a patent with a filing date on or before 31 August 1999?
c) What is the term of a patent with a filing date on or before 31 May 1967?
d) What is the term of a patent with a filing date on or before 31 July 1989?
e) What is the term of a patent with a filing date on or before 31 August 1999?
f) What is the term of a patent with a filing date on or after 1 January 1994?
Answer 1
a) Yes.
b) According to Malaysian Patent Act, annuities are only due after the patent has been granted. Therefore, for an example, if the filing date is 31 August 1999, and the patent granted on 31 August 2003, the first annuity will be on 31 August 2004.
c) d), e) and f) 20 years from the filing date or 15 years from grant date, whichever is longer.
Question 2
In a situation where the 12 month deadline for filing a Malaysian application claiming priority from an earlier application has passed (some years previously), and the earlier application ahs been published, is there any means for obtaining patent protection in Malaysia for the invention claimed in the earlier application?
Answer 2
In Malaysia, it is possible to obtain patent protection for an invention which has missed its priority deadline, dependant on the date that the subject matter was first disclosed to the public. For this purpose, we can file a ‘non-conventional’ patent application. Malaysia allows applications to be filed up to 12 months after subject matter has been disclosed to the public.
There are also other forms of protection available in Malaysia, as the patent system follows the European system closely.
Patent Protection
As mentioned above, a non-conventional Malaysia patent application can only be filed if there was no disclosure of the subject matter of the PCT or foreign application beyond the 12-month grace period calculated from the filing date of the proposed Malaysian application. If the subject matter was disclosed more that 12 months ago, we confirm that the subject matter would have lost its novelty and patent protection is not available.
Question 3
Are there any alternative forms of protection, such as design protection available in Malaysia?
Answer 3
Industrial Design Protection
The design of the external features of an object can be protected as an industrial design under the Malaysian Industrial Designs Act 1996 if the design is not purely functional.
Under the Industrial Design Act, an industrial design will not be considered as novel it was disclosed to the public anywhere in Malaysia unless the disclosure was made in an official or officially recognized exhibition or it was disclosed by a person other than the applicant as a result of an unlawful act committed by that person.
To summarize, the novelty requirement in Malaysia for an industrial design application is domestic requirement. In this case, the disclosure of a design in a trade show in the US for example is not relevant as the disclosure was in the US and not Malaysia.
However, if a PCT application with drawings were previously published and they are available online in Malaysia, there is a possibility that the industrial design would have lost its novelty. However, the issue of whether the publication of the drawings in the Internet can constitute a prior disclosure in Malaysia is yet to be tested in the Courts. Furthermore, under Section 3(b) of the Industrial Design Act, an industrial design should not include features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the industrial design to form an integral part.
Please note that currently, there is no substantive examination for industrial design applications. Theoretically, we can proceed to file an industrial design application and chances are we would be able to obtain the registration, as the Examiners will not conduct a substantive examination to identify prior existing industrial designs. However, during litigation, a defendant may be able to attack the validity of a granted industrial design on the basis of novelty.
Copyright Protection
Under the Copyright Act 1987, all three dimensional articles can be protected provided that the articles are not protected under the Industrial Design Act. This applies only to articles designed after 1 September 1999 (the date the Industrial Design Act came into force).
If an item cannot be protected under the Industrial Design Act, or Patents Act, it may still be protected under the Copyright Act.
However, it must be noted that the protection provided under the Copyright Act is very much limited. For an example, the copyright protection will cease as soon as the subject design been reproduced more than 50 times by an industrial process by the owner.
a) If the filing date is on or before 16 August 2006 must a petition for examination be filed 24 months from the filing date?
b) When are annuities due for a patent with a filing date on or before 31 August 1999?
c) What is the term of a patent with a filing date on or before 31 May 1967?
d) What is the term of a patent with a filing date on or before 31 July 1989?
e) What is the term of a patent with a filing date on or before 31 August 1999?
f) What is the term of a patent with a filing date on or after 1 January 1994?
Answer 1
a) Yes.
b) According to Malaysian Patent Act, annuities are only due after the patent has been granted. Therefore, for an example, if the filing date is 31 August 1999, and the patent granted on 31 August 2003, the first annuity will be on 31 August 2004.
c) d), e) and f) 20 years from the filing date or 15 years from grant date, whichever is longer.
Question 2
In a situation where the 12 month deadline for filing a Malaysian application claiming priority from an earlier application has passed (some years previously), and the earlier application ahs been published, is there any means for obtaining patent protection in Malaysia for the invention claimed in the earlier application?
Answer 2
In Malaysia, it is possible to obtain patent protection for an invention which has missed its priority deadline, dependant on the date that the subject matter was first disclosed to the public. For this purpose, we can file a ‘non-conventional’ patent application. Malaysia allows applications to be filed up to 12 months after subject matter has been disclosed to the public.
There are also other forms of protection available in Malaysia, as the patent system follows the European system closely.
Patent Protection
As mentioned above, a non-conventional Malaysia patent application can only be filed if there was no disclosure of the subject matter of the PCT or foreign application beyond the 12-month grace period calculated from the filing date of the proposed Malaysian application. If the subject matter was disclosed more that 12 months ago, we confirm that the subject matter would have lost its novelty and patent protection is not available.
Question 3
Are there any alternative forms of protection, such as design protection available in Malaysia?
Answer 3
Industrial Design Protection
The design of the external features of an object can be protected as an industrial design under the Malaysian Industrial Designs Act 1996 if the design is not purely functional.
Under the Industrial Design Act, an industrial design will not be considered as novel it was disclosed to the public anywhere in Malaysia unless the disclosure was made in an official or officially recognized exhibition or it was disclosed by a person other than the applicant as a result of an unlawful act committed by that person.
To summarize, the novelty requirement in Malaysia for an industrial design application is domestic requirement. In this case, the disclosure of a design in a trade show in the US for example is not relevant as the disclosure was in the US and not Malaysia.
However, if a PCT application with drawings were previously published and they are available online in Malaysia, there is a possibility that the industrial design would have lost its novelty. However, the issue of whether the publication of the drawings in the Internet can constitute a prior disclosure in Malaysia is yet to be tested in the Courts. Furthermore, under Section 3(b) of the Industrial Design Act, an industrial design should not include features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the industrial design to form an integral part.
Please note that currently, there is no substantive examination for industrial design applications. Theoretically, we can proceed to file an industrial design application and chances are we would be able to obtain the registration, as the Examiners will not conduct a substantive examination to identify prior existing industrial designs. However, during litigation, a defendant may be able to attack the validity of a granted industrial design on the basis of novelty.
Copyright Protection
Under the Copyright Act 1987, all three dimensional articles can be protected provided that the articles are not protected under the Industrial Design Act. This applies only to articles designed after 1 September 1999 (the date the Industrial Design Act came into force).
If an item cannot be protected under the Industrial Design Act, or Patents Act, it may still be protected under the Copyright Act.
However, it must be noted that the protection provided under the Copyright Act is very much limited. For an example, the copyright protection will cease as soon as the subject design been reproduced more than 50 times by an industrial process by the owner.
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