A. PATENT
Question 1
The availability of Examiner interview, for prosecution matters such as timing for filing of divisional application or voluntary amendments, and request for extension of time to response to the office action, during the substantive examination?
Answer 1
Availability of a Examiner Interview – such a procedure is available to discuss the patent application with the Examiner.
Timing for Divisional application – can be filed anytime until the end of the 3 month after issuance of the first office action/report, provided the divisional application does not go beyond the disclosure of the initial application.
Timing for Voluntary amendments – can be filed anytime while the application is still pending. Again the subject matter of the application does not go beyond the disclosure of the initial application.
Request for Extension of time – can be requested for it the applicant is be unable to respond to the office action at the end of 3 months after the office action/report is issued.
Question 2
What is the availability of remedial measures in case of failure to timely submit a response to an office action, payment of patent maintenance fee or request for examination?
Answer 2
The remedial measure for failure to respond to an office action within time is to pay an extension fee and respond to the office action within the extension of time period applied for.
Question 3
Do you have any expedited examination (examination with special dispatch) system in Malaysia?
Answer 3
Yes, we do have a route for the applicant to expedite examination that is the Modified Substantive Examination. This option allows examination to be expedited by conforming the claims to any corresponding granted patent from the United Kingdom, European Patent Office (EPO), United States of America, Australia, Republic of Korea and Japan.
Question 4
Do you have any system to extend patent term (e.g. in case of a pharmaceutical patent)?
Answer 4
No, the protection period is 20 years from the date of filing and no extension is provided (even for pharmaceutical inventions).
Question 5
Do you have a specific rule to determine the unity of invention?
Answer 5
According to Malaysian Patent Law, the application must relate to one invention only, or to a group of inventions so linked as to form a single general inventive step.
B. TRADEMARK
Question 1
How long does it take for registration in general?
Answer 1
A Trademark registration is secured within 12-24 months from the date of filing. Unless the trade mark faces several objection from the Intellectual Property Corporation of Malaysia (MyIPO), the process of registration will be fairly expeditious.
Question 2
Opposition/cancellation action/nullification action
In what government office is the trademark opposition/cancellation action/nullification action accepted? How long it take to get the first instance (decision) in respective action?
Answer 2
(i) Opposition proceedings are accepted by the Trade Mark Division of the MyIPO, which is under the Ministry of Domestic Trade and Consumer Affairs Malaysia. Such actions are to be addressed specifically to the Register of Trade Marks who is the person appointed by the Minister to superintend all matters relating to trade marks.
(ii) As to cancellation action/nullification action, these proceedings are available in Malaysia but it has to be done in the Court.
(iii) The time taken to conduct opposition proceedings until a first instance decision is approximately is 2 years from the date of filing of the Notice of Opposition.
(iv) The time taken to conduct rectification proceedings (cancellation/nullification) until a first instance decision is 1 year from the date of filing the Notice of Originating Motion.
Question 3
Is there any bailout (restoration measure) of the lapsed trademark registration due to failure of renewal application (after expiration of the grace period)?
Answer 3
There is a procedure to restore the trademark. A trademark which has been removed from the Register for non-payment of renewal fees will still be treated as being registered for a period of one (1) year from the date of expiration of the last registration. Once the mark has been removed from the register for non-payment of the renewal fee, it can be restored only at the discretion of the Registrar and on payment of a restoration fee in addition to the renewal fee.
C. DESIGN
Question 1
Is it acceptable for a Design application regarding :
(a) partially claimed design
(b) the computerized objects, that is “ICONIC”?
Answer 1
(a) Partially claimed design are acceptable so long as they are solely judge by the function which the article has to perform.
(b) An article been define as any article of manufacture of handicraft and ICONIC product may not be registered.
Question 2
How about the registrability and/or enforceability of
(a) design that cannot be visible in its normal use by an end user; or
(b) design for spare parts of an article?
Answer 2
(a) Design that is not visible when sold cannot be registered.
(b) Design for spare parts is also not registrable in Malaysia as the definition of industrial design does not include features of shape or configuration of an article which is dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
Question 3
In filing a Design application claiming the priority, if the Applicant made a small amendment for the drawings used in the priority application and submitted this amended drawings as the formal drawings in Malaysian Patent Office, can the priority be accepted? For example :
(a) for the priority application, an entirely claimed Design shown in the solid line is submitted and, on the other hand, for the application claiming this priority, a partially claimed Design shown in the dotted line is submitted. In this situation, can the priority be accepted?
(b) after the priority application, the design was very slightly changed on the actual product. In this situation, can the priority be accepted on a design application for the actual product in Malaysia?
Answer 3
No, the priority cannot be accepted, because it will consider to be different.
Question 4
Is it possible for the proprietor of Design A to make the enforcement against the similar Design B which belongs to the different class from Design A.
Answer 4
It is possible for the proprietor of Design A to enforce their rights against the proprietor of similar Design B which is of a different class from Design A, because class is not a issue in design enforcement.
Question 5
Whether the relevant Design registrations discovered by a search may be similar or not to the search subject based on your experience?
Answer 5
Based on our experience it is possible to make our comment as to whether the relevant Design registration discovered by a search may be similar or not to the search subject.
Question 6
Please let us know the landmark case of the design infringement in Malaysia?
Answer 6
The landmark design infringement case is Besalon International v. South Strong Industries [1997] 2 MLJ 131:
The 1st Plaintiff was the lawful assignee and registered proprietor of registered design No. 1,001,901 under the Registered Designs Act (1949) UK for a roofing tile design as of 10.08.1981, renewed until 10.08.1996.
The defendant was the registered proprietor of registered design No. 2,043,178 for a roofing tile design as of 9.11.1994 whose design was identical to that of the 1st Plaintiff.
The 1st Plaintiff took and action against the Defendant as persons prejudicially affected by the defendant’s tile design and claimed the following :
(i) That the despite being granted registration in the UK, the defendant did not acquire the rights afforded by such registration in Malaysia; and
(ii) The defendant’s registration was invalid due to prior publication of the tile design by the plaintiffs and prior use of the design in Malaysia.
At the hearing, the issue to be decided by the Court was whether the defendant’s registered design was enforceable in West Malaysia, Sabah and/or Sarawak and whether the Plaintiff’s were entitled to relief.
It was held that :
The prior publication of the registered tile design, consisting of the prior use or manufacture of goods or objects to which the design had been applied and/or the prior disclosure to the Malaysian public to the design destroyed any claim to novelty and rendered the defendant’s registered design No. 2,043,178 unenforceable in Malaysia.
The Plaintiffs and Defendant had manufactured, promoted and/or sold differently branded tiles bearing the dispute design in Malaysia prior to the Defendant’s registration of the design on 9.11.1994 in the UK. Thus the design lacked novelty and was unenforceable in West Malaysia, Sabah and/or Sarawak.
Monday
Software Patents
Question
What are the procedures on patenting software applications for mobile phones in Malaysia?
Answer
We would like to answer your question by explaining the following about software patents in Malaysia:
First of all, it should be noted that the Malaysian patent system generally follows the rulings of the European Patent Office, and its stand on software patents is no different.
Software per se cannot be patented in Malaysia. A simple program or code is unpatentable in that it is considered a mathematical method, and is therefore more suited to protection under Copyright.
However, please note that importantly, when software is combined together with one or more mechanical component(s), the whole can be patented as a system. Accordingly, Agents have been able to patent software when it is being used to provide a material effect of some kind.
With regard to determining the existence in Malaysia, we are able to perform a search for you at the Intellectual Property Corporation of Malaysia (MyIPO). If you know the exact details of the patent in question, we can conduct an “equivalent search”. If you do not know the details, or are interested to know whether your invention will come into conflict with anything out there in the market, we can perform a much more detailed “Subject Matter” search, to look for anything resembling your software. We would then provide you with a professional opinion as to whether your software will come into conflict (infringe) another patent. The subject matter search is strongly recommended for such matters, as there may be several similar and damaging patents in force that could potentially cause you problems.
To be able to provide you with more comprehensive answer, we would require you to provide us with more details, including the history of the software invention, details on the offending patent, details of the software invention etc.
What are the procedures on patenting software applications for mobile phones in Malaysia?
Answer
We would like to answer your question by explaining the following about software patents in Malaysia:
First of all, it should be noted that the Malaysian patent system generally follows the rulings of the European Patent Office, and its stand on software patents is no different.
Software per se cannot be patented in Malaysia. A simple program or code is unpatentable in that it is considered a mathematical method, and is therefore more suited to protection under Copyright.
However, please note that importantly, when software is combined together with one or more mechanical component(s), the whole can be patented as a system. Accordingly, Agents have been able to patent software when it is being used to provide a material effect of some kind.
With regard to determining the existence in Malaysia, we are able to perform a search for you at the Intellectual Property Corporation of Malaysia (MyIPO). If you know the exact details of the patent in question, we can conduct an “equivalent search”. If you do not know the details, or are interested to know whether your invention will come into conflict with anything out there in the market, we can perform a much more detailed “Subject Matter” search, to look for anything resembling your software. We would then provide you with a professional opinion as to whether your software will come into conflict (infringe) another patent. The subject matter search is strongly recommended for such matters, as there may be several similar and damaging patents in force that could potentially cause you problems.
To be able to provide you with more comprehensive answer, we would require you to provide us with more details, including the history of the software invention, details on the offending patent, details of the software invention etc.
Tuesday
Enforcement Of Patents Or Patentability Requirements Relating To Trips In Malaysia
Question
Whether Malaysia had/has some issues re-enforcement of patents or patentability requirement relating to TRIPS?
Answer
Malaysia is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), and has been since 1995 when Malaysia became a member of the World Trade Organization (WTO). The major points of TRIPS are covered in the Malaysian Patents Act (1983) & Regulations as follows :
Malaysia makes patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability. Accordingly Malaysian legislation provides that patents be available and patent rights enjoyable without discrimination as to the place of invention and whether products are imported or locally produced (equivalent to Article 27.1 TRIPS).
NON-PATENTABLE INVENTIONS
In Malaysia, non-patentable inventions include inventions contrary to ordre public or morality, and those inventions which contain information that may be prejudicial to the nation. Also excluded from patentability are diagnostic therapeutic and surgical methods for the treatment of humans or animals (TRIPS Article 27.3(a)). Plants and animal varieties or essentially biological processes for the production of plants and animals, other than man- made living microorganisms, microbiological processes and the products of such processes, are also excluded.
The recent passing of the Protection of New Plant Varieties Bill 2004 has allowed Malaysia to accede to TRIPS article 27.3 (b) and gives breeders of new varieties of plants and seeds the right to receive legislative protection.
RIGHTS
The exclusive rights conferred to the owner of a patent in Malaysia include the right to exploit the patented invention; to assign or transmit the patent; and to conclude license contracts. The rights given to product patents cover making, using, offering for sale, selling, and importing for these purposes. Process patent protection rights cover not only use of the process but also products obtained directly by the process. Patent owners also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts (TRIPS Article 28).
Limited exceptions to the rules do exist in Malaysia, such as the rights not extending to those acts done only for scientific research, or to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia. Such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties (TRIPS Article 30).
In accordance with TRIPS Article 33, the term of protection available in Malaysia is a period of 20 years counted from the filing date, for all patents filed after 1" August 2001.article 33.
INVALIDATION AND INFRINEGEMENT
Invalidation, infringement and revocation rulings are possible in Malaysia.
Malaysian patent applications must be disclosed in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and requires the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, in cases where priority is claimed, at the priority date of the application (TRIPS Article 29.1).
TRIPS Article 34 is covered in Malaysia as the Court overseeing an infringement case has the right to order the defendant to prove the act in question does not constitute an infringement, by for example proving that the process to obtain an identical product is different from a patented process, where certain conditions indicating a likelihood that the protected process was used are met.
COMPULSORY LICENSING
The Malaysian Patents Act does provide for compulsory licensing, but such licenses are made subject to conditions aimed at protecting the legitimate interests of the right holder. Where there is a national emergency or where the public interest in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the Government, or where a judicial or relevant authority has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive, the Minister may decided to allow a Government agency or a third party the rights to exploit a patented invention. In cases not involving anti¬competitive practice, conditions include the requirement to pay adequate remuneration in the circumstances of each case, taking into account the economic value of the licence; and a requirement that decisions be subject to judicial or other independent review by a distinct higher authority. the Act also allows for importation of patented products that are already in the other countries' market (parallel import). Article 31.
ISSUES IMPORTANT TO THE PHARMACEUTICAL INDUSTRY
In Malaysia, to date there is no provision on data exclusivity to comply with TRIPS Article 39.3 that directly addresses the issue of Data Exclusivity for pharmaceuticals even though the Parliament of Malaysia has already passed amendments to several acts, such as the Copyright Act the Patent Act, and the Trademarks Act.
The Malaysian government is on working towards the complete implementation of TRIPS.
Whether Malaysia had/has some issues re-enforcement of patents or patentability requirement relating to TRIPS?
Answer
Malaysia is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), and has been since 1995 when Malaysia became a member of the World Trade Organization (WTO). The major points of TRIPS are covered in the Malaysian Patents Act (1983) & Regulations as follows :
Malaysia makes patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability. Accordingly Malaysian legislation provides that patents be available and patent rights enjoyable without discrimination as to the place of invention and whether products are imported or locally produced (equivalent to Article 27.1 TRIPS).
NON-PATENTABLE INVENTIONS
In Malaysia, non-patentable inventions include inventions contrary to ordre public or morality, and those inventions which contain information that may be prejudicial to the nation. Also excluded from patentability are diagnostic therapeutic and surgical methods for the treatment of humans or animals (TRIPS Article 27.3(a)). Plants and animal varieties or essentially biological processes for the production of plants and animals, other than man- made living microorganisms, microbiological processes and the products of such processes, are also excluded.
The recent passing of the Protection of New Plant Varieties Bill 2004 has allowed Malaysia to accede to TRIPS article 27.3 (b) and gives breeders of new varieties of plants and seeds the right to receive legislative protection.
RIGHTS
The exclusive rights conferred to the owner of a patent in Malaysia include the right to exploit the patented invention; to assign or transmit the patent; and to conclude license contracts. The rights given to product patents cover making, using, offering for sale, selling, and importing for these purposes. Process patent protection rights cover not only use of the process but also products obtained directly by the process. Patent owners also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts (TRIPS Article 28).
Limited exceptions to the rules do exist in Malaysia, such as the rights not extending to those acts done only for scientific research, or to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia. Such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties (TRIPS Article 30).
In accordance with TRIPS Article 33, the term of protection available in Malaysia is a period of 20 years counted from the filing date, for all patents filed after 1" August 2001.article 33.
INVALIDATION AND INFRINEGEMENT
Invalidation, infringement and revocation rulings are possible in Malaysia.
Malaysian patent applications must be disclosed in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and requires the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, in cases where priority is claimed, at the priority date of the application (TRIPS Article 29.1).
TRIPS Article 34 is covered in Malaysia as the Court overseeing an infringement case has the right to order the defendant to prove the act in question does not constitute an infringement, by for example proving that the process to obtain an identical product is different from a patented process, where certain conditions indicating a likelihood that the protected process was used are met.
COMPULSORY LICENSING
The Malaysian Patents Act does provide for compulsory licensing, but such licenses are made subject to conditions aimed at protecting the legitimate interests of the right holder. Where there is a national emergency or where the public interest in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the Government, or where a judicial or relevant authority has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive, the Minister may decided to allow a Government agency or a third party the rights to exploit a patented invention. In cases not involving anti¬competitive practice, conditions include the requirement to pay adequate remuneration in the circumstances of each case, taking into account the economic value of the licence; and a requirement that decisions be subject to judicial or other independent review by a distinct higher authority. the Act also allows for importation of patented products that are already in the other countries' market (parallel import). Article 31.
ISSUES IMPORTANT TO THE PHARMACEUTICAL INDUSTRY
In Malaysia, to date there is no provision on data exclusivity to comply with TRIPS Article 39.3 that directly addresses the issue of Data Exclusivity for pharmaceuticals even though the Parliament of Malaysia has already passed amendments to several acts, such as the Copyright Act the Patent Act, and the Trademarks Act.
The Malaysian government is on working towards the complete implementation of TRIPS.
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