Please advise whether there is statutory protection system in Malaysia to define the owner's interest during this period from announcement to granting the patent after entering the Malaysian Phase.

A patent cannot be enforced after entering national phase until it has been granted.

 

However, an Applicant can issue a warning letter on infringement. The effect of issuing a warning notice is that:

 

1)    The Applicant has placed a constructive notice of infringement;

2)    Section 59 will apply upon grant;

3)    The damages from the act of infringement will be assessed from the date of constructive notice.

 

Section 59 of the Patent Act states: 

(1)  The owner of the patent shall have the right to institute Court proceedings against any person who has infringed or is infringing the patent.

(2)  The owner  of the patent shall have the same right against any person who has performed acts which make it likely that an infringement will occur, which in this Part is referred to as an “imminent infringement”.

(3)  The proceedings in subsections (1) and (2) may not be instituted after five years from the act of infringement.

 

For more information, contact us at: malaysia@mirandah.com

Please advise on the deadline for filing a divisional application

Divisional application can be filed (voluntarily) as a response to the first Substantive Examination Adverse report. Unless the Examiner has objected on unity of invention in the 2^nd or 3^rd Substantive Examination Adverse report, the applicant will not be able to file divisional application voluntarily at that stage.

If the deadline to file response to the first Substantive Examination Adverse report is extended, then the deadline for filing divisional application is also extended for the same period of time.

For more information, contact us at: malaysia@mirandah.com

Please advice on the law and business of software development/distribution in Malaysia, Singapore, Indonesia and Philippines.

	Malaysia	Singapore	Indonesia	Philippines
Statutory protection of Software	Computer programs are defined by Section 3 of the Copyright Act in Malaysia. Therefore, the distribution of software in Malaysia would fall within the definition of a ‘literary work’ and protected under Copyright. The Malaysian Patents Act does not specifically define Software. However the examination system allows for reliance on allowance of corresponding claims in other countries. Modified examination is available where the applicant has obtained the grant of a parallel Australian, European, UK, Japanese, Korean or US patent. As such, there is scope to rely on a software patent granted by the corresponding Patent Office as a basis to get the patent accepted under the modified examination route.	Software is protected by patents in accordance with the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). Further, Section 7 of the Singapore Copyright Act also defines Computer programs as literary works and are protectable under copyright.	Computer programs are protected and governed by Article 12(1)(a) of the Copyright Act (“CA”) in Indonesia. Article 1 of the CA in Indonesia defines a computer program as a collection of instructions manifested in the form of a language, codes, diagrams, or any other forms, which when combined with media that can be read by computers will be able to make computers work to execute certain functions or to obtain specific results, including the preparation in designing the instructions. Therefore, the distribution of software in Indonesia is governed by the laws of copyright, in that any person seeking to develop and distribute any software must have prior consent or a license from the original owner to use such software. (Article 2(2) CA)	The Intellectual Property Code of the Philippines protects; a. Databases and tables. b. It grants an exclusive rental right to the copyright owner. c. It recognizes and expands the protection of an author’s “moral rights”. d. That is, the right of an author to preserve the integrity of their works and their name. e. It penalizes the possession of infringing software for the purposes of sale.
Statutory protection of Software and database	Copyright - The life of the author + 50 years after his death Patent – 20 years	The life of the author + 70 years after his death  Patent – 20 years	The life of the author + 50 years after his death	The life of the author + 50 years after his death
Shrink Wrap license	When a consumer purchases and uses shrink-wrapped software, it is usually considered that they have agreed to the terms of the licensing agreement in the package. Therefore, the license would be deemed binding on consumers in Malaysia. Although the agreement is not conclusive, it does carry a lot of weight in Malaysia's court of law.	In Singapore, Shrink wrap licenses are binding upon the consumer who purchases the software.	Shrink wrap licenses are binding in Indonesia provided they are fair and not misleading.	When a consumer purchases a legitimate copy of a computer program/software, you will receive a license agreement. This agreement will tell you how you may use the computer program/software. If you do anything with the computer program/software, which is not permitted under the license agreement (or the IP Code), then you will have breached the Code and will be liable for the penalties.
Bulk License	An owner of the copyright of a software can assign his rights via a licensing agreement for the distribution of that software (Section 27 Copyright Act) Under Section 34 and 38, an owner of a software patent may grant assign his/her rights or grant a compulsory license for the use and distribution of that software.	An owner of the copyright of a software can assign his rights via a licensing agreement for the distribution of that software. Under Section 53, an owner of a software patent may grant assign his/her rights or grant a compulsory license for the use and distribution of that software.	The Copyright holder shall have the right to give a license to another party based on a licensing agreement to carry out any distribution or development of the software.	A person may only copy, adapt or rent, distribute or develop a computer program/software program if the copyright owner gives you the permission to do this. This permission is given in the form of a license. This license agreement will tell you how you may use the software. If you do anything with the software, which is not permitted under the license agreement, then you will have breached the Code and will be liable for the penalties.

For more information, contact us at: malaysia@mirandah.com 

Re-registration of Malaysia’s Patent in Brunei

Under Section 115 of the new Patents Order, 2011, any existing application for the re-registration of a granted UK, European Patent Office (designating UK), Malaysian or Singapore patent which has been filed before the commencement of the new Patents Order (1^st January 2012) will be granted as if the previous law had not been repealed.

Moreover, if a patent has been granted in the UK, European Patent Office (designating UK), Malaysia or Singapore within 36 months immediately before the commencement of the Patents Order, 2011 (1^st January 2009 – 31^st December 2011) and that patent is still in force on that date, an application for re-registration of that patent may be filed within 24 months from the date of commencement of the Patents Order, 2011 (1^st January 2012 - 31^st December 2013).

Furthermore, if a UK, European Patent Office (designating UK), Malaysian or Singapore patent application has been filed before the commencement of the Patents Order, 2011 and is still pending on that date, the applicant, may within 12 months of the date of issuance of the patent, may apply to re-register the foreign patent as if the previous law had not been repealed.

“Section 115 of the New Patent Order, 2011

(1) Where an application has been made under section 2 of the Inventions Act [Chapter 72) before the commencement of this Order, the Registrar may issue a certificate of registration under section 4 of that Act after that date as if that Act and any regulations made there under had not been repealed.

(2) Where a patent has been granted under any law relating to patents having effect in the United Kingdom, Malaysia or Singapore during the period of 36 months immediately before the commencement of this Order and that patent is still in force on that date, the proprietor of the patent may, within a period of 24 months from that commencement date, make an application for a certificate of registration and the Registrar may issue a certificate on such application as if the Inventions Act [Chapter 72) and any regulations made there under had not been repealed.

(3) Where an application for a patent has been made before the commencement date under any law relating to patents having effect in the United Kingdom, Malaysia or Singapore and the application is pending on that commencement date, the applicant may, within a period of 12 months from the date of issue of the grant of a patent on that application, make an application for a certificate of registration and the Registrar may issue a certificate on such application as if the Inventions Act (Chapter 72) and any regulations made there under had not been repealed.”

For more information, contact us at: malaysia@mirandah.com

Please advice if annuities are to be paid with respect to Brunei Patents

Under new Patents Order, 2011 (1^st January 2012), any re-registration patents in Brunei are to be paid for local annuities to keep the Brunei patents in force.

The earliest annuity fee is due on the fourth anniversary (Annuity for 5^th Year) of the filing date of the foreign (GB/EP (GB)/MY/SG) patent on which the registration is based. Further fees are due on each subsequent anniversary until the expiry of 20 years from that filing date. However, there will be no annuity fee payable for any anniversary that is prior to 1^st January 2012. Annuity fees which fall within the year 2012 shall be paid by 31^th December 2012 without any late surcharge according to the Brunei’s Patent Registry Office.

Please be informed that annuity payment must be accompanied by evidence that the basic foreign (GB/EP(GB)/MY/SG) patent has not been revoked as of the date of applying for renewal, which we will be able to attend at our end.

For more information, contact us at: malaysia@mirandah.com