Prior User Rights Under Indonesian Patent Act

Question: Please advice on the criteria to benefit a prior user right based on Article 13 and Article 15 of Indonesian Patent Act

Article 13

1. With regards to the other provisions under this law, a party using an invention at the time an identical invention is applied for patent shall remain entitled to use such invention as the prior user, even though such identical invention is subsequently granted a patent.
2. The provisions in paragraph 1 shall also prevail for patent applications filed with priority rights.

Article 15

1. The party using an invention as referred to in Article 13 may be acknowledged as the prior user, if he submits a patent application therefore to the Directorate General after a patent has been granted on the identical invention aforesaid.
2. Request for acknowledgment as a prior user must be accompanied with evidence that such invention has not been made by using descriptions, drawings, samples or other information of the invention for which a patent has been requested.
3. Acknowledgment as the prior user shall be given by the Directorate General in the form of a prior user certificate upon payment of a fee therefore.
4. A prior user certificate shall expire at the time patent of identical invention expires.
5. The procedure for obtaining the acknowledgment as a prior user shall be regulated by a Government Regulation.

The issues under Indonesian Patent Law, assuming there is a legitimate Prior User ‘A’ rights are:

1. to be able to continue such prior use of such invention even if the patentee ‘B’ is granted a patent in Indonesia even if the priority date is earlier (even if ‘B’ has filed anywhere else in the world before this prior use date. Referred to in Article 13).
2. ‘A’ has no rights to claim prior use if ‘A’ has used knowledge derived solely from ‘B’s patent published or disclosed anywhere in the world (Referred to in Article 14)
3. ‘A’ must submit a patent application to the Director of Patents in Indonesia after ‘B’ patent has been issued.

Only then the Prior User rights will accrue to ‘A’ with evidence of Indonesian novelty by ‘A’ that he is a genuine inventor (Referred to in Article 15).

Prior user rights in Indonesia allow non-patentees to continue using their inventions in the same right as they had been before a patent on that same idea issued to ‘B’ and it shall expire at the same time as the expiry of ‘B’ Patent.

Article 13 (1) further implies that ‘A’s prior use is meant to give protection to ‘A’ with good faith but ‘A’ did not make an Application for patent.

1. under the current Patent Law, the procedure for ‘A’ to obtain the recognition as a prior user is yet to be regulated by Law. The Patent Office is unable to give such recognition and will probably leave it pending until the issuance of said Regulation. Meanwhile, it is questionable if 'A' can continue with 'A's prior use while 'A's application is still pending.
2. based on the information from the Registry, the request for obtaining the certificate as prior user is rarely filed due to the above reason, in addition to the administrative reason that such request shall be furnished with the evidence that the exploitation of said invention was not performed using any information on the invention for which a patent has been requested.
3. the prior use claimed by ‘A’ must be only in Indonesia and if ‘A’ has prior use in India (for example) than this is not considered prior use.
4. "A" cannot license the prior user rights unlike 'B' who’s granted patent can be licensed to multiple parties non-exclusively.

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Publication Law in Malaysia

Question: Please Advice on Publication of a Patent in Malaysia.

1.     For an application filed directly into Malaysia, claiming priority under the Paris Convention of an earlier filed non Malaysian patent application,

     a)     Does the Malaysian Patent Office publish this new application at 18 months from priority?

Answer: i) In Malaysia, a patent will be published in the Government Gazette only upon grant of the patent.

ii)  Upon eighteen (18)  months  from the priority date or filing date of a patent application, the Registrar shall make available for public inspection the following as provided in Section 34 of the Malaysian Patents Act 1983 upon payment of the prescribed fee:

Section 34: Public inspection

(1)The Registrar shall make available for public inspection after eighteen months from the priority date or filing date of a patent application and upon payment of the prescribed fee —

(a) the name, address and description of the applicant and the name and address of his agent, if any;

(b) the application number;

(c) the filing date of the application and, if priority is claimed, the priority date, the number of the earlier application and the name of the State in which the earlier application was filed or where the earlier application is a regional or an international application, the name of the country or countries for which and the office at which it was filed;

(d) the particulars of the application including the description, claim or claims, drawing or drawings, if any, and the abstract and any amendments to the application, if any; and

(e) any change in ownership of the application and any reference to a license contract appearing in the file relating to the application.

(2) Notwithstanding subsection (1) a patent application shall not be made available for public inspection if —

(a) the patent application is withdrawn or refused or deemed to be withdrawn or refused before the expiry of the period of eighteen months from the priority date or filing date of the patent application; or

(b) it appears to the Registrar that the application contains information which contravenes public order or morality.

     b)     If so, does the PTO issue a unique publication number or does the PTO publish the application under the original Malaysian application number?

Answer: The Publication Number is the Grant Number.

2.   For an application filed into Malaysia via the PCT, claiming priority under the Paris Convention of an earlier filed non- Malaysian patent application, does the Malaysian Patent Office republish this application in Malaysia or is the WO publication used in place of a new publication in Malaysia? If the Patent Office republishes the application after entry into the national stage, what number is used for this new publication?

Answer: See answer 1a (i) above- In Malaysia, a patent will be published in the Government Gazette only upon grant of the patent.

3.     Is there a public database where we can search for Malaysian patent and application data? If so, could you please provide the link?

Answer: The following link is the public database provided by MyIPO to search for Malaysian pending applications (after 18 months from the priority date) and all granted patents.

 https://iponline.myipo.gov.my/ipo/main/search.cfm

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Trademark Order for Costs

Question:

X had opposed a Malaysian trade mark application, filed by a Malaysian Organisation. X’s opposition was unsuccessful and an order for costs was made by the Assistant Registrar at the Malaysian Trade Marks Registry against X.

Please advice whether the award for costs is enforceable against X (which is a Multinational Corporation domiciled outside Malaysia) and if so, the possible risks if X does not pay the order for costs.

Answer: 

(1)           Enforcement
 

The Registrar has powers under Section 63(2) of the Malaysian Trade Marks Act 1976 to award to any party such costs as he may consider reasonable and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect. “Court” in the current context shall mean the High Court of Malaysia.
 

In summary, the Registrar’s award for cost can be enforced in the MNC’s domicile country having Reciprocal Enforcement of Judgments which lists Malaysia as a reciprocating country.
 

In the event of default of payment, the other party may opt to reclaim such costs awarded by the Registrar in a court of competent jurisdiction as a debt due by the person against whom the costs were accorded to the person in whose favour they were accorded (Section 75(3) of the Malaysian Trade Marks Act 1976).

 

Likelihood of Enforcement

 

In general, the award of cost in an opposition proceeding is calculated based on the schedule as listed in the Malaysian Trade Marks Manual & Practice (See attached). The anticipated award of cost to be awarded to the other party, in our opinion would be within the region of £300 to £350.

 

It is our view that given the procedural, practicability and cost implications, it is likely that the other party awarded costs may not pursue the matter further since the cost of recovery is likely to exceed the costs awarded.

 

Sequestration of Assets like IP Rights:

 

We advise that it is possible to sequestrate X’s IP rights that exists in Malaysia.

 

Please find below schedule of costs in inter partes proceedings.

 

APPENDIX 3 – AWARD OF COSTS IN INTER PARTES PROCEEDINGS

In exercising the discretion conferred by section 63(2) of the Act in respect of any costs assessed after the date of this note the registrar will, as a general rule, be guided by the following scale:

ITEM		M$
1. A.   Filing notice of opposition or application for           rectification		200                + statutory fee
1. B.   Perusing counterstatement:		50
OR
2. A.  Perusing notice of opposition or application          for rectification:		50
2. B.  Filing counterstatement:		200                + statutory fee
PLUS (as appropriate)
3.      Preparing and filing own evidence:		250 to 750
4.      Perusing evidence of other party:		½ of item 3.
5       Preparation for, and attendance at, hearing:		500 to 2000     + statutory fee
6.      General expenses and travelling of          witnesses required to attend the hearing		up to 50 per day

 

Date ……………………………..

Notice of amendments to this scale will be published in the Gazette.   
          
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Enquiry on Requirement of Absolute Novelty in Malaysia

Question:

1.    I understand that absolute novelty is required in Malaysia, yet a 1 year grace period preceding the filing date applies.  Does this grace period apply to publication, use, or both?

 

2.     Is the grace period worldwide or only in Malaysia?

 

3.    Is the grace period only granted for use by the owner of the patent or the inventor?

 

SECTION 14. NOVELTY

(1) An invention is new if it is not anticipated by prior art.

(2) Prior art shall consist of-

            (a) 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;

            (b) The contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic patent application.

(3) A disclosure made under paragraph (2) (a) shall be disregarded –

            (a) if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;

            (b) if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;

            (c) if such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act.

Answer:   

1.    Yes, the grace period of one year is allowable. As stated in Para (2) above, the grace period applies to any kind of disclosure; either publication or use; or both.

 

2.     World-wide novelty (including Malaysia) will apply. 
 

3.     From Para (3) above, the grace period applies to all kinds of disclosure which can include use, written or publications; both applicant and/or the predecessor (inventor).

          

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Enquiry Concerning Patent Co-ownership in Malaysia

Question: 
 
X & Y: Co-owner

Z: Joint Applicant 

Z, registered as a joint applicant, will be co-owner of a respective patent. In such a case, can X & Y limit Z’s rights as a joint applicant?

Answer:

X & Y, as the current applicants can limit Z’s rights as a joint applicant by filing an agreement to the contrary between the parties (X & Y with Z) by reference to section 40 of the Malaysian Patent Act as stated below:

Section 40: Joint ownership of patent applications or patents

In the absence of any agreement to the contrary between the parties, joint owners of a patent application or patent may, separately, assign or transmit their rights in the patent application or patent, exploit the patented invention and take action against any person exploiting the patented invention without their consent, but may only jointly withdraw the patent application, surrender the patent or conclude a license contract.

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

Enquiry Related to Obtaining Extension of Time to Respond to Office Actions

1. Pursuant to Malaysia law, how far in advance of the official office action response due date does the patent office require Malaysian firm to request an extension of time?

The request for extension of time (EOT) can be filed until the last date of the deadline. For example, if the Office Action is dated 20 January 2013, then the response for the Office Action must be filed by 20 March 2013 (two-month deadline system). Request for EOT can be filed at any time since the issuance of the Office Action (20 January 2013) until the last date of 20 March 2013. The extended period will start from initial deadline regardless of when the request for EOT was filed; which means that requesting EOT for 3 months will automatically extend the deadline to 20 June 2013 (does not matter if the request for EOT was filed on 10 March 2013; or the last date 20 March 2013). Malaysian Patents Act does not allow for retrospective application for filing EOT i.e. the request for EOT cannot be filed after the deadline is over.

2. How far in advance of the official office action response due date does your firm currently request extensions of time for GPO matters?

Our firm practices strict code of conduct in requesting for EOT. We will only file request for EOT on the last date of the deadline if we do not hear from the client. In our reminders prior to the deadline, we will remind the instructing client that we will file request for EOT if we do not hear from them until the last date of the deadline in order to keep the application pending. We will file the request for EOT at the last date of the deadline to ensure that the instructing client has ample time to prepare the response; and EOT is only filed if the client did not revert with their instruction until the last day of the deadline. We will only file request for EOT in advance of the deadline if the instructing client gives us the instruction to do so.

3. How far in advance of the deadline does your firm need to receive GPO instructions in order to timely file a response (i.e. no extension of time taken)?

We accept the response to be filed until the last day of the deadline i.e. we will file the response (without requesting EOT) if we receive the instruction in the morning of our time on the last day of the deadline date. However, please note that time zone difference must be taken into consideration. We humbly request that the response shall be sent to us at least 1 day before the deadline date in order to avoid requesting for EOT.

ADDITIONAL NOTE: Request for EOT in Malaysia can only be applied once i.e. if the request for EOT was filed for 2 months, then the response must be compulsorily filed by the end of the 2 months of EOT. No further extension will be allowed.

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