If a trademark registration owned by Company A is assigned to Company B, can Company B recover damages for past infringements?
If A assigns the rights to a mark to B while on infringement was going on, B will not be a party to the past infringement under Malaysian Law. B will have rights only after putting the infringer on constructive notice (which will be after such an assignment is dated and filed at the PTO). Infringement of a property right cannot follow with an IP right transfer or assignment.
A fresh notice of infringement will have to be issued to the infringer by B and thereafter damages will start.
For more information, contact us at: malaysia@mirandah.com
Tuesday
Assess damages
How does the High Court assess damages?
1) The most common way to assess damages will be based on profit loss. The judge and the lawyers will take this as the easiest route of assessment of loss of profit. This is in 90% of the cases. This is how the damages was given by the High Court.
2. In very rare cases the winning party will ask for profit that the winning party would have gained otherwise. I say this is rare as the winning party usually would have to prove that they actually lost. If a plaintiff wins the infringement action hypothetically, if they go on (2) they will be not able to prove that they lost profits when in actual fact, the plaintiffs sales would have gone up tremendously in the years that the infringement went into the market.
So (1) would be the way to assess damages in most or all the cases.
For more information on intellectual property consulting, contact us at: malaysia@mirandah.com
1) The most common way to assess damages will be based on profit loss. The judge and the lawyers will take this as the easiest route of assessment of loss of profit. This is in 90% of the cases. This is how the damages was given by the High Court.
2. In very rare cases the winning party will ask for profit that the winning party would have gained otherwise. I say this is rare as the winning party usually would have to prove that they actually lost. If a plaintiff wins the infringement action hypothetically, if they go on (2) they will be not able to prove that they lost profits when in actual fact, the plaintiffs sales would have gone up tremendously in the years that the infringement went into the market.
So (1) would be the way to assess damages in most or all the cases.
For more information on intellectual property consulting, contact us at: malaysia@mirandah.com
Thursday
COMPETITION ACT 2010
SECTION A: AN OVERVIEW OF THE CA 2010
Status:
Passed by Parliament: 26 April 2010.
Date of Royal Assent: 2 June 2010.
Date of publication in the Federal Government Gazette: 10 June 2010.
In force from: 1 January 2012
Application of the CA
Date of Royal Assent: 2 June 2010.
Date of publication in the Federal Government Gazette: 10 June 2010.
In force from: 1 January 2012
- The CA 2010 applies to any commercial activity, both within and outside Malaysia.
- In relation to the application of CA 2010 outside Malaysia, CA 2010 applies to any commercial activity transacted outside Malaysia which has an effect on competition in any market in Malaysia.
- “Commercial activity” – means any activity of a commercial nature but does not include:
- (a) any activity, directly or indirectly in the exercise of governmental authority;
- (b) any activity conducted based on the principle of solidarity; and
- (c) any purchase of goods or services not for the purposes of offering goods and services as part of an economic activity.
Friday
Request for Information on Renewal Regulations for Utility Models in Malaysia
The duration of a certificate for a utility innovation (i.e. Utility Model) is protected ten (10) years from the filing date of the application. The utility model may be protected for a further 5 + 5 years from the date of filing subject to use.
Questions regarding the design law / practice in Malaysia
1. Legal Framework / Governing Law
Thursday
Enquiry on Applying Foreign Filing License (Waiver) in Malaysia
1. The application can be filed in the name of the inventor(s)
2. No physical document is required to identify Assignment.
Therefore, the application can still be filed in the name of the applicant (company) as the inventor(s) does not need to sign any documents to identify the Assignment.
Once the foreign filing license has been applied and subsequently approved, there is no need to file a Malaysian application. The applicant can straight away file the foreign application. If the applicant decides later on to file the corresponding application in Malaysia, the applicant can do so without any restriction as the foreign filing license has already been approved.
Contact us for more information on applying for foreign filing licence in Malaysia
2. No physical document is required to identify Assignment.
Therefore, the application can still be filed in the name of the applicant (company) as the inventor(s) does not need to sign any documents to identify the Assignment.
Once the foreign filing license has been applied and subsequently approved, there is no need to file a Malaysian application. The applicant can straight away file the foreign application. If the applicant decides later on to file the corresponding application in Malaysia, the applicant can do so without any restriction as the foreign filing license has already been approved.
Contact us for more information on applying for foreign filing licence in Malaysia
Friday
Patent Filing requirement for the formalities in Malaysia
1. We need to know the patent filing requirement for the formalities in your country; i.e. Malaysia.
1. Applicant’s particulars
1.1 Individual
Name
Citizenship
Address
1.2 Corporate Entity
Name
Type of entity, state whether private limited, public listed or others
Registered address
Country of incorporation
State of incorporation, where applicant is a US Corporation
1.3 Applicant who is not the inventor, provide how right to patent is derived from inventor
1. Applicant’s particulars
1.1 Individual
Name
Citizenship
Address
1.2 Corporate Entity
Name
Type of entity, state whether private limited, public listed or others
Registered address
Country of incorporation
State of incorporation, where applicant is a US Corporation
1.3 Applicant who is not the inventor, provide how right to patent is derived from inventor
Expedited Examination in Malaysia
Whether expedited examination is available, and by how much this reduces timing to:
i) receiving an examination report and
ii) registration purpose.
Please also let us know the costs if it is available.
A new Regulation has recently been introduced in Malaysia by the Intellectual Property Corporation of Malaysia, with effect from 15 February 2011, which allows for the expedited examination of trademark applications. An application for expedited examination has to be supported by Statutory Declaration setting out the reasons for the request.
Accepted reasons for an expedited examination are as below:
I) the expedited examination is for national or public interest
II) there are infringement proceedings taking place or evidence showing potential infringement with regard to the trademark applied for;
III) registration of the trademark is a condition for obtaining funding from the government or institutions recognised by the Registrar; or
IV) there are other reasonable grounds which support the request.
This option allows for a trademark application to be registered 7 months from the date of filing, assuming that the request for approval of expedited examination is filed within one month from the date of filing, and there are no adverse examination reports or opposition proceedings. Assuming if the Registrar raises any objections during the examination, the application will be removed from the expedited track and the normal examination process would apply to the case.
For more information, contact us : malaysia@mirandah.com
i) receiving an examination report and
ii) registration purpose.
Please also let us know the costs if it is available.
A new Regulation has recently been introduced in Malaysia by the Intellectual Property Corporation of Malaysia, with effect from 15 February 2011, which allows for the expedited examination of trademark applications. An application for expedited examination has to be supported by Statutory Declaration setting out the reasons for the request.
Accepted reasons for an expedited examination are as below:
I) the expedited examination is for national or public interest
II) there are infringement proceedings taking place or evidence showing potential infringement with regard to the trademark applied for;
III) registration of the trademark is a condition for obtaining funding from the government or institutions recognised by the Registrar; or
IV) there are other reasonable grounds which support the request.
This option allows for a trademark application to be registered 7 months from the date of filing, assuming that the request for approval of expedited examination is filed within one month from the date of filing, and there are no adverse examination reports or opposition proceedings. Assuming if the Registrar raises any objections during the examination, the application will be removed from the expedited track and the normal examination process would apply to the case.
For more information, contact us : malaysia@mirandah.com
Thursday
Correction procedures for granted Patents in Malaysia
1. Is it possible to file a request to correct a granted patent?
Yes it is possible to file a Request for Post-Grant Amendments to correct a granted/issued patent.
2. What is the general procedure?
We need to file a Statutory Declaration with the amendments and an Official form (Form 16A).
3. What specifically can be corrected in a granted patent? What may not be corrected?
Amendments can be done on the patent specification as long as the amendments shall not go beyond the disclosure in the initial application.
4. Is there a fee for filing a request to correct?
Yes, there is an official fees for filing the amendments as well as our professional fees for filing and submitting Statutory Declaration.
5. Does the fee change based on the cause of the error? (i.e., publication error by the Patent Office or an error on our part)
There will be no fees incurred if the error is caused by the Patent Offfice.
6. Are there any other costs?
There will be no other costs incurred.
7. Is there a delineated or stated time-line in which to file? If not, can you provide me with a rough estimate of when a request may be filed?
A request may be filed upon grant of the patent as long as the issued patent is not pending before any court proceedings.
8. What is required to correct the patent? For example, would simple instructions of how to fix the error be sufficient or would the applicant need to send the issued patent back?
Please let us have the amendment sand, we will able to prepare the rest at our end.
9. Is a form required? If so, please provide the form.
We will be able to submit the forms at our end.
10. At the end of the process, does an actual corrected sealed patent get issued or does the patent office just issue a certificate that can be attached to the original patent?
The Patent Office will issue a Certificate that can be attached to the Original Patent.
For more information, contact us : malaysia@mirandah.com
Yes it is possible to file a Request for Post-Grant Amendments to correct a granted/issued patent.
2. What is the general procedure?
We need to file a Statutory Declaration with the amendments and an Official form (Form 16A).
3. What specifically can be corrected in a granted patent? What may not be corrected?
Amendments can be done on the patent specification as long as the amendments shall not go beyond the disclosure in the initial application.
4. Is there a fee for filing a request to correct?
Yes, there is an official fees for filing the amendments as well as our professional fees for filing and submitting Statutory Declaration.
5. Does the fee change based on the cause of the error? (i.e., publication error by the Patent Office or an error on our part)
There will be no fees incurred if the error is caused by the Patent Offfice.
6. Are there any other costs?
There will be no other costs incurred.
7. Is there a delineated or stated time-line in which to file? If not, can you provide me with a rough estimate of when a request may be filed?
A request may be filed upon grant of the patent as long as the issued patent is not pending before any court proceedings.
8. What is required to correct the patent? For example, would simple instructions of how to fix the error be sufficient or would the applicant need to send the issued patent back?
Please let us have the amendment sand, we will able to prepare the rest at our end.
9. Is a form required? If so, please provide the form.
We will be able to submit the forms at our end.
10. At the end of the process, does an actual corrected sealed patent get issued or does the patent office just issue a certificate that can be attached to the original patent?
The Patent Office will issue a Certificate that can be attached to the Original Patent.
For more information, contact us : malaysia@mirandah.com
Monday
TOPIC : REQUEST FOR INFORMATION ON PATENT PROCEDURES IN MALAYSIA
Question 1
When are Power off Attorney documents due?
Answer 1
Power of Attorney documents are required to be submitted to enable us to act for the Applicant before the MyIPO (Intellectual Property Corporation of Malaysia). The PoA can still be filed on a later date if you are unable to provide the same at the time of filing of the application. However, it is advisable to submit the PoA within two (2) months of the filing date of the Malaysian application to complete the formalities procedure. Apart from submitting the PoA for filing of new applications, PoA needs to be submitted for Recordal purposes (i.e. Recordal Of Assignment as we are required to submit the PoA to enable us to act for the Assignee). As for Recordal of Assignment, PoA needs to be submitted at the time of filing the said recordal.
Question 2
When are Assignment documents due?
Answer 2
In Malaysia, it is not required for Assignment documents to be submitted for filing of a new patent application.
Question 3
Are copies of the Assignments as recoded in the US Patent Office acceptable?
Answer 3
Copies of Assignments as recorded in the USPTO is not required to be submitted for filing of a new patent application. However, for purposes of Recordal of Assignment, if the said assignment has been recorded with the USPTO, a copy of the same can be filed for Recordal of Assignment on Malaysia.
Question 4
When are annuities due?
Answer 4
A Malaysian patent shall expire 20 years from the date of filing of the application. In order to maintain the patent, annual renewal fees are payable.
Malaysian Patents Act provides that the 1st annuity is to be paid 12 months before the expiration of the second payment term.
For example, if a patent is granted on 30 March 2007, the first year of protection of this patent starts from 30 March 2007 until 30 March 2008 whereas the second year is from 30 March 2008 until 30 March 2009. The due date for the 1st annuity payment for a patent that is granted on 30 March 2007 would be on 30 March 2008.
Question 5
When are examination request due?
Answer 5
a) For Malaysian National Phase applications, the term for requesting a full or modified substantive examination or deferment of the said examination in Malaysia is within 48 months (4 years) from the filing date of the PCT application.
b) Subject to the Patents (Amendments) Regulations 2011 which came into force on 15 February 2011, a request for substantive examination is to be made within 18 months from the filing date of the application for all Paris Convention filings (non-National Phase Application).
When are Power off Attorney documents due?
Answer 1
Power of Attorney documents are required to be submitted to enable us to act for the Applicant before the MyIPO (Intellectual Property Corporation of Malaysia). The PoA can still be filed on a later date if you are unable to provide the same at the time of filing of the application. However, it is advisable to submit the PoA within two (2) months of the filing date of the Malaysian application to complete the formalities procedure. Apart from submitting the PoA for filing of new applications, PoA needs to be submitted for Recordal purposes (i.e. Recordal Of Assignment as we are required to submit the PoA to enable us to act for the Assignee). As for Recordal of Assignment, PoA needs to be submitted at the time of filing the said recordal.
Question 2
When are Assignment documents due?
Answer 2
In Malaysia, it is not required for Assignment documents to be submitted for filing of a new patent application.
Question 3
Are copies of the Assignments as recoded in the US Patent Office acceptable?
Answer 3
Copies of Assignments as recorded in the USPTO is not required to be submitted for filing of a new patent application. However, for purposes of Recordal of Assignment, if the said assignment has been recorded with the USPTO, a copy of the same can be filed for Recordal of Assignment on Malaysia.
Question 4
When are annuities due?
Answer 4
A Malaysian patent shall expire 20 years from the date of filing of the application. In order to maintain the patent, annual renewal fees are payable.
Malaysian Patents Act provides that the 1st annuity is to be paid 12 months before the expiration of the second payment term.
For example, if a patent is granted on 30 March 2007, the first year of protection of this patent starts from 30 March 2007 until 30 March 2008 whereas the second year is from 30 March 2008 until 30 March 2009. The due date for the 1st annuity payment for a patent that is granted on 30 March 2007 would be on 30 March 2008.
Question 5
When are examination request due?
Answer 5
a) For Malaysian National Phase applications, the term for requesting a full or modified substantive examination or deferment of the said examination in Malaysia is within 48 months (4 years) from the filing date of the PCT application.
b) Subject to the Patents (Amendments) Regulations 2011 which came into force on 15 February 2011, a request for substantive examination is to be made within 18 months from the filing date of the application for all Paris Convention filings (non-National Phase Application).
Subscribe to:
Posts (Atom)