Question 1
We have recently been informed about the new opportunity to apply to be part of the ASEAN Patent Examination Co-operation (ASPEC) procedure.
In that respect of:
a) how does it work, and
b) when should we apply (file the ASPEC request form)?
ASPEC is not comparable to PCT, as ASPEC in itself does not issue any examination report or written opinion. ASPEC is merely a co-operation between 8 ASEAN countries namely: Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand, the Philippines and Vietnam. Once a search and examination report is issued by any of these countries (first IP Office), the applicant may use the report to file an ASPEC Request in another member state (second IP Office), and the report from the first IP Office will be used as a reference. However, the second IP Office is not obliged to adopt any of the findings or conclusions made by the first IP Office. There is no additional fee to file ASPEC Request.
Question 2
When will the member state in which we have filed the ASPEC request, provide the search and examination documents to the other ASPEC member states?
Answer 2
The search and examination report will be issued by the first IP Office, and subsequently during the normal course of patent prosecution the applicant has to submit the ASPEC Request Form together with the report to the second IP Office.
Question 3
What are the advantages or disadvantages of that ASPEC process?
Answer 3
The advantages that are as per the objectives of ASPEC:
- reduced work and faster turnaround time
- better search and examination as some IP Offices might have better access to databases unavailable to the other IP Office.
There is no particular disadvantage that we are able to pin point at the present time.
Question 4
Should we use this process only for certain type of Patent applications or for any type of patent application?
Answer 4
This program can be used for all types of patent applications, which is applicable in the particular member state (e.g. divisional application and utility innovation).
Question 5
Is there any risk?
Answer 5
We are not aware of any risk. In any case, this program is still in its infancy stage, so the actual risk factor (if any) might only surface after some time.
Question 6
What is your current experience with this new ASPEC process?
Answer 6
Please see our concluding remark below.
Question 7
Is there any advantage for the patent applicant e.g. acceleration of the grant procedure, or id the benefit only for the ASPEC Patent Offices?
Answer 7
This program may result in faster prosecution of the patent application, however please bear in mind that the receiving IP Office is not obliged to adopt any of the findings or conclusions reached by the other IP Office.
Question 8
Is there any advantage to file the ASPEC request form in one or other ASPEC member states (faster or more efficient office?).
Answer 8
There is no significant advantage, as the efficiency level of the each ASPEC member states is comparable.
Question 9
In which country(ies) would you advice us to file the ASPEC request form.
Answer 9
No particular preference, as each country has their provision of rules and regulations, and is independent from one another.
Question 10
What is the role of the first IP Office (ASPEC member state) were the ASPC Request Form is filed.
Answer 10
To provide the search and examination report to the applicant, and the applicant will later submit the ASPEC Request Form to the second IP Office.
Question 11
Can we provide the search report and examination report of any corresponding Patent Office e.g. European Patent Office.
Answer 11
Yes you can. However, in this instance the applicant need not file a request for ASPEC, wherein they might just submit the search report to the individual country directly.
CONCLUSION:
The feedback from the Malaysian Patent Office is that an application under ASPEC has not been filed to date. However, the infrastructure is in place to accept such request. We further checked with Singapore Patent Office, and there are only 3 such applications on record. We do not believe there has been significant progress in any of the other ASEAN countries relating to ASPEC process. This program is new and given that the ASEAN countries do not have a sophisticated Search & Examination processing body, we do not anticipate this process to be active at this time. In all likelihood, the Registrar will still await the outcome of corresponding cases in the more matured patent territories like US, EP, JP, KR, AU and GB.
Tuesday
Franchise Agreement
Question 1
Our understanding is that the application to register the franchise will not be made for some time after the pilot operation run by the franchisee has commenced, as the Registry requires proof that the franchise can operate successfully in Malaysia before awarding a franchise license.
We have been proceeded on the following basis:
a) That the letter of intent needs to be submitted and approved before we can make any formal arrangement with the franchisee.
b) That we need to sign a master franchise agreement with the franchisee so that he can start a pilot operation.
c) The franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point).
Answer 1
Stage 1 - Approval under Section 54.
First, the letter of intent is submitted to the Registry of Franchises (ROF). In theory, the letter of intent should be filed and approved before offering the franchisor franchise for sale in Malaysia or to Malaysians. This is to ensure that the franchise is not against Malaysian public interests. We should receive a preliminary approval, approval with conditions or rejection in 1 to 3 months, for convenience we shall term this the “Section 54 approval”. You are correct that you should not make any formal arrangements with the franchisee prior to receiving official Section 54 approval.
Please take note that the Section 54 approval does not give the franchisor or the franchisee the permission to commence operations for a trial period. The Master Franchise Agreement should be prepared at this point.
Stage 2 – Application to Register the Master Franchise Agreement.
In the application stage, the ROF will examine the master franchise agreement in detail. As it was highlighted you in our earlier letters, the registry in Malaysia has set out strict rules in registering a franchise agreement.
In relation to your understanding that “the franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point.”
This understanding is not quite accurate. At the time of application at this stage, the ROF does not require any proof to indicate that the franchise is operating successfully in Malaysia. The ROF requires evidence of use of the trademark, which can be from any country or countries. The franchisor also can show evidence of use of the trademark in Malaysia, if the franchisor has been using the mark in Malaysia. “Use” here covers direct use by the franchisor itself or use by other third parties via legal agreements. As advised in our earlier letters, the more extensive the evidence of use of the trademark, the greater the popularity of the trademark, the more convincing the application will be to the ROF, as the Registrar is more likely to conclude that Malaysia will benefit from the franchise.
Stage 3 – Registration of Sub-Franchises.
Under the Master Franchise Agreement, it is critical to ascertain whether the franchisee has the right to sub-franchise the franchisor franchise to a third party, at the franchisee own expense – in this case the franchisee would be the Master Franchisee. In this case, he would be treated as a franchisor and he have to register his agreements with every individual sub-franchisor.
If the franchisee does not have the right to sub-franchise, he would be an ordinary Franchisee.
Our understanding is that the application to register the franchise will not be made for some time after the pilot operation run by the franchisee has commenced, as the Registry requires proof that the franchise can operate successfully in Malaysia before awarding a franchise license.
We have been proceeded on the following basis:
a) That the letter of intent needs to be submitted and approved before we can make any formal arrangement with the franchisee.
b) That we need to sign a master franchise agreement with the franchisee so that he can start a pilot operation.
c) The franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point).
Answer 1
Stage 1 - Approval under Section 54.
First, the letter of intent is submitted to the Registry of Franchises (ROF). In theory, the letter of intent should be filed and approved before offering the franchisor franchise for sale in Malaysia or to Malaysians. This is to ensure that the franchise is not against Malaysian public interests. We should receive a preliminary approval, approval with conditions or rejection in 1 to 3 months, for convenience we shall term this the “Section 54 approval”. You are correct that you should not make any formal arrangements with the franchisee prior to receiving official Section 54 approval.
Please take note that the Section 54 approval does not give the franchisor or the franchisee the permission to commence operations for a trial period. The Master Franchise Agreement should be prepared at this point.
Stage 2 – Application to Register the Master Franchise Agreement.
In the application stage, the ROF will examine the master franchise agreement in detail. As it was highlighted you in our earlier letters, the registry in Malaysia has set out strict rules in registering a franchise agreement.
In relation to your understanding that “the franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point.”
This understanding is not quite accurate. At the time of application at this stage, the ROF does not require any proof to indicate that the franchise is operating successfully in Malaysia. The ROF requires evidence of use of the trademark, which can be from any country or countries. The franchisor also can show evidence of use of the trademark in Malaysia, if the franchisor has been using the mark in Malaysia. “Use” here covers direct use by the franchisor itself or use by other third parties via legal agreements. As advised in our earlier letters, the more extensive the evidence of use of the trademark, the greater the popularity of the trademark, the more convincing the application will be to the ROF, as the Registrar is more likely to conclude that Malaysia will benefit from the franchise.
Stage 3 – Registration of Sub-Franchises.
Under the Master Franchise Agreement, it is critical to ascertain whether the franchisee has the right to sub-franchise the franchisor franchise to a third party, at the franchisee own expense – in this case the franchisee would be the Master Franchisee. In this case, he would be treated as a franchisor and he have to register his agreements with every individual sub-franchisor.
If the franchisee does not have the right to sub-franchise, he would be an ordinary Franchisee.
Power Of Attorney For Patent Renewal In Malaysia
Question 1
If our client does not wish to have a renewal certificate, is it necessary to ask for a Power of Attorney?
Answer 1
Please be advised that even though your client may not require the Renewal Certificate, we are still required to submit the Power Of Attorney to the Intellectual Property Corporation of Malaysia (MyIPO), which serves as an authorization from the client for our firm to pay the annuities on their behalf as well as confirmation that the payment will be accepted and recorded by the MyIPO.
If our client does not wish to have a renewal certificate, is it necessary to ask for a Power of Attorney?
Answer 1
Please be advised that even though your client may not require the Renewal Certificate, we are still required to submit the Power Of Attorney to the Intellectual Property Corporation of Malaysia (MyIPO), which serves as an authorization from the client for our firm to pay the annuities on their behalf as well as confirmation that the payment will be accepted and recorded by the MyIPO.
Thursday
Patent Protection, Enforcement And Court System In Malaysia
PROTECTION
Question 1
What is the term of protection of a patent in Malaysia?
Answer 1
In Malaysia, a Patent last for twenty (20) years counted from the date of filing.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Malaysia?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Interlocutory injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Malaysia?
Answer 3
Yes.
Question 4
Does the Malaysian patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost?
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Plaintiff’s loss of profits or defendant’s account of profits.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Malaysia?
Answer 9
Yes. Only for a claim for costs.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Malaysia?
Answer 1
MyIPO has until now not allowed a third party to inspect and to obtain copies of any documents other than the granted patent specification themselves, unless there is written consent from the patent owner. The stand taken by MyIPO is that any communication between the applicant and MyIPO, other than the granted specification, should remain confidential, even after grant of the patent.
In this case, the applicant submitted that the written consent from the patent owner would only required for pending patent applications, as the same were confidential but not for granted patents. The fact that the patent has been duly granted shows that the element of confidentiality no longer exists and therefore a third party should be entitled to inspect the file at the Registry and to obtain the case history and any relevant extract. It was also argued that if Parliament intended to restrict public access only to the granted specification, then the said restriction would have been specified in the Patents Act.
On principles of statutory interpretation, it was submitted that if a statute is clear and unambiguous, a literal interpretation should be taken of the words in the statute. In this case section 34(1) clearly provides that a patent file can be inspected and extracts can be obtained as soon as the patent application proceeds to grant.
Based on these submissions the Court granted the application.
This is a positive development as far as the Malaysian patent regime is concerned, as in any litigation concerning the granted patent; the prosecution history can now be brought up to show whether concessions were made by the applicant to MyIPO, which will be a factor taken into account by the court in construing the claims.
Question 2
How efficient are the courts in disposing IP litigation cases in Malaysia?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom and Australia.
Question 5
How are foreigners treated by the courts in Malaysia?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 4 years.
Question 7
What step(s) must be taken to appeal a court decision in Malaysia?
Answer 7
A notice of appeal is filed within 30 days from the date of the decision at the Court of Appeal.
Question 1
What is the term of protection of a patent in Malaysia?
Answer 1
In Malaysia, a Patent last for twenty (20) years counted from the date of filing.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Malaysia?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Interlocutory injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Malaysia?
Answer 3
Yes.
Question 4
Does the Malaysian patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost?
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Plaintiff’s loss of profits or defendant’s account of profits.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Malaysia?
Answer 9
Yes. Only for a claim for costs.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Malaysia?
Answer 1
MyIPO has until now not allowed a third party to inspect and to obtain copies of any documents other than the granted patent specification themselves, unless there is written consent from the patent owner. The stand taken by MyIPO is that any communication between the applicant and MyIPO, other than the granted specification, should remain confidential, even after grant of the patent.
In this case, the applicant submitted that the written consent from the patent owner would only required for pending patent applications, as the same were confidential but not for granted patents. The fact that the patent has been duly granted shows that the element of confidentiality no longer exists and therefore a third party should be entitled to inspect the file at the Registry and to obtain the case history and any relevant extract. It was also argued that if Parliament intended to restrict public access only to the granted specification, then the said restriction would have been specified in the Patents Act.
On principles of statutory interpretation, it was submitted that if a statute is clear and unambiguous, a literal interpretation should be taken of the words in the statute. In this case section 34(1) clearly provides that a patent file can be inspected and extracts can be obtained as soon as the patent application proceeds to grant.
Based on these submissions the Court granted the application.
This is a positive development as far as the Malaysian patent regime is concerned, as in any litigation concerning the granted patent; the prosecution history can now be brought up to show whether concessions were made by the applicant to MyIPO, which will be a factor taken into account by the court in construing the claims.
Question 2
How efficient are the courts in disposing IP litigation cases in Malaysia?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom and Australia.
Question 5
How are foreigners treated by the courts in Malaysia?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 4 years.
Question 7
What step(s) must be taken to appeal a court decision in Malaysia?
Answer 7
A notice of appeal is filed within 30 days from the date of the decision at the Court of Appeal.
Tuesday
Patentability Of Nucleic Acids / Microorganisms In Malaysia
Question 1a
We are aware that section 13, of the Malaysian Patent Act lists non-patentable inventions. Among these are plant or animal varieties or essentially biological processes for the production of plants or animals other than man-made living microorganisms, microbiological processes, and the products of such microorganism processes.
Our question is: Would isolated microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation be considered man-made organisms and therefore patentable subject matter?
Answer 1a
Yes. Isolated microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation can be considered man-made organisms and is patentable only if it is new, involves and inventive step and is industrially applicable. It can be considered as a patentable subject matter only if there is a specific use for it. It is not patentable if there is no specific use for the said subject and if it is obvious to the person skilled in the art.
Question 1b
Would microbiological processes include processes that are conducted using such isolated microorganisms that are not genetically manipulated or otherwise structurally modified; and are the products of these processes patentable? On the matter, I assume the product would have to be novel in any case, and perhaps the inclusion of this in the statute doesn't make sense unless it means a product-by-process claim.
Answer 1b
Yes, with the assumption that the product is novel, microbiological processes which includes processes that are conducted using isolated microorganisms that are not genetically manipulated or structurally modified is patentable through a product by process claim.
Question 2
As far as we know, there is no statutory prohibition against patenting purified nucleic acid molecules. Please let me know whether this is correct. As you know, there is some argument that such molecules are products of nature. So the question is would unmodified nucleic acid molecules which are simply purified and isolated from nature be statutorily patentable subject matter?
Answer 2
Yes unmodified nucleic acid molecules, which are simply purified and isolated from nature, is statutorily a patentable subject matter as long as there is a specific applicability.
Question 3
If the answer to question 2 is yes, in general, what level of claim scope is permitted? I enclose claim 1 of U.S. issued patent 7,553,954 and you will see that the claim provides a genus defined either by hybridization at high stringency or 90% or greater identity to a specific sequence. SEQ ID NO: 7979 is indeed a natural sequence.
Answer 3
The Malaysian Patents Act 1983 is silent on the level of claim scope, to be permitted. However, if such a situation arises, it will be judged based on the following:-
(a) by the person skilled in the art or
(b) based on a doctrine of equivalent.
In any case, Section 13(1) (b) of the Malaysian Patents Act 1983 is equivalent to Article 53(b) of the European Patent Convention.
We provide herewith Article 53(b) of the European Patent Convention, which is equivalent to Section 13(1) (b) of the Malaysian Patents Act 1983.
Article 53
Exceptions to patentability (visit www.epo.org/patents)
European patents shall not be granted in respect of:
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.
We provide herewith a doctrine of equivalent in the United Kingdom for a situation wherein a level of claim scope is discussed.
Catnic Components Ltd V Hill & Smith Ltd
Catnic Components had a patent for a lintel, used to provide structural support over a door or window opening in a brick wall. Part of the specification required a bar to "extend vertically". Hill created a virtually identical invention that had a bar that extended at an upwards slant, only 6 degrees from being completely vertical. Despite the difference the device worked entirely in the same way as Catnic's invention.
Catnic sued for patent infringement. At trial, the judge held there was an infringement under the “pith and marrow” doctrine. The Court of Appeal overturned the ruling as although it held that the "vertical" requirement was an exact and essential element of the patent, the effect did not change. The court affirmed the use of purposive construction to patent interpretation and found an infringement.
Question 4
What kind of utility requirements are there for nucleic acid sequences? The sequences in claim 1 of the '954 patent are simply expression sequence tags not associated with any particular function other than as a tool for retrieval of full-length genes. Would this qualify as adequate utility under your law?
Answer 4
Utility test requires that it is useful and new to mankind generally. Apart from this, there are no specific requirement or thresholds. In any case if such matter arises, similar to our answer of Question 3, it will be based on any available EP/U.S precedent, as it was never tested in Malaysia.
Under US patent law, DNA sequences are considered chemical compounds by USPTO and are patentable as compositions of matter. In its Utility Examination Guidelines, the USPTO explained that isolated and purified DNA molecule that has the same sequence as a naturally occurring gene is different from the naturally occurring compound as it is processed through purifying steps that separate the gene from other molecules naturally associated with it and hence eligible for patent protection.
In addition, a prediction of utility with the following establishment is allowed in the U.S:-
(a) a factual basis for the prediction;
(b) an articulable line of reasoning from the factual basis to the prediction; and
(c) made proper disclosure.
The European Patent Office differs in espect of utility or usefulness criteria, which stipulates that for patentability, inventor has to show its industrial application for grant of a patent.
However, the answers as mentioned above were never tested in Malaysia. It is merely guidelines in which if such situation arises in Malaysia, the above options would be established.
Question 5
I assume that claim 8 of '954 is not considered a "plant variety" prohibited by section 13.
Answer 5
Yes. Claim 8 of the ‘954 patent is not considered a “plant variety” prohibited by Section 13(1)(b) of the Malaysian Patents Act 1983 as it is classified as a man-made process.
Question 6
Similar questions arise with respect to claim 1 of U.S. 7,491,806. This too is a naturally occurring sequence, which differs from nature only by being isolated, but it clearly has a useful function.
Answer 6
In such a situation, wherein a naturally occurring sequence, which differs from nature only by being isolated, and if it clearly has a useful function is considered a patentable subject matter.
Question 7
Please take a look at claim 1 of U.S. 7,485,715. I believe this is intended to cover cDNA, although by its wording it would cover isolated genetic sequences as well. Assuming that the claim were worded so that it was clear than only cDNA was included (as cDNA does not occur in nature), would your answers be any different?
Answer 7
Our answer remains the same if only cDNA was included as cDNA is a man made process wherein cDNA is DNA synthesized from a mature mRNA template in a reaction catalyzed by the enzyme reverse transcriptase. Therefore, it is considered a patentable subject matter if and only if there is a specific use.
Question 8
Please look at claim 4 of U.S. 7,084,331. This is a claim format similar to question 1 above - a naturally occurring organism. Would this be patentable? Similar questions apply to claim 1 of U.S. 7,534,612.
Answer 8
Yes. Our answer to this question for claim 4 of U.S 7,084,331 is similar to our answer in question 1 as it is patentable only if there is a specific use for it. It is not patentable if there is no specific use for the said subject and if it is obvious to the person skilled in the art. The same applies to claim 1 of U.S 7,534,612.
Question 9
Please also look at claim 1 of U.S. 7,084,331. This is directed to a modified plant, but it is only modified by introducing a naturally occurring organism. Is this patentable subject matter?
Answer 9
Yes. It is a patentable subject matter as the plant is modified by introducing a naturally occurring organism which is considered as a man made process.
We trust that we have answered some of your questions about patentability of nucleic acids/microorganisms in Malaysia.
We are aware that section 13, of the Malaysian Patent Act lists non-patentable inventions. Among these are plant or animal varieties or essentially biological processes for the production of plants or animals other than man-made living microorganisms, microbiological processes, and the products of such microorganism processes.
Our question is: Would isolated microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation be considered man-made organisms and therefore patentable subject matter?
Answer 1a
Yes. Isolated microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation can be considered man-made organisms and is patentable only if it is new, involves and inventive step and is industrially applicable. It can be considered as a patentable subject matter only if there is a specific use for it. It is not patentable if there is no specific use for the said subject and if it is obvious to the person skilled in the art.
Question 1b
Would microbiological processes include processes that are conducted using such isolated microorganisms that are not genetically manipulated or otherwise structurally modified; and are the products of these processes patentable? On the matter, I assume the product would have to be novel in any case, and perhaps the inclusion of this in the statute doesn't make sense unless it means a product-by-process claim.
Answer 1b
Yes, with the assumption that the product is novel, microbiological processes which includes processes that are conducted using isolated microorganisms that are not genetically manipulated or structurally modified is patentable through a product by process claim.
Question 2
As far as we know, there is no statutory prohibition against patenting purified nucleic acid molecules. Please let me know whether this is correct. As you know, there is some argument that such molecules are products of nature. So the question is would unmodified nucleic acid molecules which are simply purified and isolated from nature be statutorily patentable subject matter?
Answer 2
Yes unmodified nucleic acid molecules, which are simply purified and isolated from nature, is statutorily a patentable subject matter as long as there is a specific applicability.
Question 3
If the answer to question 2 is yes, in general, what level of claim scope is permitted? I enclose claim 1 of U.S. issued patent 7,553,954 and you will see that the claim provides a genus defined either by hybridization at high stringency or 90% or greater identity to a specific sequence. SEQ ID NO: 7979 is indeed a natural sequence.
Answer 3
The Malaysian Patents Act 1983 is silent on the level of claim scope, to be permitted. However, if such a situation arises, it will be judged based on the following:-
(a) by the person skilled in the art or
(b) based on a doctrine of equivalent.
In any case, Section 13(1) (b) of the Malaysian Patents Act 1983 is equivalent to Article 53(b) of the European Patent Convention.
We provide herewith Article 53(b) of the European Patent Convention, which is equivalent to Section 13(1) (b) of the Malaysian Patents Act 1983.
Article 53
Exceptions to patentability (visit www.epo.org/patents)
European patents shall not be granted in respect of:
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.
We provide herewith a doctrine of equivalent in the United Kingdom for a situation wherein a level of claim scope is discussed.
Catnic Components Ltd V Hill & Smith Ltd
Catnic Components had a patent for a lintel, used to provide structural support over a door or window opening in a brick wall. Part of the specification required a bar to "extend vertically". Hill created a virtually identical invention that had a bar that extended at an upwards slant, only 6 degrees from being completely vertical. Despite the difference the device worked entirely in the same way as Catnic's invention.
Catnic sued for patent infringement. At trial, the judge held there was an infringement under the “pith and marrow” doctrine. The Court of Appeal overturned the ruling as although it held that the "vertical" requirement was an exact and essential element of the patent, the effect did not change. The court affirmed the use of purposive construction to patent interpretation and found an infringement.
Question 4
What kind of utility requirements are there for nucleic acid sequences? The sequences in claim 1 of the '954 patent are simply expression sequence tags not associated with any particular function other than as a tool for retrieval of full-length genes. Would this qualify as adequate utility under your law?
Answer 4
Utility test requires that it is useful and new to mankind generally. Apart from this, there are no specific requirement or thresholds. In any case if such matter arises, similar to our answer of Question 3, it will be based on any available EP/U.S precedent, as it was never tested in Malaysia.
Under US patent law, DNA sequences are considered chemical compounds by USPTO and are patentable as compositions of matter. In its Utility Examination Guidelines, the USPTO explained that isolated and purified DNA molecule that has the same sequence as a naturally occurring gene is different from the naturally occurring compound as it is processed through purifying steps that separate the gene from other molecules naturally associated with it and hence eligible for patent protection.
In addition, a prediction of utility with the following establishment is allowed in the U.S:-
(a) a factual basis for the prediction;
(b) an articulable line of reasoning from the factual basis to the prediction; and
(c) made proper disclosure.
The European Patent Office differs in espect of utility or usefulness criteria, which stipulates that for patentability, inventor has to show its industrial application for grant of a patent.
However, the answers as mentioned above were never tested in Malaysia. It is merely guidelines in which if such situation arises in Malaysia, the above options would be established.
Question 5
I assume that claim 8 of '954 is not considered a "plant variety" prohibited by section 13.
Answer 5
Yes. Claim 8 of the ‘954 patent is not considered a “plant variety” prohibited by Section 13(1)(b) of the Malaysian Patents Act 1983 as it is classified as a man-made process.
Question 6
Similar questions arise with respect to claim 1 of U.S. 7,491,806. This too is a naturally occurring sequence, which differs from nature only by being isolated, but it clearly has a useful function.
Answer 6
In such a situation, wherein a naturally occurring sequence, which differs from nature only by being isolated, and if it clearly has a useful function is considered a patentable subject matter.
Question 7
Please take a look at claim 1 of U.S. 7,485,715. I believe this is intended to cover cDNA, although by its wording it would cover isolated genetic sequences as well. Assuming that the claim were worded so that it was clear than only cDNA was included (as cDNA does not occur in nature), would your answers be any different?
Answer 7
Our answer remains the same if only cDNA was included as cDNA is a man made process wherein cDNA is DNA synthesized from a mature mRNA template in a reaction catalyzed by the enzyme reverse transcriptase. Therefore, it is considered a patentable subject matter if and only if there is a specific use.
Question 8
Please look at claim 4 of U.S. 7,084,331. This is a claim format similar to question 1 above - a naturally occurring organism. Would this be patentable? Similar questions apply to claim 1 of U.S. 7,534,612.
Answer 8
Yes. Our answer to this question for claim 4 of U.S 7,084,331 is similar to our answer in question 1 as it is patentable only if there is a specific use for it. It is not patentable if there is no specific use for the said subject and if it is obvious to the person skilled in the art. The same applies to claim 1 of U.S 7,534,612.
Question 9
Please also look at claim 1 of U.S. 7,084,331. This is directed to a modified plant, but it is only modified by introducing a naturally occurring organism. Is this patentable subject matter?
Answer 9
Yes. It is a patentable subject matter as the plant is modified by introducing a naturally occurring organism which is considered as a man made process.
We trust that we have answered some of your questions about patentability of nucleic acids/microorganisms in Malaysia.
Thursday
Contracts Regarding Intellectual Property Rights (Assignments And Licences) And Third Parties
Question 1
What forms of property right do IP rights take in Malaysia?
Answer 1
In Malaysia, IP rights take the form of
i) Patents;
ii) Trade Marks;
iii) Industrial Designs;
iv) Copyright;
v) Geographical indications; and
vi) Integrated circuits
Question 2
Is it required an assignment or licence of IP rights in order for it to be effective;
a) between the parties; and
b) against third parties?
Answer 2
a) between the parties
Patents
An assignment or a licence does not need to be registered in order to have effect between the parties.
Trade Marks
An assignment must be registered. A Trade Mark which is not recorded with the Intellectual Property Corporation of Malaysia shall not unless the Court otherwise directs, be admissible as evidence in Court to prove title to a registered Trade Mark (Trade Marks Act 1976, s47).
It is not compulsory to record a licence arrangement under the Trade Marks Act 1976.
Industrial Designs
An assignment or a licence of Industrial Design does not need to be recorded in order to have effect between the parties.
Copyright
Assignment – An assignment of copyright is not required to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Licence – A copyright licences does not need to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
b) against third parties
Patents
Yes, an assignment must be recorded in the Register of Patents in order to have effect against third parties – s39 of Patents Act 1983.
Trade Marks
An assignment must be registered. A Trade Mark which is not recorded with the Intellectual Property Corporation of Malaysia shall not unless the Court otherwise directs, be admissible as evidence in Court to prove title to a registered Trade Mark (Trade Marks Act 1976, s47).
It is not compulsory to record a licence arrangement under the Trade Marks Act 1976.
Industrial Designs
Yes, an assignment must be recorded in the Register of Industrial Designs in order to have effect against third parties (Industrial Designs Act 1996, s30).
Copyright
Assignment – An assignment of copyright is not required to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Licence – A licences does not need to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Question 3
Does the
a) exclusive and
b) non-exclusive licensee of an IP right have a right to bring proceedings for infringement, and if so, what conditions must be satisfied for the right to arise?
Answer 3
a) Exclusive Licensee
Patents
Any licensee (unless the licence contract provides otherwise) and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused pf failed in institute proceedings within 3 months from receipt of request from the licensee/beneficiary.
Trade Marks
Pursuant to section 51 of the of the Trade Marks Act 1996, subject to any agreement subsisting between the registered user of a Trade Mark and the registered proprietor of the Trade Mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the Trade Mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor defendant. A registered proprietor so added as a defendant is not liable for costs unless he enters an appearance and takes part in the proceedings.
Industrial Designs
Any licensee and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused of failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary. The owner has a right to join in such proceedings.
Copyright
In an action for infringement of copyright, pursuant to section 38 of the Copyright Act, the exclusive licensee has the same rights of action and is entitled to the same remedies as he would have if the licence had been an assignment, and the exclusive licensee's rights and remedies are concurrent with the rights and remedies of the owner of the copyright. Section 38(3) provides that where the copyright owner and exclusive licensee have concurrent rights of action in relation to an infringement, neither the copyright owner nor the exclusive licensee is entitled, except with leave of court, to proceed with the action, unless the other party (i.e. the copyright owner or the exclusive licensee as the case may be) is joined as a plaintiff or added as a defendant. Where the other party is not joined as a plaintiff but added as a defendant, the other party is not liable for any costs in the action unless he enters an appearance and fakes part in the proceedings [s38(8)].
b) Non-exclusive licensee
Patents
Any licensee (unless the licence contract provides otherwise) and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused or failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary.
Trade Marks
Pursuant to section 51 of the Trade Marks Act, subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant. A registered proprietor so added as a defendant is not liable for costs unless he enters arm appearance and takes part in the proceedings.
Industrial Designs
Any licensee and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused or failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary. The owner has a right to join in such proceedings.
Copyright
A non-exclusive licensee may sue provided that he joins the owner of the copyright - Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 at 366, Television Broadcasts & Ors v Seremban Video Centre Sdn Bhd. In these cases, reference was made to 9 Halbury's Laws of England 4th Ed, para 880 and Young & Anor v Odeon Music House Pty Ltd (1976) 10 ALR 153.
Question 4
Is a licence transferable;
a) by the licensor and
b) by the licensee?
Answer 4
Generally, whether the licence is transferable will depend on the contractual terms agreed upon by the parties.
In respect of patents, the licensee may not grant to third parties any of the rights of the patent owner to third parties (i.e. by entering into sub-licences), unless his agreement with the patent owner expressly allows him to do so (section 43(2) of the Patents Act 1983).
In respect of Trade Marks, it is not compulsory under the Trade Marks Act 1976 to record a licence arrangement. However, it is possible under the Act to be registered as a user the licensee or distributor of the Trade Mark provided that the Registrar was satisfied that the criteria of the section were met. A registered user may not transfer the right to use the registered Trade Mark to any third party (Trade Marks Act 1976, section 52).
In respect of copyright, if a licence agreement involves rights and obligations of a personal nature, then, in general, the benefit of the agreement is not assignable. Whether or not the licence agreement is of a personal nature involves a question of construction of the licence agreement.
Question 5
What is the effect on an assignment or licence of the invalidity of the underlying IP rights?
Answer 5
The invalidity of the underlying IP right would mean that the assignee or licensee will lose the benefit of the assignment or licence respectively.
Question 6
Can IP rights be used to provide security? If so what formalities are required?
Answer 6
In theory, IP rights may be used to provide security as they are a form of assets which is of value. However, in practice banks and financial institutions do not generally accept UP rights as security due to the difficulty in valuing IP rights. There are no special formalities for perfecting security of an IP right. The usual requirements to perfect any intangible asset are applicable.
Question 7
Does the bankruptcy law explicitly provide for the effect of bankruptcy on IP rights and contracts concerning them?
Answer 7
The bankruptcy legislation in Malaysia does not explicitly provide for the effect of bankruptcy on IP rights and contracts concerning them. There have not been Malaysian cases which considered this question. The English High Court case of Performing Rights Society Ltd v Rowland [1997] 3 All ER 336 would therefore be persuasive authority in the Malaysian courts. This case provides that royalties and licence fees payable to the bankrupt under a licence to use the bankrupt's intellectual property, will pass to the Official Assignee.
Question 8
Do all Intellectual Property Rights form part of a bankruptcy, or are some exempted?
Answer 8
Yes, all intellectual property rights form part of a bankruptcy. Intellectual property rights are a form of intangible assets which fall within the notion of property available for distribution among creditors, for the purposes of section 48(1) of the Bankruptcy Act 1967 which provides for the description of bankrupt's property divisible amongst creditors.
Question 9
What is the effect of the insolvency or bankruptcy of the licensor and the licensee on a contract regarding intellectual property?
a) Does one party have a right to terminate on the insolvency of the other?
b) Can the insolvent party assign the rights concerned?
c) What effect do express contractual terms have in this situation?
Answer 9
a) The legislation does not provide for the rights of termination on the insolvency pf a party. The position would depend on the contractual terms which the parties have arrived at.
b) Given that intellectual property rights form part of the bankruptcy and will pass to the Official Assignee upon bankruptcy, the insolvent party is unlikely to be able to assign the rights concerned.
c) In the case of a) above, express contractual terms will determine weather a party has a right to terminate on the insolvency of the other. In the case of b), the express contractual terms will be subject to the rights of the Official Assignee.
Question 10
Is there any statutory or other protection for a licensee/licensor in the event of the insolvency of a licensor/licensee?
Answer 10
There is no statutory or other protection afforded by in terms of Intellectual Property Law. The position of the licensor/licensee will be determined under bankruptcy law. In the event of the insolvency of a licensor/licensee, the licensee/licensor will rank as a creditor of the licensor/licensee and will be subject to the priorities of debts under insolvency law, as provided for in Section 43 of the Bankruptcy Act 1967.
For additional information, please visit www.myipo.gov.my.
What forms of property right do IP rights take in Malaysia?
Answer 1
In Malaysia, IP rights take the form of
i) Patents;
ii) Trade Marks;
iii) Industrial Designs;
iv) Copyright;
v) Geographical indications; and
vi) Integrated circuits
Question 2
Is it required an assignment or licence of IP rights in order for it to be effective;
a) between the parties; and
b) against third parties?
Answer 2
a) between the parties
Patents
An assignment or a licence does not need to be registered in order to have effect between the parties.
Trade Marks
An assignment must be registered. A Trade Mark which is not recorded with the Intellectual Property Corporation of Malaysia shall not unless the Court otherwise directs, be admissible as evidence in Court to prove title to a registered Trade Mark (Trade Marks Act 1976, s47).
It is not compulsory to record a licence arrangement under the Trade Marks Act 1976.
Industrial Designs
An assignment or a licence of Industrial Design does not need to be recorded in order to have effect between the parties.
Copyright
Assignment – An assignment of copyright is not required to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Licence – A copyright licences does not need to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
b) against third parties
Patents
Yes, an assignment must be recorded in the Register of Patents in order to have effect against third parties – s39 of Patents Act 1983.
Trade Marks
An assignment must be registered. A Trade Mark which is not recorded with the Intellectual Property Corporation of Malaysia shall not unless the Court otherwise directs, be admissible as evidence in Court to prove title to a registered Trade Mark (Trade Marks Act 1976, s47).
It is not compulsory to record a licence arrangement under the Trade Marks Act 1976.
Industrial Designs
Yes, an assignment must be recorded in the Register of Industrial Designs in order to have effect against third parties (Industrial Designs Act 1996, s30).
Copyright
Assignment – An assignment of copyright is not required to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Licence – A licences does not need to be registered, however it needs to be in writing to be effective (Copyright Act 1987, s27).
Question 3
Does the
a) exclusive and
b) non-exclusive licensee of an IP right have a right to bring proceedings for infringement, and if so, what conditions must be satisfied for the right to arise?
Answer 3
a) Exclusive Licensee
Patents
Any licensee (unless the licence contract provides otherwise) and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused pf failed in institute proceedings within 3 months from receipt of request from the licensee/beneficiary.
Trade Marks
Pursuant to section 51 of the of the Trade Marks Act 1996, subject to any agreement subsisting between the registered user of a Trade Mark and the registered proprietor of the Trade Mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the Trade Mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor defendant. A registered proprietor so added as a defendant is not liable for costs unless he enters an appearance and takes part in the proceedings.
Industrial Designs
Any licensee and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused of failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary. The owner has a right to join in such proceedings.
Copyright
In an action for infringement of copyright, pursuant to section 38 of the Copyright Act, the exclusive licensee has the same rights of action and is entitled to the same remedies as he would have if the licence had been an assignment, and the exclusive licensee's rights and remedies are concurrent with the rights and remedies of the owner of the copyright. Section 38(3) provides that where the copyright owner and exclusive licensee have concurrent rights of action in relation to an infringement, neither the copyright owner nor the exclusive licensee is entitled, except with leave of court, to proceed with the action, unless the other party (i.e. the copyright owner or the exclusive licensee as the case may be) is joined as a plaintiff or added as a defendant. Where the other party is not joined as a plaintiff but added as a defendant, the other party is not liable for any costs in the action unless he enters an appearance and fakes part in the proceedings [s38(8)].
b) Non-exclusive licensee
Patents
Any licensee (unless the licence contract provides otherwise) and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused or failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary.
Trade Marks
Pursuant to section 51 of the Trade Marks Act, subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant. A registered proprietor so added as a defendant is not liable for costs unless he enters arm appearance and takes part in the proceedings.
Industrial Designs
Any licensee and a beneficiary of a compulsory licence may bring proceedings for infringement if he proves that the owner refused or failed to institute proceedings within 3 months from receipt of request from the licensee/beneficiary. The owner has a right to join in such proceedings.
Copyright
A non-exclusive licensee may sue provided that he joins the owner of the copyright - Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 at 366, Television Broadcasts & Ors v Seremban Video Centre Sdn Bhd. In these cases, reference was made to 9 Halbury's Laws of England 4th Ed, para 880 and Young & Anor v Odeon Music House Pty Ltd (1976) 10 ALR 153.
Question 4
Is a licence transferable;
a) by the licensor and
b) by the licensee?
Answer 4
Generally, whether the licence is transferable will depend on the contractual terms agreed upon by the parties.
In respect of patents, the licensee may not grant to third parties any of the rights of the patent owner to third parties (i.e. by entering into sub-licences), unless his agreement with the patent owner expressly allows him to do so (section 43(2) of the Patents Act 1983).
In respect of Trade Marks, it is not compulsory under the Trade Marks Act 1976 to record a licence arrangement. However, it is possible under the Act to be registered as a user the licensee or distributor of the Trade Mark provided that the Registrar was satisfied that the criteria of the section were met. A registered user may not transfer the right to use the registered Trade Mark to any third party (Trade Marks Act 1976, section 52).
In respect of copyright, if a licence agreement involves rights and obligations of a personal nature, then, in general, the benefit of the agreement is not assignable. Whether or not the licence agreement is of a personal nature involves a question of construction of the licence agreement.
Question 5
What is the effect on an assignment or licence of the invalidity of the underlying IP rights?
Answer 5
The invalidity of the underlying IP right would mean that the assignee or licensee will lose the benefit of the assignment or licence respectively.
Question 6
Can IP rights be used to provide security? If so what formalities are required?
Answer 6
In theory, IP rights may be used to provide security as they are a form of assets which is of value. However, in practice banks and financial institutions do not generally accept UP rights as security due to the difficulty in valuing IP rights. There are no special formalities for perfecting security of an IP right. The usual requirements to perfect any intangible asset are applicable.
Question 7
Does the bankruptcy law explicitly provide for the effect of bankruptcy on IP rights and contracts concerning them?
Answer 7
The bankruptcy legislation in Malaysia does not explicitly provide for the effect of bankruptcy on IP rights and contracts concerning them. There have not been Malaysian cases which considered this question. The English High Court case of Performing Rights Society Ltd v Rowland [1997] 3 All ER 336 would therefore be persuasive authority in the Malaysian courts. This case provides that royalties and licence fees payable to the bankrupt under a licence to use the bankrupt's intellectual property, will pass to the Official Assignee.
Question 8
Do all Intellectual Property Rights form part of a bankruptcy, or are some exempted?
Answer 8
Yes, all intellectual property rights form part of a bankruptcy. Intellectual property rights are a form of intangible assets which fall within the notion of property available for distribution among creditors, for the purposes of section 48(1) of the Bankruptcy Act 1967 which provides for the description of bankrupt's property divisible amongst creditors.
Question 9
What is the effect of the insolvency or bankruptcy of the licensor and the licensee on a contract regarding intellectual property?
a) Does one party have a right to terminate on the insolvency of the other?
b) Can the insolvent party assign the rights concerned?
c) What effect do express contractual terms have in this situation?
Answer 9
a) The legislation does not provide for the rights of termination on the insolvency pf a party. The position would depend on the contractual terms which the parties have arrived at.
b) Given that intellectual property rights form part of the bankruptcy and will pass to the Official Assignee upon bankruptcy, the insolvent party is unlikely to be able to assign the rights concerned.
c) In the case of a) above, express contractual terms will determine weather a party has a right to terminate on the insolvency of the other. In the case of b), the express contractual terms will be subject to the rights of the Official Assignee.
Question 10
Is there any statutory or other protection for a licensee/licensor in the event of the insolvency of a licensor/licensee?
Answer 10
There is no statutory or other protection afforded by in terms of Intellectual Property Law. The position of the licensor/licensee will be determined under bankruptcy law. In the event of the insolvency of a licensor/licensee, the licensee/licensor will rank as a creditor of the licensor/licensee and will be subject to the priorities of debts under insolvency law, as provided for in Section 43 of the Bankruptcy Act 1967.
For additional information, please visit www.myipo.gov.my.
General Information On Patent Filing In Hong Kong
Question
General information on patent filing in Hong Kong?
Answer
a) TYPES AND DURATION OF PATENTS
i) Standard Patents (a term of 20 years);
ii) Short-term Patents (a term of 8 years) having only one independent claim and any number of subsidiary claims.
b) VALIDITY & ENFORCEMENT
i) Both types pf patents may be litigated in Hong Kong Courts;
ii) Standard Patents will be independent of original grants (except for revocation);
iii) Short-term Patents – the burden of establishing validity of the patent in court proceedings will be imposed on the patentee.
c) LANGUAGE OF PROCEEDINGS
i) English or Chinese
PART I : STANDARD PATENTS
Application Procedure
Stage 1
File a request to record within 6 months after the date of publication by a designated patent office. A designated office is the Chinese Patent Office, United Kingdom Patent Office Or European Patent Office in respect of patents granted under European Patent Convention designating the United Kingdom.
Stage 2
File a request for registration and grant within 6 months of the date of grant of the patent by the designated patent office.
(The deadlines for filing of Stage 1 or Stage 2 are non-extendible).
Documents to record a standard patent based on an application filed at a designated patent office.
i.) A copy of the designated patent application as published including the abstract, description, claims, drawings and search report;
ii.) If the application does not state the name(s) of inventor(s), then a statement identifying person(s) whom the applicant believes is the inventor(s) is required;
iii.) The name and address of the applicant;
iv.) If the applicant is not same as one stated in the designated application, then a statement explaining the derivation of title along with supporting prescribed document is required;
v.) If priority is claimed, then details of the priority document(s) including filing date(s), application number(s) and filing country, are required;
vi.) If a claim is made for non-prejudicial disclosure, then details of the name, place and opening date of the exhibition or meeting, as well as the date if the first disclosure, is required; and
vii.) Title of invention and abstract in Chinese and English.
Documents to record a standard patent based on a PCT Application.
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of the translation of the PCT application published by the designated patent office;
iii.) A copy of the publication indicating that the PCT application has validly entered into the national phase by a designated patent office; and
iv.) Title of invention and abstract in Chinese and English.
Documents to request registration and grant of a standard patent.
i.) A copy of the granted specification of the designated patent, including the description, claims and drawings together with a statement confirming that it is a true copy of the document issued by or kept at the relevant designated patent office.
ii.) Where the person filing the request is not the person named on the register as the applicant for a standard patent, then a statement explaining the derivation of title along with supporting prescribed documents is required;
iii.) Where a request to record contains a statement claiming priority, the applicant may be required to submit copies of the priority document(s); and
iv.) Title of invention and abstract in Chinese and English.
Maintenance Fee
Payment of a maintenance fee is required for all pending patent applications. The maintenance fee is required to be paid before expiry of the 5th or any succeeding year from the anniversary of the date of filing the designated patent application first occurring after the aforesaid date of publication.
Example :
Filing date of designated patent : 01 JANUARY 2002
Publication date of request to record : 05 MAY 2004
Relevant date first occurring after publication date : 01 JANUARY 2005
First maintenance fee due : 01 JANUARY 2010
If the maintenance fee is not paid within the prescribed time limit, the patent application may be restored within 6 months upon paying the maintenance fee as well as an additional fee.
After the request for registration and grant (stage 2) is filed, the applicant is no longer required to pay the maintenance fee.
Renewal
All granted patents must be renewed. The renewal fee shall be paid before expiry of the 3rd year but not earlier than a date 3 months before the expiry date.
Example :
Filing date of designated patent : 01 JANUARY 2000
Grant date in Hong Kong : 05 MAY 2004
Relevant date first occurring after grant date : 01 JANUARY 2005
First renewal due date : 01 JANUARY 2008
Standard patent shall cease to have effect at expiry of the 3rd or any succeeding year if renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.
PART II : SHORT-TERM PATENTS
Application Procedure
- One step process and requires no substantive examination in Hong Kong.
- The application can claim priority if it is filed within 12 months of the filing date of the first application in either a Paris Convention country/WTO member country.
- Alternatively, a short-term patent can be filed via a PCT application which enters the national phase in China as a utility model application within 6 months.
Documents for a short-term patent based on a Paris Convention/WTO member country.
i.) The specification including:
a) description of the invention to which the applications relates;
b) at least one claim but not exceeding 1 independent claim, and
c) any drawings referred to in the description;
ii.) Title of invention and abstract in English and Chinese;
iii.) Original search report in relation to the invention (issued by an established searching authority);
iv.) Name and address of the applicant and inventor(s);
v.) Where applicant is not the sole inventor, then a statement indicating the derivation of title is required;
v.) If priority is claimed, then a statement of priority and a copy of the priority document(s) is required.
(A request for deferral of grant of a short-term patent can only be made at time of filing the application)
Documents for a short-term patent based on a PCT application designating a utility model in China
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of International Search Report for the PCT application;
iii.) Date of national phase entry of the PCT application into China;
vi.) A copy of the translation of the PCT application (if any) published by the Chinese Patent Office; and
v.) A copy of the information published by the Chinese Patent Office concerning the PCT application.
Renewal
Renewal fees are payable 3 months before expiry of the 4th year from the date of filing. Renewal fees for a short-term patent are only paid once.
A short-term patent shall cease to have effect at expiry of the 4th year if the renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.
General information on patent filing in Hong Kong?
Answer
a) TYPES AND DURATION OF PATENTS
i) Standard Patents (a term of 20 years);
ii) Short-term Patents (a term of 8 years) having only one independent claim and any number of subsidiary claims.
b) VALIDITY & ENFORCEMENT
i) Both types pf patents may be litigated in Hong Kong Courts;
ii) Standard Patents will be independent of original grants (except for revocation);
iii) Short-term Patents – the burden of establishing validity of the patent in court proceedings will be imposed on the patentee.
c) LANGUAGE OF PROCEEDINGS
i) English or Chinese
PART I : STANDARD PATENTS
Application Procedure
Stage 1
File a request to record within 6 months after the date of publication by a designated patent office. A designated office is the Chinese Patent Office, United Kingdom Patent Office Or European Patent Office in respect of patents granted under European Patent Convention designating the United Kingdom.
Stage 2
File a request for registration and grant within 6 months of the date of grant of the patent by the designated patent office.
(The deadlines for filing of Stage 1 or Stage 2 are non-extendible).
Documents to record a standard patent based on an application filed at a designated patent office.
i.) A copy of the designated patent application as published including the abstract, description, claims, drawings and search report;
ii.) If the application does not state the name(s) of inventor(s), then a statement identifying person(s) whom the applicant believes is the inventor(s) is required;
iii.) The name and address of the applicant;
iv.) If the applicant is not same as one stated in the designated application, then a statement explaining the derivation of title along with supporting prescribed document is required;
v.) If priority is claimed, then details of the priority document(s) including filing date(s), application number(s) and filing country, are required;
vi.) If a claim is made for non-prejudicial disclosure, then details of the name, place and opening date of the exhibition or meeting, as well as the date if the first disclosure, is required; and
vii.) Title of invention and abstract in Chinese and English.
Documents to record a standard patent based on a PCT Application.
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of the translation of the PCT application published by the designated patent office;
iii.) A copy of the publication indicating that the PCT application has validly entered into the national phase by a designated patent office; and
iv.) Title of invention and abstract in Chinese and English.
Documents to request registration and grant of a standard patent.
i.) A copy of the granted specification of the designated patent, including the description, claims and drawings together with a statement confirming that it is a true copy of the document issued by or kept at the relevant designated patent office.
ii.) Where the person filing the request is not the person named on the register as the applicant for a standard patent, then a statement explaining the derivation of title along with supporting prescribed documents is required;
iii.) Where a request to record contains a statement claiming priority, the applicant may be required to submit copies of the priority document(s); and
iv.) Title of invention and abstract in Chinese and English.
Maintenance Fee
Payment of a maintenance fee is required for all pending patent applications. The maintenance fee is required to be paid before expiry of the 5th or any succeeding year from the anniversary of the date of filing the designated patent application first occurring after the aforesaid date of publication.
Example :
Filing date of designated patent : 01 JANUARY 2002
Publication date of request to record : 05 MAY 2004
Relevant date first occurring after publication date : 01 JANUARY 2005
First maintenance fee due : 01 JANUARY 2010
If the maintenance fee is not paid within the prescribed time limit, the patent application may be restored within 6 months upon paying the maintenance fee as well as an additional fee.
After the request for registration and grant (stage 2) is filed, the applicant is no longer required to pay the maintenance fee.
Renewal
All granted patents must be renewed. The renewal fee shall be paid before expiry of the 3rd year but not earlier than a date 3 months before the expiry date.
Example :
Filing date of designated patent : 01 JANUARY 2000
Grant date in Hong Kong : 05 MAY 2004
Relevant date first occurring after grant date : 01 JANUARY 2005
First renewal due date : 01 JANUARY 2008
Standard patent shall cease to have effect at expiry of the 3rd or any succeeding year if renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.
PART II : SHORT-TERM PATENTS
Application Procedure
- One step process and requires no substantive examination in Hong Kong.
- The application can claim priority if it is filed within 12 months of the filing date of the first application in either a Paris Convention country/WTO member country.
- Alternatively, a short-term patent can be filed via a PCT application which enters the national phase in China as a utility model application within 6 months.
Documents for a short-term patent based on a Paris Convention/WTO member country.
i.) The specification including:
a) description of the invention to which the applications relates;
b) at least one claim but not exceeding 1 independent claim, and
c) any drawings referred to in the description;
ii.) Title of invention and abstract in English and Chinese;
iii.) Original search report in relation to the invention (issued by an established searching authority);
iv.) Name and address of the applicant and inventor(s);
v.) Where applicant is not the sole inventor, then a statement indicating the derivation of title is required;
v.) If priority is claimed, then a statement of priority and a copy of the priority document(s) is required.
(A request for deferral of grant of a short-term patent can only be made at time of filing the application)
Documents for a short-term patent based on a PCT application designating a utility model in China
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of International Search Report for the PCT application;
iii.) Date of national phase entry of the PCT application into China;
vi.) A copy of the translation of the PCT application (if any) published by the Chinese Patent Office; and
v.) A copy of the information published by the Chinese Patent Office concerning the PCT application.
Renewal
Renewal fees are payable 3 months before expiry of the 4th year from the date of filing. Renewal fees for a short-term patent are only paid once.
A short-term patent shall cease to have effect at expiry of the 4th year if the renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.
Infringement & Process Patents
Question
Does Malaysia law permit shifting the burden of proof to the alleged infringer to show that their process does not infringe in the following two scenarios:
(1) manufacture within the country by the alleged infringer, or
(2) importation by the alleged infringer from another country.
Presumably the answer may differ between scenarios (1) and (2).
Answer
As far as the Patent Laws are concerned in Malaysia, the answer for scenario (1) and (2) is identical wherein, if the patent in question is granted in respect of a process for obtaining a product, the burden of proof shifts to the alleged infringer to prove non-infringement of the process, even if the process is conducted outside of Malaysia but the resulting product is then imported into Malaysia.
Should you require more clarifications on Infringement & process patents.
Does Malaysia law permit shifting the burden of proof to the alleged infringer to show that their process does not infringe in the following two scenarios:
(1) manufacture within the country by the alleged infringer, or
(2) importation by the alleged infringer from another country.
Presumably the answer may differ between scenarios (1) and (2).
Answer
As far as the Patent Laws are concerned in Malaysia, the answer for scenario (1) and (2) is identical wherein, if the patent in question is granted in respect of a process for obtaining a product, the burden of proof shifts to the alleged infringer to prove non-infringement of the process, even if the process is conducted outside of Malaysia but the resulting product is then imported into Malaysia.
Should you require more clarifications on Infringement & process patents.
Tuesday
Renewal of Utility Innovation
Question 1
A client of us is planning to conduct a five year extension after the first ten years of protection right for a Malaysian Utility Model. According to our information – to file such a request for extension an affidavit of use must be filed in Malaysia.
We’d like to know from your side if you could also act on the renewal of an utility model. If you could prepare the affidavit of use which is to be signed by the owner. Please let us know if this affidavit must be notarized.
Answer 1
We confirm that utility model can be extended for two terms of five (5) years each. In total, utility model in Malaysia can have the protection for a maximum period of twenty (20) years.
We are able to act on renewal matters if you instruct us to do so.
To affect the extension for the protection of the utility model to five (5) years, we need to file the request via Form 15, Declaration of Use and paying the requisite fee. The declaration has to be notarised by the Notary Public in your country, and the original document needs to be sent to us, for filing with the Registry.
In order to proceed with drafting the Affidavit of Use and filing for extension, we would require following details from your goodself:
a) Utility Innovation grant no.
b) Details of the distributor of the utility model in Malaysia
c) Additional information that will prove the commercial use of the utility model in Malaysia.
A client of us is planning to conduct a five year extension after the first ten years of protection right for a Malaysian Utility Model. According to our information – to file such a request for extension an affidavit of use must be filed in Malaysia.
We’d like to know from your side if you could also act on the renewal of an utility model. If you could prepare the affidavit of use which is to be signed by the owner. Please let us know if this affidavit must be notarized.
Answer 1
We confirm that utility model can be extended for two terms of five (5) years each. In total, utility model in Malaysia can have the protection for a maximum period of twenty (20) years.
We are able to act on renewal matters if you instruct us to do so.
To affect the extension for the protection of the utility model to five (5) years, we need to file the request via Form 15, Declaration of Use and paying the requisite fee. The declaration has to be notarised by the Notary Public in your country, and the original document needs to be sent to us, for filing with the Registry.
In order to proceed with drafting the Affidavit of Use and filing for extension, we would require following details from your goodself:
a) Utility Innovation grant no.
b) Details of the distributor of the utility model in Malaysia
c) Additional information that will prove the commercial use of the utility model in Malaysia.
General IP related matters
Question 1
If you are licensed as an attorney at law, can you execute patent prosecution before your PO without the license of patent agent?
Answer 1
No. Only Registered Patent Agents can prosecute patent before the Patent Office.
Question 2
Can you handle industrial design applications and trademark ones without any license?
Answer 2
Yes to Trademarks, No to Industrial Design
Similar to Patents, Industrial Designs can only be filed by Registered Patent Agents.
Question 3
Have you established your professional association in your country?
Answer 3
Yes, there are 2 affiliations but not at a national level. They are at the ASEAN Regional Grouping called APAA (http://www.apaaonline.org/) and Asean IPA (http://www.aseanipa.org/).
Question 4
Is an invention utilizing a computer able to be protected under your patent law?
Answer 4
An invention utilizing a computer may be protected under the Thai Patent Act, provided the invention is not a computer program.
Question 5
Do you have any provision of your patent law for relieving the invention losing its novelty caused by being disclosed at a study meeting or the like.
Answer 5
Yes, Section 13 of the Thai Patent Act provides that :
"A disclosure which was due to, or made in consequence of, the subject matter having been obtained unlawfully, or a disclosure which was made by the inventor, or made in consequence of, the inventor displaying the invention at an international exhibition or an official exhibition if such disclosure was done within 12 months before the filing of an application for the patent shall rat be deemed to be a disclosure."
Question 6
Is it permitted to submit a photograph of a microscope instead of a drawing in a patent application?
Answer 6
Yes, a photographic image is acceptable provided it is printed on A4 size paper for
submission.
Question 7
For accelerated examination, what documents do we have to submit?
Answer 7
We may write a letter to the Patent Office requesting them to accelerate the examination process.
For accelerated examination, a letter of request together with documents regarding the results of the examination conducted in foreign country accompanied with the Thai translation must be submitted.
Question 8
Offices of patent, industrial design and trademark are different authorities from each other?
Answer 8
Thailand established Department of Intellectual Property (DIP) under the Ministry of Commerce. Patent Office and Trade Mark Office are 2 divisions of the Department of Intellectual Property. Industrial Design is a sub-division of the Patent Office.
Question 9
How do we draft the claims of a industrial design application?
Answer 9
The Claim is limited to one claim only. Applicants may claim:
a. the shape and configuration, or
b. the shape, configuration, and surface ornamentation, or
c, the shape, configuration, surface ornamentation, and colour, or
d. the surface ornamentation of the design as shown in the representation(s).
Question 10
How do we draft the statement of use at the time of filing a trademark application if necessary?
Answer 10
It is not a requirement to submit a statement of use at the time of filing a trademark
application.
Question 11
How many percent of your handling foreign applications are from Japanese companies?
Answer 11
Approximately 10%.
Question 12
Where can we obtain remarkable judicial judgments in English in IP field issued by your courts?
Answer 12
The IP court does not provide judicial judgments in English.
Question 13
What do you think about IP businesses with Japan in future, cooperating with Japanese patent attorneys?
Answer 13
We are positive and upbeat about future growth in our level of business with Japanese clients amidst the current economic downturn, as we are confident of delivering high quality and personalized service at all times further supported by our Japan desk liaison.
If you are licensed as an attorney at law, can you execute patent prosecution before your PO without the license of patent agent?
Answer 1
No. Only Registered Patent Agents can prosecute patent before the Patent Office.
Question 2
Can you handle industrial design applications and trademark ones without any license?
Answer 2
Yes to Trademarks, No to Industrial Design
Similar to Patents, Industrial Designs can only be filed by Registered Patent Agents.
Question 3
Have you established your professional association in your country?
Answer 3
Yes, there are 2 affiliations but not at a national level. They are at the ASEAN Regional Grouping called APAA (http://www.apaaonline.org/) and Asean IPA (http://www.aseanipa.org/).
Question 4
Is an invention utilizing a computer able to be protected under your patent law?
Answer 4
An invention utilizing a computer may be protected under the Thai Patent Act, provided the invention is not a computer program.
Question 5
Do you have any provision of your patent law for relieving the invention losing its novelty caused by being disclosed at a study meeting or the like.
Answer 5
Yes, Section 13 of the Thai Patent Act provides that :
"A disclosure which was due to, or made in consequence of, the subject matter having been obtained unlawfully, or a disclosure which was made by the inventor, or made in consequence of, the inventor displaying the invention at an international exhibition or an official exhibition if such disclosure was done within 12 months before the filing of an application for the patent shall rat be deemed to be a disclosure."
Question 6
Is it permitted to submit a photograph of a microscope instead of a drawing in a patent application?
Answer 6
Yes, a photographic image is acceptable provided it is printed on A4 size paper for
submission.
Question 7
For accelerated examination, what documents do we have to submit?
Answer 7
We may write a letter to the Patent Office requesting them to accelerate the examination process.
For accelerated examination, a letter of request together with documents regarding the results of the examination conducted in foreign country accompanied with the Thai translation must be submitted.
Question 8
Offices of patent, industrial design and trademark are different authorities from each other?
Answer 8
Thailand established Department of Intellectual Property (DIP) under the Ministry of Commerce. Patent Office and Trade Mark Office are 2 divisions of the Department of Intellectual Property. Industrial Design is a sub-division of the Patent Office.
Question 9
How do we draft the claims of a industrial design application?
Answer 9
The Claim is limited to one claim only. Applicants may claim:
a. the shape and configuration, or
b. the shape, configuration, and surface ornamentation, or
c, the shape, configuration, surface ornamentation, and colour, or
d. the surface ornamentation of the design as shown in the representation(s).
Question 10
How do we draft the statement of use at the time of filing a trademark application if necessary?
Answer 10
It is not a requirement to submit a statement of use at the time of filing a trademark
application.
Question 11
How many percent of your handling foreign applications are from Japanese companies?
Answer 11
Approximately 10%.
Question 12
Where can we obtain remarkable judicial judgments in English in IP field issued by your courts?
Answer 12
The IP court does not provide judicial judgments in English.
Question 13
What do you think about IP businesses with Japan in future, cooperating with Japanese patent attorneys?
Answer 13
We are positive and upbeat about future growth in our level of business with Japanese clients amidst the current economic downturn, as we are confident of delivering high quality and personalized service at all times further supported by our Japan desk liaison.
Department of Intellectual Property’s (DIP) Thailand practice on the examination procedure on patent and industrial designs
Question 1
What is the Department of Intellectual Property’s (DIP) Thailand practice on the examination procedure on patent and industrial designs?
Answer 1
An applicant for a patent or an industrial design may request an accelerated examination process under the following cases:
(1) where a request has been filed to the DIP by an applicant of a patent or an industrial design that the patent or the industrial design application be examined in preference to other applications, if a person other than the applicant is exploiting the invention or the industrial design claimed in the patent or the industrial design application in his business without the consent of the applicant after the publication of the patent or the industrial design application under paragraph 2, Section 28 of the Thai Patent Act (including applied mutatis mutandis to industrial design application under Section 65); and
(2) where the applicant of the patent application submits the documents regarding the results of the examination conducted in foreign country under the paragraph 2, Section 27 of the Thai Patent Act.
Accordingly, as in (1), the DIP takes the request into consideration and in case the request fulfills the conditions, the DIP examines the application in preference to other applications; and as in (2), the patent application is examined in preference to other applications.
Any person may submit evidences to the DIP after a patent or an industrial design application is published under paragraph 2, Section 28 of Thai Patent Act (including applied mutatis mutandis to industrial design application under Section 65). The DIP, thus, makes best efforts to take the evidences into account of substantive examination of the patent or the industrial design application. The evidences will be the ones which state:
(1) The patent application does not satisfy the conditions under Section 5, 6 or 7 of Thai Patent Act, or
(2) The industrial design application does not satisfy the conditions under Section 56 and 57 of Thai Patent Act
What is the Department of Intellectual Property’s (DIP) Thailand practice on the examination procedure on patent and industrial designs?
Answer 1
An applicant for a patent or an industrial design may request an accelerated examination process under the following cases:
(1) where a request has been filed to the DIP by an applicant of a patent or an industrial design that the patent or the industrial design application be examined in preference to other applications, if a person other than the applicant is exploiting the invention or the industrial design claimed in the patent or the industrial design application in his business without the consent of the applicant after the publication of the patent or the industrial design application under paragraph 2, Section 28 of the Thai Patent Act (including applied mutatis mutandis to industrial design application under Section 65); and
(2) where the applicant of the patent application submits the documents regarding the results of the examination conducted in foreign country under the paragraph 2, Section 27 of the Thai Patent Act.
Accordingly, as in (1), the DIP takes the request into consideration and in case the request fulfills the conditions, the DIP examines the application in preference to other applications; and as in (2), the patent application is examined in preference to other applications.
Any person may submit evidences to the DIP after a patent or an industrial design application is published under paragraph 2, Section 28 of Thai Patent Act (including applied mutatis mutandis to industrial design application under Section 65). The DIP, thus, makes best efforts to take the evidences into account of substantive examination of the patent or the industrial design application. The evidences will be the ones which state:
(1) The patent application does not satisfy the conditions under Section 5, 6 or 7 of Thai Patent Act, or
(2) The industrial design application does not satisfy the conditions under Section 56 and 57 of Thai Patent Act
Thursday
Changes In The Patent Cooperation Treaty - Singapore
PCT Changes on 1 April 2007
1. Confirmation of Incorporation by Reference of missing parts/elements (rule 20.6)
- to allow inclusion of missing parts or elements that were present in the priority document but was omitted in the PCT application without causing changes to the international filing date.
- the Receiving Office (RO) will inform the applicant whether their request for incorporation is accepted or refused.
2. Restoration of the Rights of Priority (Rule 26bis.3)
- to allow a priority claim to an earlier filed application outside the priority period (ie, > 12 months).
- Restoration of Rights of Priority - within 2 months from expiry of priority ie. 14 months.
3. Rectification of Obvious mistakes (Rule 91)
- now, the mistake must only be obvious to the "competent authority", not "anyone".
- new time limit ; request must be submitted within 26 months from priority date.
4. Physical Requirements (Rule 11.9(d))
- require all text in international application to be at least 0.28 cm.
5. Correction Procedure (Rule 26.4)
- may be stated in a letter.
PCT Changes on 1 July 2008
1. Extension of time limit for payment of the restoration fee (Rule 26bis.3(d))
- time limit for payment of fee is 3 months from expiry of priority period.
- RO may extend this time limited for up to 2 months.
2. Request to take into account the result of earlier searches (Rule 12bis.1, 4.12 & 41)
- request International Search Authority (ISA) to take into account earlier search carried out by other ISA or national office.
3. Prevention of International Publication
- notification to withdraw application should be sent directly to IB to prevent accidental publication of withdrawn application.
4. Reduction of International Fees
- International filing and handling fee reduced by 90% for applicants from certain countries (Antigua, Barbuda, Bahrain, Barbados, Libyan, Arab Jamahiraya, Oman, Singapore, Trinidad and Tobago, UAE & Seychelles).
5. E-filing: submission of pre-converted files
- Receiving offices (RO) allow to accept submission of International application (IA) in its pre-converted format in the event the submitted IA in pdf. contain errors due to the conversion process.
6. Use of email for advance copies of notifications
- enable notification to be sent to applicant in advance of paper notification.
PCT Changes on 1 January 2009
1. New publication languages
- publication available in Korean and Portuguese.
- will contain title, abstract and search report in English.
- only apply to application with filing date on or after 1 January 2009.
2. Supplementary International search (SIS) (Rule 45bis)
- to enable applicant to request further searches in prior arts of specific languages eg. Swedish, Danish, Finnish and Norwegian.
- currently only conducted by 3 SIS authority – Sweden, Russia and Nordic Institute.
PCT Changes on 1 July 2009
1. Declaration under Article 14(4)
- the RO will send a Declaration to the applicant that an application will be considered withdrawn.
- the applicant will be sent a notification to be informed of RO's intent to send the Declaration.
- the applicant can request for 2 months time extension to submit argument in reply to the notification.
2. Form of claims amendments
- for amendment under Art 19 or 34, replacement sheets containing complete set of claims must be submitted.
- for deletion of claims, no renumbering of remaining claims is required.
3. Filing of sequence listings
- sequence listings forming part of the international application.
- no page fee for sequence listing filed in ST.25 text format filed in electronic form.
- however, full page fee will be chargeable if filed in image or pdf format.
- table relating to sequence listing will count as regular pages of descriptions.
1. Confirmation of Incorporation by Reference of missing parts/elements (rule 20.6)
- to allow inclusion of missing parts or elements that were present in the priority document but was omitted in the PCT application without causing changes to the international filing date.
- the Receiving Office (RO) will inform the applicant whether their request for incorporation is accepted or refused.
2. Restoration of the Rights of Priority (Rule 26bis.3)
- to allow a priority claim to an earlier filed application outside the priority period (ie, > 12 months).
- Restoration of Rights of Priority - within 2 months from expiry of priority ie. 14 months.
3. Rectification of Obvious mistakes (Rule 91)
- now, the mistake must only be obvious to the "competent authority", not "anyone".
- new time limit ; request must be submitted within 26 months from priority date.
4. Physical Requirements (Rule 11.9(d))
- require all text in international application to be at least 0.28 cm.
5. Correction Procedure (Rule 26.4)
- may be stated in a letter.
PCT Changes on 1 July 2008
1. Extension of time limit for payment of the restoration fee (Rule 26bis.3(d))
- time limit for payment of fee is 3 months from expiry of priority period.
- RO may extend this time limited for up to 2 months.
2. Request to take into account the result of earlier searches (Rule 12bis.1, 4.12 & 41)
- request International Search Authority (ISA) to take into account earlier search carried out by other ISA or national office.
3. Prevention of International Publication
- notification to withdraw application should be sent directly to IB to prevent accidental publication of withdrawn application.
4. Reduction of International Fees
- International filing and handling fee reduced by 90% for applicants from certain countries (Antigua, Barbuda, Bahrain, Barbados, Libyan, Arab Jamahiraya, Oman, Singapore, Trinidad and Tobago, UAE & Seychelles).
5. E-filing: submission of pre-converted files
- Receiving offices (RO) allow to accept submission of International application (IA) in its pre-converted format in the event the submitted IA in pdf. contain errors due to the conversion process.
6. Use of email for advance copies of notifications
- enable notification to be sent to applicant in advance of paper notification.
PCT Changes on 1 January 2009
1. New publication languages
- publication available in Korean and Portuguese.
- will contain title, abstract and search report in English.
- only apply to application with filing date on or after 1 January 2009.
2. Supplementary International search (SIS) (Rule 45bis)
- to enable applicant to request further searches in prior arts of specific languages eg. Swedish, Danish, Finnish and Norwegian.
- currently only conducted by 3 SIS authority – Sweden, Russia and Nordic Institute.
PCT Changes on 1 July 2009
1. Declaration under Article 14(4)
- the RO will send a Declaration to the applicant that an application will be considered withdrawn.
- the applicant will be sent a notification to be informed of RO's intent to send the Declaration.
- the applicant can request for 2 months time extension to submit argument in reply to the notification.
2. Form of claims amendments
- for amendment under Art 19 or 34, replacement sheets containing complete set of claims must be submitted.
- for deletion of claims, no renumbering of remaining claims is required.
3. Filing of sequence listings
- sequence listings forming part of the international application.
- no page fee for sequence listing filed in ST.25 text format filed in electronic form.
- however, full page fee will be chargeable if filed in image or pdf format.
- table relating to sequence listing will count as regular pages of descriptions.
Re-Correcting Biologic Sequence Information
Question 1
Can a patent application be amended to correct a nucleic acid or amino acid/protein sequence?
Answer 1
As far as the Malaysian Patents Act 1983 is concerned, it is possible to amend patent application or a granted patent provided that the amendment shall not go beyond the disclosure in the initial application by virtue of Section 26A of the Patents Act 1983.
The procedure to amend the patent application or granted patent is by filing appropriate amendment form together with the written description that shows which claims need to be amended.
In the case of use of microorganism in initial patent application, as Malaysia is not a signatory to the Budapest Treaty which determines the Rules for depositing microorganisms in a recognized collection, and for access to samples from that collection, the microorganism will not be available to the public in Malaysia, after the grant of a patent on the present application, unless the patentee authorizes release of cultures of the microorganism to interested parties.
Further, if the initial application requires for its performance the use of a microorganism which is defined by reference to a culture collection and the accession number of the deposit of the microorganism therein, the applicant/patentee needs to provide any requester [that is any person requesting a sample of the relevant microorganism] with a declaration, addressed to the depositing authority, authorizing the depositing authority to furnish a sample of the relevant microorganism to the requester, provided that the requester undertakes not to make the deposited culture or any culture derived therefrom available to any third party before the expiry of the patent.
Question 2
Can a patent be corrected to correct a nucleic acid or amino acid/protein sequence?
Answer 2
Yes, it is possible.
Question 3
Can a biologic deposit serve as the basis for the amendment/ correction?
Answer 3
Yes, it is possible.
Question 4
If possible, what is the procedure?
Answer 4
The procedure is by way of executing statutory declaration stating that the disclosure contains the sequence as corrected.
Question 5
If possible, would you advise making the amendment/correction? Under what circumstances?
Answer 5
We would advise in favour of making the amendment if it would broaden the protection of the claims of the initial application.
Can a patent application be amended to correct a nucleic acid or amino acid/protein sequence?
Answer 1
As far as the Malaysian Patents Act 1983 is concerned, it is possible to amend patent application or a granted patent provided that the amendment shall not go beyond the disclosure in the initial application by virtue of Section 26A of the Patents Act 1983.
The procedure to amend the patent application or granted patent is by filing appropriate amendment form together with the written description that shows which claims need to be amended.
In the case of use of microorganism in initial patent application, as Malaysia is not a signatory to the Budapest Treaty which determines the Rules for depositing microorganisms in a recognized collection, and for access to samples from that collection, the microorganism will not be available to the public in Malaysia, after the grant of a patent on the present application, unless the patentee authorizes release of cultures of the microorganism to interested parties.
Further, if the initial application requires for its performance the use of a microorganism which is defined by reference to a culture collection and the accession number of the deposit of the microorganism therein, the applicant/patentee needs to provide any requester [that is any person requesting a sample of the relevant microorganism] with a declaration, addressed to the depositing authority, authorizing the depositing authority to furnish a sample of the relevant microorganism to the requester, provided that the requester undertakes not to make the deposited culture or any culture derived therefrom available to any third party before the expiry of the patent.
Question 2
Can a patent be corrected to correct a nucleic acid or amino acid/protein sequence?
Answer 2
Yes, it is possible.
Question 3
Can a biologic deposit serve as the basis for the amendment/ correction?
Answer 3
Yes, it is possible.
Question 4
If possible, what is the procedure?
Answer 4
The procedure is by way of executing statutory declaration stating that the disclosure contains the sequence as corrected.
Question 5
If possible, would you advise making the amendment/correction? Under what circumstances?
Answer 5
We would advise in favour of making the amendment if it would broaden the protection of the claims of the initial application.
Prior Use-Rights Derived Which Constitute Another Limitation To The Patentor's Exclusive Right As Delineated In S37(2) Of The Patent Act 1983
Question 1
Clearer pictaure regarding “a prior use right” as one of the means of defense on a patent litigation in Malaysia. We have studied regarding prior use right based on your patent law article, but it is still difficult for us to find any detail information or practice about prior use in Malaysia.
1. Case law on prior use.
2. Interpretation of “prior use” under a patent law in Malaysia.
3. Textbook – if there is a fundamental textbook about patent system in English.
Answer 1
In answering the your enquiries regarding “a prior use right” as one of the defense on a patent litigation in our country. Prior use right is governed under S37(2)[1] which reads together with Section 38 (1)[2] where a person at the priority date of the patent application:-
(a) was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the product or using the process referred to in paragraph (a),
he shall have the right, despite the grant of the patent, to exploit the patented invention, provided that the product in question is made, or the process in question is used, by the said person in Malaysia and further provided that he can prove, if the invention was disclosed and his knowledge of the invention was not a result of such disclosure.
In section 38 (2), the provision reads that the right referred to in subsection (1) shall not be assigned or transmitted except as part of the business of the person concerned. This particular provision defined that to what extent the right conferred wherein the right may not be transferred except as part of the course of business.
Good faith is defined which includes due inquiry and implies not only an upright mental attitude but also clear conscience, and that ordinary prudence has been exercised according to the standard of a reasonable person as per Gopal & Anor V Awang Bin Mona[3].
Further, in the course of business is defined as something that is part of its activities. This can be referred to the case of Charles R Davidson & Co V M’Robb (or Officer)[4] , per Lord Dunedin.
Malaysian case that related to the above provision is Intercontinental Specialty Fats Sdn. Bhd. V Asahi Denka Kogyo KK [5]. According to this case as per Abdul Aziz J, the defendant were the proprietors of UK Patent GB 2028862B for an invention called ‘cacao butter substitute ‘.
In this case, the defendant’s patent was registered, first in the UK in 1978, citing the priority date to be August 30, 1978. It was subsequently re-registered in Malaysia under the old Registration of UK Patents Act 1951. The date of the registration of the patent in Malaysia being July 18, 1985. The plaintiff sought to argue that prior to the date of registration of the patent in Malaysia, they had manufactured the product that is the subject of the patent in good faith. By virtue of S38 of the Patents Act 1983, the plaintiff further argued that despite the grant of the subject patent, they had and continue to have the right to exploit the invention on the basis of prior use.
Abdul Aziz J found that S38 exceptions do not apply to patents that were granted prior to the 1983 Act. This is because the previous 1951 Act only deals with re-registration of UK patents and does not govern any prior use. Secondly, the phrase ‘the patent application’ in S38(1) covers only patent applications under the law 1983 Act (the new Malaysian Patent Act). The learned judge rightly pointed out that the phrase ‘priority date’ under S38 seems to point to the priority date of a patent application under the law 1983 Act. This is because the plaintiff sought to argue that for the purposes of prior use right, they quoted the date of registration in Malaysia as the priority date. With respect to obviousness, the priority date was August 30, 1978 when the patent was applied in the UK. As S38 deals with any potential prior use of a patented product or process prior to its application in Malaysia under the Act 1983 Act, the plaintiff had failed to prove that the 1983 Act governs them in any way[6] .
The essence of this right was rightly summed up by the learned judge, Abdul Aziz J, in that it covers good faith use of a product or a process which eventually is patented by someone else. On a comparative basis, this notion of ‘good faith prior use’ is similar to that of ‘honest concurrent user’ in trademark law [7].
1. Patents Act 1983
2. Ibid
3. [1978] 2 MLJ 251 at 255
4. [1918] AC 304 at 321
5. [2000] 4MLJ775 (HC)
6. Patent Law in Malaysia, Cases and commentary, Dr. Ida Madieha
7. Ibid
Clearer pictaure regarding “a prior use right” as one of the means of defense on a patent litigation in Malaysia. We have studied regarding prior use right based on your patent law article, but it is still difficult for us to find any detail information or practice about prior use in Malaysia.
1. Case law on prior use.
2. Interpretation of “prior use” under a patent law in Malaysia.
3. Textbook – if there is a fundamental textbook about patent system in English.
Answer 1
In answering the your enquiries regarding “a prior use right” as one of the defense on a patent litigation in our country. Prior use right is governed under S37(2)[1] which reads together with Section 38 (1)[2] where a person at the priority date of the patent application:-
(a) was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the product or using the process referred to in paragraph (a),
he shall have the right, despite the grant of the patent, to exploit the patented invention, provided that the product in question is made, or the process in question is used, by the said person in Malaysia and further provided that he can prove, if the invention was disclosed and his knowledge of the invention was not a result of such disclosure.
In section 38 (2), the provision reads that the right referred to in subsection (1) shall not be assigned or transmitted except as part of the business of the person concerned. This particular provision defined that to what extent the right conferred wherein the right may not be transferred except as part of the course of business.
Good faith is defined which includes due inquiry and implies not only an upright mental attitude but also clear conscience, and that ordinary prudence has been exercised according to the standard of a reasonable person as per Gopal & Anor V Awang Bin Mona[3].
Further, in the course of business is defined as something that is part of its activities. This can be referred to the case of Charles R Davidson & Co V M’Robb (or Officer)[4] , per Lord Dunedin.
Malaysian case that related to the above provision is Intercontinental Specialty Fats Sdn. Bhd. V Asahi Denka Kogyo KK [5]. According to this case as per Abdul Aziz J, the defendant were the proprietors of UK Patent GB 2028862B for an invention called ‘cacao butter substitute ‘.
In this case, the defendant’s patent was registered, first in the UK in 1978, citing the priority date to be August 30, 1978. It was subsequently re-registered in Malaysia under the old Registration of UK Patents Act 1951. The date of the registration of the patent in Malaysia being July 18, 1985. The plaintiff sought to argue that prior to the date of registration of the patent in Malaysia, they had manufactured the product that is the subject of the patent in good faith. By virtue of S38 of the Patents Act 1983, the plaintiff further argued that despite the grant of the subject patent, they had and continue to have the right to exploit the invention on the basis of prior use.
Abdul Aziz J found that S38 exceptions do not apply to patents that were granted prior to the 1983 Act. This is because the previous 1951 Act only deals with re-registration of UK patents and does not govern any prior use. Secondly, the phrase ‘the patent application’ in S38(1) covers only patent applications under the law 1983 Act (the new Malaysian Patent Act). The learned judge rightly pointed out that the phrase ‘priority date’ under S38 seems to point to the priority date of a patent application under the law 1983 Act. This is because the plaintiff sought to argue that for the purposes of prior use right, they quoted the date of registration in Malaysia as the priority date. With respect to obviousness, the priority date was August 30, 1978 when the patent was applied in the UK. As S38 deals with any potential prior use of a patented product or process prior to its application in Malaysia under the Act 1983 Act, the plaintiff had failed to prove that the 1983 Act governs them in any way[6] .
The essence of this right was rightly summed up by the learned judge, Abdul Aziz J, in that it covers good faith use of a product or a process which eventually is patented by someone else. On a comparative basis, this notion of ‘good faith prior use’ is similar to that of ‘honest concurrent user’ in trademark law [7].
1. Patents Act 1983
2. Ibid
3. [1978] 2 MLJ 251 at 255
4. [1918] AC 304 at 321
5. [2000] 4MLJ775 (HC)
6. Patent Law in Malaysia, Cases and commentary, Dr. Ida Madieha
7. Ibid
Monday
Patent Registration Enquiry
Question 1
Is it possible for An Australian Pty. Ltd. company to be the applicant for Malaysian patent?
Answer 1
Yes. However, it depends on the nationality of the inventor’s according to the laws in Australia, i.e. if the named inventor is Australian, then there might be a security clearance to file a first filing application outside Australia.
Question 2
If so, is the process the same or more demanding / onerous?
Answer 2
The process is the same.
Question 3
If so, is the likelihood of a Pty. Ltd. company being granted a Patent equally or less likely? i.e. : does it enhance our application if we use a Sdn. Bhd. Entity?
Answer 3
On paper, there is no preference given. However, in practice, a local entity is given priority for fast track/expedited prosecution to grant.
Is it possible for An Australian Pty. Ltd. company to be the applicant for Malaysian patent?
Answer 1
Yes. However, it depends on the nationality of the inventor’s according to the laws in Australia, i.e. if the named inventor is Australian, then there might be a security clearance to file a first filing application outside Australia.
Question 2
If so, is the process the same or more demanding / onerous?
Answer 2
The process is the same.
Question 3
If so, is the likelihood of a Pty. Ltd. company being granted a Patent equally or less likely? i.e. : does it enhance our application if we use a Sdn. Bhd. Entity?
Answer 3
On paper, there is no preference given. However, in practice, a local entity is given priority for fast track/expedited prosecution to grant.
PCT National Phase In Indonesia, Malaysia & Singapore (How PCT rule 17(c) is applied)
Question 1
I am writing to ask a question about the PCT National Phase in Indonesia, Malaysia and Singapore. In particular, I would appreciate it if you could answer a question about how PCT Rule 17(c) is applied in Indonesia, Malaysia and Singapore.
Assume the following facts: a year or more after entering the national phase in these three jurisdictions from an international application, but before examination, it is realized that there was an inadvertent failure to submit the priority document both in the international phase and upon entering the national phases. The claim of priority was however properly made on the “Request” in the international phase.
Does the applicant, after discovery of the inadvertent failure, have an opportunity under PCT Rule 17(c) in one or more of these jurisdictions to furnish the priority document within a time limit which is reasonable under the circumstances?
Or, is the priority claim irrevocably lost after expiration of some fixed time limit after the national phase commences set by rule or statute in the pertinent jurisdiction under PCT Rule 17(c)?
Answer 1
PCT Rule 17(c) states that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable. Therefore, according to the above rule, the claim of priority will not be automatically disregarded if the priority document was not submitted during the international phase and the national phase. Generally, upon entering the national phase in the respective countries, the national offices will conduct a formality examination to ensure that all the required documentation are correct and in good order before proceeding to prosecute the application further. However, if they found that the priority document was not submitted during the international phase, the national office will then notify the applicant of the missing priority document and allow the applicant time to furnish the outstanding document. If the applicant fail to submit the required document after the allowed time, only then will the priority claim be disregarded.
Please be advised that under the current Indonesian, Malaysian and Singapore Law, there is no requirement to submit the priority document at the time of entering a PCT application into national phase in the respective countries. The applicant is only required to provide the details of the priority date, the priority application number and the country of filing in order to claims the priority date of the priority application.
A certified copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the Registrar. If such a request is made by the Registrar, the said certified copy of the priority application must be submitted within two to three months from the date of the Registrar's request depending on jurisdiction.
We hope the above addressed your query.
I am writing to ask a question about the PCT National Phase in Indonesia, Malaysia and Singapore. In particular, I would appreciate it if you could answer a question about how PCT Rule 17(c) is applied in Indonesia, Malaysia and Singapore.
Assume the following facts: a year or more after entering the national phase in these three jurisdictions from an international application, but before examination, it is realized that there was an inadvertent failure to submit the priority document both in the international phase and upon entering the national phases. The claim of priority was however properly made on the “Request” in the international phase.
Does the applicant, after discovery of the inadvertent failure, have an opportunity under PCT Rule 17(c) in one or more of these jurisdictions to furnish the priority document within a time limit which is reasonable under the circumstances?
Or, is the priority claim irrevocably lost after expiration of some fixed time limit after the national phase commences set by rule or statute in the pertinent jurisdiction under PCT Rule 17(c)?
Answer 1
PCT Rule 17(c) states that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable. Therefore, according to the above rule, the claim of priority will not be automatically disregarded if the priority document was not submitted during the international phase and the national phase. Generally, upon entering the national phase in the respective countries, the national offices will conduct a formality examination to ensure that all the required documentation are correct and in good order before proceeding to prosecute the application further. However, if they found that the priority document was not submitted during the international phase, the national office will then notify the applicant of the missing priority document and allow the applicant time to furnish the outstanding document. If the applicant fail to submit the required document after the allowed time, only then will the priority claim be disregarded.
Please be advised that under the current Indonesian, Malaysian and Singapore Law, there is no requirement to submit the priority document at the time of entering a PCT application into national phase in the respective countries. The applicant is only required to provide the details of the priority date, the priority application number and the country of filing in order to claims the priority date of the priority application.
A certified copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the Registrar. If such a request is made by the Registrar, the said certified copy of the priority application must be submitted within two to three months from the date of the Registrar's request depending on jurisdiction.
We hope the above addressed your query.
Information And Documents Regarding Entry Into National Phase In India Of An International PCT Application
Question 1
When does a patent application enters into national phase of India as PCT? How does the national phase start?
Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.
The time limit for entering the National Phase
(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.
(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.
Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?
Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.
(1.) Basic requirements
Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:
(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;
(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.
(2.) Additional special requirements
Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:
a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.
When does a patent application enters into national phase of India as PCT? How does the national phase start?
Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.
The time limit for entering the National Phase
(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.
(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.
Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?
Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.
(1.) Basic requirements
Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:
(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;
(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.
(2.) Additional special requirements
Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:
a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.
Legalization Of Formal Documents For Patent Fillings In Malaysia
Question 1
Requirements regarding legalization of formal documents; i.e. priority documents, assignments and power of attorney? Are the requirements different for applications filed direct versus PCT national phase in Malaysia?
Answer 1
In Malaysia there is no requirement for legalization of any formal documents. This applies to both direct filings and PCT national phase filings.
However, in Malaysia, certified true copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the registrar.
If such a request is made by the registrar, the said certified copy of the priority application must be submitted within three months from the date of the Registrar's request.
Requirements regarding legalization of formal documents; i.e. priority documents, assignments and power of attorney? Are the requirements different for applications filed direct versus PCT national phase in Malaysia?
Answer 1
In Malaysia there is no requirement for legalization of any formal documents. This applies to both direct filings and PCT national phase filings.
However, in Malaysia, certified true copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the registrar.
If such a request is made by the registrar, the said certified copy of the priority application must be submitted within three months from the date of the Registrar's request.
Thursday
Patent Protection, Enforcement And Court System In Singapore
PROTECTION
Question 1
What is the term of protection of a patent in Singapore?
Answer 1
In Singapore, a patent life last for twenty (20) years counted from the date of filing. There is no Utility Model in Singapore.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Possible for patents with a filing date on or after 1 July 2004 if:
(a) Unreasonable delay by the SG patent office in granting the patent.
(b) Unreasonable delay by the foreign patent offices in granting a corresponding patent which the subject SG application is relying on, or
(c) Unreasonable delay in obtaining marketing approval for pharmaceutical products.
(Supplementary Protection Certificate)
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Singapore?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Springboard and post patent expiry injunction;
§ Interlocutory Injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Singapore?
Answer 3
Yes.
Question 4
Does Singapore’s patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed on a loss of profit basis. Any damages or account of profits or grant of other relief are also possible.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Singapore?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any recent cases of patent invalidation or patent infringement in Singapore?
Answer 1
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Other Suits [2005] SGHC 90.
The defences on lack of novelty and inventiveness were raised. The court reviewed the defendant devices and held it was infringing as they contain each and every element of the claims of the patent.
The court rejected the plaintiff's claim that there was a conspiracy to infringe the patent, as it held that a party would only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an understanding to carry out acts of infringement. The mere fact that the Israeli manufacturer gave indemnities to the Singaporean distributor was not sufficient for the court to infer that inducement had taken place to constitute acts of patent infringement, as the threshold of proving conspiracy is high.
On the claim of joint tortfeasorship against the defendants on grounds that the acts of infringement were carried out in "furtherance of a common design", the court held that two persons who agree on a common course of action and commit a tort would be joint tortfeasors. The court looked at the relationship of the parties especially the indemnity given by the manufacturer and held there was a common design to infringe the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Singapore?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom.
Question 5
How are foreigners treated by the courts in Singapore?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in Singapore?
Answer 7
A Notice of Appeal is filed within 14 days of the date of the decision.
Question 1
What is the term of protection of a patent in Singapore?
Answer 1
In Singapore, a patent life last for twenty (20) years counted from the date of filing. There is no Utility Model in Singapore.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Possible for patents with a filing date on or after 1 July 2004 if:
(a) Unreasonable delay by the SG patent office in granting the patent.
(b) Unreasonable delay by the foreign patent offices in granting a corresponding patent which the subject SG application is relying on, or
(c) Unreasonable delay in obtaining marketing approval for pharmaceutical products.
(Supplementary Protection Certificate)
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Singapore?
Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Springboard and post patent expiry injunction;
§ Interlocutory Injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an injunction.
Question 3
Are protective orders available in Singapore?
Answer 3
Yes.
Question 4
Does Singapore’s patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?
Answer 4
No.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.
Question 6
Is it possible to seek seizures / inspections of suspect goods?
Answer 6
Yes.
Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost
Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed on a loss of profit basis. Any damages or account of profits or grant of other relief are also possible.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Singapore?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any recent cases of patent invalidation or patent infringement in Singapore?
Answer 1
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Other Suits [2005] SGHC 90.
The defences on lack of novelty and inventiveness were raised. The court reviewed the defendant devices and held it was infringing as they contain each and every element of the claims of the patent.
The court rejected the plaintiff's claim that there was a conspiracy to infringe the patent, as it held that a party would only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an understanding to carry out acts of infringement. The mere fact that the Israeli manufacturer gave indemnities to the Singaporean distributor was not sufficient for the court to infer that inducement had taken place to constitute acts of patent infringement, as the threshold of proving conspiracy is high.
On the claim of joint tortfeasorship against the defendants on grounds that the acts of infringement were carried out in "furtherance of a common design", the court held that two persons who agree on a common course of action and commit a tort would be joint tortfeasors. The court looked at the relationship of the parties especially the indemnity given by the manufacturer and held there was a common design to infringe the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Singapore?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
No.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes, United Kingdom.
Question 5
How are foreigners treated by the courts in Singapore?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in Singapore?
Answer 7
A Notice of Appeal is filed within 14 days of the date of the decision.
Tuesday
Court System
Question 1
We understand that the National Office of Intellectual Property of Vietnam (NOIP) handles the invalidation procedures whereas Court handles the infringement cases. Please confirm if there was any change on this matter.
Answer 1
Please be advised that the NOIP is responsible for handling the invalidation petition.
In case of any disagreement with the Decision of the National Office of Industrial Property for an invalidation petition filed with the NOIP, the appellant shall have an option between filing an appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
In respect of the infringement cases, depending on the nature of the infringement, they may be handled under Administrative, Civil or Criminal Actions.
Courts are entitled to apply civil or criminal measures when handling the infringement cases while the Board of inspectorate in Science and Technology within the Ministry of Science and Technology and Department of the Ministry of Trade, Economic Police, Customs, and People committees are vested with the power to apply administrative measures.
Question 2
How efficient are the NOIP and courts in disposing IP litigation cases in Vietnam?
Answer 2
Only Courts are empowered to deal with all requests of the owner patent. However, court system is not efficient as there is no specialized court on IPRs, judges at Court are not so technically qualified and lacking of experience in industrial property cases, handling procedure is often extend beyond the prescribed time limit.
The handling made by the NOIP and other Administrative Authorities often takes place for a shorter time. In addition, the handling scope applies on a large scale, which is not restricted by the territory of each local and is consistent. Therefore it allows the patent owner to exploit tire patent effectively. However, these Authorities are limited to their empowerment. They have no empowerment but empowerment to handle cases under administrative measures. And they are not vested to determine any damages that a patent owner had to bear.
Question 3
Do the NOIP and courts rely on precedent cases decided in foreign countries?
Answer 3
No. The Vietnam law system is a written one and not rely on precedent cases.
Question 4
How are foreigners treated by the NOIP and court?
Answer 4
The foreigners are treated as Vietnamese nationals. In addition, they have rights to authorize 1P agencies and they are entitled to have their interpreters.
Question 5
What is the time frame for a patent invalidation/patent infringement suit to be decided in Vietnam?
Answer 5
Within 60-90 days form the date of receipt of the suit. However, in practice it can take much longer period of time, on the basis of case by case.
Question 6
How to appeal to a decision by the NOIP for patent invalidation and court for patent infringement?
Answer 6
In case of any disagreement with the Decision by the NOIP for a patent invalidation, the appellant shall have an option between a further appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
The appeal to MOST can be made within 30 days from the date of receipt of the notice of the decision of the NOIP. The Minister of MOST, based on proposal of the Inspection Board within the MOST, must issue a decision, within 45 to 60 days from receiving the appeal petition. The decision of the Minister is final.
In case the applicant decides to go to the Court, the competent Court shall be the People's Court (Administrative Court) of Hanoi, or Ho Chi Mini) City in case involved a foreign nationals, or local court having the local competence on the applicant. The Decision of the first instance Court shall be appealable to the People's Supreme Court. The Supreme Court's decision shall be final unless objected himself or by the Chairman of the People's Supreme Inspectorate. This procedure is also applied to appeal the decision of the court for patent infringement.
We understand that the National Office of Intellectual Property of Vietnam (NOIP) handles the invalidation procedures whereas Court handles the infringement cases. Please confirm if there was any change on this matter.
Answer 1
Please be advised that the NOIP is responsible for handling the invalidation petition.
In case of any disagreement with the Decision of the National Office of Industrial Property for an invalidation petition filed with the NOIP, the appellant shall have an option between filing an appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
In respect of the infringement cases, depending on the nature of the infringement, they may be handled under Administrative, Civil or Criminal Actions.
Courts are entitled to apply civil or criminal measures when handling the infringement cases while the Board of inspectorate in Science and Technology within the Ministry of Science and Technology and Department of the Ministry of Trade, Economic Police, Customs, and People committees are vested with the power to apply administrative measures.
Question 2
How efficient are the NOIP and courts in disposing IP litigation cases in Vietnam?
Answer 2
Only Courts are empowered to deal with all requests of the owner patent. However, court system is not efficient as there is no specialized court on IPRs, judges at Court are not so technically qualified and lacking of experience in industrial property cases, handling procedure is often extend beyond the prescribed time limit.
The handling made by the NOIP and other Administrative Authorities often takes place for a shorter time. In addition, the handling scope applies on a large scale, which is not restricted by the territory of each local and is consistent. Therefore it allows the patent owner to exploit tire patent effectively. However, these Authorities are limited to their empowerment. They have no empowerment but empowerment to handle cases under administrative measures. And they are not vested to determine any damages that a patent owner had to bear.
Question 3
Do the NOIP and courts rely on precedent cases decided in foreign countries?
Answer 3
No. The Vietnam law system is a written one and not rely on precedent cases.
Question 4
How are foreigners treated by the NOIP and court?
Answer 4
The foreigners are treated as Vietnamese nationals. In addition, they have rights to authorize 1P agencies and they are entitled to have their interpreters.
Question 5
What is the time frame for a patent invalidation/patent infringement suit to be decided in Vietnam?
Answer 5
Within 60-90 days form the date of receipt of the suit. However, in practice it can take much longer period of time, on the basis of case by case.
Question 6
How to appeal to a decision by the NOIP for patent invalidation and court for patent infringement?
Answer 6
In case of any disagreement with the Decision by the NOIP for a patent invalidation, the appellant shall have an option between a further appeal to the Minister of Science, Technology (MOST), or bring the case to the administrative court in according to the applicable law of procedure in administrative cases.
The appeal to MOST can be made within 30 days from the date of receipt of the notice of the decision of the NOIP. The Minister of MOST, based on proposal of the Inspection Board within the MOST, must issue a decision, within 45 to 60 days from receiving the appeal petition. The decision of the Minister is final.
In case the applicant decides to go to the Court, the competent Court shall be the People's Court (Administrative Court) of Hanoi, or Ho Chi Mini) City in case involved a foreign nationals, or local court having the local competence on the applicant. The Decision of the first instance Court shall be appealable to the People's Supreme Court. The Supreme Court's decision shall be final unless objected himself or by the Chairman of the People's Supreme Inspectorate. This procedure is also applied to appeal the decision of the court for patent infringement.
Patent Protection, Enforcement And Court System In Vietnam
PROTECTION
Question 1
What is the term of protection of a patent in Vietnam?
Answer 1
In Vietnam, a patent life last for twenty (20) years counted from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Vietnam?
Answer 1
§ Administrative Actions;
§ Civil Actions;
§ Criminal Actions; and
§ Border Control Measures.
Administrative Actions
Administrative authority has been vested with various authorities, from central to local government, among them the most effective are the Board of Inspectorate in Science and Technology within the Ministry of Science and Technology and Department of Science and Technology at province, also Market Management Department of the Ministry of Trade, Economic Police, Customs, Specialized Industrial Property Inspectorates, and People committees.
Civil Actions
If the patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.
Complaints are lodged with People's Court of the province; town or city with is directly responsible to the central government.
Where one of the parties to the action is a foreigner the case must be filed with the People's Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.
The foreign plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. It usually takes 6 months to 1 year for a case to come to trial. Decisions of the People's Court are generally issued and available within 15 days.
Decisions of the First instance Court may be appealed to the Appeal Court of the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.
Complaints must be submitted directly or through a local representative in the case of foreign entities.
Courts are empowered to issue a temporary and urgent order to stop the infringing activity pending determination at trial, provided the evidence in the complaint justifies such action.
Criminal Actions
A patent owner may make denunciation for the investigation, and if convicted criminal actions to be brought against an infringer pursuant to applicable provisions of the Criminal Code.
It is to be noted that firstly under the Criminal code of Vietnam only individuals are subject to criminal liability, that limits much of action when 1P infringement are made by legal entity, the personal responsibility in such activities should be established. 'I' Secondly the precondition for criminal offence is that the infringement causing serious consequence, or the infringer has previously been administratively punished, or has been already sentenced for the same crime but the criminal record has not been cleared. Factors that need badly explanation and to date are not given any further details guidance for the application.
Prosecution authority lies with: (1) the police who can investigate, seize goods and arrest infringers, and (2) the public prosecutorates who have, in addition to having the same powers as police, the authority to indict and prosecute infringers.
The police generally initiate investigations upon a patent owner's formal complaint.
The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.
If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.
Cases are brought before the People's Court of the district having jurisdiction over the place where the alleged infringement occurred. If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.
Decisions of the People's Court may be appealed to the upper court either the People's Court of Province or City or to the Appeal Court of the Supreme Court, the highest and final court.
The punishment can be very severe, ranging from 6 months to 3 years imprisonment for 1P infringement. If the counterfeit goods are foods, drugs, agriculture chemical products, up to IS to 20 years' imprisonment. In addition, a counterfeit can be liable to pay a monetary tine, forbidden from holding certain position, disqualified from certain profession, in a period up to 5 years.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
IP Enforcing Administrations and Courts are empowered to determine amount of the owner's loss and to grant a temporary and urgent measure to stop the infringing activity, the patent owner can request appropriate Enforcing authorities or initiate a law suit at the Court and request the Court carry out the relevant measure in order to overcome the consequence of the infringement.
Question 3
Are protective orders available in Vietnam? For example, does Vietnam's patent law require the patent owner to send a warning letter to an alleged infringer before a court action can be taken against him?
Answer 3
No. The patent owner has right (but not be obligated) to inform the infringer that he is the owner of the patent and request the infringer to stop the infringing activity.
Question 4
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 4
We wonder whether "a preliminary injunction" in this question means "a injunction/decision to grant a temporary and urgent measure. If yes, the answer of this question is "Yes". When or before initiating a lawsuit at the Court, the patent owner has right to request the court to grant temporary and urgent measures to stop the infringing activity. Such measures are Seizing Goods that infringe Industrial Property Rights, interdicting change the status, interdicting assign the property right, The person who made a such request is obligated to guarantee the payment of damages to such measure debtor in case of improper application of such provisional measure.
In urgent circumstances require protect evidences and prohibit a serious consequences that may be occurred, after receiving the request and evidences, within 48 hours as from the moment of receipt of the request, the judge in charge of the case must consider and issue a Decision of temporary and urgent measure. If the request is not accepted, the court must inform the requester by a written letter in which the reasons for unacceptance are given.
In other cases, the time limit for granting the above-mentioned decision is 3 days counted from the date of receiving the request if the person who made a such request must not perform guarantee measures or immediately after he perform guarantee measures.
Question 5
How long would a patent infringement/patent invalidation case take in Vietnam?
Answer 5
It varies upon case by case but it takes at least four to six months counted from the date of handling the ease. In practice, this term may extend 12-18 months.
Question 6
How are damages/royalties assessed?
Answer 6
Principles of determination of loss caused by IPR infringements:
- the loss caused to the holder of IPR by an infringement comprise both tangible and intangible loss: (i) Tangible losses comprise loss to property, decreased income and profits and reasonable costs for prevention and rectification of such loss, reasonable attorney fees and other, actual loss, loss of business opportunities, decrease in the business reputation and other intangible loss; (ii) Intangible loss comprise of loss to the dignity, honour, prestige and other intangible loss.
- the level of loss shall be determined on the basis of the actual losses incurred by the holder of IPRs due to the infringement upon such IPRs.
Bases for determination of losses caused by IPR infringements:
If the plaintiff succeeds in proving that an IPR infringement has caused tangible loss to him/her, lie/she shall have the right to ask the court to determine the level of damages on one of the following bases:
- the total tangible loss as determined in cash plus the profits gained by the IPR infringer if such profits have not yet been included in the total tangible loss;
- the value of transfer of the IPR subject matter with the assumption that the defendant has been transferred by the plaintiff the right to use that industrial property subject matter under a contract for using such industrial property subject matter to the extent equivalent to the act of infringement committed;
- in case it can not determine as above mentioned, the tangible loss is fixed by the court but not exceeding VND 500 million.
If the plaintiff succeeds in proving that such IPR infringement has caused intangible loss to him/her, he/she may request the court to determine an appropriate level of damages ranging from VND 5 million to VND 50 million depending on the level of loss.
In addition, the plaintiff may request the court to oblige the infringer pay the reasonable attorney fees.
Question 7
Can the alleged infringer sue for damages if the patent owner fails to proof infringement in court?
Answer 7
Yes. In case the alleged infringer succeeds in proving that the request for provisional measure is not well grounded and caused damages to him, the court will obligate the patent owner to pay of compensation for these damages.
In case the court decides that there is no infringing action, the alleged infringer may request the patent owner to pay of compensation for damages which are determined as in above answer (6).
Question 1
What is the term of protection of a patent in Vietnam?
Answer 1
In Vietnam, a patent life last for twenty (20) years counted from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Vietnam?
Answer 1
§ Administrative Actions;
§ Civil Actions;
§ Criminal Actions; and
§ Border Control Measures.
Administrative Actions
Administrative authority has been vested with various authorities, from central to local government, among them the most effective are the Board of Inspectorate in Science and Technology within the Ministry of Science and Technology and Department of Science and Technology at province, also Market Management Department of the Ministry of Trade, Economic Police, Customs, Specialized Industrial Property Inspectorates, and People committees.
Civil Actions
If the patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.
Complaints are lodged with People's Court of the province; town or city with is directly responsible to the central government.
Where one of the parties to the action is a foreigner the case must be filed with the People's Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.
The foreign plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. It usually takes 6 months to 1 year for a case to come to trial. Decisions of the People's Court are generally issued and available within 15 days.
Decisions of the First instance Court may be appealed to the Appeal Court of the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.
Complaints must be submitted directly or through a local representative in the case of foreign entities.
Courts are empowered to issue a temporary and urgent order to stop the infringing activity pending determination at trial, provided the evidence in the complaint justifies such action.
Criminal Actions
A patent owner may make denunciation for the investigation, and if convicted criminal actions to be brought against an infringer pursuant to applicable provisions of the Criminal Code.
It is to be noted that firstly under the Criminal code of Vietnam only individuals are subject to criminal liability, that limits much of action when 1P infringement are made by legal entity, the personal responsibility in such activities should be established. 'I' Secondly the precondition for criminal offence is that the infringement causing serious consequence, or the infringer has previously been administratively punished, or has been already sentenced for the same crime but the criminal record has not been cleared. Factors that need badly explanation and to date are not given any further details guidance for the application.
Prosecution authority lies with: (1) the police who can investigate, seize goods and arrest infringers, and (2) the public prosecutorates who have, in addition to having the same powers as police, the authority to indict and prosecute infringers.
The police generally initiate investigations upon a patent owner's formal complaint.
The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.
If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.
Cases are brought before the People's Court of the district having jurisdiction over the place where the alleged infringement occurred. If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.
Decisions of the People's Court may be appealed to the upper court either the People's Court of Province or City or to the Appeal Court of the Supreme Court, the highest and final court.
The punishment can be very severe, ranging from 6 months to 3 years imprisonment for 1P infringement. If the counterfeit goods are foods, drugs, agriculture chemical products, up to IS to 20 years' imprisonment. In addition, a counterfeit can be liable to pay a monetary tine, forbidden from holding certain position, disqualified from certain profession, in a period up to 5 years.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
IP Enforcing Administrations and Courts are empowered to determine amount of the owner's loss and to grant a temporary and urgent measure to stop the infringing activity, the patent owner can request appropriate Enforcing authorities or initiate a law suit at the Court and request the Court carry out the relevant measure in order to overcome the consequence of the infringement.
Question 3
Are protective orders available in Vietnam? For example, does Vietnam's patent law require the patent owner to send a warning letter to an alleged infringer before a court action can be taken against him?
Answer 3
No. The patent owner has right (but not be obligated) to inform the infringer that he is the owner of the patent and request the infringer to stop the infringing activity.
Question 4
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 4
We wonder whether "a preliminary injunction" in this question means "a injunction/decision to grant a temporary and urgent measure. If yes, the answer of this question is "Yes". When or before initiating a lawsuit at the Court, the patent owner has right to request the court to grant temporary and urgent measures to stop the infringing activity. Such measures are Seizing Goods that infringe Industrial Property Rights, interdicting change the status, interdicting assign the property right, The person who made a such request is obligated to guarantee the payment of damages to such measure debtor in case of improper application of such provisional measure.
In urgent circumstances require protect evidences and prohibit a serious consequences that may be occurred, after receiving the request and evidences, within 48 hours as from the moment of receipt of the request, the judge in charge of the case must consider and issue a Decision of temporary and urgent measure. If the request is not accepted, the court must inform the requester by a written letter in which the reasons for unacceptance are given.
In other cases, the time limit for granting the above-mentioned decision is 3 days counted from the date of receiving the request if the person who made a such request must not perform guarantee measures or immediately after he perform guarantee measures.
Question 5
How long would a patent infringement/patent invalidation case take in Vietnam?
Answer 5
It varies upon case by case but it takes at least four to six months counted from the date of handling the ease. In practice, this term may extend 12-18 months.
Question 6
How are damages/royalties assessed?
Answer 6
Principles of determination of loss caused by IPR infringements:
- the loss caused to the holder of IPR by an infringement comprise both tangible and intangible loss: (i) Tangible losses comprise loss to property, decreased income and profits and reasonable costs for prevention and rectification of such loss, reasonable attorney fees and other, actual loss, loss of business opportunities, decrease in the business reputation and other intangible loss; (ii) Intangible loss comprise of loss to the dignity, honour, prestige and other intangible loss.
- the level of loss shall be determined on the basis of the actual losses incurred by the holder of IPRs due to the infringement upon such IPRs.
Bases for determination of losses caused by IPR infringements:
If the plaintiff succeeds in proving that an IPR infringement has caused tangible loss to him/her, lie/she shall have the right to ask the court to determine the level of damages on one of the following bases:
- the total tangible loss as determined in cash plus the profits gained by the IPR infringer if such profits have not yet been included in the total tangible loss;
- the value of transfer of the IPR subject matter with the assumption that the defendant has been transferred by the plaintiff the right to use that industrial property subject matter under a contract for using such industrial property subject matter to the extent equivalent to the act of infringement committed;
- in case it can not determine as above mentioned, the tangible loss is fixed by the court but not exceeding VND 500 million.
If the plaintiff succeeds in proving that such IPR infringement has caused intangible loss to him/her, he/she may request the court to determine an appropriate level of damages ranging from VND 5 million to VND 50 million depending on the level of loss.
In addition, the plaintiff may request the court to oblige the infringer pay the reasonable attorney fees.
Question 7
Can the alleged infringer sue for damages if the patent owner fails to proof infringement in court?
Answer 7
Yes. In case the alleged infringer succeeds in proving that the request for provisional measure is not well grounded and caused damages to him, the court will obligate the patent owner to pay of compensation for these damages.
In case the court decides that there is no infringing action, the alleged infringer may request the patent owner to pay of compensation for damages which are determined as in above answer (6).
Friday
General Enquiry On Possible New Litigation Matter In Thailand
Question 1
What are the possible remedies available in Thai Litigation?
Answer 1
The possible remedies and to apply for an urgent hearing for injunction relief, and to file the plaint against the other party, claiming for damages.
To request for an urgent injunction from the court, we must file the plaint against the other party, simultaneously.
Question 2
If injunctive relief is one of the remedies, how quickly can it be obtained and does client have to testify in person in Thailand?
Answer 2
It will take 2-3 weeks to prepare a plaint for filing at the court, as well as filing a petition demanding for an injunction.
If the judge believes that it is an urgent matter, then the judge will allow to have a hearing for an injunction on the same day that we file the case. Then the judge will issue a Court Order on that day, or the following day.
On the other hand, if the judge thinks that it not an urgent matter, then the judge will fix the day to have a hearing for the injunction which may take one or two months, even more, depending on the case schedule of the Court.
It would be better if the client is able to testify during the hearing for injunction by himself, otherwise the legal agent or representative of the client would have to testify instead.
Question 3
What are the governing Laws for such matter?
Answer 3
The Copyright Law, the Law of Contract, and the Law concerning business transaction on electronics, etc.
Question 4
What is its estimated duration?
Answer 4
For the injunction, if the judge grants an urgent injunction, it will take a few days after filing the case.
If the judge does not grant an urgent injunction, but only the normal injunction, it will take a few months or even longer.
For the process of the litigation, it may take a year and or even slightly longer.
Question 5
Is there any expedited process of obtaining judgment in Thailand, (like the summary judgment in Singapore, which is granted without trial, if the Court believes that there is no triable issue and therefore, there is no defence)?
Answer 5
There is a process for the summary judgment in Thailand. However, it is not easy to request and get a summary judgment.
Question 6
If he plaintiff is a foreign company, does it have to furnish security for costs of the defendant, and if so, what is the form and quantum of such security?
Answer 6
It is not compulsory for a foreign plaintiff to furnish security under Thai Law.
Nevertheless, the defendant has a right to submit a petition to the judge demanding the foreign plaintiff to furnish security.
The amount of security depends on the discretion of the judge, which will be influenced by the amount of claim.
The security would be in cash, which is deposited to the Court.
What are the possible remedies available in Thai Litigation?
Answer 1
The possible remedies and to apply for an urgent hearing for injunction relief, and to file the plaint against the other party, claiming for damages.
To request for an urgent injunction from the court, we must file the plaint against the other party, simultaneously.
Question 2
If injunctive relief is one of the remedies, how quickly can it be obtained and does client have to testify in person in Thailand?
Answer 2
It will take 2-3 weeks to prepare a plaint for filing at the court, as well as filing a petition demanding for an injunction.
If the judge believes that it is an urgent matter, then the judge will allow to have a hearing for an injunction on the same day that we file the case. Then the judge will issue a Court Order on that day, or the following day.
On the other hand, if the judge thinks that it not an urgent matter, then the judge will fix the day to have a hearing for the injunction which may take one or two months, even more, depending on the case schedule of the Court.
It would be better if the client is able to testify during the hearing for injunction by himself, otherwise the legal agent or representative of the client would have to testify instead.
Question 3
What are the governing Laws for such matter?
Answer 3
The Copyright Law, the Law of Contract, and the Law concerning business transaction on electronics, etc.
Question 4
What is its estimated duration?
Answer 4
For the injunction, if the judge grants an urgent injunction, it will take a few days after filing the case.
If the judge does not grant an urgent injunction, but only the normal injunction, it will take a few months or even longer.
For the process of the litigation, it may take a year and or even slightly longer.
Question 5
Is there any expedited process of obtaining judgment in Thailand, (like the summary judgment in Singapore, which is granted without trial, if the Court believes that there is no triable issue and therefore, there is no defence)?
Answer 5
There is a process for the summary judgment in Thailand. However, it is not easy to request and get a summary judgment.
Question 6
If he plaintiff is a foreign company, does it have to furnish security for costs of the defendant, and if so, what is the form and quantum of such security?
Answer 6
It is not compulsory for a foreign plaintiff to furnish security under Thai Law.
Nevertheless, the defendant has a right to submit a petition to the judge demanding the foreign plaintiff to furnish security.
The amount of security depends on the discretion of the judge, which will be influenced by the amount of claim.
The security would be in cash, which is deposited to the Court.
Wednesday
Inventor's Rights
Question 1
If an employee of a company in India makes an invention, do the rights in the invention automatically belong to the employer? Does the employer have to pay an “inventor compensation” to the inventor (as in Germany)?
Answer 1
In India, derivation of title has to be based on a contract between the inventor and the employer company. Typically, the title on the invention is derived through the employment contract or a deed of assignment. The employment contract must specify that the title of the invention developed during the “course of employment” is transferred to the employer. No separate consideration is required. The employer does not have to pay an “inventor compensation” separately.
If an employee of a company in India makes an invention, do the rights in the invention automatically belong to the employer? Does the employer have to pay an “inventor compensation” to the inventor (as in Germany)?
Answer 1
In India, derivation of title has to be based on a contract between the inventor and the employer company. Typically, the title on the invention is derived through the employment contract or a deed of assignment. The employment contract must specify that the title of the invention developed during the “course of employment” is transferred to the employer. No separate consideration is required. The employer does not have to pay an “inventor compensation” separately.
Freedom To Operate (FTO)
Question 1
How can a potential product be cleared of patent landmines?
Answer 1
Patent landmines can be cleared by a Freedom to Operate (FTO) report. FTO begin first by conducting a search of patent literature for issued or pending patents and obtaining a legal opinion on whether the product, process or services may be considered to be infringing an existing patent. This can be done trough companies that offer FTO analyses.
Question 2
What are the limitations of patents?
Answer 2
The Limitation in a patent may arise when the patent protected are:
1. Territorial - Certain companies limit their protection according to their business strategies. Therefore, if the concerned is not covered by the patent, there is FTO.
2. Limited by duration - The maximum period of 20 years are given for protection.
After the expiry of the term, the patent is considered to be in the public domain and maybe used freely by any one.
3. Limited scope - The most important part of the patented document is the claim which determines the scope of the patent and all the aspects of an invention. Aspects that are not covered by the claims are not considered to be patented.
If there are one or more patents that would limit the FTO, the company has to rely on other common strategies to obtain the FTO, such as:
1. Purchasing the Patent or In-licensing
This has to be done by obtaining a written authorization from the patent holder to use the patented technology for specified act, market or period of time. The agreement would largely rely on the terms and conditions.
2. Cross – Licensing
This is done when 2 companies exchange licenses. However, this requires confidence in both companies and needs a well protected patent portfolio that is of value to the potential licensing partners.
3. Inventing Around
An alternative way, is to invent around the inventions by making changes to the product or processes in order to avoid infringing on the patents owned by others. The FTO operates around the processed patents and are limited by it. Therefore, it is possible to derive an end product which is of the same or similar result without infringing or arising the need to pay licensing fee to the owner.
4. Patent Pools
This usually involves 2 or more companies practicing the related technology, whereby, the put their patents into a pool to establish a clearing access for patent rights. These are normally used by companies for inventions that are essential to comply with the certain standard specification.
Question 3
How is a Freedom to operate derived from patent protection?
Answer 3
The new product can be patentable if there are no patents blocking the access to the market. Instead of keep the new technology as a secret, it is well of protected by the patent to ensure a greater degree of freedom to operate. The patent will provide the company with the exclusive rights over the new technology which would ensure that nobody else can use it without prior authorization. No one else will be able to obtain exclusive rights over the technology in the future.
There is a limit on the extent which a patent owner has the freedom to operate or use such patented invention. It does not provide the right to commercialize the protected technology but only the right to exclude all others from commercializing it.
There maybe be overlapping or complementary patents owned by different parties that are mutually blocking the access to the market. In addition there may be government regulations that are not directly concerned with the intellectual property that may restrict the access to market of a patented invention. Despite this, it is important to stress that "freedom to operate" is one of the reasons why a number of companies apply for patent protection.
Question 4
What are the benefits of a FTO?
Answer 4
All the steps are taken with the priority to minimize facing any potential risk and expensive litigation. All companies are well - advised to look into the matter earlier during the research and commercialization process. Discovering the FTO prior to the launching a new product is, therefore, a way of minimizing but not eliminating the risk of your product infringing the patents owned by others.
It is important to point out that a certain degree of certainty to the "freedom to operate" will not be attainable. A good patent search may provide a company with some indication that a new product is unlikely to infringe other patents, but no patent search is perfect or full proof. There is a practical limit to the time and money that can be spent on a search.
How can a potential product be cleared of patent landmines?
Answer 1
Patent landmines can be cleared by a Freedom to Operate (FTO) report. FTO begin first by conducting a search of patent literature for issued or pending patents and obtaining a legal opinion on whether the product, process or services may be considered to be infringing an existing patent. This can be done trough companies that offer FTO analyses.
Question 2
What are the limitations of patents?
Answer 2
The Limitation in a patent may arise when the patent protected are:
1. Territorial - Certain companies limit their protection according to their business strategies. Therefore, if the concerned is not covered by the patent, there is FTO.
2. Limited by duration - The maximum period of 20 years are given for protection.
After the expiry of the term, the patent is considered to be in the public domain and maybe used freely by any one.
3. Limited scope - The most important part of the patented document is the claim which determines the scope of the patent and all the aspects of an invention. Aspects that are not covered by the claims are not considered to be patented.
If there are one or more patents that would limit the FTO, the company has to rely on other common strategies to obtain the FTO, such as:
1. Purchasing the Patent or In-licensing
This has to be done by obtaining a written authorization from the patent holder to use the patented technology for specified act, market or period of time. The agreement would largely rely on the terms and conditions.
2. Cross – Licensing
This is done when 2 companies exchange licenses. However, this requires confidence in both companies and needs a well protected patent portfolio that is of value to the potential licensing partners.
3. Inventing Around
An alternative way, is to invent around the inventions by making changes to the product or processes in order to avoid infringing on the patents owned by others. The FTO operates around the processed patents and are limited by it. Therefore, it is possible to derive an end product which is of the same or similar result without infringing or arising the need to pay licensing fee to the owner.
4. Patent Pools
This usually involves 2 or more companies practicing the related technology, whereby, the put their patents into a pool to establish a clearing access for patent rights. These are normally used by companies for inventions that are essential to comply with the certain standard specification.
Question 3
How is a Freedom to operate derived from patent protection?
Answer 3
The new product can be patentable if there are no patents blocking the access to the market. Instead of keep the new technology as a secret, it is well of protected by the patent to ensure a greater degree of freedom to operate. The patent will provide the company with the exclusive rights over the new technology which would ensure that nobody else can use it without prior authorization. No one else will be able to obtain exclusive rights over the technology in the future.
There is a limit on the extent which a patent owner has the freedom to operate or use such patented invention. It does not provide the right to commercialize the protected technology but only the right to exclude all others from commercializing it.
There maybe be overlapping or complementary patents owned by different parties that are mutually blocking the access to the market. In addition there may be government regulations that are not directly concerned with the intellectual property that may restrict the access to market of a patented invention. Despite this, it is important to stress that "freedom to operate" is one of the reasons why a number of companies apply for patent protection.
Question 4
What are the benefits of a FTO?
Answer 4
All the steps are taken with the priority to minimize facing any potential risk and expensive litigation. All companies are well - advised to look into the matter earlier during the research and commercialization process. Discovering the FTO prior to the launching a new product is, therefore, a way of minimizing but not eliminating the risk of your product infringing the patents owned by others.
It is important to point out that a certain degree of certainty to the "freedom to operate" will not be attainable. A good patent search may provide a company with some indication that a new product is unlikely to infringe other patents, but no patent search is perfect or full proof. There is a practical limit to the time and money that can be spent on a search.
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