Wednesday

Design with several embodiments

Question 4
We note that when we file Malaysian designs, each embodiment is given a separate application number which are non-sequential. For example, a case that was just filed with two embodiments received the application numbers 09-00408-0102 and 09-00409-0202. Would separate payments be required for these two numbers?

Answer 4
Multiple applications refers to two or more industrial designs (IDs) which may be the subject of the same application provided that they relate to the same class of the International Classification for Industrial Designs or to the same set or composition of articles.

The single multiple application which incorporates two or more embodiments as filed at the Intellectual Property Corporation of Malaysia (MyIPO) will be given an application number each to identify the individual design. Figure 1.0 provides a brief explanation on the application numbers allocated for the said designs.
It is correct that separate payment is required for each design wherein the official fee of the second design of a multiple application would be half the amount of the total fee of the first design.
i.e. Malaysia-Industrial Design No. 09-00408-0102 and Malaysia-Industrial Design No. 09-00409-0202

We hope that we have furnished you with sufficient information.

Registration of the Right of Pledge

Question 3
We would like to have the information (fee and basic info.) on filing the registration of the right of pledge on patents in Malaysia and Singapore.

Answer 3
In Malaysia the right of pledge may be incorporated in a contract agreement. However, we confirm that there is no way to register/file the said right of pledge with the Intellectual Property Corporation of Malaysia (MyIPO).
In Singapore, there is a procedure to register/file the right of pledge with the Intellectual Property Office of Singapore (IPOS). This includes drafting the pledge document in English, registering the document/transaction with IPOS and paying a prescribed registration fee at IPOS.

Responding to the written opinion or the International Preliminary Examination Report issued by the EPO

Question 2
Once the changes of the Implementing Regulations of the European Patent Convention comes into force on 1st April 2010, will it be mandatory to respond to the written opinion or the International Preliminary Examination Report issued by the EPO as the ISA upon entry into the European phase of a PCT application?

Answer 2
According to new Rule 161 EPC, for which the EPO acted as ISA (International Search Authority) or IPEA (“International Preliminary Examination Authority”), the EPO shall invite the applicant to respond within a period of one month from the date of the respective communication. The legal consequence of the failure to respond within the time limit is that the application shall be deemed to be withdrawn. This new rule will apply to European patent applications for which the ESR (“European Search Report”) or SESR (“Supplementary European Search Report”) is drawn up on or after 1 April 2010.
We recommend that a response to the written opinion or IPER issued by the EPO on or after 1 April 2010 should be considered prior to entry into the European regional phase, due to the very short time period available (i.e., one month) once the communication under Rule 161 is issued.

New time limit for filing divisional application(s) at the EPO

Question 1
What is the new time limit for filing divisional application(s) at the EPO once the changes of the Implementing Regulations of the European Patent Convention comes into force on 1st April 2010?

Answer 1
Beginning 1st April 2010, divisional application(s) on the applicant’s own initiative (so-called voluntary divisional applications) will need to be filled at the EPO within a period of 24 months from the first communication issued by the EPO examining division in respect of the parent (i.e. previous) or an even earlier (in case of “chain” of applications) application (Rule 36 (1)(a) EPC).
Divisional application(s) filed as reaction to a non-unity objection (so-called mandatory divisional applications) will also have to be filed at the EPO within 24 months from the communication in which the relevant objection is raised by the examining division for the first time (Rule 36 (1)(b) EPC). If the deadline is missed, no further processing is available, only re-establishment of right is possible if the applicant has valid grounds.
The rule for the new time limit for divisional applications filed at the EPO will enter in force on 1 April 2010. Therefore the time line will apply to divisional applications filed on or after that date. If the time limits provided for in amended Rule 36(1) EPC have expired before 1 April 2010, a divisional application may still be filed within six months of that date (i.e., 1 April 2010). If the time limits are still running on 1 April 2010, they will continue to do so for not less than six months.
If you have pending application on 1st April 2010 and the first communication by the EPO examining division was issued before 1st October 2008, you must make a decision before 1st October 2010 whether divisional(s) of that application should be filed. If you have pending application on 1st April 2010 and the first communication by the EPO examining division was issued on or after 1st October 2008, you must make a decision within 24 months from the first communication of the parent application whether divisional(s) of that application should be filed.

Monday

Regulations Concerning The Prescribed Period To File Request For Substantive Examination

Question 4
Clarify the time limit to file the request for substantive examination.
My own database calculates the said deadline as 11/07/2009. This date is correct when referring to the Section 27 of the Malaysian Patents Act - request for substantive examination that can be found within CLEA at the WIPO website.
According to the document: *Advice to applicants - time periods/ Request for examination, the Request for Examination should be filed within 4 years from the international filing date of the application that is 11/07/2007.
We obviously have to update the Malaysian patent law into our database to have this deadline correctly calculated.
Then could you please send us the specific details concerning the modification of Section 27 (i.e. Official date of the amendment, quotation, copy of the official text)?

Answer 4
Under the Malaysian PCT rules, in national phase entry for applications entering the national phase the request for substantive examination is 4 years from the international filing date of the application. In this case it will be 11th July 2011.

Yes, you need to update the Malaysian Patent Law in your database. Please note that that Malaysian Patents Act has been amended on 16th August 2006.
Currently there are 2 ways to enter a Patent in force in Malaysia that is (1) the PCT Route and (2) Paris Convention Route.

The modification to Section 27 is only to take into account Malaysia's PCT national phase entry. The most significant amendments is that the term of deferment for applications filed on or after 16th August 2006 will be 5 years from the filing date.

Under the old law, for cases which have their examination deferred, the request for full substantive examination must be filed within 3 years from the date of filing whereas for modified substantive examination must be filed within 4 years. Under the new law, there is no such provision. Therefore the request for full or modified substantive examination can be filed at any time until the 5th year.

However, the request for full or modified substantive examination or the request to defer examination must be filed within 2 years from the filing date.

Quality

Question 3

3.1
What is a good quality patent?

3.2
Is a patent that is of good quality in one country also of good quality in another country by default?

3.3
What should be the characteristics of a good quality patent universally - "base good quality"?

3.4
What are some of the jurisdiction specific characteristics that would make a patent less or more valuable in your jurisdiction?


Answer 3

3.1
A quality of a patent can be measured qualitatively and quantitatively. The qualitative measures comprises 3 parts:
(i) Satisfy the legislations of a country/jurisdiction in the aspect of patentability, novelty, inventiveness, and enablement of the invention.
(ii) validity and scope of the claims.
(iii) commercial viability of the claimed invention.

The quantitative measures comprises 2 parts:
(i) citations by other applications/patents as prior art.
(ii) the measure of proportion of a patent being high-impact, i.e. in the top 5% of most highly cited patents.

3.2
No, as the measure of quality is dependent on the legislations of a country/jurisdiction and the scope of the claims of the granted patents in a particular country/jurisdiction.

3.3
A good quality patent is a patent, which has the broadest possible coverage possible without attracting invalidity.

3.4
In Malaysia, due to the fact that patent application can be filed and enforced in English without the need for translation (reducing translation errors), due to its large and growing population and due to the effective mechanism for enforcement of patents with the establishment of the IP Courts, the patents filed in Malaysia can be considered to be more valuable as compared to other countries.

Internet Services & Software

Question 2

2.1
What types of internet services related inventions should we protect?

2.2
How do we protect internet services/software related inventions in your jurisdiction?

2.3
Do we need special claims for internet services related inventions in your jurisdiction?

2.4
What effect do cases like In re Bilski and In re Comiskey have, if any, on internet services/software related patents?

2.5
Why are traditional "method" claims not sufficient? Or are they?

2.6
Who infringes a services related patent?

2.7
How do we protect new revenue generation concepts, for example internet services where the revenue comes from advertising?


Answer 2

2.1, 2.2, 2.3 & 2.7
Pure business methods, rules and schemes are not patentable in Malaysia. However, the practice here has been such that claims are drafted to cover technical features of the particular invention that relates to pure business methods, rules and schemes. Although there is no clear regulation that prohibits patentability of Internet services, again the claims must be drafted to cover technical features of said Internet service invention. With regards to the coding of the written software, copyright protection maybe sought.

2.4
In re Bilski is related to a method of managing the risk of bad weather through commodities trading whereas In re Comiskey is related to method and system for mandatory arbitration involving legal documents. As theses cases pertained to pure business methods patents, the cases will not be relevant in Malaysia as these patents are statutorily prohibited and have no persuasive effect in Malaysia being US cases.

2.5
Method claims are sufficient so long as the same are drafted to cover technical features of the particular invention to protect Internet services and software related inventions.

2.6
As Malaysia does not have provision for business method patents, the closest we have to a services related p process patents. The infringement will be as stated in 1.5 above.

Direct Infringement

Question 1

1.1
What is the meaning of direct infringement in your jurisdiction?
One definition : Infringement of all claim elements by a single actor results in direct infringement of that claim, for example, a) for a method claim, all steps are performed by the same entity; and, b) for an apparatus claim, all claim elements are part of a single product.

1.2
How should we draft claim that would be useful for direct infringement in your jurisdiction?

1.3
If a claim is directed towards two components and company A makes both components, is company A liable for direct infringement in your jurisdiction?

1.4
Do all claim steps have to be performed in the same country/jurisdiction for there to be direct infringement? If yes, then how should claims be drafted to get around issues of extra-territoriality?

1.5 Is indirect infringement as good as direct infringement in your jurisdiction? How likely are courts to hold a company liable for indirect infringement in your jurisdiction?


Answer 1

1.1
a) For a method or process claim, direct infringement in Malaysia is where every step in a particular independent claim has to be fulfilled if there is to be direct infringement. If it is dependent claim, every step in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement.
b) For an apparatus or product claim, direct infringement in Malaysia is where every element in a particular independent claim has to be fulfilled if there is to be direct infringement. If it is a dependent claim, every element in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement.

1.2
To draft claims that will be useful for direct infringement in Malaysia, independent claims should be drafted such that each independent claim comprises fewer elements/steps involved in a particular invention.
Corresponding dependents claims will have to be drafted to cover various embodiments of the said invention. However, it has to be noted that if fewer elements/steps per claim are drafted, care has to be taken to see that there is unity of invention.

1.3
If none of the individual components in them self are within the scope of the claim, the short answer is NO because each components has to be compared against the claim to see whether it is infringing.
However, in the event that company A assembles both components, imports, offers for sale, sells or uses or stocks for the those purposes the components as one complete product, then company A is liable for direct infringement.


1.4
As this pertains to a method or process patent, the short answer is NO. As the Patent Act provides that a product obtained directly by means of the process is infringing.
Therefore, even if part of the process, (i.e. some of the steps) is performed in another country/jurisdiction, there will be infringement if the said product is “imported, offered for sale, sold used or stocked for those purposes” in Malaysia.

1.5
The principle of indirect infringement is available in the United Kingdom by virtue of section 60 (2) of the 1977 Act that states "without the consent of the proprietor, a person supplies or offers to supply in the UK, a person other than the licensee or other person entitled to work the invention with any of the means relating to an essential element of the invention for putting the invention into effect when he knows or it is obvious to a reasonable person in the circumstances that those means are suitable for putting and are intended to put the invention into the UK".
However, there is no such provision available in Malaysia with regards to indirect infringement. In Malaysia, infringement with regards to a patent that has been granted for a product pertains to making, importing, offering for sale, selling or using or stocking for the purpose of offering for sale, selling or using the product and infringement with regards to a patent that has been granted for a process pertains to using the process or making, importing, offering for sale, selling or using a product obtained directly by means of the process (product-by-the-process or method).

Requesting Examination and Extension of time in Malaysia

Question 5
Please kindly explain the term and under what situation(s) would an applicant file a request for modified substantive examination.

Answer 5
Term:
For a direct Malaysian application: 24 months from the filing date or 60 months form the filing date if a deferment is filed
For a PCT National Phase Malaysian application: 48 months from the international filing date or 60 months form the international filing date if a deferment is filed

Situation:
If a patent has been granted to the applicant in a Patent Office in any one of the prescribed countries (prescribed country being United States, Europe, United Kingdom, Australia, Japan or Republic of Korea), the applicant may, instead of requesting for a substantive examination, request for a modified substantive examination.

Question 6
Please kindly explain the term and under what situation(s) would an applicant need to file a deferment of examination.

Answer 6
Term:
For a direct Malaysian application: 24 months from the filing date
For a PCT National Phase Malaysian application: 48 months from the international filing date

Situation:
An applicant may file for a deferment of the examination if
(a) a patent in a prescribed country has not been granted or is not available, or
(b) the information or documents below are not available:
(i) any prescribed information concerning the filing of any application filed outside Malaysia
(ii) any prescribed information concerning the results of any search or examination carried out by an International Search Authority under the PCT

Question 7
Please kindly explain the term and under what situation(s) would an applicant need to file a request for an extension of time.

Answer 7
Term & Situation:

Normally, extension of time is requested by an applicant to respond to an adverse examination report. The applicant may apply for an extension of time only once and the maximum allowed extension of time is 9 months.

Please note that extension of time is not allowed for:
(i) the right of claiming priority, wherein the Malaysian application has to be filed within 12 months of the foreign application to claim priority of the same.
(ii) the deferment period, wherein upon filing for a deferment, the applicant is required to file either substantive or modified substantive examination within 60 months form the filing date.

Reinstatement of a national phase application in Malaysia

Question 8
We have a client that has missed the 30-month deadline for entering the national phase in Malaysia for two applications. The deadline was May 2, 2008 for both applications. Is there anyway possible to file a late entry in Malaysia?

Answer 8
The answer is: Yes, it is possible to reinstate a time lapsed application.

The Procedure for Reinstatement:

Section 780(a) of the Act deals with reinstatement as follows:
An applicant of a PCT application designating Malaysia must before the expiration of 30 months from the priority date submit to the Malaysian Registry a copy of the international application in English and pay the prescribed fee, failing which the international application will be considered withdrawn for the purposes of the Malaysian Patents Act. Once deemed withdrawn, the international application may only be reinstated where:
1. the applicant has made a request in writing to the Malaysian Registry by paying
a)the prescribed fee which is the standard application fee, and submitting a copy of the international application in English
b)a written statement specifying the reasons for failure to comply with national entry requirements
c)a supporting declaration or other evidence;
2. said request was made within 2 months from the date of removal of the cause of the failure to meet the 30-months deadline, or within 12 months from the expiration of said deadline, whichever expires earlier; and
3. the Malaysian Registry is satisfied that the failure was unintentional.
4. payment of the prescribed fees in addition for late filing.

Claiming priority of US provisional application and PCT application in a Malaysian application

Question 1
Our client would like to know whether it is possible to obtain patent protection in Malaysia for invention X under the following facts:
• April 2005 - US provisional application filed on invention X
• April 2006 - US utility application filed on invention X (claiming priority to provisional application of invention X)
• April 2006 - PCT application filed on invention X (claiming priority to provisional application of invention X)
• September 2006 - US provisional application filed on invention X+Y (not claiming priority to invention X, but disclosing invention X entirely)
• October 2006 - publication of application for invention X
• September 2007 - US utility application filed on invention X +Y (claiming priority to provisional application of invention X + Y)
• September 2007 - PCT application filed on invention X + Y (claiming priority to provisional application of invention X + Y)

I am hoping that we may be able to add claims to invention X in the application of X + Y, as it fully supports X. However, I am concerned that the previous applications for invention X, which did not enter the national stage in Malaysia could be a problem.

Does it matter that there was no publication of invention X prior to the filing of an application on X + Y?

Answer 1
Based on the Malaysian Patents Act, prior art consist of:
(a) everything disclosed to the public worldwide by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application
(b) the contents of a Malaysian patent application having an earlier priority date that the patent application referred to in (a), to the extent that such contents are included in the patent granted on the basis of the Malaysian patent application.

Since the priority application of invention X+Y was filed in Sept 2006, which is prior to invention X being published in October 2006, invention X will not be considered to defeat novelty of invention X+Y.

Question 2
Does Malaysia allow claim amendment after entry into the national stage?

Answer 2
Yes. However, the amendments made to the claims should not go beyond the disclosure as originally filled, since Malaysia has no provision of adding subject matter after filing a request to enter national phase in Malaysia.

Question 3
Does Malaysia allow inventorship amendment after entry into the national stage?

Answer 3
If the amendments to inventors was requested for the PCT application, the same can be done for the national phase Malaysian application.

However, if the amendments to inventors was not requested for the PCT application, the said amendments can be made for the national phase Malaysian application with the relevant documents evidencing the change of inventorship.

Question 4
Would it be possible to file an application in Malaysia for invention X claiming priority to the April 2005 US provisional application for invention X?

Answer 4
The answer to your question is No.

Based on the Malaysian Patents Act, the right to claim priority is:
(a) within 12 months preceding the filing date of the first foreign application (by way of filing a request for a conventional application), or
(b) within a 30 month deadline from the priority date of the PCT application (by way of filing a request to enter national phase) provided the PCT application was filed on or after 16th August 2006 (the date of Malaysia acceding PCT)

Since this case does not comply with either condition, (a or b), it will NOT be possible to file an application in Malaysia for invention X claiming priority of the April 2005 US provisional application for the same.

Foreign First Filing Clearance

Question
We have an application to file in the United States and have 1 inventor of Malaysian citizenship. Please inform of us if there are any requirements that need to be fulfilled by the Malaysian patent office by us before we first file in the United States. If something is required, please let me know the details and how long it will take before we have permission to file?

Answer
Malaysia has a first patent filing requirement whereby an inventor who conceives an invention in Malaysia and who wishes to file a patent application for the invention is required by law to submit their application to the Malaysian Patent Office first or get a security clearance from the Malaysian Patent Office in order to file elsewhere first.

For sake of clarity, we reproduce Section 23A(a) of the Malaysian Patents Act.

23A. Applications by residents to be filed in Malaysia first.
No person resident in Malaysia shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless
(a) an application for a patent for the same invention has been filed in the Patent Registration Office not less than two months before the application outside Malaysia.
We will need to apply for a waiver from Intellectual Property Corporation of Malaysia (MyIPO) to enable the patent application to be filed in the United States Patent Office without having it first filed in Malaysia. The time frame for MyIPO to issue the waiver will be 3 to 5 working days. In order for us to request for a waiver from MyIPO, we would require:
a) a copy of the patent specification.
b) name and correspondence address of the applicant of the said invention.
c) name, correspondence address and citizenship of the named inventors.
d) applicant's rights to the invention: by virtue of assignment/being the inventor's employer etc.

Under Section 62A, any person who files or causes to be filed a patent application in contravention of Section 23A: Applications by residents to be filed in Malaysia first, commits an offence and is liable on conviction to a fine not exceeding RM15,000 (approx USD4700) or to imprisonment for a term not exceeding two years or both.

Rights of Inventors/Employee

Question 1
What are the rights of an Inventor who is an employee in Malaysia?

Answer 1
Employees, work under the term of an employment, are normally bounded by an employment contract with the employer. Most inventions are created by the employees.

Sec 20 of the Patents Act 1983 in Malaysia, explains the rights of the employees for their invention during their employment. Sec 20(1) gives the employer the right to obtain a patent on invention, when the work is done under the employment which is bounded by the contract. However, if there is an absence in any provision of the employment contract, the inventor would be able to receive the remuneration for the invention.

In certain circumstances, the invention may fetch a greater economic value than what was reasonable foreseen, the inventor can be entitled to equitable remuneration which may be fixed by the Court in the absence of an agreement between parties.

In circumstance where the employee invents something on his own free will even when his employment contract does not require him to take part in any inventive activities. The rule is that, if he goes on to invent something, in the field of activities of his employer’, using data and means placed at his disposal by his employer, the invention is still deemed to be accrued to the employer, following Sec 20(2).

However, if the parties fail to produce an agreement to support this, the Court will take into account the employees emoluments, the economic value of the invention and any benefits derived from it by the employer to provide the employee with his equitable remunerations.

It is clear that the employers do not have to pay the employees any inventor’s compensation as they have the right to their work, so long as the employment is bounded by the contract that excludes this.

Question 2
What are the rights of an Inventor who is an employee in United Kingdom?

Answer 2
In the UK, Section 39 of the 1977 Act, explain the right to employees’ inventions. In general, it gives the employer the right to own the inventions made by the employee during the course of his employment or even falling out of his lines of duty.

However under Sec 40, an employee may make an application to the Court within the prescribed period that the employee has made against an invention belonging to an employer, for which the patent has been granted. If the benefit derived from the patent is of outstanding and inadequate to the employer, the Court will order the employee to compensate the employees in addition to the benefit derived from the relevant contract.

The amount of compensation is controlled by Sec 41, to secure the employee a fair share of the benefit which employers has derived or may reasonably be expected to derive from the patent.

Divisional application in Malaysia

Question
Please can you kindly confirm if “At what time can we file a divisional to a patent application in Malaysia”. Please can you confirm what would be the deadline to file a divisional if applicable?

Answer
A divisional application must be filed within three months from the Examiner's first report.

The applicant may divide the application pursuant to a lack of unity objection raised in an Examiner's report within 3 months of the date of issuance of the said report, or in any other cases (upon applicant's volition), within 3 months from the date of issuance of the first examination report.

The applicant may within the prescribed time, divide the application into two or more divisional applications. Provided that each divisional application shall not go beyond the disclosure in the initial application. Each divisional application shall be entitled to the priority date of the initial application. A request for substantive examination (Form 5) should be accompanied with the divisional application at the time of filing.

In this case, the Examiner's report was issued more than 3 months ago and a clear report has been issued, a divisional application cannot be filed now. The only option you have is to amend the claims now or after grant (post grant amendment).