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.

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.

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.

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.

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.

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