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.
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.
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