Question 1
Are there requirements for working a patent in your country? If so, what are they? Are there any reporting requirements required working in your country?
Answer 1
There is no requirement for working a patent in Malaysia. However, non-working patent is subject to compulsory license.
Question 2
What are the consequences to the patentee for not working a patent in your country? (Invalidity, shortened term, opens to compulsory licenses, etc.)\
Answer 2
Non-working patent is subject to compulsory license under Section 49 of the Malaysian Patents Act 1983.
Question 3
Is importation of a patent product sufficient to satisfy your country's working requirements? For process patents, must the process be executed within the country, or is importation of a product made by the patented process sufficient?
Answer 3
There is no requirement for working a patent in Malaysia. However, in accordance to Section 49 of the Malaysian Patents Act 1983, compulsory license will not be granted if there is use of the patented product or application of the patented process in Malaysia. In addition, when a patent is not worked, a third party can apply to the Intellectual Property Corporation of Malaysia (MyIPO) for a license or rights.
Question 4
Are the laws in your country in compliance with the provisions of GATT/TRIPS? If not, are there efforts to being them into line with GATT/TRIPS?
Answer 4
Malaysia is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO). Malaysia's Intellectual Property Laws are in conformance with international standards and have been reviewed by the TRIPs Council.
For countries with compulsory license provisions for patents:
Question 5
What is required for a third party to obtain a compulsory license? Is direct negotiation between the third party and the patentee required before application for a compulsory license (or is the fact of non-working sufficient)?
Answer 5
Direct negotiations between the third party and the patentee is required before application for a compulsory license wherein the person/ a third party shall only apply for compulsory license when the third party has made efforts to obtain authorization from the owner of the patent on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time.
However, subject to subsection (1) of Section 49 of the Malaysian Patents Act 1983, any person may apply to the Registrar for a compulsory license at any time after the expiration of three years from the grant of a patent, or four years from the filing date of the patent application, whichever is the later, under any of the following circumstances:
(a) where there is no production of the patented product or application of the patented process in Malaysia without any legitimate reason;
(b) where there is no product produced in Malaysia under the patent for sale in any domestic market, or there are some but they are sold at unreasonably high prices or do not meet public demand without any legitimate reason.
Question 6
Have there been any compulsory license applications in your country?
Answer 6
No.
Question 7
Have there been any compulsory licenses granted?
Answer 7
No.
Question 8
What is the compensation given to the patent holder if a compulsory license is granted?
Answer 8
In accordance to Section 52 of the Malaysian Patents Act 1983, the amount and conditions of the royalty due from the beneficiary of the compulsory license to the owner of the patent is determine by the Intellectual Property Corporation of Malaysia (MyIPO).
Question 9
What can a patentee do to counter a request for a compulsory license?
Answer 9
The patentee/owner of a patent should prove that the grounds for a request for a compulsory license have not been met.
Question 10
After grant of a compulsory license, can the patentee negate/cancel/nullify the compulsory license? If so, how?
Answer 10
The Intellectual Property Corporation of Malaysia (MyIPO) shall cancel the compulsory license upon request of the patentee/owner of the patent based on the following grounds in accordance to the provisions of subsection (2) of Section 54 of the Malaysian Patents Act 1983.
(a) if the ground for the grant of the compulsory licence no longer exists;
(b) if the beneficiary of the compulsory licence has, within the time limit fixed in the decision granting the licence, neither begun the working of the patented invention in Malaysia nor made serious preparations towards such working;
(c) if the beneficiary of the compulsory licence does not respect the scope of the licence as fixed in the decision granting the licence;
(d) if the beneficiary of the compulsory licence is in arrears of the payment due, according to the decision granting the licence.
Question 11
Are there any unusual or unique circumstances/requirements, specific to your country relating to the application for and/or grant of a compulsory license?
Answer 11
There are no unusual or unique circumstances/requirements in Malaysia which relates to the application for and/or grant of a compulsory license.
Tuesday
Information Disclosure Statement In Malaysia
Question 1
Is there a “duty of disclosure” according to Malaysian Patent Law? Is a patent application required, upon filing of an application or anytime afterwards, to actively disclose to the Malaysian Patent Office any references or Search Reports that the applicant knows about?
Answer 1
Please note that in Malaysia, there is no requirement for, or “duty of disclosure” (of references etc) by law, at the present time. The same is true for search reports, but the applicant is strongly advised to offer search reports to the Malaysian Patent Office as they will be very useful to expedite the prosecution of the application. The Malaysian patent system is rather similar to the UK system in many ways, and often dissimilar to the US system.
Is there a “duty of disclosure” according to Malaysian Patent Law? Is a patent application required, upon filing of an application or anytime afterwards, to actively disclose to the Malaysian Patent Office any references or Search Reports that the applicant knows about?
Answer 1
Please note that in Malaysia, there is no requirement for, or “duty of disclosure” (of references etc) by law, at the present time. The same is true for search reports, but the applicant is strongly advised to offer search reports to the Malaysian Patent Office as they will be very useful to expedite the prosecution of the application. The Malaysian patent system is rather similar to the UK system in many ways, and often dissimilar to the US system.
Compulsary Licensing In Singapore
Question 1
Our licensee is about to make a pitch to a major electronics company in order to get the tray business. We might consider sending a notice to all the electronics company. What are the rules in Singapore?
Answer 1
As far as the notice to be sent to all the electronics company:
1) it must not contain a "groundless threat" under Singapore Law
2) it is a must to mention to all the electronics company that you have recorded the licensees under Singapore Law, my written advice is as follows:
Intellectual Property Rights are often involved in transactions in the modem business environment Contracts and Agreements to assign rights are very common especially where the Patents are Part of a Intellectual Property portfolio including other forms of Property Rights. Such contracts and agreements may also include the granting of licenses.
A license for the working of the invention may be granted under a patent. The license may permit the making of sub-licenses may be even assigned or mortgaged when appropriate terms are present in a contract/agreement.
An exclusive license is a license from the proprietor of or applicant for a patent conferring on the licensee or to the exclusion of all other persons including the proprietor or applicant)' any in respect of the invention to which the patent or application relates.
An exclusive licensee has the right to bring proceedings in respect of any infringement of the patent after the date of the license agreement
Recordal of transactions:
Most transactions involving Patents must be registered with the Registrar. Section 43(3) lists the type of transactions that must be registered.
They are:
(1) an assignment of the Patent or application for a patent;
(2) a mortgage of the patent or application;
(3) the grant or assignment of a license or sub-license or mortgage of a licensee or sub-license, under the patent or application;
(4) the death of the Proprietor or one of the proprietors of the patent or application or any person having a right in or under the patent or application and the vesting by an assent of personal representatives of a patent or application or any such rights; and
(5) any order/directions of a court/competent authority transferring a patent or application or any right in or under it to any personal or that an application should proceed in the name of any person together with registration of the event under which the court/authority had the power to make the order or give the directions.
Under s 43(1), the above transactions must be registered because once a person claims not to know of an earlier transactional instrument, or event:
(1) the registration of acquisition of property in a patent or an application defeats earlier transactions, instruments or events that have not been registered (registration provides proof of ownership);
and
(2) the subsequent proprietor (from the original proprietor) of the patent or an exclusive licensee may be unable to obtain damages or an account of profits for any infringement of the patent.
Under s 75 where a person becomes the proprietor or an exclusive licensee of a patent by virtue of a transaction instrument, or event to which s 43 applies, that person shall not be entitled to recover damages or an account of profits in respect of infringement subsequent to the transaction, instrument or event if a recordal was not done with the Registrar within six months of its date. Six months is an arbitrary period, as the Registrar and courts are receptive to recordals after longer periods as long as it was shown that a recordal was not practicable to be done within six months, and the recordal was sought as soon as practicable.
This view was followed by Lee Sieu Kin JC (as he was then) Contour Optik Inc v Pearl's Optical Co Pte Ltd, Lee JC commented;
The Plaintiffs submit that although the instruments were not registered within the six month window, the registrations were done within a reasonably practicable time thereby falling within s 75รพ). However, this is a bare submission and the Plaintiffs did not adduce any evidence of their registering the instruments as soon as it was practicable to do so.
Our licensee is about to make a pitch to a major electronics company in order to get the tray business. We might consider sending a notice to all the electronics company. What are the rules in Singapore?
Answer 1
As far as the notice to be sent to all the electronics company:
1) it must not contain a "groundless threat" under Singapore Law
2) it is a must to mention to all the electronics company that you have recorded the licensees under Singapore Law, my written advice is as follows:
Intellectual Property Rights are often involved in transactions in the modem business environment Contracts and Agreements to assign rights are very common especially where the Patents are Part of a Intellectual Property portfolio including other forms of Property Rights. Such contracts and agreements may also include the granting of licenses.
A license for the working of the invention may be granted under a patent. The license may permit the making of sub-licenses may be even assigned or mortgaged when appropriate terms are present in a contract/agreement.
An exclusive license is a license from the proprietor of or applicant for a patent conferring on the licensee or to the exclusion of all other persons including the proprietor or applicant)' any in respect of the invention to which the patent or application relates.
An exclusive licensee has the right to bring proceedings in respect of any infringement of the patent after the date of the license agreement
Recordal of transactions:
Most transactions involving Patents must be registered with the Registrar. Section 43(3) lists the type of transactions that must be registered.
They are:
(1) an assignment of the Patent or application for a patent;
(2) a mortgage of the patent or application;
(3) the grant or assignment of a license or sub-license or mortgage of a licensee or sub-license, under the patent or application;
(4) the death of the Proprietor or one of the proprietors of the patent or application or any person having a right in or under the patent or application and the vesting by an assent of personal representatives of a patent or application or any such rights; and
(5) any order/directions of a court/competent authority transferring a patent or application or any right in or under it to any personal or that an application should proceed in the name of any person together with registration of the event under which the court/authority had the power to make the order or give the directions.
Under s 43(1), the above transactions must be registered because once a person claims not to know of an earlier transactional instrument, or event:
(1) the registration of acquisition of property in a patent or an application defeats earlier transactions, instruments or events that have not been registered (registration provides proof of ownership);
and
(2) the subsequent proprietor (from the original proprietor) of the patent or an exclusive licensee may be unable to obtain damages or an account of profits for any infringement of the patent.
Under s 75 where a person becomes the proprietor or an exclusive licensee of a patent by virtue of a transaction instrument, or event to which s 43 applies, that person shall not be entitled to recover damages or an account of profits in respect of infringement subsequent to the transaction, instrument or event if a recordal was not done with the Registrar within six months of its date. Six months is an arbitrary period, as the Registrar and courts are receptive to recordals after longer periods as long as it was shown that a recordal was not practicable to be done within six months, and the recordal was sought as soon as practicable.
This view was followed by Lee Sieu Kin JC (as he was then) Contour Optik Inc v Pearl's Optical Co Pte Ltd, Lee JC commented;
The Plaintiffs submit that although the instruments were not registered within the six month window, the registrations were done within a reasonably practicable time thereby falling within s 75รพ). However, this is a bare submission and the Plaintiffs did not adduce any evidence of their registering the instruments as soon as it was practicable to do so.
Thursday
Malaysia's Patent Law
Question 1
a) If the filing date is on or before 16 August 2006 must a petition for examination be filed 24 months from the filing date?
b) When are annuities due for a patent with a filing date on or before 31 August 1999?
c) What is the term of a patent with a filing date on or before 31 May 1967?
d) What is the term of a patent with a filing date on or before 31 July 1989?
e) What is the term of a patent with a filing date on or before 31 August 1999?
f) What is the term of a patent with a filing date on or after 1 January 1994?
Answer 1
a) Yes.
b) According to Malaysian Patent Act, annuities are only due after the patent has been granted. Therefore, for an example, if the filing date is 31 August 1999, and the patent granted on 31 August 2003, the first annuity will be on 31 August 2004.
c) d), e) and f) 20 years from the filing date or 15 years from grant date, whichever is longer.
Question 2
In a situation where the 12 month deadline for filing a Malaysian application claiming priority from an earlier application has passed (some years previously), and the earlier application ahs been published, is there any means for obtaining patent protection in Malaysia for the invention claimed in the earlier application?
Answer 2
In Malaysia, it is possible to obtain patent protection for an invention which has missed its priority deadline, dependant on the date that the subject matter was first disclosed to the public. For this purpose, we can file a ‘non-conventional’ patent application. Malaysia allows applications to be filed up to 12 months after subject matter has been disclosed to the public.
There are also other forms of protection available in Malaysia, as the patent system follows the European system closely.
Patent Protection
As mentioned above, a non-conventional Malaysia patent application can only be filed if there was no disclosure of the subject matter of the PCT or foreign application beyond the 12-month grace period calculated from the filing date of the proposed Malaysian application. If the subject matter was disclosed more that 12 months ago, we confirm that the subject matter would have lost its novelty and patent protection is not available.
Question 3
Are there any alternative forms of protection, such as design protection available in Malaysia?
Answer 3
Industrial Design Protection
The design of the external features of an object can be protected as an industrial design under the Malaysian Industrial Designs Act 1996 if the design is not purely functional.
Under the Industrial Design Act, an industrial design will not be considered as novel it was disclosed to the public anywhere in Malaysia unless the disclosure was made in an official or officially recognized exhibition or it was disclosed by a person other than the applicant as a result of an unlawful act committed by that person.
To summarize, the novelty requirement in Malaysia for an industrial design application is domestic requirement. In this case, the disclosure of a design in a trade show in the US for example is not relevant as the disclosure was in the US and not Malaysia.
However, if a PCT application with drawings were previously published and they are available online in Malaysia, there is a possibility that the industrial design would have lost its novelty. However, the issue of whether the publication of the drawings in the Internet can constitute a prior disclosure in Malaysia is yet to be tested in the Courts. Furthermore, under Section 3(b) of the Industrial Design Act, an industrial design should not include features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the industrial design to form an integral part.
Please note that currently, there is no substantive examination for industrial design applications. Theoretically, we can proceed to file an industrial design application and chances are we would be able to obtain the registration, as the Examiners will not conduct a substantive examination to identify prior existing industrial designs. However, during litigation, a defendant may be able to attack the validity of a granted industrial design on the basis of novelty.
Copyright Protection
Under the Copyright Act 1987, all three dimensional articles can be protected provided that the articles are not protected under the Industrial Design Act. This applies only to articles designed after 1 September 1999 (the date the Industrial Design Act came into force).
If an item cannot be protected under the Industrial Design Act, or Patents Act, it may still be protected under the Copyright Act.
However, it must be noted that the protection provided under the Copyright Act is very much limited. For an example, the copyright protection will cease as soon as the subject design been reproduced more than 50 times by an industrial process by the owner.
a) If the filing date is on or before 16 August 2006 must a petition for examination be filed 24 months from the filing date?
b) When are annuities due for a patent with a filing date on or before 31 August 1999?
c) What is the term of a patent with a filing date on or before 31 May 1967?
d) What is the term of a patent with a filing date on or before 31 July 1989?
e) What is the term of a patent with a filing date on or before 31 August 1999?
f) What is the term of a patent with a filing date on or after 1 January 1994?
Answer 1
a) Yes.
b) According to Malaysian Patent Act, annuities are only due after the patent has been granted. Therefore, for an example, if the filing date is 31 August 1999, and the patent granted on 31 August 2003, the first annuity will be on 31 August 2004.
c) d), e) and f) 20 years from the filing date or 15 years from grant date, whichever is longer.
Question 2
In a situation where the 12 month deadline for filing a Malaysian application claiming priority from an earlier application has passed (some years previously), and the earlier application ahs been published, is there any means for obtaining patent protection in Malaysia for the invention claimed in the earlier application?
Answer 2
In Malaysia, it is possible to obtain patent protection for an invention which has missed its priority deadline, dependant on the date that the subject matter was first disclosed to the public. For this purpose, we can file a ‘non-conventional’ patent application. Malaysia allows applications to be filed up to 12 months after subject matter has been disclosed to the public.
There are also other forms of protection available in Malaysia, as the patent system follows the European system closely.
Patent Protection
As mentioned above, a non-conventional Malaysia patent application can only be filed if there was no disclosure of the subject matter of the PCT or foreign application beyond the 12-month grace period calculated from the filing date of the proposed Malaysian application. If the subject matter was disclosed more that 12 months ago, we confirm that the subject matter would have lost its novelty and patent protection is not available.
Question 3
Are there any alternative forms of protection, such as design protection available in Malaysia?
Answer 3
Industrial Design Protection
The design of the external features of an object can be protected as an industrial design under the Malaysian Industrial Designs Act 1996 if the design is not purely functional.
Under the Industrial Design Act, an industrial design will not be considered as novel it was disclosed to the public anywhere in Malaysia unless the disclosure was made in an official or officially recognized exhibition or it was disclosed by a person other than the applicant as a result of an unlawful act committed by that person.
To summarize, the novelty requirement in Malaysia for an industrial design application is domestic requirement. In this case, the disclosure of a design in a trade show in the US for example is not relevant as the disclosure was in the US and not Malaysia.
However, if a PCT application with drawings were previously published and they are available online in Malaysia, there is a possibility that the industrial design would have lost its novelty. However, the issue of whether the publication of the drawings in the Internet can constitute a prior disclosure in Malaysia is yet to be tested in the Courts. Furthermore, under Section 3(b) of the Industrial Design Act, an industrial design should not include features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the industrial design to form an integral part.
Please note that currently, there is no substantive examination for industrial design applications. Theoretically, we can proceed to file an industrial design application and chances are we would be able to obtain the registration, as the Examiners will not conduct a substantive examination to identify prior existing industrial designs. However, during litigation, a defendant may be able to attack the validity of a granted industrial design on the basis of novelty.
Copyright Protection
Under the Copyright Act 1987, all three dimensional articles can be protected provided that the articles are not protected under the Industrial Design Act. This applies only to articles designed after 1 September 1999 (the date the Industrial Design Act came into force).
If an item cannot be protected under the Industrial Design Act, or Patents Act, it may still be protected under the Copyright Act.
However, it must be noted that the protection provided under the Copyright Act is very much limited. For an example, the copyright protection will cease as soon as the subject design been reproduced more than 50 times by an industrial process by the owner.
Wednesday
Indonesian Patent Law
Question 1
Does Indonesian law follow the common laws (England… based on precedents) OR does it follow the German / European Patent Office (EPO) style statutory law OR constitutional law (US)?
Answer 1
Indonesia adopts the Civil Law which refers to the applicable law currently exist and therefore we can say that Indonesia follow the statutory law. The jurisprudence will be of persuasive value but not binding.
Question 2
What is the likelihood that EPO objections to granting a patent will be upheld in Indonesia? Can we argue based on EPO objections? Will our case be strong?
Answer 2
EPO objections can be used as an argument before the court. However the expert’s opinion and the evidence will also be the important consideration for the judge in making the decision.
Question 3
In particular, the EPO has a “problem solution approach” to patents. Have you heard of this in your classes? Do you know if Indonesia will follow the EPO on this one? You can google “problem-solution approach”. It’s very big in European Patent Law. Will Indonesia follow this argument?
Answer 3
Yes, Indonesian Examiner also apply the “problem solution approach” in evaluating the inventive step of an invention, which contain of 3 (three) steps:
- Determining the closest prior art
- Formulating technical problems to be solved
- Considering the obviousness based on the above closest prior art and technical problems to
be solved.
Question 4
If there are A+B+C in a parent application, will Indonesia accept A+C only in divisional? The EPO rejected A+C. They said B is an essential feature defined in the earlier application. Therefore A+C goes beyond the scope of the parent application.
Answer 4
For the above case, the Indonesian Examiner will also have the same opinion with the EPO for not accepting the A+C in the divisional, with the reason that the invention become too general, no more specific features and therefore prior art can be cited. The granting is for specific technical features A+B+C and it will not patentable when the feature is only A+B or A+C or B+C which has less specific technical features and that the invention is too general. In patent, we aware that specialty beat generality. However, please note that under current practice the above is not binding but still debatable.
Question 5
If the specific benefit of a feature X is not stated specifically in a prior art specification, but the technical effect is achieved by working this prior art invention, does that prevent a new applicant from trying to patent X, the only difference being that the new applicant said “my invention performs X”?
-The EPO’s view is that X is inherent in the working of the prior art invention anyway. So even if they didn’t exactly spell out “our invention performs X”, the benefits are achieved.
-So they rejected the new application (by another person) in which the new applicant claimed the same thing as the prior art, only this time, he spelt out the benefits of X.
-Will Indonesia follow EPO?
Answer 5
As mentioned in question no. 3 that Indonesia also apply “problem solving approach”, therefore Indonesia also follow EPO in determining a prior art. Though it is not literally mentioned in the prior art but if a person skilled in the art can constitute the obviousness of the invention then it will be considered as a prior art. Please refer to Article 2 paragraph (3) of Patent Law No. 14 of 2001.
Does Indonesian law follow the common laws (England… based on precedents) OR does it follow the German / European Patent Office (EPO) style statutory law OR constitutional law (US)?
Answer 1
Indonesia adopts the Civil Law which refers to the applicable law currently exist and therefore we can say that Indonesia follow the statutory law. The jurisprudence will be of persuasive value but not binding.
Question 2
What is the likelihood that EPO objections to granting a patent will be upheld in Indonesia? Can we argue based on EPO objections? Will our case be strong?
Answer 2
EPO objections can be used as an argument before the court. However the expert’s opinion and the evidence will also be the important consideration for the judge in making the decision.
Question 3
In particular, the EPO has a “problem solution approach” to patents. Have you heard of this in your classes? Do you know if Indonesia will follow the EPO on this one? You can google “problem-solution approach”. It’s very big in European Patent Law. Will Indonesia follow this argument?
Answer 3
Yes, Indonesian Examiner also apply the “problem solution approach” in evaluating the inventive step of an invention, which contain of 3 (three) steps:
- Determining the closest prior art
- Formulating technical problems to be solved
- Considering the obviousness based on the above closest prior art and technical problems to
be solved.
Question 4
If there are A+B+C in a parent application, will Indonesia accept A+C only in divisional? The EPO rejected A+C. They said B is an essential feature defined in the earlier application. Therefore A+C goes beyond the scope of the parent application.
Answer 4
For the above case, the Indonesian Examiner will also have the same opinion with the EPO for not accepting the A+C in the divisional, with the reason that the invention become too general, no more specific features and therefore prior art can be cited. The granting is for specific technical features A+B+C and it will not patentable when the feature is only A+B or A+C or B+C which has less specific technical features and that the invention is too general. In patent, we aware that specialty beat generality. However, please note that under current practice the above is not binding but still debatable.
Question 5
If the specific benefit of a feature X is not stated specifically in a prior art specification, but the technical effect is achieved by working this prior art invention, does that prevent a new applicant from trying to patent X, the only difference being that the new applicant said “my invention performs X”?
-The EPO’s view is that X is inherent in the working of the prior art invention anyway. So even if they didn’t exactly spell out “our invention performs X”, the benefits are achieved.
-So they rejected the new application (by another person) in which the new applicant claimed the same thing as the prior art, only this time, he spelt out the benefits of X.
-Will Indonesia follow EPO?
Answer 5
As mentioned in question no. 3 that Indonesia also apply “problem solving approach”, therefore Indonesia also follow EPO in determining a prior art. Though it is not literally mentioned in the prior art but if a person skilled in the art can constitute the obviousness of the invention then it will be considered as a prior art. Please refer to Article 2 paragraph (3) of Patent Law No. 14 of 2001.
Tuesday
Patent Protection, Enforcement And Court System In Philippines
TOPIC : PATENT PROTECTION, ENFORCEMENT AND COURT SYSTEM IN PHILIPPINES
PROTECTION
Question 1
What is the term of protection of a patent in Philippines?
Answer 1
In Philippines, a Patent last for twenty (20) years counted from the date of filing and for Utility Model, 7 years 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 Philippines?
Answer 1
a) Civil action for infringement;
b) Administrative case for infringement; and
c) Criminal action for repetition of infringement.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Secure a search warrant to seize the infringing goods prior to filing a civil action or an administrative action for infringement.
Question 3
Are protective orders available in Philippines?
Answer 3
Yes.
Question 4
Does the Philippines 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
Yes. Time frame from 2 – 6 months.
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?
Answer 7
1. Infringement action duration about 36 months.
2. Invalidation action duration about 12 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages sustained, reasonable attorney’s fees and other expenses. The courts may treble the amount of damages awarded to the complainant if bad faith on the part of respondent is proven. Damages cannot be recovered if the infringer had not known of complainant’s patent.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Philippines?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Philippines?
Answer 1
Smith Kline Beecham Corporation vs. CA and Tryco Pharma Corp., GR No. 126627.
Petitioner sued respondent for infringement of patent and unfair competition. It claimed that its patent covers or includes the substance Albendazole. It claimed that respondent, by manufacturing, selling, using and causing to be sold and used the drug Impregon without its authorization, infringed its patent as well as committed unfair competition for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.
Question 2
How efficient are the courts in disposing IP litigation cases in Philippines?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
Yes.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes. US.
Question 5
How are foreigners treated by the courts in Philippines?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
18 – 72 months.
Question 7
What step(s) must be taken to appeal a court decision in Philippines?
Answer 7
Appeal to Director General of the IPO, Court of Appeals, and Supreme Court.
PROTECTION
Question 1
What is the term of protection of a patent in Philippines?
Answer 1
In Philippines, a Patent last for twenty (20) years counted from the date of filing and for Utility Model, 7 years 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 Philippines?
Answer 1
a) Civil action for infringement;
b) Administrative case for infringement; and
c) Criminal action for repetition of infringement.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Secure a search warrant to seize the infringing goods prior to filing a civil action or an administrative action for infringement.
Question 3
Are protective orders available in Philippines?
Answer 3
Yes.
Question 4
Does the Philippines 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
Yes. Time frame from 2 – 6 months.
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?
Answer 7
1. Infringement action duration about 36 months.
2. Invalidation action duration about 12 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages sustained, reasonable attorney’s fees and other expenses. The courts may treble the amount of damages awarded to the complainant if bad faith on the part of respondent is proven. Damages cannot be recovered if the infringer had not known of complainant’s patent.
Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Philippines?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Philippines?
Answer 1
Smith Kline Beecham Corporation vs. CA and Tryco Pharma Corp., GR No. 126627.
Petitioner sued respondent for infringement of patent and unfair competition. It claimed that its patent covers or includes the substance Albendazole. It claimed that respondent, by manufacturing, selling, using and causing to be sold and used the drug Impregon without its authorization, infringed its patent as well as committed unfair competition for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.
Question 2
How efficient are the courts in disposing IP litigation cases in Philippines?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
Yes.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes. US.
Question 5
How are foreigners treated by the courts in Philippines?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
18 – 72 months.
Question 7
What step(s) must be taken to appeal a court decision in Philippines?
Answer 7
Appeal to Director General of the IPO, Court of Appeals, and Supreme Court.
Patent Protection, Enforcement And Court System In India
PROTECTION
Question 1
What is the term of protection of a patent in India?
Answer 1
In India, a Patent last for twenty (20) years counted from the date of filing and there is no Utility Model in India.
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 India?
Answer 1
a) Injunctions;
b) Damages and
c) Account of profits.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an interim injunction.
Question 3
Are protective orders available in India?
Answer 3
Yes.
Question 4
Does the Indian 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 for ex parte interim injunction. However, the Civil Procedure Code requires issuance of notice in Civil Suits and the Courts follow the “notice” as rule and ex parte relief as exception.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame from 6 – 8 months.
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?
Answer 7
1. Infringement action duration about 24 months.
2. Invalidation action duration about 12 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 India?
Answer 9
Yes. Only for a claim for costs.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in India?
Answer 1
Farbwerke Hoechst Aktiengesellschaft vs. Unichem Laboratories [AIR 1969 Bom 255]
An invention consisting of the production of new substances from known materials by known methods cannot be held to possess new subject matter merely on the ground that the substances produced are new, for the substances produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge (the methods and materials employed being already known) or of useful materials (the substances produced being, ex hypothesi, useless)
Question 2
How efficient are the courts in disposing IP litigation cases in India?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
Judges handling patent infringement cases are not technically qualified. However, in the case of patent invalidation, the Technical Members are technically qualified.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes. United Kingdom.
Question 5
How are foreigners treated by the courts in India?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in India?
Answer 7
File a notice of appeal.
Question 1
What is the term of protection of a patent in India?
Answer 1
In India, a Patent last for twenty (20) years counted from the date of filing and there is no Utility Model in India.
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 India?
Answer 1
a) Injunctions;
b) Damages and
c) Account of profits.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain an interim injunction.
Question 3
Are protective orders available in India?
Answer 3
Yes.
Question 4
Does the Indian 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 for ex parte interim injunction. However, the Civil Procedure Code requires issuance of notice in Civil Suits and the Courts follow the “notice” as rule and ex parte relief as exception.
Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?
Answer 5
Possible. Time frame from 6 – 8 months.
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?
Answer 7
1. Infringement action duration about 24 months.
2. Invalidation action duration about 12 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 India?
Answer 9
Yes. Only for a claim for costs.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in India?
Answer 1
Farbwerke Hoechst Aktiengesellschaft vs. Unichem Laboratories [AIR 1969 Bom 255]
An invention consisting of the production of new substances from known materials by known methods cannot be held to possess new subject matter merely on the ground that the substances produced are new, for the substances produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge (the methods and materials employed being already known) or of useful materials (the substances produced being, ex hypothesi, useless)
Question 2
How efficient are the courts in disposing IP litigation cases in India?
Answer 2
Reasonably efficient.
Question 3
Are the judges technically qualified?
Answer 3
Judges handling patent infringement cases are not technically qualified. However, in the case of patent invalidation, the Technical Members are technically qualified.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
Yes. United Kingdom.
Question 5
How are foreigners treated by the courts in India?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
2 – 3 years.
Question 7
What step(s) must be taken to appeal a court decision in India?
Answer 7
File a notice of appeal.
Patent Protection, Enforcement And Court System In Indonesia
PROTECTION
Question 1
What is the term of protection of a patent in Indonesia?
Answer 1
In Indonesia, a Patent and the Utility Model Patent has a effective period of twenty (20) years counted from the date of filing.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No. Supplementary protection is not available.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Indonesia?
Answer 1
a) Criminal action;
b) Civil action;
c) Preliminary injunction and
d) Permanent injunction.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain a preliminary injunction.
Question 3
Are protective orders available in Indonesia?
Answer 3
Yes.
Question 4
Does the Indonesian 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 from 2 – 3 months.
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?
Answer 7
1. Infringement action duration about 36 months.
2. Invalidation action duration about 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed based on 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 Indonesia?
Answer 9
Possible.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Indonesia?
Answer 1
Honda vs. China Motorcycle
Honda sued China Motorcycle alleging infringement of its Indonesian patent no. ID 000284.
The originally filed claims were in English but soon translated into Indonesian language. The translation was not accurate. Honda alleged infringement base on the granted English claims.
The Court took the view that any patent infringement should be based on the claims in the Indonesian language and not other languages and China Motorcycle was held not infringing the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Indonesia?
Answer 2
Fairly efficient.
Question 3
Are the judges technically qualified?
Answer 3
Yes.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
No. But courts do rely on cases decided by Indonesian Higher Courts.
Question 5
How are foreigners treated by the courts in Indonesia?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
5 – 6 months.
Question 7
What step(s) must be taken to appeal a court decision in Indonesia?
Answer 7
Appeal to the Supreme Court.
Question 1
What is the term of protection of a patent in Indonesia?
Answer 1
In Indonesia, a Patent and the Utility Model Patent has a effective period of twenty (20) years counted from the date of filing.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
No. Supplementary protection is not available.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Indonesia?
Answer 1
a) Criminal action;
b) Civil action;
c) Preliminary injunction and
d) Permanent injunction.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
Obtain a preliminary injunction.
Question 3
Are protective orders available in Indonesia?
Answer 3
Yes.
Question 4
Does the Indonesian 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 from 2 – 3 months.
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?
Answer 7
1. Infringement action duration about 36 months.
2. Invalidation action duration about 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.
Question 8
How are damages / royalties assessed?
Answer 8
Damages are assessed based on 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 Indonesia?
Answer 9
Possible.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Indonesia?
Answer 1
Honda vs. China Motorcycle
Honda sued China Motorcycle alleging infringement of its Indonesian patent no. ID 000284.
The originally filed claims were in English but soon translated into Indonesian language. The translation was not accurate. Honda alleged infringement base on the granted English claims.
The Court took the view that any patent infringement should be based on the claims in the Indonesian language and not other languages and China Motorcycle was held not infringing the patent.
Question 2
How efficient are the courts in disposing IP litigation cases in Indonesia?
Answer 2
Fairly efficient.
Question 3
Are the judges technically qualified?
Answer 3
Yes.
Question 4
Do the courts rely on precedent cases decided in foreign countries?
Answer 4
No. But courts do rely on cases decided by Indonesian Higher Courts.
Question 5
How are foreigners treated by the courts in Indonesia?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
5 – 6 months.
Question 7
What step(s) must be taken to appeal a court decision in Indonesia?
Answer 7
Appeal to the Supreme Court.
Recommendations For Patent Prosecution In Malaysia
Question 1a
Questions in an effort to identify ways that we can reduce unnecessary spending and improve the efficiency of our prosecution in Malaysia? Is there a point where additional claims no longer add value?
Answer 1a
No.
Question 1b
Does it matter whether the claims are independent or dependent with respect to costs?
Answer 1b
No.
Question 2
What types of pharmaceutical-related Claims are allowable in Malaysia?
Answer 2
1. Composition claims (product claims)
2. Process claim
3. Swiss-type use claim (in the format of “Use of substance X in the manufacture of medicament for the treatment of condition Y”)
Question 3
What types of pharmaceutical-related Claims are NOT allowable in Malaysia?
Answer 3
1. Method of treatment of human or animal body by surgery or therapy (can be overcome by amending this type of claims to be read as Swiss-type use claims).
2. Omnibus claims (which is in the format of; “An X as shown Figure Y” or “Apparatus as described in the description”)
Question 4
Does the Intellectual Property Corporation of Malaysia (MyIPO) restrict the scope of claims based on the examples and/or data present in the application at the time of filing? e.g. will the Examiner require the scope of a compound claim to be restricted to exemplified examples?
Answer 4
According to Malaysian Patents Act, examples are preferred embodiments of the specification and variations are allowed so long as it does not go beyond the scope of the claims. Examples are also does not restrict scope of invention.
Question 5
Are there limitations on the scope that one can claim for a biologic or antibody?
Answer 5
Biologic materials such as therapeutic antibodies against protein or genetic sequence are generally considered to be patentable and qualify as an invention so long as the antibody gene sequence are novel, involve an inventive step, and industrially applicable. Plant or animal varieties or essentially biological processes for the production of plants or animals; other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes; are considered not patentable, 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.
Question 6
Will the Intellectual Property Corporation of Malaysia (MyIPO) accept claims that have been granted in other countries? If yes, what countries?
Answer 6
Yes. Prescribed countries; Australia (AU), Japan (JP), Korea (KR), Great Britain (GB), USA and EPO.
Question 7
Can you delay prosecution until claims grant in one of these countries?
Answer 7
Yes, we can file for deferment of request for substantive examination; and the maximum delay is 5 years from the filing date.
Question 8
If there a pro forma response that could be filed to address nuisance oppositions filed by Generic companies?
Answer 8
In Malaysia, there is NO provision for oppositions during the prosecution of patent application stage. However, generic companies may file for Non-infringement declaration (NID) and / or revocation after the patent has been granted. In this case, there is no pro forma response as NID and / or revocation are court proceedings.
Questions in an effort to identify ways that we can reduce unnecessary spending and improve the efficiency of our prosecution in Malaysia? Is there a point where additional claims no longer add value?
Answer 1a
No.
Question 1b
Does it matter whether the claims are independent or dependent with respect to costs?
Answer 1b
No.
Question 2
What types of pharmaceutical-related Claims are allowable in Malaysia?
Answer 2
1. Composition claims (product claims)
2. Process claim
3. Swiss-type use claim (in the format of “Use of substance X in the manufacture of medicament for the treatment of condition Y”)
Question 3
What types of pharmaceutical-related Claims are NOT allowable in Malaysia?
Answer 3
1. Method of treatment of human or animal body by surgery or therapy (can be overcome by amending this type of claims to be read as Swiss-type use claims).
2. Omnibus claims (which is in the format of; “An X as shown Figure Y” or “Apparatus as described in the description”)
Question 4
Does the Intellectual Property Corporation of Malaysia (MyIPO) restrict the scope of claims based on the examples and/or data present in the application at the time of filing? e.g. will the Examiner require the scope of a compound claim to be restricted to exemplified examples?
Answer 4
According to Malaysian Patents Act, examples are preferred embodiments of the specification and variations are allowed so long as it does not go beyond the scope of the claims. Examples are also does not restrict scope of invention.
Question 5
Are there limitations on the scope that one can claim for a biologic or antibody?
Answer 5
Biologic materials such as therapeutic antibodies against protein or genetic sequence are generally considered to be patentable and qualify as an invention so long as the antibody gene sequence are novel, involve an inventive step, and industrially applicable. Plant or animal varieties or essentially biological processes for the production of plants or animals; other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes; are considered not patentable, 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.
Question 6
Will the Intellectual Property Corporation of Malaysia (MyIPO) accept claims that have been granted in other countries? If yes, what countries?
Answer 6
Yes. Prescribed countries; Australia (AU), Japan (JP), Korea (KR), Great Britain (GB), USA and EPO.
Question 7
Can you delay prosecution until claims grant in one of these countries?
Answer 7
Yes, we can file for deferment of request for substantive examination; and the maximum delay is 5 years from the filing date.
Question 8
If there a pro forma response that could be filed to address nuisance oppositions filed by Generic companies?
Answer 8
In Malaysia, there is NO provision for oppositions during the prosecution of patent application stage. However, generic companies may file for Non-infringement declaration (NID) and / or revocation after the patent has been granted. In this case, there is no pro forma response as NID and / or revocation are court proceedings.
Divisional Application In USA
Question 1
If the applicant decides to elect to amend the claims to contain only 1 group, when is the deadline to file for divisional application(s)?
Answer 1
There is not a specific deadline to file a divisional application; however, the divisional application must be filed before either the parent application issues as a patent or goes abandoned.
Question 2
What is the difference in continuation in part and divisional application?
Answer 2
A continuation in part application is one that claims priority to an earlier application but also typically includes new matter that was not described in the earlier application. The priority date of the earlier application is given to any claims whose subject matter was described in the earlier application and any claims with new matter are deemed to have the priority date of when they were filed.
A divisional application is an application that is filed with respect to non-elected claims in a previously restricted application and the claims in the divisional application are given the priority date of the claims in the previously restricted application (assuming no new matter is added to the divisional application).
Question 3
Our initial proposed response will be to divide the parent application (by using claims of group 1 only) to another 2 child application (where claims of group 2 and 3 divided accordingly). Would you think this is a more viable solution. Would you take similar action?
Answer 3
Our suggestion is to elect to desired group of claims in the present application and have them examined per the standard course of action. Please also note that you will also need to elect a species of a particular compound in which the Examiner poses 4 questions and one disorder or disease must also be elected. Then we would propose that you file a divisional application or applications for any non-elected claims. This may prove to be the most efficient solution as drafting and filing fees would likely be lower that the filing of two new child applications. Additionally, it may be possible to amend some of the claims in groups 2 and 3 so as to put them into one application and avoid a future restriction requirement.
If the applicant decides to elect to amend the claims to contain only 1 group, when is the deadline to file for divisional application(s)?
Answer 1
There is not a specific deadline to file a divisional application; however, the divisional application must be filed before either the parent application issues as a patent or goes abandoned.
Question 2
What is the difference in continuation in part and divisional application?
Answer 2
A continuation in part application is one that claims priority to an earlier application but also typically includes new matter that was not described in the earlier application. The priority date of the earlier application is given to any claims whose subject matter was described in the earlier application and any claims with new matter are deemed to have the priority date of when they were filed.
A divisional application is an application that is filed with respect to non-elected claims in a previously restricted application and the claims in the divisional application are given the priority date of the claims in the previously restricted application (assuming no new matter is added to the divisional application).
Question 3
Our initial proposed response will be to divide the parent application (by using claims of group 1 only) to another 2 child application (where claims of group 2 and 3 divided accordingly). Would you think this is a more viable solution. Would you take similar action?
Answer 3
Our suggestion is to elect to desired group of claims in the present application and have them examined per the standard course of action. Please also note that you will also need to elect a species of a particular compound in which the Examiner poses 4 questions and one disorder or disease must also be elected. Then we would propose that you file a divisional application or applications for any non-elected claims. This may prove to be the most efficient solution as drafting and filing fees would likely be lower that the filing of two new child applications. Additionally, it may be possible to amend some of the claims in groups 2 and 3 so as to put them into one application and avoid a future restriction requirement.
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