Question 1
Is there utility model system in Malaysia?
Answer 1
Yes
Question 2
What is the subject of protection in your utility model system?
Answer 2
Utility Innovation : Any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application and includes an invention.
Product:
Apparatus: Yes
Method: Yes
Manufacturing method of a product: Yes
Use of a product: Yes
Program: Yes
Program : Computer programs are patentable provided that the computer program that in use permits solution to a specific problem in the field of technology.
Others?
Swiss-type claim : "Use of substance A in the manufacture of a medicament for the treatment of condition B”.: Yes
The validity of claims drafted as if they were directed to a manufacturing process.
Process claim : It usually refers to a manufacturing process that involves a series of steps for making something. For instance, a process for making a lip balm or a process for making a doughnut.: Yes
Utility Model system excludes:-
i. Discoveries, scientific theories and mathematical methods;
ii. 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;
iii. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
iv. Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body;
Drawbacks in comparison with patent:
i. UI allows a maximum of a single claim only.
ii. Applicant is not able to register a license.
Question 3
Is there a publication system for a utility model?
Answer 3
Yes
Question 4
If yes, what is the time frame of the publication from the application date?
Answer 4
18 months from the application date.
Question 5
Is there a substantive examination for a utility model?
Answer 5
Yes. The procedure is the same as patent application.
Question 6
What is the average time frame from an application to decision to grant a utility model?
Answer 6
1 to 2 years.
Question 7
In the case of enforcement, is an expert opinion on registrability of a utility model required?
Answer 7
Yes. There is no requirement for inventive step.
Question 8
Is it possible to have both a patent and utility model for the same invention granted?
Answer 8
Yes
Question 9
What is the existing term of a utility model?
Answer 9
The term for a utility innovation is 10 years from the date of filing, with the possibility of renewal for 5+5 years upon proof of use.
Maximum term for utility innovation is 20 years.
Proof of use : presenting evidence of commercial or industrial use or a satisfactory explanation of non-use in Malaysia.
Question 10
Is there the utility system which includes a prior user's right?
Answer 10
Prior user’s right : personal defence for someone who non-publicly used an invention, to (continue to) use the invention that is in the meantime patented by another person. It’s a shield, not a sword. It is to mitigate the effect of first filing and introduce fairness towards prior user.
The person at the priority date of the patent application:
a. Was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
b. Had in good faith in Malaysia made serious preparations towards the making of the product or using the process which is the subject of the invention claimed in the application.
He shall have the right, despite the grant of the patent, to exploit the patented invention:
Provided that the product in question is made, or the process in question is used, by the said person in Malaysia:
Provided further that he can prove, if the invention was disclosed under the circumstances:
i. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;
ii. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;
iii. if such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act;
that his knowledge of the invention was not a result of such disclosure.
The above-mentioned right shall not be assigned or transmitted except as part of the business of the person concerned.
Monday
Question On The Patent System In Malaysia
Question 1
What is the subject of protection in the patent law?
Answer 1
Product: Yes
Apparatus: Yes
Method: Yes
Manufacturing method of a product: Yes
Use of a product: Yes
Program: Yes
Program : Computer programs are patentable provided that the computer program that in use permits solution to a specific problem in the field of technology with a hardware configured to run the the program.
Others?
a. Swiss-type claim : "Use of substance A in the manufacture of a medicament for the treatment of condition B”.: Yes
The claims can be valid if drafted as if they were directed to a manufacturing process.
b. Process claim : It usually refers to a manufacturing process that involves a series of steps for making something. For instance, a process for making a lip balm or a process for making a doughnut.: Yes
c. Non-patentable Inventions:-
i. Discoveries, scientific theories and mathematical methods;
ii. 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;
iii. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
iv. Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body;
Question 2
What is a geographic standard for novelty judgment? Domestic or international?
Answer 2
International with absolute novelty requirement.
Question 3
What is a legal period for requesting substantive examination?
Answer 3
An international application which has entered the national phase has a legal period of 4 years from the filing date of the international application to request substantive examination.
A non-conventional application / conventional (Paris) application has a legal period of 2 years from the filing date of the application to request substantive examination.
Question 4
Is there any system to accelerate examination?
Answer 4
There is no specific provision in the Malaysia Patents Act 1983 to accelerate examination. However, the prosecution of a patent application may be expedited in the following way:
Should a corresponding Malaysian patent application be granted in any of the prescribed countries, namely Australia, Japan, the Republic of Korea, the United Kingdom, or the United States of America, or under the prescribed treaty or Convention means the European Patent Convention, and the Malaysian claims are to be brought into conformity to the said granted claims.
Question 5
What is the average time frame from an application to a decision to grant a patent?
Answer 5
Approximately 3 to 4 years from the application date.
Question 6
What is an existing term of a patent?
Answer 6
20 years from the filing date of the application, subject to the following:
The period of protection for a granted patent will depend on its filing date. If the filing date is prior to 1st August 2001 (i.e. before the coming into force of the Patents (Amendment) Act 2000), and the application was pending or granted and in force as of that date, the duration is 15 years from the date of grant or 20 years from the filing date, whichever expires later. If the filing date of the application is after 1st August 2001, the patent is protected for 20 years from the filing date.
Question 7
Is there any system for extending a patent term?
Answer 7
No. (Malaysia has no provision/ for Supplemental Protection for drugs)
Question 8
Is there the patent system which includes a prior user's right?
Answer 8
Yes
Question 9
If yes, what are the basic requirements for a prior user's right?
Answer 9
The person at the priority date of the patent application:
a. Was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
b. Had in good faith in Malaysia made serious preparations towards the making of the product or using the process which is the subject of the invention claimed in the application.
He shall have the right, despite the grant of the patent, to exploit the patented invention:
Provided that the product in question is made, or the process in question is used, by the said person in Malaysia:
Provided further that he can prove, if the invention was disclosed under the circumstances:
i. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;
ii. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;
iii. if such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act;
that his knowledge of the invention was not a result of such disclosure.
The above-mentioned right shall not be assigned or transmitted except as part of the business of the person concerned.
What is the subject of protection in the patent law?
Answer 1
Product: Yes
Apparatus: Yes
Method: Yes
Manufacturing method of a product: Yes
Use of a product: Yes
Program: Yes
Program : Computer programs are patentable provided that the computer program that in use permits solution to a specific problem in the field of technology with a hardware configured to run the the program.
Others?
a. Swiss-type claim : "Use of substance A in the manufacture of a medicament for the treatment of condition B”.: Yes
The claims can be valid if drafted as if they were directed to a manufacturing process.
b. Process claim : It usually refers to a manufacturing process that involves a series of steps for making something. For instance, a process for making a lip balm or a process for making a doughnut.: Yes
c. Non-patentable Inventions:-
i. Discoveries, scientific theories and mathematical methods;
ii. 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;
iii. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
iv. Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body;
Question 2
What is a geographic standard for novelty judgment? Domestic or international?
Answer 2
International with absolute novelty requirement.
Question 3
What is a legal period for requesting substantive examination?
Answer 3
An international application which has entered the national phase has a legal period of 4 years from the filing date of the international application to request substantive examination.
A non-conventional application / conventional (Paris) application has a legal period of 2 years from the filing date of the application to request substantive examination.
Question 4
Is there any system to accelerate examination?
Answer 4
There is no specific provision in the Malaysia Patents Act 1983 to accelerate examination. However, the prosecution of a patent application may be expedited in the following way:
Should a corresponding Malaysian patent application be granted in any of the prescribed countries, namely Australia, Japan, the Republic of Korea, the United Kingdom, or the United States of America, or under the prescribed treaty or Convention means the European Patent Convention, and the Malaysian claims are to be brought into conformity to the said granted claims.
Question 5
What is the average time frame from an application to a decision to grant a patent?
Answer 5
Approximately 3 to 4 years from the application date.
Question 6
What is an existing term of a patent?
Answer 6
20 years from the filing date of the application, subject to the following:
The period of protection for a granted patent will depend on its filing date. If the filing date is prior to 1st August 2001 (i.e. before the coming into force of the Patents (Amendment) Act 2000), and the application was pending or granted and in force as of that date, the duration is 15 years from the date of grant or 20 years from the filing date, whichever expires later. If the filing date of the application is after 1st August 2001, the patent is protected for 20 years from the filing date.
Question 7
Is there any system for extending a patent term?
Answer 7
No. (Malaysia has no provision/ for Supplemental Protection for drugs)
Question 8
Is there the patent system which includes a prior user's right?
Answer 8
Yes
Question 9
If yes, what are the basic requirements for a prior user's right?
Answer 9
The person at the priority date of the patent application:
a. Was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
b. Had in good faith in Malaysia made serious preparations towards the making of the product or using the process which is the subject of the invention claimed in the application.
He shall have the right, despite the grant of the patent, to exploit the patented invention:
Provided that the product in question is made, or the process in question is used, by the said person in Malaysia:
Provided further that he can prove, if the invention was disclosed under the circumstances:
i. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;
ii. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;
iii. if such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act;
that his knowledge of the invention was not a result of such disclosure.
The above-mentioned right shall not be assigned or transmitted except as part of the business of the person concerned.
Tuesday
Recordal Of Licence For Design Registration In Malaysia
Question 1
Must our client record the recordal of licence with an appropriate agency in Malaysia in order to validate such license there?
Answer 1
Yes, the Owner (the “licensor”) of the Design is required to appoint an Agent (Registered Design Agent in Malaysia) to record the license agreement at MyIPO (Intellectual Property Corporation of Malaysia) to the effect that any person (“the licensee”) may obtain a license to the said Design.
Question 2
If recordal of the worldwide rights is not necessary, but is optional, what are the advantages of recording that agreement, with whom is it recorded? Do you recommend such recordation?
Answer 2
Recordal of the worldwide rights is optional as it depends on the jurisdiction of the respective countries. We recommend such recordation in Malaysia as you are required to record the said license agreement at MyIPO as no transmission of rights shall have effect against any third parties unless recorded at MyIPO.
Question 3
May a “redacted” or edited version of such agreement be recorded, if recordal is required or advantageous?
Answer 3
Yes. A “redacted” or edited version of such agreement can be recorded as long as it is executed between the 2 parties (“the licensor” and “the licensee”).
Must our client record the recordal of licence with an appropriate agency in Malaysia in order to validate such license there?
Answer 1
Yes, the Owner (the “licensor”) of the Design is required to appoint an Agent (Registered Design Agent in Malaysia) to record the license agreement at MyIPO (Intellectual Property Corporation of Malaysia) to the effect that any person (“the licensee”) may obtain a license to the said Design.
Question 2
If recordal of the worldwide rights is not necessary, but is optional, what are the advantages of recording that agreement, with whom is it recorded? Do you recommend such recordation?
Answer 2
Recordal of the worldwide rights is optional as it depends on the jurisdiction of the respective countries. We recommend such recordation in Malaysia as you are required to record the said license agreement at MyIPO as no transmission of rights shall have effect against any third parties unless recorded at MyIPO.
Question 3
May a “redacted” or edited version of such agreement be recorded, if recordal is required or advantageous?
Answer 3
Yes. A “redacted” or edited version of such agreement can be recorded as long as it is executed between the 2 parties (“the licensor” and “the licensee”).
Security Interest Recording
Question 1
We understand that security interests are not recordable in Malaysia.
Answer 1
Malaysia currently does not have specific laws relating to security interest in Intellectual Property (IP) as compared to other countries. However, both of the involved parties may execute a security agreement/transaction for individual interest without the involvement of the Intellectual Property Corporation of Malaysia (MyIPO). Such a transaction is a private matter between the 2 parties.
IP may be subject to a fixed or floating charge, subject to registration within 30 days of creation. Registrable charges include charges on goodwill, trade mark, patents, design or copyright. The IP asset can be delivered in the possession of a lender to hold as security for payment of a debt or performance of a promise. In the event of default, the lender can bring an action against the pledgor to recover the debt or sell the goods after giving reasonable notice.
Question 2
You say that IP may be subject to a fixed charge subject to registration within 30 days of creation. Where is such a pledge registered?
Answer 2
Please note that you will have to check with your corporate and banking department to see how this is done. We informed you on the alternative avenues since at the Malaysian Registry of Trade Marks and Patents, there is no provision for recordal of security interests. Therefore, may we suggest that you check with the banks / corporate / tax groups to see how best this can be done. We do not have expertise in-house to advise you fully on this. Trust that you understand our position. (please check on this PM)
We trust to above information is sufficient.
We understand that security interests are not recordable in Malaysia.
Answer 1
Malaysia currently does not have specific laws relating to security interest in Intellectual Property (IP) as compared to other countries. However, both of the involved parties may execute a security agreement/transaction for individual interest without the involvement of the Intellectual Property Corporation of Malaysia (MyIPO). Such a transaction is a private matter between the 2 parties.
IP may be subject to a fixed or floating charge, subject to registration within 30 days of creation. Registrable charges include charges on goodwill, trade mark, patents, design or copyright. The IP asset can be delivered in the possession of a lender to hold as security for payment of a debt or performance of a promise. In the event of default, the lender can bring an action against the pledgor to recover the debt or sell the goods after giving reasonable notice.
Question 2
You say that IP may be subject to a fixed charge subject to registration within 30 days of creation. Where is such a pledge registered?
Answer 2
Please note that you will have to check with your corporate and banking department to see how this is done. We informed you on the alternative avenues since at the Malaysian Registry of Trade Marks and Patents, there is no provision for recordal of security interests. Therefore, may we suggest that you check with the banks / corporate / tax groups to see how best this can be done. We do not have expertise in-house to advise you fully on this. Trust that you understand our position. (please check on this PM)
We trust to above information is sufficient.
Statutory Declaration
Question 1
It is permitted to have the Statutory Declaration executed before having filed the recordal of assignment, to record a change from the current applicant to the new applicant?
Answer 1
If the Statutory Declaration is to be signed now, the current applicant on record has to execute it. However, upon the assignment has taken place, then a new Statutory Declaration has to be filed wherein the new applicant, has to sign it.
It is permitted to have the Statutory Declaration executed before having filed the recordal of assignment, to record a change from the current applicant to the new applicant?
Answer 1
If the Statutory Declaration is to be signed now, the current applicant on record has to execute it. However, upon the assignment has taken place, then a new Statutory Declaration has to be filed wherein the new applicant, has to sign it.
Monday
Modified Substantive Examination In Malaysia
Question 1
Whether an application can be granted directly in Singapore relying on a corresponding Korean patent registration, in accordance with the agreement between Singapore and Korea.
Answer 1
In Singapore, only those patent applications having a priority date or filing date on or after 2nd June 2006 can be amended to conform to the corresponding Korean patents for the purpose of grant.
In Malaysia, only those patent applications having a filing date on or after 19th July 2003 can be amended to conform to the corresponding Korean patents for the purpose of grant.
Question 2
Whether the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia?
Answer 2
Yes, the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia so long as they were filed on or after 19th July 2003.
Question 3
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application should be filed in Malaysia within one year from the filing date, or may be filed anytime before being laid open.
Answer 3
Yes, for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean application should be filed in Malaysia within ONE year from the priority date [for conventional applications] or within ONE year from the earliest public disclosure date [for non-conventional applications].
Question 4
In order for the Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application and a corresponding Malaysia application to be filed should be identical, and if so, how will the Malaysia application be handled when those are different.
Answer 4
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean patent must have similar scope of protection or narrower scope of protection against the Malaysian application as the Malaysian Patents Act 1983 prohibits any amendments to a Malaysian application if the amendments go beyond the disclosure in the Malaysian application as originally filed.
In case that the Korean patent is wider in scope as opposed to the Malaysian application, it would be advisable not to file a request for Modified Substantive Examination based on the Korean patent.
One way to overcome this is to conform to a corresponding patent granted in European Patent Office (EPO), UK, US, Australia or Japan if the foreign patent has similar scope of protection or narrower scope of protection against the Malaysian application.
The other suggestion will be filing a request for Full Substantive Examination. There is no need to conform the present claims to corresponding foreign patent claims if a request for Full Substantive Examination is filed.
Question 5
In order for the Korean application to be granted in Malaysia taking advantage of the
Modified Substantive Examination, which documents are required?
Answer 5
We will require a certified true copy of the Korean patent, and a certified English translation of the said Korean patent.
Whether an application can be granted directly in Singapore relying on a corresponding Korean patent registration, in accordance with the agreement between Singapore and Korea.
Answer 1
In Singapore, only those patent applications having a priority date or filing date on or after 2nd June 2006 can be amended to conform to the corresponding Korean patents for the purpose of grant.
In Malaysia, only those patent applications having a filing date on or after 19th July 2003 can be amended to conform to the corresponding Korean patents for the purpose of grant.
Question 2
Whether the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia?
Answer 2
Yes, the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia so long as they were filed on or after 19th July 2003.
Question 3
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application should be filed in Malaysia within one year from the filing date, or may be filed anytime before being laid open.
Answer 3
Yes, for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean application should be filed in Malaysia within ONE year from the priority date [for conventional applications] or within ONE year from the earliest public disclosure date [for non-conventional applications].
Question 4
In order for the Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application and a corresponding Malaysia application to be filed should be identical, and if so, how will the Malaysia application be handled when those are different.
Answer 4
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean patent must have similar scope of protection or narrower scope of protection against the Malaysian application as the Malaysian Patents Act 1983 prohibits any amendments to a Malaysian application if the amendments go beyond the disclosure in the Malaysian application as originally filed.
In case that the Korean patent is wider in scope as opposed to the Malaysian application, it would be advisable not to file a request for Modified Substantive Examination based on the Korean patent.
One way to overcome this is to conform to a corresponding patent granted in European Patent Office (EPO), UK, US, Australia or Japan if the foreign patent has similar scope of protection or narrower scope of protection against the Malaysian application.
The other suggestion will be filing a request for Full Substantive Examination. There is no need to conform the present claims to corresponding foreign patent claims if a request for Full Substantive Examination is filed.
Question 5
In order for the Korean application to be granted in Malaysia taking advantage of the
Modified Substantive Examination, which documents are required?
Answer 5
We will require a certified true copy of the Korean patent, and a certified English translation of the said Korean patent.
Entering Into Malaysia National Phase Of PCT Application
Question 1
Clarification on the examination procedure after entering into Malaysian national phase of PCT application?
Answer 1
Yes. The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined to substance and an applicant has a choice of either filing a request for a full or modified substantive examination.
Preliminary examination commences soon after the patent application has been filed at Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.
Question 2
If so, is it possible to pay the examination fee at same time as entering into Malaysian national phase or immediately after that?
Answer 2
Yes, it is possible to request for substantive examination at the same time as entering the Malaysian national phase. However, please be informed that the request for substantive examination must be made within the prescribed period i.e. within four (4) years from the filing date of the international application.
Clarification on the examination procedure after entering into Malaysian national phase of PCT application?
Answer 1
Yes. The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined to substance and an applicant has a choice of either filing a request for a full or modified substantive examination.
Preliminary examination commences soon after the patent application has been filed at Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.
Question 2
If so, is it possible to pay the examination fee at same time as entering into Malaysian national phase or immediately after that?
Answer 2
Yes, it is possible to request for substantive examination at the same time as entering the Malaysian national phase. However, please be informed that the request for substantive examination must be made within the prescribed period i.e. within four (4) years from the filing date of the international application.
Wednesday
Patent Proctection, Enforcement And Court System In Thailand
PROTECTION
Question 1
What is the term of protection of a patent in Thailand?
Answer 1
In Thailand, a Patent last for twenty (20) years counted from the date of filing and a Petty patent last 10 years from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Only possible in the case of petty patent.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Thailand?
Answer 1
a) Civil action;
b) Criminal action.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
By filing a criminal action.
Question 3
Are protective orders available in Thailand?
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?
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 Thailand?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Thailand?
Answer 1
Aventis Pharma S.A. v Bioscien Company Decision No. 79/2548
The plaintiff alleged that the defendant infringed its process patent by importing pharmaceutical products created by using the patented process. The plaintiff had served a notice demanding that the infringement stop but the defendant refused to cooperate. The plaintiff sought to restrain the defendant from arranging further import of the disputed products and as well as damages. The defendant argued that their imported products were created using different process and therefore did not infringe the plaintiff's patent.
The plaintiff produced evidence demonstrating that there had indeed been an infringement. However, the court noted that since the defendant demonstrated that it had exercised due care in seeking counsel of an expert regarding the possibility of infringement, they had acted in good faith. The court therefore issued, in favour of the plaintiff, an order permanently restraining the defendant from engaging in further importation of the infringing product. However, the court refused to award plaintiff the damages, reasoning that the defendant believed in good faith that they had right to import such a product.
This case demonstrates how the court assesses and tailors the damages against infringing conducts. Thai patent law treats infringement as strict liability. However, in civil cases, the court has right to exercise its discretion as to whether damages should be granted.
Question 2
How efficient are the courts in disposing IP litigation cases in Thailand?
Answer 2
Reasonably efficient with strict guidelines.
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
No.
Question 5
How are foreigners treated by the courts in Thailand?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
24 – 36 months.
Question 7
What step(s) must be taken to appeal a court decision in Thailand?
Answer 7
A notice of appeal is filed within 30 days from the date of the decision at the Supreme Court.
Question 1
What is the term of protection of a patent in Thailand?
Answer 1
In Thailand, a Patent last for twenty (20) years counted from the date of filing and a Petty patent last 10 years from the filing date.
Question 2
Is it possible to extent the lifetime of a patent?
Answer 2
Only possible in the case of petty patent.
ENFORCEMENT
Question 1
What are the types of patent enforcement action are available in Thailand?
Answer 1
a) Civil action;
b) Criminal action.
Question 2
How can the patent owner most effectively make his point to stop an infringement?
Answer 2
By filing a criminal action.
Question 3
Are protective orders available in Thailand?
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?
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 Thailand?
Answer 9
Yes.
COURT SYSTEM
Question 1
Briefly describe any cases of patent invalidation or patent infringement in Thailand?
Answer 1
Aventis Pharma S.A. v Bioscien Company Decision No. 79/2548
The plaintiff alleged that the defendant infringed its process patent by importing pharmaceutical products created by using the patented process. The plaintiff had served a notice demanding that the infringement stop but the defendant refused to cooperate. The plaintiff sought to restrain the defendant from arranging further import of the disputed products and as well as damages. The defendant argued that their imported products were created using different process and therefore did not infringe the plaintiff's patent.
The plaintiff produced evidence demonstrating that there had indeed been an infringement. However, the court noted that since the defendant demonstrated that it had exercised due care in seeking counsel of an expert regarding the possibility of infringement, they had acted in good faith. The court therefore issued, in favour of the plaintiff, an order permanently restraining the defendant from engaging in further importation of the infringing product. However, the court refused to award plaintiff the damages, reasoning that the defendant believed in good faith that they had right to import such a product.
This case demonstrates how the court assesses and tailors the damages against infringing conducts. Thai patent law treats infringement as strict liability. However, in civil cases, the court has right to exercise its discretion as to whether damages should be granted.
Question 2
How efficient are the courts in disposing IP litigation cases in Thailand?
Answer 2
Reasonably efficient with strict guidelines.
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
No.
Question 5
How are foreigners treated by the courts in Thailand?
Answer 5
Same as locals.
Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?
Answer 6
24 – 36 months.
Question 7
What step(s) must be taken to appeal a court decision in Thailand?
Answer 7
A notice of appeal is filed within 30 days from the date of the decision at the Supreme Court.
Thursday
ASEAN Patent Examination Co-operation (ASPEC) Procedure
Question 1
We have recently been informed about the new opportunity to apply to be part of the ASEAN Patent Examination Co-operation (ASPEC) procedure.
In that respect of:
a) how does it work, and
b) when should we apply (file the ASPEC request form)?
ASPEC is not comparable to PCT, as ASPEC in itself does not issue any examination report or written opinion. ASPEC is merely a co-operation between 8 ASEAN countries namely: Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand, the Philippines and Vietnam. Once a search and examination report is issued by any of these countries (first IP Office), the applicant may use the report to file an ASPEC Request in another member state (second IP Office), and the report from the first IP Office will be used as a reference. However, the second IP Office is not obliged to adopt any of the findings or conclusions made by the first IP Office. There is no additional fee to file ASPEC Request.
Question 2
When will the member state in which we have filed the ASPEC request, provide the search and examination documents to the other ASPEC member states?
Answer 2
The search and examination report will be issued by the first IP Office, and subsequently during the normal course of patent prosecution the applicant has to submit the ASPEC Request Form together with the report to the second IP Office.
Question 3
What are the advantages or disadvantages of that ASPEC process?
Answer 3
The advantages that are as per the objectives of ASPEC:
- reduced work and faster turnaround time
- better search and examination as some IP Offices might have better access to databases unavailable to the other IP Office.
There is no particular disadvantage that we are able to pin point at the present time.
Question 4
Should we use this process only for certain type of Patent applications or for any type of patent application?
Answer 4
This program can be used for all types of patent applications, which is applicable in the particular member state (e.g. divisional application and utility innovation).
Question 5
Is there any risk?
Answer 5
We are not aware of any risk. In any case, this program is still in its infancy stage, so the actual risk factor (if any) might only surface after some time.
Question 6
What is your current experience with this new ASPEC process?
Answer 6
Please see our concluding remark below.
Question 7
Is there any advantage for the patent applicant e.g. acceleration of the grant procedure, or id the benefit only for the ASPEC Patent Offices?
Answer 7
This program may result in faster prosecution of the patent application, however please bear in mind that the receiving IP Office is not obliged to adopt any of the findings or conclusions reached by the other IP Office.
Question 8
Is there any advantage to file the ASPEC request form in one or other ASPEC member states (faster or more efficient office?).
Answer 8
There is no significant advantage, as the efficiency level of the each ASPEC member states is comparable.
Question 9
In which country(ies) would you advice us to file the ASPEC request form.
Answer 9
No particular preference, as each country has their provision of rules and regulations, and is independent from one another.
Question 10
What is the role of the first IP Office (ASPEC member state) were the ASPC Request Form is filed.
Answer 10
To provide the search and examination report to the applicant, and the applicant will later submit the ASPEC Request Form to the second IP Office.
Question 11
Can we provide the search report and examination report of any corresponding Patent Office e.g. European Patent Office.
Answer 11
Yes you can. However, in this instance the applicant need not file a request for ASPEC, wherein they might just submit the search report to the individual country directly.
CONCLUSION:
The feedback from the Malaysian Patent Office is that an application under ASPEC has not been filed to date. However, the infrastructure is in place to accept such request. We further checked with Singapore Patent Office, and there are only 3 such applications on record. We do not believe there has been significant progress in any of the other ASEAN countries relating to ASPEC process. This program is new and given that the ASEAN countries do not have a sophisticated Search & Examination processing body, we do not anticipate this process to be active at this time. In all likelihood, the Registrar will still await the outcome of corresponding cases in the more matured patent territories like US, EP, JP, KR, AU and GB.
We have recently been informed about the new opportunity to apply to be part of the ASEAN Patent Examination Co-operation (ASPEC) procedure.
In that respect of:
a) how does it work, and
b) when should we apply (file the ASPEC request form)?
ASPEC is not comparable to PCT, as ASPEC in itself does not issue any examination report or written opinion. ASPEC is merely a co-operation between 8 ASEAN countries namely: Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand, the Philippines and Vietnam. Once a search and examination report is issued by any of these countries (first IP Office), the applicant may use the report to file an ASPEC Request in another member state (second IP Office), and the report from the first IP Office will be used as a reference. However, the second IP Office is not obliged to adopt any of the findings or conclusions made by the first IP Office. There is no additional fee to file ASPEC Request.
Question 2
When will the member state in which we have filed the ASPEC request, provide the search and examination documents to the other ASPEC member states?
Answer 2
The search and examination report will be issued by the first IP Office, and subsequently during the normal course of patent prosecution the applicant has to submit the ASPEC Request Form together with the report to the second IP Office.
Question 3
What are the advantages or disadvantages of that ASPEC process?
Answer 3
The advantages that are as per the objectives of ASPEC:
- reduced work and faster turnaround time
- better search and examination as some IP Offices might have better access to databases unavailable to the other IP Office.
There is no particular disadvantage that we are able to pin point at the present time.
Question 4
Should we use this process only for certain type of Patent applications or for any type of patent application?
Answer 4
This program can be used for all types of patent applications, which is applicable in the particular member state (e.g. divisional application and utility innovation).
Question 5
Is there any risk?
Answer 5
We are not aware of any risk. In any case, this program is still in its infancy stage, so the actual risk factor (if any) might only surface after some time.
Question 6
What is your current experience with this new ASPEC process?
Answer 6
Please see our concluding remark below.
Question 7
Is there any advantage for the patent applicant e.g. acceleration of the grant procedure, or id the benefit only for the ASPEC Patent Offices?
Answer 7
This program may result in faster prosecution of the patent application, however please bear in mind that the receiving IP Office is not obliged to adopt any of the findings or conclusions reached by the other IP Office.
Question 8
Is there any advantage to file the ASPEC request form in one or other ASPEC member states (faster or more efficient office?).
Answer 8
There is no significant advantage, as the efficiency level of the each ASPEC member states is comparable.
Question 9
In which country(ies) would you advice us to file the ASPEC request form.
Answer 9
No particular preference, as each country has their provision of rules and regulations, and is independent from one another.
Question 10
What is the role of the first IP Office (ASPEC member state) were the ASPC Request Form is filed.
Answer 10
To provide the search and examination report to the applicant, and the applicant will later submit the ASPEC Request Form to the second IP Office.
Question 11
Can we provide the search report and examination report of any corresponding Patent Office e.g. European Patent Office.
Answer 11
Yes you can. However, in this instance the applicant need not file a request for ASPEC, wherein they might just submit the search report to the individual country directly.
CONCLUSION:
The feedback from the Malaysian Patent Office is that an application under ASPEC has not been filed to date. However, the infrastructure is in place to accept such request. We further checked with Singapore Patent Office, and there are only 3 such applications on record. We do not believe there has been significant progress in any of the other ASEAN countries relating to ASPEC process. This program is new and given that the ASEAN countries do not have a sophisticated Search & Examination processing body, we do not anticipate this process to be active at this time. In all likelihood, the Registrar will still await the outcome of corresponding cases in the more matured patent territories like US, EP, JP, KR, AU and GB.
Tuesday
Franchise Agreement
Question 1
Our understanding is that the application to register the franchise will not be made for some time after the pilot operation run by the franchisee has commenced, as the Registry requires proof that the franchise can operate successfully in Malaysia before awarding a franchise license.
We have been proceeded on the following basis:
a) That the letter of intent needs to be submitted and approved before we can make any formal arrangement with the franchisee.
b) That we need to sign a master franchise agreement with the franchisee so that he can start a pilot operation.
c) The franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point).
Answer 1
Stage 1 - Approval under Section 54.
First, the letter of intent is submitted to the Registry of Franchises (ROF). In theory, the letter of intent should be filed and approved before offering the franchisor franchise for sale in Malaysia or to Malaysians. This is to ensure that the franchise is not against Malaysian public interests. We should receive a preliminary approval, approval with conditions or rejection in 1 to 3 months, for convenience we shall term this the “Section 54 approval”. You are correct that you should not make any formal arrangements with the franchisee prior to receiving official Section 54 approval.
Please take note that the Section 54 approval does not give the franchisor or the franchisee the permission to commence operations for a trial period. The Master Franchise Agreement should be prepared at this point.
Stage 2 – Application to Register the Master Franchise Agreement.
In the application stage, the ROF will examine the master franchise agreement in detail. As it was highlighted you in our earlier letters, the registry in Malaysia has set out strict rules in registering a franchise agreement.
In relation to your understanding that “the franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point.”
This understanding is not quite accurate. At the time of application at this stage, the ROF does not require any proof to indicate that the franchise is operating successfully in Malaysia. The ROF requires evidence of use of the trademark, which can be from any country or countries. The franchisor also can show evidence of use of the trademark in Malaysia, if the franchisor has been using the mark in Malaysia. “Use” here covers direct use by the franchisor itself or use by other third parties via legal agreements. As advised in our earlier letters, the more extensive the evidence of use of the trademark, the greater the popularity of the trademark, the more convincing the application will be to the ROF, as the Registrar is more likely to conclude that Malaysia will benefit from the franchise.
Stage 3 – Registration of Sub-Franchises.
Under the Master Franchise Agreement, it is critical to ascertain whether the franchisee has the right to sub-franchise the franchisor franchise to a third party, at the franchisee own expense – in this case the franchisee would be the Master Franchisee. In this case, he would be treated as a franchisor and he have to register his agreements with every individual sub-franchisor.
If the franchisee does not have the right to sub-franchise, he would be an ordinary Franchisee.
Our understanding is that the application to register the franchise will not be made for some time after the pilot operation run by the franchisee has commenced, as the Registry requires proof that the franchise can operate successfully in Malaysia before awarding a franchise license.
We have been proceeded on the following basis:
a) That the letter of intent needs to be submitted and approved before we can make any formal arrangement with the franchisee.
b) That we need to sign a master franchise agreement with the franchisee so that he can start a pilot operation.
c) The franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point).
Answer 1
Stage 1 - Approval under Section 54.
First, the letter of intent is submitted to the Registry of Franchises (ROF). In theory, the letter of intent should be filed and approved before offering the franchisor franchise for sale in Malaysia or to Malaysians. This is to ensure that the franchise is not against Malaysian public interests. We should receive a preliminary approval, approval with conditions or rejection in 1 to 3 months, for convenience we shall term this the “Section 54 approval”. You are correct that you should not make any formal arrangements with the franchisee prior to receiving official Section 54 approval.
Please take note that the Section 54 approval does not give the franchisor or the franchisee the permission to commence operations for a trial period. The Master Franchise Agreement should be prepared at this point.
Stage 2 – Application to Register the Master Franchise Agreement.
In the application stage, the ROF will examine the master franchise agreement in detail. As it was highlighted you in our earlier letters, the registry in Malaysia has set out strict rules in registering a franchise agreement.
In relation to your understanding that “the franchisee needs to operate said pilot operation for a number of months before we can apply to the registry for a franchise license (so the franchise agreement for the sub franchises would only need to be prepared at this point.”
This understanding is not quite accurate. At the time of application at this stage, the ROF does not require any proof to indicate that the franchise is operating successfully in Malaysia. The ROF requires evidence of use of the trademark, which can be from any country or countries. The franchisor also can show evidence of use of the trademark in Malaysia, if the franchisor has been using the mark in Malaysia. “Use” here covers direct use by the franchisor itself or use by other third parties via legal agreements. As advised in our earlier letters, the more extensive the evidence of use of the trademark, the greater the popularity of the trademark, the more convincing the application will be to the ROF, as the Registrar is more likely to conclude that Malaysia will benefit from the franchise.
Stage 3 – Registration of Sub-Franchises.
Under the Master Franchise Agreement, it is critical to ascertain whether the franchisee has the right to sub-franchise the franchisor franchise to a third party, at the franchisee own expense – in this case the franchisee would be the Master Franchisee. In this case, he would be treated as a franchisor and he have to register his agreements with every individual sub-franchisor.
If the franchisee does not have the right to sub-franchise, he would be an ordinary Franchisee.
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