A. Patent Marking
1) Is there any advantage (benefit) for putting a mark of patent or patent number on the patented article (product)?
No, in Malaysia there is no advantage for Patent Marking on the patented product.
If patented product are appropriately marked then patentee may use it to obtain damages resulting from infringement based on the patented product. However, if the patented product is falsely represented the patentee may be liable for legal action. Section 64 of Malaysian Patent Act states as below:
“Section 64. Unauthorised claim or patent.
(1) Any person who falsely represents that anything disposed of by him for value is a patented product or process commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has, expired or been invalidated and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.”
2) Is there any disadvantage for not putting a mark of patent on the patented article (product)?
There is no disadvantage by not marking a patent number on a patented product.
3) Is it mandatory to put a mark of patent on the patented article (product)?
It is not mandatory as there are no requirements for patent marking in Malaysia.
B. Design Registration Marking
1) Is there any advantage (benefit) for putting a mark of registered design or design registration number on the design-registered article (product)?
No, in Malaysia there is no advantage for marking of a design registration number on a registered article.
If registered article are appropriately marked then patentee may use it to obtain damages resulting from infringement based on the registered article. However, if the registered article is falsely represented the patentee may be liable for legal action. Section 37 of Malaysian Industrial Design Act states as below:
“Section 37. False representation of registration.
(1) Any person who falsely represents that anything disposed of by him for value is an article protected by an industrial design registration commits an offence and shall be liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of any article having stamped, engraved or impressed thereon or otherwise applied thereto the words "registered industrial design" or any other word or words expressing or implying that the article is one to which a registered industrial design has been applied, shall be taken to represent that the article is one protected by an industrial design registration.
(3) Subsection (1) does not apply where the representation is made in respect of an industrial design after the registration in respect of that industrial design has expired or been revoked and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.
(5) This section shall have effect in relation to a right to apply for the registration of an industrial design as they have effect in relation to a registered industrial design, and references to a registered industrial design shall include references to a right to apply for the registration of an industrial design.”
2) Is there any disadvantage for not putting a mark of registered design or design registration number on the design-registered article (product)?
There is no disadvantage by not marking design registration number on a registered article.
3) Is it mandatory to put a mark of registered design or design registration number on the design-registered article (product)?
It is not mandatory as there are no requirements for registered design marking in Malaysia.
For more information, contact us at: malaysia@mirandah.com
Friday
Divisional Application
1. Is it possible to file divisional application after a clear report is issued?
Divisional application can only be filed within 3 months from receiving the first examination report. If the first report is a clear report, then the applicant can file divisional application within the prescribed timeline.
However, if the applicant did not file divisional application in response to the first examination report, and subsequently the application is issued clear report, then the applicant cannot file divisional application.
2. Alternatively, upon receiving clear report and if the applicant wants to file divisional application; then the following route can be taken:
a).File post-grant amendment incorporating the allowed claims and intended divisional claims (divisional claims shall not go beyond initial disclosure and does not add new subject matter)
b).The Examiner will conduct further examination on the post-grant amendment and can come out with 2 possible outcomes:
(i) issue amended clear report and all the claims will be allowed
(ii) issue another adverse report and cite objection on unity of invention. Now, the applicant can divide the application based on the examination report.
For more information, contact us at: malaysia@mirandah.com
Tuesday
Trademark
If a trademark registration owned by Company A is assigned to Company B, can Company B recover damages for past infringements?
If A assigns the rights to a mark to B while on infringement was going on, B will not be a party to the past infringement under Malaysian Law. B will have rights only after putting the infringer on constructive notice (which will be after such an assignment is dated and filed at the PTO). Infringement of a property right cannot follow with an IP right transfer or assignment.
A fresh notice of infringement will have to be issued to the infringer by B and thereafter damages will start.
For more information, contact us at: malaysia@mirandah.com
If A assigns the rights to a mark to B while on infringement was going on, B will not be a party to the past infringement under Malaysian Law. B will have rights only after putting the infringer on constructive notice (which will be after such an assignment is dated and filed at the PTO). Infringement of a property right cannot follow with an IP right transfer or assignment.
A fresh notice of infringement will have to be issued to the infringer by B and thereafter damages will start.
For more information, contact us at: malaysia@mirandah.com
Assess damages
How does the High Court assess damages?
1) The most common way to assess damages will be based on profit loss. The judge and the lawyers will take this as the easiest route of assessment of loss of profit. This is in 90% of the cases. This is how the damages was given by the High Court.
2. In very rare cases the winning party will ask for profit that the winning party would have gained otherwise. I say this is rare as the winning party usually would have to prove that they actually lost. If a plaintiff wins the infringement action hypothetically, if they go on (2) they will be not able to prove that they lost profits when in actual fact, the plaintiffs sales would have gone up tremendously in the years that the infringement went into the market.
So (1) would be the way to assess damages in most or all the cases.
For more information on intellectual property consulting, contact us at: malaysia@mirandah.com
1) The most common way to assess damages will be based on profit loss. The judge and the lawyers will take this as the easiest route of assessment of loss of profit. This is in 90% of the cases. This is how the damages was given by the High Court.
2. In very rare cases the winning party will ask for profit that the winning party would have gained otherwise. I say this is rare as the winning party usually would have to prove that they actually lost. If a plaintiff wins the infringement action hypothetically, if they go on (2) they will be not able to prove that they lost profits when in actual fact, the plaintiffs sales would have gone up tremendously in the years that the infringement went into the market.
So (1) would be the way to assess damages in most or all the cases.
For more information on intellectual property consulting, contact us at: malaysia@mirandah.com
Thursday
COMPETITION ACT 2010
SECTION A: AN OVERVIEW OF THE CA 2010
Status:
Passed by Parliament: 26 April 2010.
Date of Royal Assent: 2 June 2010.
Date of publication in the Federal Government Gazette: 10 June 2010.
In force from: 1 January 2012
Application of the CA
Date of Royal Assent: 2 June 2010.
Date of publication in the Federal Government Gazette: 10 June 2010.
In force from: 1 January 2012
- The CA 2010 applies to any commercial activity, both within and outside Malaysia.
- In relation to the application of CA 2010 outside Malaysia, CA 2010 applies to any commercial activity transacted outside Malaysia which has an effect on competition in any market in Malaysia.
- “Commercial activity” – means any activity of a commercial nature but does not include:
- (a) any activity, directly or indirectly in the exercise of governmental authority;
- (b) any activity conducted based on the principle of solidarity; and
- (c) any purchase of goods or services not for the purposes of offering goods and services as part of an economic activity.
Friday
Request for Information on Renewal Regulations for Utility Models in Malaysia
The duration of a certificate for a utility innovation (i.e. Utility Model) is protected ten (10) years from the filing date of the application. The utility model may be protected for a further 5 + 5 years from the date of filing subject to use.
Questions regarding the design law / practice in Malaysia
1. Legal Framework / Governing Law
Thursday
Enquiry on Applying Foreign Filing License (Waiver) in Malaysia
1. The application can be filed in the name of the inventor(s)
2. No physical document is required to identify Assignment.
Therefore, the application can still be filed in the name of the applicant (company) as the inventor(s) does not need to sign any documents to identify the Assignment.
Once the foreign filing license has been applied and subsequently approved, there is no need to file a Malaysian application. The applicant can straight away file the foreign application. If the applicant decides later on to file the corresponding application in Malaysia, the applicant can do so without any restriction as the foreign filing license has already been approved.
Contact us for more information on applying for foreign filing licence in Malaysia
2. No physical document is required to identify Assignment.
Therefore, the application can still be filed in the name of the applicant (company) as the inventor(s) does not need to sign any documents to identify the Assignment.
Once the foreign filing license has been applied and subsequently approved, there is no need to file a Malaysian application. The applicant can straight away file the foreign application. If the applicant decides later on to file the corresponding application in Malaysia, the applicant can do so without any restriction as the foreign filing license has already been approved.
Contact us for more information on applying for foreign filing licence in Malaysia
Friday
Patent Filing requirement for the formalities in Malaysia
1. We need to know the patent filing requirement for the formalities in your country; i.e. Malaysia.
1. Applicant’s particulars
1.1 Individual
Name
Citizenship
Address
1.2 Corporate Entity
Name
Type of entity, state whether private limited, public listed or others
Registered address
Country of incorporation
State of incorporation, where applicant is a US Corporation
1.3 Applicant who is not the inventor, provide how right to patent is derived from inventor
1. Applicant’s particulars
1.1 Individual
Name
Citizenship
Address
1.2 Corporate Entity
Name
Type of entity, state whether private limited, public listed or others
Registered address
Country of incorporation
State of incorporation, where applicant is a US Corporation
1.3 Applicant who is not the inventor, provide how right to patent is derived from inventor
Expedited Examination in Malaysia
Whether expedited examination is available, and by how much this reduces timing to:
i) receiving an examination report and
ii) registration purpose.
Please also let us know the costs if it is available.
A new Regulation has recently been introduced in Malaysia by the Intellectual Property Corporation of Malaysia, with effect from 15 February 2011, which allows for the expedited examination of trademark applications. An application for expedited examination has to be supported by Statutory Declaration setting out the reasons for the request.
Accepted reasons for an expedited examination are as below:
I) the expedited examination is for national or public interest
II) there are infringement proceedings taking place or evidence showing potential infringement with regard to the trademark applied for;
III) registration of the trademark is a condition for obtaining funding from the government or institutions recognised by the Registrar; or
IV) there are other reasonable grounds which support the request.
This option allows for a trademark application to be registered 7 months from the date of filing, assuming that the request for approval of expedited examination is filed within one month from the date of filing, and there are no adverse examination reports or opposition proceedings. Assuming if the Registrar raises any objections during the examination, the application will be removed from the expedited track and the normal examination process would apply to the case.
For more information, contact us : malaysia@mirandah.com
i) receiving an examination report and
ii) registration purpose.
Please also let us know the costs if it is available.
A new Regulation has recently been introduced in Malaysia by the Intellectual Property Corporation of Malaysia, with effect from 15 February 2011, which allows for the expedited examination of trademark applications. An application for expedited examination has to be supported by Statutory Declaration setting out the reasons for the request.
Accepted reasons for an expedited examination are as below:
I) the expedited examination is for national or public interest
II) there are infringement proceedings taking place or evidence showing potential infringement with regard to the trademark applied for;
III) registration of the trademark is a condition for obtaining funding from the government or institutions recognised by the Registrar; or
IV) there are other reasonable grounds which support the request.
This option allows for a trademark application to be registered 7 months from the date of filing, assuming that the request for approval of expedited examination is filed within one month from the date of filing, and there are no adverse examination reports or opposition proceedings. Assuming if the Registrar raises any objections during the examination, the application will be removed from the expedited track and the normal examination process would apply to the case.
For more information, contact us : malaysia@mirandah.com
Subscribe to:
Posts (Atom)