Please advice if annuities are to be paid with respect to Brunei Patents

Under new Patents Order, 2011 (1^st January 2012), any re-registration patents in Brunei are to be paid for local annuities to keep the Brunei patents in force.

The earliest annuity fee is due on the fourth anniversary (Annuity for 5^th Year) of the filing date of the foreign (GB/EP (GB)/MY/SG) patent on which the registration is based. Further fees are due on each subsequent anniversary until the expiry of 20 years from that filing date. However, there will be no annuity fee payable for any anniversary that is prior to 1^st January 2012. Annuity fees which fall within the year 2012 shall be paid by 31^th December 2012 without any late surcharge according to the Brunei’s Patent Registry Office.

Please be informed that annuity payment must be accompanied by evidence that the basic foreign (GB/EP(GB)/MY/SG) patent has not been revoked as of the date of applying for renewal, which we will be able to attend at our end.

For more information, contact us at: malaysia@mirandah.com 

Please advise if there is a grace period from publication for filing in Malaysia? If so, what is the time period and what evidence is required?

1. A novelty grace period of one (1) year is provided for filing a patent application in Malaysia.

2. Subsection 14 (3) (a) and (b) of the Malaysian Patents Act 1983 on Novelty.

14 (3) A disclosure made under paragraph (2) (a) shall be disregarded -

(a) 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;

(b) 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;

3. Subsection 14 (2) (a) of the Malaysian Patents Act 1983 on prior arts.

(2) Prior art shall consist of-

(a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;

For more information, contact us at: malaysia@mirandah.com

Practices and Procedures on withdrawal of Patent Application in Malaysia

Can you please let us know what are the practices and procedures on withdrawal of Patent Application in Malaysia. Please advise us whether discontinuing prosecution of an application without express abandonment or withdrawal may be prejudicial to a related patent or application under Malaysian patent practice?

Discontinuing prosecution of an application without express abandonment or withdrawal will not be prejudicial to a related patent or application under Malaysian patent practice. A Notice of Refusal will be issued by MyIPO (Intellectual Property Corporation of Malaysia) if the applicant fails to respond to an office action on given deadline. This will cause the related patent or application to be refused.

However, the applicant may also withdraw the application by submitting an official declaration to withdraw the said application, as provided in the Malaysian Patents Act. For sake of clarity, we provide herewith Section 25 of the Malaysian Patents Act for your perusal.

"Section 25 

Withdrawal of application

An applicant may withdraw his application at any time during its pendency by submitting a declaration in the prescribed form to the Registrar, and such "

For more information, contact us at: malaysia@mirandah.com

Information Needed on Abandonment or Lapse Procedures

1. Does your country’s local patent office issue an official notice of abandonment?  If applicable, please differentiate between filing an official notice of withdrawal and simply allowing the case to lapse without filing a withdrawal.
   
   Yes, MyIPO (Intellectual Property Corporation of Malaysia) issues a Notice of Refusal (Abandonment) if the said application/ patent was abandon/ lapsed. The application/ patent can be abandon by filing a form with an authorized signature to file a withdrawal officially. However we practice by allowing the application/ patent to be lapsed.


2. If your local patent office does issue an official notice of abandonment, how long does it typically take for it to issue?
   
   The Notice of abandonment will be issued within 3 months from the date of filing an official notice of abandonment or if the application/ patent lapsed.


3. Do you report to US counsel the official notice of abandonment once received?
   
   We do not report or send the official notice of abandonment, however if requested we will be able to provide the said notice.


4. If you have received official instructions from us to allow a case to lapse when there are no outstanding deadlines in said case, do you report to us any newly issued office actions?
   
   Yes, but we will just forward a copy of the issued office action for your record without accompanied reporting letter.

For more information, contact us at: malaysia@mirandah.com

Inquiry on Patent Marking and Design Registration Marking in Malaysia

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

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

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

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

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

• 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.

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.