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Intellectual Property Rights Protection Strategies for EU
SMEs in Malaysia 05 December 2013
ASEAN IPR SME Helpdesk
2 05 December 2013
Welcome to the Webinar
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Jennifer Lee ASEAN IPR SME Helpdesk
05 December 2013
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05 December 2013
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Today’s Speaker • Dr Chris Hemingway • Director, Head of Patent Practice • Marks & Clerk (Malaysia) Sdn Bhd • Chris specialises in the drafting and prosecution of
patent applications, and has experience with a broad range of technical subject matter. In addition to being a Registered Malaysian Patent, Trade Mark and Industrial Design Agent, he is also a Chartered UK Patent Attorney, European Patent Attorney, and a European Trade Mark and Design Attorney
[email protected] +60 3 2162 8986
05 December 2013
Agenda ¾ General Background Information
¾ Current Legal Environment
¾ IP Rights Available
¾ IP Registration
¾ Typical IP issues: Case Studies
¾ Take Away Messages
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Know before you go
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Question: Do you have business dealings in/with Malaysia?
(please select 1 answer only)
A. Yes, established for several years
B. Yes, just started
C. No, but I have business in other Southeast Asian
countries
D. No, only in Europe currently, but I’m considering it
Poll 1
05 December 2013
Geography of Malaysia
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Background Information for Malaysia
¾ Size: 329847 sq. km (similar to Germany)
¾ Population: 28.3 million (80% in Peninsular)
¾ One of 17 mega-diverse countries
¾ estimated 20% of world’s animal species
¾ Multi-cultural and multi-ethnic:
¾ 50% Malay, 24% Chinese, 11% Indigenous, 7% Indian, 8% Other
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Background Information for Malaysia
¾ Former British territory (independence in 1957)
¾ National language = Malay, but English is widely spoken (plus others e.g.
Cantonese, Tamil, etc)
¾ Main exports – Palm oil, Rubber, Petroleum
¾ Annual growth around 6%
¾ Government keen to promote innovation and entrepreneurship
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Socio-Economic Data (2012 Data)
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Region Population (million)
GDP [PPP] (USD billion)
GDP per capita (USD thousand)
Singapore 5 327 61
Malaysia 28 492 17
Myanmar 60 89 1.4
US 316 15600 50
Europe 739 15800 32
China 1354 12500 9
ASEAN 603 3500 6
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Question: In what type of IP issues are you most interested in
Malaysia? (multiple answer)
A. Registration of IPR
B. Acquisition/licensing of IPR
C. Enforcement of IPR
D. Freedom to operate, in light of third party IPR
E. Valuation of IPR
Poll 2
05 December 2013
Main types of Intellectual Property
¾ Patents protect inventions and new innovations
¾ Trade marks protect brands
¾ Industrial designs protect the appearance of articles
¾ Copyright protects the expression of an idea
e.g. literary, artistic, musical and dramatic works
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Main Types of Intellectual Property (2)
¾ Common law
¾ e.g. protects a person’s goods from being ‘passed off’ as another’s
¾ Contract law
¾ Know-how and trade secrets
¾ Confidentiality & non-disclosure agreements (NDAs)
¾ Competition law
¾ Anti-trust – protects against abuse of dominant position
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Malaysian Legal System
¾ Common law, based on UK (with Australian influence)
¾ Constitution also provides for Syariah (Islamic) law
¾ IP matters administered by Intellectual Property Corporation of Malaysia
(MyIPO)
¾ Internal patent examination - examiners typically have technical
background
¾ Applications for about 6,000 patents, 26,000 trade marks and 1,800
registered designs filed annually
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Patent Filing Data
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0
100000
200000
300000
400000
500000
600000
2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011
Year
Tota
l num
ber o
f pat
ent a
pplic
atio
ns fi
led
ChinaUnited States of AmericaJapanRepublic of KoreaEuropean Patent OfficeGermanyIndiaRussian FederationCanadaAustraliaUnited KingdomFranceMexicoChina, Hong Kong SARSingaporeItalySouth AfricaIsraelMalaysiaNew Zealand
Malaysian Legal System (2)
¾ General compliance with most IP treaties
o some inconsistencies e.g. Trade mark and design right terms operate from priority date (if claimed)
¾ Member of PCT since 2006
¾ Intending to join Madrid Protocol
and Hague Agreement next year
¾ Unusually strong Utility Model type protection
o known as ‘Utility Innovation’
¾ Voluntary copyright registration
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Malaysian Legal System (3)
¾ Fused lawyer profession, like US, but patent agents separate, like UK (although few are both technically and legally qualified)
¾ Ministry of Domestic Trade enforcement officers empowered to raid premises and seize goods which infringe trade marks or copyright
¾ IP cases heard in dedicated High Court
o courts relocated and updated in 2007 – trials typically heard within 12-18 months
¾ Adversarial system (no jury trials for IP)
¾ Appeal stages to Court of Appeal and Federal Court
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IP Rights Summary
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Right Type Malaysia Patents National 9
Utility model 9 Regional 8 International (PCT) 9
Trade Marks National 9 Passing off 9 Regional 8 International (Madrid Protocol) (8)
Designs National 9 Regional 8 International (Hague Agreement) (8)
Copyright National 9 Registration 9 International (Berne Convention) 9
IP Registration (Patents) ¾ Applications usually in English
¾ Patentability exclusions similar to UK
o e.g. Business methods, medical methods, but not software
¾ Published after 18 months, then examined
¾ Inter-convertable with ‘Utility Innovation’ application
o unusually strong as fully examined, novelty only, 20 year term
¾ Term = up to 20 years from filing date (if filed on/after 1st August 2001)
o if filed before 1st August 2001, the maximum term is the longer of (a) 20 years from filing date; or (b) 15 years from grant date
o renewal fees paid on anniversary of grant date
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IP Registration (Patents) ¾ Substantive examination
o In-house by local examiner o Often refer to examination reports in other jurisdictions o Usually well-reasoned o Only 2 months to reply (can extend for extra fees) o Can pay extra fees for acceleration if good reason
¾ Modified examination o Application granted on basis of granted patent in other jurisdiction,
namely AU/EP/GB/JP/KR/US
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IP Registration: Trade Marks ¾ Non-traditional marks not yet allowed
¾ Examined on absolute grounds and relative grounds
o Examiners appear to be quite pedantic at present, often raise objections
¾ Published for opposition
o registered if no objections after 2 months
¾ Application may be deemed ‘abandoned’ if procedure not completed within 12 months
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IP Registration: Industrial Designs
¾ Require worldwide novelty for applications filed on or after 1st July 2013
¾ Relatively high official fees, dependent on number of views to be
published
¾ Usually registered within 6-9 months
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IP Registration: Copyright
¾ Voluntary system, created in 2012
¾ Submit work to MyIPO as hard copy or (preferably) in digital form (e.g. on
USB drive)
¾ Provides initial proof and evidence of ownership
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Question: Have you had any issues with IP enforcement in Malaysia,
or do you have any concerns? (please select 1 answer only)
A. Yes – patents
B. Yes – trade marks
C. Yes – designs/copyright
D. Yes – confidentiality/trade secrets
E. No or other
Poll 3
05 December 2013
Case Study 1 Sanofi-Aventis (M) S/B v. Fresenius Kabi (M) S/B [2011] • Malaysian (and UK) law states that for a patented process it is an
infringement to make or import a product directly obtained by that process. • Sanofi owned process patent for making docetaxol trihydrate, the active
ingredient of anti-cancer drug Taxotere, by crystallisation from water mixed with an aliphatic alcohol containing 1-3 carbon atoms (e.g. ethanol).
• Fresenius imported the equivalent drug Daxotel into Malaysia, made in India via a process using acetonitrile as solvent instead of alcohol.
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Sanofi
Fresenius
Case Study 1 Sanofi-Aventis (M) S/B v. Fresenius Kabi (M) S/B [2011] • Malaysian High Court used UK ‘purposive construction’ approach i.e. what
did the patentee mean (as opposed to what was literally stated). • Meaning of ‘aliphatic alcohol containing 1-3 carbon atoms’ very clear, so
court held that use of acetonitrile instead of alcohol did not infringe patent (product not made directly by the same process).
• Patent considered valid in light of prior art. • Overall fair and reasonable judgment. • However, currently under appeal by both parties!
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т
Case Study 2 Danone Biscuits (M) S/B v. Hwa Tai Industries Bhd [2010] • Malaysian law states that a trade mark is infringed by a person who uses
an identical mark or one which so nearly resembles it as likely to deceive or cause confusion in the course of trade in relation to the registered goods or services.
• Danone owned registered Malaysian trade mark 90007035 ‘CHIPSMORE’ in respect of biscuits (class 30) and used brand on cookies since 1990.
• Hwa Tai sold cookies under ‘ChipsPlus’ brand. • Danone sued Hwa Tai for trade mark infringement and ‘passing off’.
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Case Study 2 Danone Biscuits (M) S/B v. Hwa Tai Industries Bhd [2010] • ChipsPlus held to be infringement of ChipsMore as similar marks for identical
goods and likely to deceive or cause confusion. o ‘Chips’ part phonetically identical o Suffixes ‘More’ and Plus’ have similar meaning o Similar format of the words
• Claim for ‘passing off’ also successful. o Substantial goodwill and reputation o Appearance of ChipsPlus product held to be strikingly similar =
misrepresentation
30 05 December 2013
Take Away Messages ¾ Reasonably well-developed IP system
o Top 20 globally for number of patent applications filed/year o Unusually strong ‘Utility Innovation’ patent o Experienced local examiners for prosecution o Dedicated courts for enforcement o But few agents dual qualified (technically & legally)
¾ Courts often refer to UK case law for guidance
¾ Government keen to promote innovation and transition to knowledge
economy
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Q&A • Dr Chris Hemingway • Director, Head of Patent practice • Marks & Clerk (Malaysia) Sdn Bhd • Chris specialises in the drafting and prosecution of
patent applications, and has experience with a broad range of technical subject matter. In addition to being a Registered Malaysian Patent, Trade Mark and Industrial Design Agent, he is also a Chartered UK Patent Attorney, European Patent Attorney, and a European Trade Mark and Design Attorney
[email protected] +60 3 2162 8986
05 December 2013
Helpdesk Country IP Factsheet for Malaysia: Check it out NOW!
To access all our publications click here
33 05 December 2013
Join our upcoming events!
1. ‘How to Manage, Protect and Enforce your IP in the Philippines’ - 6 December, Manila
2. ‘Intellectual Property Rights Protection Strategies for Italian SMEs in Southeast Asia’ - 11 December, Online Webinar
34 05 December 2013
14 August 2013 35
Other IP Support Services
For information about IPR in China, please contact the China IPR SME Helpdesk
Telephone: +86 (10) 8527 6922 E-mail: [email protected]
Online: www.CHINA-iprhelpdesk.eu
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Telephone: +352 - 25 22 33 – 333 E-mail: [email protected]
Online: www.iprhelpdesk.eu
The ASEAN IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium
Enterprises (SMEs) relating to IPR in South-East-Asia
�Helpdesk Enquiry Service – [email protected] �Training & Events �Materials �Online Services - www.asean-iprhelpdesk.eu
For more information about our services and how the ASEAN IPR SME Helpdesk can add value to SMEs, please contact: Telephone/Hotline: +62 21 571 1810
36 05 December 2013
