INTELLECTUAL PROPERTY: THE CATALYST FOR INNOVATION … · 8 Ikan Terubuk Mulut Besar Sarawak 9 Halia Bentong 10 Kayu Manis Keningau 11 Tuhau Tambunan . 20 . TRADE MARK •Protected

INTELLECTUAL PROPERTY: THE CATALYST FOR INNOVATION AND

COMMERCIALIZATION 4 November 2015

Disclaimer

The following slides have been compiled for this seminar regarding intellectual

property system in Malaysia. Every effort has been made to ensure that the information

is accurate and up-to-date; however, as the practices and laws may change from time to

time, that is not always possible.

The speaker makes no claims, promises, or guarantees about the accuracy,

completeness, or adequacy of the information, and expressly disclaims any liability,

loss or risk, personal or otherwise, which is incurred as a consequence, directly or

indirectly, of the use and application of any of the content of this seminar.

Sofia Rehan Ramli

Patent Examiner,

Intellectual Property Corporation of Malaysia (MyIPO)

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A Brief History about IP in Malaysia

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1950 Pej. Pendaftaran Cap Dagangan dan Jaminhak was established; Trade Mark Ordinance 1950 was enforced

1983 Pej. Pendaftaran Cap Dagangan dan Paten was established under Ministry of Trade and Industry

1990 KPDNHEP was set up, IP Deparment was placed under the Ministry

2003 IP Department was corporatized, known as Perbadanan Harta Intelek Malaysia (MyIPO)

Vision and Mission

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VISI

To be one of the leading IP organizations

MISI

Providing strong legal infrastructure and effective

administration regime to enhance greater creativity

and exploitation of IP

MyIPO Organization Chart

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Unit 1-7 (Ground floor) & Mezzanine,

Level 12, 12A, 13, 15, 16, 17, 18 and 19,

Tower B, Menara UOA Bangsar,

No. 5, Jalan Bangsar Utama 1,

59000 Kuala Lumpur,

MALAYSIA.

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Intellectual Property Corporation of

Malaysia (MyIPO)

Northern Zone

(Pulau Pinang)

Headquarters

(Kuala Lumpur)

Melaka Branch Southern Zone

(Johor Bahru)

East Coast Zone

(Kuantan)

Sarawak Branch

(Kuching)

Sabah Branch

(Kota Kinabalu)

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Intellectual Property Corporation of

Malaysia (MyIPO)

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DEFINITION OF INTELLECTUAL PROPERTY

“intangible property that is the result of creativity”

• Oxford Dictionary

“ someone's idea, invention, creation, etc., which can be protected by law from being copied by someone else”

• Cambridge Dictionary

“Harta hasil dari kreativiti manusia”

Main purpose: to obtain exclusive rights / monopoly by stopping others from exploiting the result of the creativity

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.. But how can I protect it?

Components of IP

IC LAYOUT DESIGN COPYRIGHT

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OTHER FORM OF PROTECTIONS RELATED TO IP

• Trade Secret – Example: Coca-cola, Colonel Sanders’ Original Recipe, WD-40 lubricant

• Confidential Information – Example: Client’s personal information

• Traditional Knowledge – Example: medical knowledge practiced by witchdoctors, hunting technique

• Genetic Resources – Example: Mengkudu for treating boils

• Traditional Cultural Expressions – Example: wayang kulit, dikir barat

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LAYOUT-DESIGN OF AN INTEGRATED CIRCUIT

• Protected under Layout-design of Integrated Circuits Act 2000

• Definition: the three-dimensional disposition of the elements of an integrated circuit intended for manufacture

• Eligible for protection automatically • Duration of protection: 10 years (from date of exploitation) - 15 years (from date of creation)

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GEOGRAPHICAL INDICATION

• Protected under Geographical Indications Act

• Definition: an indication which identifies any goods as to its place of origin, where a given quality or reputation is attributable to its geographical origin

• Duration of protection: 10 years; renewable every 10 years

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GEOGRAPHICAL INDICATION

• Who can apply?

– a person who is carrying on an activity as a producer of the goods in the geographical area specified;

– a competent authority; or

– a trade organization or association.

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1 Tenun Pahang DiRaja

2 Biskut Dan San Sungai Lembing

3 Gaharu Gopeng

4 Songket Terengganu

5 Kain Songket Melaka

6 Isau Sarawak

7 Durian Nyekak Sarawak

8 Ikan Terubuk Mulut Besar Sarawak

9 Halia Bentong

10 Kayu Manis Keningau

11 Tuhau Tambunan

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TRADE MARK

• Protected under Trade Marks Act 1976 • Definisi:

– a sign which distinguishes the goods and services of one trader from those of another

– includes words, logos, pictures, names, letters, numbers or a combination of these

• Duration of protection: 10 years; renewable every 10 years

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TRADE MARK

• Applicants are advised to conduct a preliminary search (RM20/hour) in MyIPO before submitting an application

• Legal action that can be taken against others who use the marks without consent: – Take civil action under the TM Acts for infringement;

or – lodge complaints to Enforcement Division under

MTDCC for appropriate actions under the Trade Description Act 1972

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TRADE MARK • Registrable trade marks:

– Name of a person, firm, company represented in a special manner;

– Signature of the applicant or of some predecessor in his business;

– An invented word or words; – Words with no direct reference to the character or

quality of the goods or services not being, according to its ordinary meaning or a geographical significance or surname

– Any other distinctive – Are not considered as prohibited trade mark [Sec. 14

of TM Acts]

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EXAMPLES OF UNREGISTRABLE AND PROHIBITED TRADE MARK

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Literary Works

Sound Recordings

Artistic Works

Musical Works

Films

Broadcasts

Section 7

Derivative Works Section 8

Translations, adaptations, arrangements and other transformations of works eligible for copyright. Collection of works eligible for copyright which by reason of selection and arrangement of their contents constitute intellectual creation.

What can be Protected under Copyright?

DURATION OF PROTECTION

• Qualified to be protected under the

Act

• Original

• Reduced into a material form ( Idea / Expression )

• Qualified Person

• First made / produced in Malaysia

LIFE OF AUTHOR + 50

YEARS:

• LITERARY

• ARTISTIC

• MUSICAL

• 50 TAHUN

• FILM

• SOUND RECORDINGS

• BROADCAST

• GOVERNMENT WORKS

WORKS THAT QUALIFY TO BE

PROTECTED

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Proof of copyright ownership:

i. Affidavit / Statutory Declaration (Sec. 42 of Copyrights Act 1987)

i. Mail the work to own address (date stamp as proof)

ii. Deposit Safebox

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Sec. 26A, Copyrights Act 1987

Another alternative for

proof of copyright ownership

Prima facie evidence of copyright ownership

Database

Can be used in research and

education

Copyright Voluntary Norification System

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INDUSTRIAL DESIGN

• Protected under Industrial Designs Act 1996

• Definition:

– the ornamental or aesthetic aspect of an article

– may consist of three-dimensional features, or two-dimensional features

– the features are applied to a finished article, and are appealing to eye

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Shape & Configuration (3D)

COCA-COLA collection – the evolution of ID

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Shape & Configuration (3D)

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Carpet

Pattern & Ornamentation (2D)

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Shape

of the

vase

The pattern on the

surface of vase

Combination of 3D & 2D

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•Fulfills the definition of ID (Sek. 3)

•Worldwide novelty (Sek. 12)

•Not contrary to public order or

morality (Sek. 13)

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• it is a method or principle of construction;

• the designs of the articles concern exclusively with how an article functions; and

• the designs of articles that are integral parts of other articles and whose features are dependent upon the appearance of other article.

• the aesthetic appearance is insignificant / immaterial

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method or principle of construction

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concern exclusively with how an article

functions

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are integral parts of other articles

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Panel pintu

Bumper

Lampu belakang

Gril

cermin

Bonnet

Boot

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Example: A pencil which its tip is designed to be shorter

4. The aesthetic appearance is

insignificant / immaterial

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Wallpaper Can

• New Application Form ID1

• Application Fee RM 500 (480)

• Additional Design RM 500 (480)

• Copy of design representation

- RM200 / view

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•5 years from date of filing

•is extendable for a further four consecutive terms

of 5 years each

•The maximum protection period is 25 years

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• First bullet point here

• Second bullet point here

• Third bullet point here

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PATENT

• Exclusive right

– To stop others from:

• Making

• Using

• Offering for sale

• Selling or importing

the invention without the owner’s consent

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Revealing the technology related to the invention

That is why a patent application must contain a detailed description on

As an exchange for

How to make How to use

the invention 54

PATENT SYSTEM IN MALAYSIA

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20 years rights to exclude others Can use or sell his/her invention

Technology disclosure To spread new

technical knowledge To avoid R&D redundancy

To foster innovation

INVENTOR IPO

WHAT IS INVENTION?

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• "An idea of an inventor which permits in practice the solution to a specific problem in the field of technology“

–An invention is defined as a new and inventive solution to a technical problem.

• An invention may be or may relate to a product or process.

The Evolution of Invention

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TYPE OF PROTECTION

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Patent

An exclusive right granted by a

government to an inventor/assignee

Protected twenty (20) years from

the date of filing of an application.

Utility Innovation

An exclusive right granted for a

"minor" invention

Protected 10 + 5 + 5 years from

the date of filing subject to use.

NOVELTY INVENTIVE STEP

INDUSTRIALLY APPLICABLE

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NON-PATENTABLE INVENTIONS

• DISCOVERIES, SCIENTIFIC THEORIES, MATHEMATICAL METHODS

• PLANT / ANIMAL VARIETIES

• SCHEMES, RULES OR METHOD OF DOING BUSINESS / PLAYING

GAMES

• METHOD FOR TREATMENTS OF HUMAN BODY

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a) discoveries, scientific theories and mathematical methods

• Discovery

Not patentable!

Piezoelectric: A material that generates an electric charge when mechanically deformed. Conversely, when an electric field is applied to piezoelectric materials they mechanically deform. Inorganic crystals are the strongest piezoelectrics but polymer films such as PVDF have some piezo effect.

NON-PATENTABLE INVENTION

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Patentable!


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• Scientific theories

E= mc

F= ma a

b

c

2

c = a + b

2 2 2


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• Mathematical methods

– Which are carried out on numbers and provide a result in numerical form -> not patentable

• E.g. a new way to calculate square roots, shortcut method of division

– Its application -> patentable

• A calculating machine

• Method of image processing which used the mathematical method to operate on numbers representing an image


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b) plant and animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms


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• Animal variety

An Israeli geneticist,

Avigdor Cahaner, created the world's first featherless chicken at the genetics faculty at the Rehovot Agronomy Institute near Tel Aviv, Israel. The idea behind the development of this naked bird is that it will create a more 'convenient' and energy efficient chicken which can live in warm countries where feathered chickens don't do well and cooling systems are too expensive to be commonly affordable.


A photo provided by the Zoo Safari and Hollywoodpark Stukenbrock shows

the zebra and horse crossbreed. Eclyse, crossbreed filly was born in 2006.

Her mother is a horse and the father is a zebra from Italy.

Animal variety

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• Method for doing business

c) schemes, rules or methods for doing business, performing purely mental acts or playing games


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NON-PATENTABLE INVENTION Method of playing a pursuit board game (US7658385)

Claim:

A method of playing a board game of pursuit

for a first player and a second player;

the method comprising the steps of:

a) providing a game board that includes

a start and a plurality of discrete spaces

that form a pathway;

b) providing a device for determining

the number of spaces to be moved

along the pathway;

c) determining an order of play such

that the first player plays first and

the second player plays second; ………

Non-patentable!

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Method of exercising a cat (US5443036)

Claim:

A method of inducing aerobic exercise in an unrestrained cat comprising the steps of:

(a) directing an intense coherent beam of invisible light produced by a hand-held laser

apparatus to produce a bright highly-focused pattern of light at the intersection of the

beam and an opaque surface, said pattern being of visual interest to a cat; and

(b) selectively redirecting said beam out of the cat's immediate reach to induce said cat to

run and chase said beam and pattern of light around an exercise area.

Non-patentable!

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d) Methods for treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body


Milagros The Mermaid

The surgeon has successfully

separated her legs on 1 June 2005, Peru

Methods for the treatment of human body

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Description

Claim(s)

Abstract

Drawings

How to read patent document?

Title Page / Front Page

Prior Art Discussion

Description

Claim(s)

Drawing(s)

Abstract

Patent Document

Bibliographic data

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3

2

Abstract

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Drawing

Title of invention

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4

Kind Code

Cited doc.

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Fees

1.Form 1 RM 290 (manual)

RM 260 (efiling)

2.Form 22 – Statement of justifying RM80

3.Form 17 – To assign Patent Agent RM80

4.Form 5 – Request For Substantive

Examination RM 1100 (manual)

RM950 (efiling)

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Industrial Property Right

Broadband antenna technology Patent right

Protect new invention (for 20 years from application)

Copyright

Program Codes

Protect creative expression (for 50 years following the author’s death)

Industrial design right

Sleek design Protect a design of goods (for 15 years after registration)

Trademark right

Brand name

Protect marks used for goods & services (for 10 years after registration) IC Layout designs

Protect layout designs of integrated circuits (for 10 years from the date of its first commercially exploited)

WHY THE RESULT OF CREATIVITY MUST BE PROTECTED?

1. To reduce the risk of infringement

– To deter other parties from filing / registering the similar same invention / trade mark / design

– To reduce the possibility of our own product infringing other IP owners’ rights

2. To strengthen market position

– To increase investors’ confidence in our potential

– To reduce competition in specific market

– To project positive image to the investors / markets

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3. To gain more profit – To ensure the investment in R&D is worth the money – Through licensing, royalty, etc.

4. Cross-licensing

– Exchange of technology knowledge between other parties

– To foster good partnership with other companies – To gain even broader market

5. Can be used as collateral – IP as instrument to obtain grant / funding for business

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WHY THE RESULT OF CREATIVITY MUST BE PROTECTED?

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FROM R&D TO LICENSING

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FROM PATENT TO COMMERCIALIZATION

Patent

IP Commercialization Policy oleh MOSTI

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Patent

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http://iprmarketplace.com.my/

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IPR Marketplace



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IPR Marketplace

TYPHIDOT : a rapid diagnostic test to

diagnose acute typhoid

-> gross sales of USD4.9 million,

more than 500 jobs worldwide

Professor Dr Asma Ismail Universiti Sains Malaysia

SUCCESS STORIES

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MY-134867-A; US 7,132,117 B2 EP 1,313,491 B1

Bioactive Fraction of eurycoma longifolia

SUCCESS STORIES

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TING SIE BING

MY-114898-A Congkak Board SUMBER: Pusat Sains Negara

SUCCESS STORIES

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TIPS

How can we know that our IP will generate the maximum profit / is beneficial to the public?

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1. Conduct searching before we start

our R&D

www.espacenet.com

www.google.com/patents

https://iponline.myipo.gov.my/iponline/

MyIPO offers a patent searching course for public / researchers / inventors

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http://www.espacenet.com/

http://www.google.com/patents



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Why perform a patent search?

1. Scenario 1: Technology specialist eg. Researcher, lecturer, inventors -> where to start your research?

2. Scenario 2: Own invention -> to file or not to file?

3. Scenario 3: An agent receive an invention -> conduct prior art searching before filing

4. Scenario 4: Technology knowledge for all -> get access to the latest technology

5. Scenario 5: Competitor monitoring

2. Market-driven approach

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• Patent searching – do not reinvent the wheel!

• Market research – market size for commercialization

• Prototype – to determine function and practicality of our product

• Cost to manufacture – is it worth it?


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.. But what if you can sell 2 – 3 million of this product per year?


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TIPS:

3. Do not disclose the innovation

before filing

MyIPO offers a patent drafting course for public / entrepreneurs / inventors / researchers

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Further Info

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Prosedur

Further Info

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THANK YOU [email protected]

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Documents

INTELLECTUAL PROPERTY: THE CATALYST FOR INNOVATION … · 8 Ikan Terubuk Mulut Besar Sarawak 9 Halia Bentong 10 Kayu Manis Keningau 11 Tuhau Tambunan . 20 . TRADE MARK •Protected