UNIVERSITI TEKNOLOGI MALAYSIA Innovation & Commercialisation Centre

GLOSSARY INNOCOMMS IP PROTECTION

APPLICATION

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INNOVATION & COMMERCIALISATION CENTRE

GLOSSARY INNOCOMMS IP PROTECTION APPLICATION

ã 2019 Universiti Teknologi Malaysia

81310 • Skudai Johor, Malaysia

Phone 075591500 • Fax 075591576

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TABLE OF CONTENTS

ITEM PAGE

INTRODUCTION 4

INNOCOMMS ENDORSEMENT/ APPROVAL FLOW AND STATUS 9

INTELLECTUAL PROPERTY APPLICATIONS STATUS 10

INTELLECTUAL PROPERTY APPLICATIONS SECTIONS 11

INTELLECTUAL PROPERTY APPLICATIONS SECTIONS SUMMARY 12

SCREENING GUIDELINE: PATENT 14

SCREENING GUIDELINE: TRADEMARK 16

CLASS OF GOODS AND SERVISES (TRADEMARK) 19

SCREENING GUIDELINE: INDUSTRIAL DESIGN 21

SCREENING GUIDELINE: LAYOUT-DESIGN OF AN INTEGRATED CIRCUIT 22

SCREENING GUIDELINE: COPYRIGHT 23

INNOCOMMS SECTIONS: CONTRIBUTORS 26

INNOCOMMS SECTIONS: PRIOR ART & DISCLOSURE 28

INNOCOMMS SECTIONS: FUNDING 31

INNOCOMMS SECTIONS: EXTERNAL COLLABORATION & BENEFIT OF INVENTION

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INNOCOMMS SECTIONS: NABC SCHEME 35

INNOCOMMS SECTIONS: INNOCOMM EVALUATION FORM, STATUTORY DECLARATION & APPLICANT DECLARATION

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INTRODUCTION INTELLECTUAL PROPERTY

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INTELLECTUAL PROPERTY (IP) ü Creation of the minds - inventions, literary and artistic works, and symbols, names and

images used in commerce

ü Exclusive right to prevent or stop others from commercially exploiting the IP.

ü Intellectual property protection in Malaysia comprises of patents, trademarks, industrial designs, copyright, geographical indications and layout designs of integrated circuits.

Intellectual Property System In Malaysia ü All intellectual property applications (except Trade Secret) is filed with Malaysia Intellectual

Property Officer (MyIPO). ü MyIPO is a corporation under Ministry of Domestic Trade and Consumer Affairs that is

responsible to develop and manage intellectual property system in Malaysia. ü Malaysia is a member of the World Intellectual Property Organisation (WIPO) and a

signatory to the Paris Convention and Berne Convention which govern these intellectual property rights.

ü Laws Governing Intellectual Property in Malaysia: • Patents Act 1983 • Trade Marks Act 2019 • Copyrights Act 1987 • Industrial Designs Act 1996 • Geographical Indications Act 2000 • Layout Designs of Integrated Circuits Act 2000

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Types Of Intellectual Property Applications Relevant To UTM Staff

1. Patent Protection for technical inventions

2. Trademarks Protection of logos and brand names

3. Industrial Design Protection of aesthetic design

4. Copyright Protection of artistic endeavors

5. Layout Designs of Integrated Circuits

Protection of electronic circuitry design

6. Trade Secret Undisclosed/confidential business information

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PATENT ü Protection for technical inventions ü To get a patent, technical information about the invention must be disclosed to the public

in a patent application. In return, and exclusive right is granted for the invention. ü The invention must be disclosed in an application in a manner sufficiently clear and

complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field.

TRADEMARKS ü Protection of Logos and Brand Names ü Trade mark is a sign which distinguishes the goods and services of one trader from

those of another. A mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these.

INDUSTRIAL DESIGN ü Protection of aesthetic design ü An industrial design means features of shape, configuration, pattern or ornament

applied to an article by any industrial process which in the finished article appeal to the eye and are judged by the eyes.

ü Protection does not include functionality of design

LAYOUT DESIGNS OF INTEGRATED CIRCUITS.

ü Protection of Electronic Circuitry Design

ü A layout-design of an integrated circuit is the three-dimensional disposition of the

elements of an integrated circuit and some or all of the interconnections of the integrated circuit or such three-dimensional disposition prepared for an integrated circuit intended for manufacture.

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COPYRIGHT ü Protection of artistic endeavors

ü Copyright is the exclusive right to control creative works created by the author, copyright

owner and performer for a specific period governed under the Copyright Act 1987.

ü In Malaysia, copyright exists as soon as the original work is created and belongs to the creator of the work automatically, upon fulfillment of the following conditions: • Sufficient effort has been expended to make the work original in character; • The work has been written down, recorded or reduced to a material form; and • The author is a qualified person or the work is made in Malaysia or the work is first

published in Malaysia.

TRADE SECRET

ü Undisclosed information confidential/business information

ü Contrary to patents, trade secrets are protected without registration, that is, trade secrets

are protected without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of time.

ü While these conditions vary from country to country, some general standards exist which

are referred to in Art. 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement):

• The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).

• It must have commercial value because it is a secret. • It must have been subject to reasonable steps by the rightful holder of the information

to keep it secret (e.g., through confidentiality agreements).

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INNOCOMMS APPLICATION INNOCOMMS ENDORSEMENT/ APPROVAL FLOW AND STATUS

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INTELLECTUAL PROPERTY APPLICATIONS ENDORSEMENT/ APPROVAL FLOW

Approval Flow Patent

Trademark

Industrial Design

Integrated Circuit

Copyright

Trade Secret

Endorsement by TDPI/Assoc. Chair

(with I&C Committee) Y Y Y Y Y N

Reviewing by Secretariat Y Y Y Y Y Y Verification by Deputy

Director Y Y Y Y Y Y

Approval by Director Y Y Y Y Y Y INTELLECTUAL PROPERTY APPLICATIONS STATUS

STATUS DEFINITION LEVEL DRAFT Application is in draft INVENTOR SUBMIT Application is submitted, to be endorsed by all

contributors and finally received by verifying Officer at School/Faculty level

I&C COMMITTEE

RECOMMENDED Endorsed by School/Faculty, received by ICC Secretariat

ICC SECRETARIAT

RECOMMENDED CORRECTION

Correction required by School/Faculty Committee

I&C COMMITTEE

NOT-RECOMMENDED Application is not endorsed by School/Faculty Committee. Application will not go through further

I&C COMMITTEE

REVIEWED Endorsed by ICC Secretariat, received by Deputy Director of ICC

ICC SECRETARIAT

SECRETARIAT CORRECTION

Correction required by ICC Secretariat ICC SECRETARIAT

VERIFIED Endorsed by ICC Secretariat, received by Director of ICC

ICC SECRETARIAT

EVALUTOR CORRECTION

Correction required by Deputy Director of ICC DEPUTY DIRECTOR OF ICC.

NOT-VERIFIED Application not endorsed by Deputy Director of ICC. Application will not go through further

DEPUTY DIRECTOR OF ICC.

APPROVED Approved by Director of ICC. Application shall be processed for Malaysia Intellectual Property protection filing

DIRECTOR OF ICC.

NOT APPROVED Application not approved by Director of ICC DIRECTOR OF ICC

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INNOCOMMS APPLICATION

APPLICATION SECTIONS

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INNOCOMMS Application Sections 1. CONTRIBUTORS 2. PRIOR ART 3. DISCLOSURE 4. FUNDING 5. EXTERNAL COLLABORATION 6. BENEFIT OF INVENTION 7. INVENTION/ TRADEMARK/INDUSTRIAL DESIGN /COPYRIGHT /LAYOUT DESIGNS

OF INTEGRATED CIRCUITS/TRADE SECRET 8. NABC SCHEME 9. INNOCOMM EVALUATION FORM 10. STATUTORY DECLARATION (SD) 11. APPLICANT DECLARATION INTELLECTUAL PROPERTY APPLICATIONS SECTIONS SUMMARY

SECTION Patent Trademark

Industrial Design

Integrated Circuit

Copyright

Trade Secret

CONTRIBUTORS YES YES YES YES YES YES

PRIOR ART YES YES YES NO NO YES

DISCLOSURE YES YES NO NO NO YES

FUNDING YES YES YES YES YES YES

EXTERNAL COLLABORATION YES YES YES YES YES YES

BENEFIT OF INVENTION YES YES YES YES YES YES

NABC SCHEME YES YES YES YES NO NO

INNOCOMM EVALUATION

FORM YES YES YES YES NO NO

STATUTORY DECLARATION NO NO NO YES YES NO

APPLICANT DECLARATION YES YES YES YES YES YES

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SCREENING GUIDELINE INVENTION/ TRADEMARK/INDUSTRIAL DESIGN/ COPYRIGHT /LAYOUT DESIGNS OF INTEGRATED CIRCUITS/TRADE SECRET

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PATENT PATENT APPLICATION Application Title* Patent Title (Filled by Admin after patent filed) Invention details Date Invented When was this invention developed? Place Invented Where was this invention developed? Country of Origin Which country this invention was invented in? Patent Description* New Use Process / Method A Device Problem Statement* Problem* Solution* Brief Description of Invention* (200 characters) Full Description of Invention* (Attachment button - PDF)

SCREENING GUIDELINE

Types of application that qualifies as a patent

ü Product; ü Process/ Method; ü New Use – pharmaceutical products; or

ü Technical solution to a problem

Patent Criteria:

ü New/novel No prior art describing the invention. Prior art is everything made available to the public, anywhere in the world.

ü Involves an inventive step Invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and

ü Be industrial applicable Can be made or used in any kind of industry.

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Non-Patentable Inventions

ü Discoveries, scientific theories and mathematical methods;

ü 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;

ü Schemes, rules or methods for doing business, performing purely mental acts or playing games;

ü Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.

Disclosure

ü It is important that the application date has not been disclosed in public domain (through publication, etc) exceeding 8 months from date of publish. (4 months to enable ICC to process the filing)

ü Malaysia has a grace period provision of 12 months upon any disclosure before the loss of novelty (even if it is researcher’s own work)

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TRADEMARK

TRADEMARK Application Title* Trademark Title (Filled by Admin after trademark filed) Trademark details Date Invented When was this trademark developed? Place Invented Where was this trademark developed? Country of Origin Which country this trademark was invented in? Trademark Justification UTM UTM corporate purpose and use. Commercialisation Marketing or branding purpose. Trade marks may be

licensed or franchised. Assists consumers to choose goods and services with ease

Justification for Applying Trademark Write- up

(300 characters)

Trademark Class 1 - 45 Brief Description of trademark* (200 characters) Trademark Illustration* (Attachment button - PDF)

SCREENING GUIDELINE ü A sign includes words, logos, pictures, names, letters, numbers or a combination of these

Non-Registrable Trade Mark

ü Prohibited Marks - If the use of which is likely to confuse or deceive the public or contrary to law.

ü Scandalous or Offensive Matter - If it contains or comprises any scandalous or offensive matter or would not otherwise be entitled to protection in any court of law.

ü Prejudicial to the Interest or Security of the Nation - Registrar bears the responsibility of determining the trade mark, whether it might be prejudicial to the interest or security of the nation. It may be that a mark contains an inflammatory statement or words.

Allowed Application: • UTM corporate purpose and use. • Marketing or branding purpose. For ready-to-commercialise products only Trademark Class

ü Class 1 to 45 - Please refer to MyIPO’s CLASSIFICATION OF GOODS AND SERVICES

ü Each trademark Class needs one separate application.

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CLASS OF GOODS AND SERVISES (TRADEMARK)

No. Title Description

1 CLASS 1 Chemicals used in industry, science and photography, as well in agricultural, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry

2 CLASS 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

3 CLASS 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

4 CLASS 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting

5 CLASS 5 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

6 CLASS 6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores

7 CLASS 7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines

8 CLASS 8 Hand tools and implements (hand-operated); cutlery; side arms; razors

9 CLASS 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media;

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No. Title Description

mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus

10 CLASS 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials

11 CLASS 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes

12 CLASS 12 Vehicles; apparatus for locomotion by land, air or water

13 CLASS 13 Firearms; ammunition and projectiles; explosives; fireworks

14 CLASS 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

15 CLASS 15 Musical instruments

16 CLASS 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists~ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers~ type; printing blocks

17 CLASS 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal

18 CLASS 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery

19 CLASS 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal

20 CLASS 20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

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No. Title Description

21 CLASS 21 Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes

22 CLASS 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials

23 CLASS 23 Yarns and threads, for textile use

24 CLASS 24 Textiles and textile goods, not included in other classes; bed and table covers

25 CLASS 25 Clothing, footwear, headgear

26 CLASS 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers

27 CLASS 27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)

28 CLASS 28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

29 CLASS 29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

30 CLASS 30 Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice

31 CLASS 31 Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt

32 CLASS 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

33 CLASS 33 Alcoholic beverages (except beers)

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No. Title Description

34 CLASS 34 Tobacco; smokers~ articles; matches

35 CLASS 35 Advertising; business management; business administration; office functions

36 CLASS 36 Insurance; financial affairs; monetary affairs; real estate affairs

37 CLASS 37 Building construction; repair; installation services

38 CLASS 38 Telecommunications

39 CLASS 39 Transport; packaging and storage of goods; travel arrangement

40 CLASS 40 Treatment of materials

41 CLASS 41 Education; providing of training; entertainment; sporting and cultural activities

42 CLASS 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software

43 CLASS 43 Services for providing food and drink; temporary accommodation

44 CLASS 44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services

45 CLASS 45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals

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INDUSTRIAL DESIGN INDUSTRIAL DESIGN Application Title* Industrial Design Title (Filled by Admin after design filed) Industrial Design Details Date Invented When was this design developed? Place Invented Where was this design developed? Country of Origin Which country this design was invented in? Industrial Design Justification

UTM UTM corporate purpose and use. Commercialisation Product is ready to commercialise Justification for Applying Industrial Design Write-up

(300 characters)

Brief Description of Industrial Design

(200 characters)

Technical Drawing (Attachment button - PDF)

SCREENING GUIDELINE

ü Features of shape, configuration, pattern or ornament applied to an article by any industrial process which in the finished article appeal to the eye and are judged by the eyes.

ü Exterior features only ü Does not include function of invention

Non-Registrable Industrial Design

ü A method or principle of construction ü The designs of articles depend upon the appearance of another article which forms an

integral part of the article ü It differs only in immaterial details or features ü The features of the article are dictated solely by function

Allowed Application: • UTM corporate purpose and use. • For ready-to-commercialise products only

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LAYOUT-DESIGN OF AN INTEGRATED CIRCUIT

LAYOUT-DESIGN OF AN INTEGRATED CIRCUIT

Application Title Integrated Circuit Title (Filled by Admin after design filed) Integrated Circuit details Date Invented When was this layout-design developed? Place Invented Where was this layout-design developed? Country of Origin Which country this layout-design was invented in? Brief Description of Layout-design (200 characters) Technical Drawing (Attachment button - PDF)

SCREENING GUIDELINE

ü Protection of Electronic Circuitry Design ü Is filed like a Copyright ü Requires Statutory Declaration

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COPYRIGHT

COPYRIGHT Application Title* Copyright Title Correction by Admin Copyright details Date Invented When was this copyright developed? Place Invented Where was this developed? Country of Origin Which country this copyright was invented in? Problem Statement Problem Solution Copyright Category (Refer to Copyright Category) Brief Description of Copyright (200 characters) Full Description of Copyright (Attachment button - PDF/ MP3/ MP4) COPYRIGHT CATEGORY MODUL APPS SOAL SELIDIK/QUESTIONNAIRE/ KAJI SELIDIK/ INSTRUMENT/ ANALYSIS OR SURVEY TOOL FRAMEWORK/ MODEL MANUAL/ PANDUAN FORM/BORANG LAPORAN/ REPORT PROCEDURE/ METHOD OF OPERATION LAB SHEET TABLE/JADUAL CALCULATION/ EXCEL FORMULATION LECTURE NOTE/ TEACHING MATERIAL/ NOTA KULIAH SOURCE CODE ALGORITHM SOFTWARE SYSTEM SOUND/VIDEO RECORDING WORKBOOK OTHERS

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SCREENING GUIDELINE ü Limited to five (5) applications per inventor. ü Do not subdivide 1 subject into smaller parts.

ü 2 categories of copyright –

• Research output (R&D). Example – Research report, System/ Apps, Procedure • Not research output (Non- R&D). Example - Teaching notes, Course/ Seminar

Modules, Term of reference, Forms, (not including Questionnaires), Lab Sheet ü Copyright protection shall not extend to any idea, procedure, method of operation or

mathematical concept as such. ü Copyright material must be original and must not contain other people’s work without

consent.

Note: ü R&D – Will be sent to Commissioner of Oath AND MyIPO Voluntary Notification ü Non- R&D - Will be sent to Commissioner of Oath only

Categories Commissioner Of Oath Statutory Declaration

MyIPO Voluntary Notification

R&D COPYRIGHT √ √ NON R&D COPYRIGHT √ X

Works eligible for copyright

• Literary Works; • Musical Works; • Artistic Works; • Films; • Sound Recordings; And • Broadcasts • Derivative Works

Note:

ü Does not protect industrial design.

Literary workǁ includes—

a) novels, stories, books, pamphlets, manuscripts, poetical works and other writings; b) plays, dramas, stage directions, film scenarios, broadcasting scripts, choreographic

works and pantomimes; c) treatises, histories, biographies, essays and articles; d) encyclopedias, dictionaries and other works of reference; e) letters, reports and memoranda;

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f) lectures, addresses, sermons and other works of the same nature; g) tables or compilations, whether or not expressed in words, figures or symbols and

whether or not in a visible form; and h) computer programs,

but does not include official texts of the Government or statutory bodies of a legislative or regulatory nature, or judicial decisions, or political speeches and political debates, or speeches delivered in the course of legal proceedings, and the official translation thereof;

Derivative works The following derivative works are protected as original works:

a) translations, adaptations, arrangements and other transformations of works eligible for copyright; and

b) collections of works eligible for copyright, or compilation of mere data whether in machine readable or other form, which constitute intellectual creation by reason of the selection and arrangement of their contents.

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INNOCOMMS SECTIONS CONTRIBUTOR(S)

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SECTION: CONTRIBUTORS Category

1. Main Inventor/ Main Originator 2. Co-inventor/ Co-Originator

Main Inventor/ Main Originator ü UTM staff ü Project leader Note:

ü Co-inventor/ Co-Originator is not allowed to file on behalf of Main Inventor/ Main Originator – will not be able to Submit.

Co-inventor/ Co-Originator

ü List of individuals contributing to the project/ research. Individuals may be – • UTM staff; or • UTM student; or • External individual.

Personnel Status List of personnel contributing to project/research. Personnel may be –

ü UTM staff; or ü UTM student; or ü External contributor(s)

Note:

ü External individual – His/ her affiliated organisation should be declared in Section External Collaboration.

ü UTM Student need to file under his/her research supervisor i.e UTM staff ü Person contracted to produce/ fabricate the invention is not necessarily considered as

contributor. Contribution Percentage ü Upon mutual agreement among project/ research team. No fixed percentage by UTM/ ICC. ü Main Inventor/ Main Originator’s percent of contribution not necessarily higher than Co-

inventor/ Co-Originator. ü UTM student filing for IP of his/her project/research may have higher percent of

contribution than supervisor. ü Will be used as reference for income distribution should there be any commercialisation

of IP.

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INNOCOMMS SECTIONS PRIOR ART & DISCLOSURE

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SECTION: PRIOR ART

ü Prior art refers to scientific and technical information that exists prior to the effective date of IP application

ü Includes any public documents, such as patent documents, technical publications, conference papers, marketing brochures, products, devices, equipment, processes and materials

ü Comparison with the closest prior art can be useful for the understanding of the invention by listing the similarity(s) and difference(s).

Section/Tab Component

Prior Art Is there any known earlier work similar to this invention? No Yes Description Similarity(s)

Difference(s)

SECTION: DISCLOSURE 1. Past Disclosure; or 2. (Future) Intended Disclosure

ü Main Inventor/ Main Originator need to declare past or future disclosure (if any)

ü Malaysia has a grace period provision of 12 months upon any disclosure before the

loss of novelty (even by own work). This is especially important for patent application as novelty is one of requirement to acquire patent grant.

Note : ü Invention should be protected before any disclosure. Any discussion prior to

intellectual property protection should be protected under Non-Disclosure Agreement. Non-Disclosure Agreement

ü A contract between parties agreeing to not disclose information covered by the agreement.

ü To ensure information regarding unprotected IP is kept confidential

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Section/Tab Component Past Disclosure* No - Yes Date Where Description Attachment

Non-Disclosure Agreement (NDA) Was the NDA in place at the time of disclosure? No - Yes Date Where Description Attachment

Intended Disclosure No - Yes Date Where Description Attachment

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INNOCOMMS SECTIONS FUNDING

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SECTION: FUNDING

ü Details of all internal or external funding received which has been used in connection with this project; including grants, contracts, etc.

ü Not including personal funding e.g Zamalah, MyBrain, etc.

ü A copy of any agreement signed with funder should be attached for ICC’s perusal and reference; especially if there is a mention on IP. This is to decide if the IP is –

• Rightfully and fully owned by UTM; • Jointly owned with funder; or • Does not belong to UTM

ü If the IP is jointly-owned, a Joint Ownership Agreement should be in place. ICC will notify the other party prior to IP filing application and proceed with any other necessary arrangement.

Section/Tab Component FUNDING Internal/ External Funding Funder Type of Funding University Reference Number Project Title Project Leader

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INNOCOMMS SECTIONS EXTERNAL COLLABORATION & BENEFIT OF INVENTION

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SECTION: EXTERNAL COLLABORATION Section/Tab Component EXTERNAL COLLABORATION No Yes Government Agencies Other academic institution

Research Institute Previous Employment Industry Others Name of Organisation Agreement ü Details of collaboration with any external parties. ü A copy of any agreement signed with collaborator should be attached for ICC’s perusal

and reference; especially if there is a mention on IP. This is to decide if the IP is – • Rightfully and fully owned by UTM; • Jointly owned with funder; or • Does not belong to UTM

ü If the IP is jointly-owned, a Joint Ownership Agreement should be in place. ICC will notify the other party prior to IP filing application and proceed with any other necessary arrangement.

SECTION: BENEFIT OF INVENTION ü To list the benefit of this application to society/community or industry ü To help identify relevant society/community or industry Society/ Community List of benefit to society/ community Relevant community for the invention to be implemented

OR Industry List of benefit to industry Relevant industry(s) for the invention to be commercialised

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INNOCOMMS SECTIONS NABC SCHEME

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SECTION: NABC SCHEME

ü A concept adopted from SRI International; NABC is a tool used for the development, assessment and presentation of ideas.

N – Need A – Approach B – Benefit C – Competitor

ü An NABC comprises the four fundamentals that define a project's value proposition:

Need: What are our client's needs? A need should relate to an

important and specific client or market opportunity, with market size and end customers clearly stated.

Approach: What is our compelling solution to the specific client need? Draw it, simulate it or make a mockup to help convey your vision. As the approach develops through iterations, it becomes a full proposal or business plan, which can include market positioning, cost, staffing, partnering, deliverables, a timetable and intellectual property (IP) protection. If we are developing a product, it must also include product specifications, manufacturing, distribution and sales.

Benefits: What are the client benefits of our approach? Each approach to a client's need results in unique client benefits, such as low cost, high performance or quick response.

Competition/alternatives: Why are our benefits significantly better than the competition? Everyone has alternatives. We must be able to tell our client or partner why our solution represents the best value. To do this, we must clearly understand our competition and our client's alternatives.

(Copyright of SRI International)

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INNOCOMMS SECTIONS INNOCOMM EVALUATION FORM, STATUTORY DECLARATION & APPLICANT DECLARATION

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SECTION: INNOCOMM EVALUATION FORM ü INNOCOMM Evaluation Form is Self-Assessment Form on early stage market

assessment for IP ü It measures -

i. Patent Protection (Strength Of Patent) ii. Readiness Of The Technology iii. Value Of The Market iv. Anticipated Profit Margins (If Considering A License, Score On The Anticipated Royalty

Rate) v. Intensity Of Competition In The Market vi. Competitive Edge Of Your Product Or Service/Unique Selling Point vii. Ease Of Access To The Market viii. Commitment And Motivation Of The Team ix. Business Management And Industry Experience

SECTION: STATUTORY DECLARATION (SD)

ü A requirement for Copyright Voluntary Notification at Malaysia Intellectual Property Office (MyIPO)

A Date of project started Date the research/ project started. Date should be before date of work (copyright material) completed.

B Date of work completed Date the work (copyright material) completed. The date cannot be in future. Work must be completed prior to application

C Date of publish Date of any publish in public domain. If applicable D Date of signing Date of any signing of agreement. If applicable

Note:

ü Date A should be before date B ü Date A and B should not be on the same day, unless it is possible for the work

(copyright material) to be completed on the same day. Example – framework. ü Date C – If applicable ü Date D - If applicable

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MyIPO Copyright Voluntary Notification

ü Copyright owner may use the Copyright Voluntary Notification to assist in providing prima facie evidence of ownership and evidence of date of creation. This may aid the copyright owner since the voluntary notification can be used in court as proof of the facts made.

ü The Copyright owners who are either the Author/ Owner/ Licensee or Assignee (“the Copyright Owner”) need to submit the following documents for applying the notification: A. Form CR-1 (Original Work) OR Form CR-2 (Derivative Work) B. Statutory Declaration C. A Copy of Work D. Fee

SECTION: APPLICANT DECLARATION

ü A testament of all information declared are truthful to the best of knowledge and belief by Main Inventor/ Originator.

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Reference http://www.myipo.gov.my/en/home/ The official portal of Malaysian Intellectual Property Office

http://www.youripinsider.eu South-East Asia IPR Basics Series: Trade Secrets in Malaysia Posted on 20-Apr-2016 by Alexander Bayntun-Lees https://www.wipo.int/portal/en/ © South-East Asia IPR SME Helpdesk 2016 Protecting Your Trade Secrets in South-East Asia https://www.southeastasia-iprhelpdesk.eu