Patent and Utility Innovation

Patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

Utility Innovation (UI) is an exclusive right conferred to an innovator that manages to come up with an incremental improvement to an existing product or process.

Both Patent & UI are governed by Patents Act 1983 and the Patents Regulations 1986 in Malaysia.

Patent & Utility Innovation protection gives an owner the exclusive right to stop others from manufacturing, using and/ or selling the owner’s invention in a particular jurisdiction without the owner’s consent or permission.

In accordance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS), Malaysia has acceded to the Patent Cooperation Treaty (PCT) in 2006. PCT provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. Therefore, the first patent application can be entered as a PCT International Application at the Intellectual Property Corporation of Malaysia (MyIPO) office.

Prior to PCT, Malaysia is already a member of the Paris Convention and any application filed under this convention can claim priority date within 12 months from the date of earliest filing of first application.

For a patent to be granted, it must be:

NOVEL: The invention is new and not disclose to the public in any form, whether by written or oral disclosure, or by any literature or prior art publication of the invention in the world.

INVENTIVE STEP: The invention must not be obvious to someone with knowledge and experience in the technological field of the invention.

INDUSTRIALLY APPLICABLE: The invention can be industrially applicable, and used for mass production consistently.

A patent is protected 20 (twenty) years from the date of filing and must be renewed every year, and a utility innovation is protected 10 (ten) + 5 (five) + 5 (five) years from the date of filing subject to use.

Fields of Specialization are:

Aerospace
Automotive
Biochemistry & Chemicals
Bioinformatics
Biotechnology
Electrical Engineering
Engineering (Generally all aspect)
Food, Microbial & Chemical Technology
Genetic Engineering
Green Technology
Information Technology
Life Sciences
Medical Electronics
Nanotechnology
Pharmaceutical & Medical Technologies
Radio-Frequency Identification (RFID)
Software & Web-based Applications
Telecommunications

Common Misconceptions - Patent

If I get a patent, I have a right to use and sell the product.

A patent excludes others from making, using, or selling the patented product. It does not give you the right to use, make, or sell a product.

What Does This Mean?

You can stop others from making, using, and selling your patented product so that others can be excluded from competing with you.

If I have a patent here it is then protected anywhere in the world.

Patent is only enforceable after it is granted, and only in the jurisdiction where it is granted.

Why?

Patent protection is territorial in nature although Patent filing can be done internationally via international treaties such as Patent Corporation Treaty (PCT) or Paris Convention.

I can always reapply if my patent lapses.

A patent application is only valid if filed before any public disclosure of the invention is made. Any subsequent patent applications can be filed in other countries within 12 months from the filing date. After that 12 months, subsequent patent applications to protect the same invention would be considered invalid because the invention is deemed publicly disclosed.

How Else Can I Protect My Patent?

It depends on that particular national law that allows reinstatement of lapsed patents.

Common Misconceptions - Copyright

I can simply post a copy to myself as proof of copyright.

Your own evidence is not acceptable in Court as it can be faked and the contents be swapped.

What Can I Do?

Ensure proof of copyright meet the respective countries’ law and requirements. For example, execute a Statutory Declaration etc.

Everything on the Internet is ‘public domain’ and free to use

Work published on the internet may be ‘Publicly Accessible’, but it may not mean that the work falls under ‘Public Domain’ category.

How Is It Not Free?

Only copyright that expires with many years after the death of the author will be considered ‘Public Domain’ and entitle you to free use.

I can claim someone’s work as my own if I change it

Any adaptation is legally considered as ‘derived work’ and it will still be considered as their work.

What can Happen?

You may be sued for copyright infringement as it is not your original work but a derivative work from copying or modifying without the owner’s permission.

Common Misconceptions - Trademark

My logo/brand is already mine if it is recognised by everyone.

You do not own the logo/brand by law if you do not register them.

What Can Happen?

You will be sued for using other people’s mark.
You cannot use your own brand anymore.
You are marketing for other people’s brand similar with yours.

I don’t plan to go big. Who would copy ?

If you don’t register, you will never own your own brand.

Who would copy?

Your competitor or rival who likes your logo.
Foreign companies will copy your mark by registering it locally.

My business is still small. There’s no need to register.

Your trademark is actually your asset and your business that can make money.

How?

You can license and franchise your mark only after registration.
You can expand your business only if you have a legitimate brand through registration.

I have already registered my company name and business. No one can use my business name.

Your business brand name will not be protected under Trademark Act even if your company name is registered under Companies Act.

Why?

Other companies can ride on your goodwill and make use of your brand name even though they don’t have company name.

A TM mark on a logo is already good protection and recognition.

TM marks are subject to opposition and not protected fully.

How?

You may lose your mark during opposition.
You only own your mark with the ® logo and
can sue others upon registration.

The logo/brand is already registered overseas, why should I do the same here?

There is no one registration fit to all countries, but only on that country you register.

What can I do?

We can have one international filing and later register separately in several countries for protection.