Intellectual property act Malaysia

Adapted from :http://www.myipo.gov.my/

What is Patent?

A 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.
What is Utility Innovation?

A utility innovation is an exclusive right granted for a "minor" invention which does not require to satisfy
the test of inventiveness as required of a patent.
Who May Apply?

Any person may make an application for a patent or for a utility innovation either alone or jointly with
another person. The word "person" is not limited to natural persons and thus also includes, for example,
a company.
How can a patent or utility innovation be protected?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of
Malaysia which will assess whether it meets the requirements of the Patents Act 1983.
Why Protect an Invention?

A patent or utility innovation protection gives the owner of the patent/utility innovation the exclusive right
to stop others from manufacturing, using and/or selling the owner's invention in Malaysia without the
owner's consent or permission.
Term of protection

A patent is protected 20 years from the date of filing and a utility innovation is protected 10 + 5 + 5 years
from the date of filing subject to use.
Where to Apply?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of
Malaysia (MyIPO), in Kuala Lumpur or at one of the branch offices located in Sabah and Sarawak.
Applications, correspondence and enquiries should be directed to :

The Registrar
The Patent Registration
Office
Intellectual Property
Corporation of Malaysia
(MyIPO)
Unit 1-7, Ground Floor,
Menara UOA Bangsar
No. 5 Jalan Bangsar Utama
1
59000 Kuala Lumpur
Tel: +603-22998400
Fax: +603-22998989

National Security (Section 23A and 62A )

For reasons of national interest and security, any Malaysian resident wishing to apply for a patent or
certificate protection outside Malaysia must first seek written authority from the
Registrar. However, written authority is not required if a corresponding Malaysian patent/certificate has
been applied for, and a period of at least two months has elapsed since filing.

Section 62A : Contravention of Section 23A is an offence and is punishable (upon conviction) by a fine
not exceeding 15,000 ringgit or imprisonment for a term not exceeding two years, or both.
Non-Patentable Inventions

Discoveries, scientific theories and mathematical methods;

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 microorganism processes;

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

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

For a patent to be granted an invention must be :

o new, which means that the invention has not been publicly disclosed in any form, anywhere
in the world;
o involve an inventive step, that is to say the invention must not be obvious to someone with
knowledge and experience in the technological field of the invention; and
o industrially applicable, meaning it can be mass produced.

WHAT IS A TRADE MARK?

A trade mark is a sign which distinguishes the goods and services of one trader from those of another. A mark includes
words,
logos,
pictures,
names,
letters,
numbers
or
a
combination
of
these.
A trade mark is used as a marketing tool to enable customers in recognizing the product of a particular trader.
FUNCTIONS OF TRADE MARK
Origin Function - A trade mark helps to identify the source and those responsible for the products and services sold in
the
market.
Choice Function - A trade mark enables consumers to choose goods and services with ease while shopping.
Quality

Function

Consumers

choose

particular

trade

mark

for

its

known

quality.

Marketing Function - Trade marks play an important role in advertising. Its normal for consumers to make purchases
based
on
continuous
influence
of
advertising.
Economic Function - Established trade mark is a valuable asset. Trade marks may be licensed or franchised.
IMPORTANCE OF TRADE MARK REGISTRATION
Trade

marks

registration

provides

for:

Exclusive Rights - Registered trade marks owners have exclusive right to use their marks in trading. They also have
the rights to take legal action for infringement under the Trade Mark Law against others who use their marks without
consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the
Trade
Description
Act
1972.
Legal Evidence - Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership.
A certificate of registration serves as an important document to establish the ownership of goods exported to other

countries.
DOES MALAYSIAN REGISTRATION GIVE PROTECTION ABROAD?
No, if protection of trade mark is required in other countries, it will be necessary to apply for registration separately in
each countries. However, a Malaysian application can be used a basis for claiming priority in countries which are party
to the Paris Convention and World Trade Organization (WTO).
DURATION OF REGISTRATION
Trade mark registration is valid for ten years from the date of application and may be renewed every ten years.
WHO MAY APPLY?
Any person, whether Malaysian citizen or not, who is the owner of the trade mark used, or proposed to be used, by him
in the Malaysia, may apply for the registration of a trademark in this country.
HOW TO APPLY?
Before Applying - Applicants are advised to make search before submitting applications to avoid applying for identical or
similar to trade marks filed earlier. All searches can be done at Public Search Room, MyIPO. A fee rate of RM20 per
hour
will
be
charged.
Application Form (TM5) - All applications must be made in Form TM5. Five copies of the completed TM5 must be
submitted together with the prescribed fee. For different marks, separate applications must be filed.

Copyright Voluntary Notification System

Licensing Body
Copyright Tribunal
What Is Copyright?
Copyright is the exclusive right given to the owner of a copyright for a specific period. Copyright protection in
Malaysia is governed by the Copyright Act 1987. There is no system of registration for copyright in Malaysia.
A work that is eligible is protected automatically upon fulfillment of the following conditions:
sufficient effort has been expected to make the work original in character;

the work has been written down, recorded or reduced to a material form;

the author is qualified person or the work is made in Malaysia or the workis first published in Malaysia
What Does Copyright Protect?
Works eligible for protection are;

literary works;
musical works;
artistic works;
films;
sound recordings;


broadcasts; and

derivative works
These works shall be protected irrespective of their quality and purpose for which they were created.
However, the copyright protection shall only extend to expression and not ideas, procedures, methods of operation or
mathematical concepts as such.
Who Owns Copyright?
Copyrights in a work vests initially in the author (writer, composer, maker of the work, etc). However, where the
making of a work is made by an employee in the course of his employment, unless there is any contrary agreement,
the copyright in the work shall be deemed to vest in the person who commissioned the work or the employer. The
author's right is transferable by assignment, testamentary disposition or by operation of law, in which case the
assignee shall be the owner.
How long does copyright last?
Literary, Musical or Artistic Works
Generally, copyright in any literary, musical or artistic work shall subsist during the life of the author plus 50 years
after his death. However, if a work has not been published during the lifetime of the author, copyright in the work
continues to subsist until the expiration of 50 years, following the year in which the work was first published. In the
case of a work with joint authorship, the life of the author who dies last is used for the purpose of calculating the
copyright duration of the work.

Sound Recordings
The copyright in sound recordings shall subsist until the expiry of a period of 50 years computed from the beginning
of the calendar year next following the year in which the recording was first published or, if the sound recording has
not been published, from the beginning of the calendar year following the year of fixation.
Broadcasts
For the copyright in broadcasts, the duration shall continue to subsist until the expiry of a period of fifty years
computed from the beginning of the calendar year next following the year in which the broadcasts was first made.
Films
The duration of the copyright in films shall continue to subsist for a period of fifty years computed from the beginning
of the calendar year next following the year in which the film was first published or first made available to the public or
made, whichever is the last.
Government Works
Copyright in works of Government, Government organizations and international bodies shall continue to subsist until
the expiry of a period of fifty years computed from the beginning of the calendar year next following the year in which
the work was first published.
What Are The Legal Rights Of Copyright Owners?
Generally, owners of copyright works in literary, musical or artistic works, films and sound recordings have the

exclusive rights to control:

the reproduction of the works in any form (including photocopying, recording etc);

the performing, showing or playing to the public;

the communication to the public;

the distribution of copies to the public by sale or other transfer of ownership; and

the commercial rental to the public.

These exclusive rights apply irrespective of whether the works are copied partly or wholly. Thus, infringement of
copyright occurs if the person claiming can show that the defendant has done such an act. In other words, the burden
of proof lies on the person claiming that his/her work has been infringed.
Copyright in Broadcasts
For the copyright in a broadcast, there shall be exclusive rights to control the recording, the reproduction, and the
rebroadcasting of the whole or a substantial part of the broadcast. The show or the play must be made in public and
in a place where an admission fee is charged for the whole or a substantial part of the broadcast either in its original
form or in any way recognizably derived from the original. The copyright in a television broadcast shall include the
right to control the taking of still photographs from such broadcasts.
Economic Rights
Economic rights are exercised during the period of protection. These rights are exercised by the owners while alive,
and upon death, for a period of 50 years by their heirs.
Moral Rights
Besides the economic rights, copyright protection also includes moral rights. The moral rights are basically the rights
to oppose changes in the copyright that could harm the reputation of the creator.

What Constitutes Copyright Infringement?

The copyright in a work infringed when a person who, not being owner of the copyright, and without license from the
owner, does or authorizes any of the following acts:

reproduces in any material form, performs, shows or plays or distributes to the public,
communicates by cable or broadcast of the whole work or a substantial part thereof either in its original or
derivative form;
imports any article into Malaysia for the purpose of trade or financial gains;
makes for sale or hire any infringing copy;
sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing copy;
distributes infringing copies;
possesses, otherwise than for his private and domestic use, any infringing copy;
by way of trade, exhibits in public any infringing copy;
imports into Malaysia, otherwise than for his private and domestic use, an infringing copy;
makes or has in his possession any contrivance used or intended to be used for the purpose of making
infringing copies; or
causes the work to be performed in public

What Is Copyright Tribunal?

The Malaysian Copyright Act provides for a Copyright Tribunal whose function is to grant licenses to produce and
publish in the National Language a translation of a literary work written in any other language and arbitration of
disputes relating to use of copyright works.

References
Myipo.gov.my, (2014). Home - The Official Portal of Intellectual Property Corporation of
Malaysia. [online] Available at: http://www.myipo.gov.my/ [Accessed 6 Dec. 2014].