Module 2 : Topic 4/4

Intellectual Property
Rights
COEB422 Engineers in Society
Mr Daud Bin Mohamad
Semester May 2014

Course Outcome 4
Able to interpret legal and ethical,

Intellectual Property
Rights and common societal and cultural issues in the
professional engineering practice

Content
Importance & Definition of IP
Categories of IP

Patent
Trademarks
Industrial designs
Layout design of an IC
Geographical indication
Copyright

Innovation in Engineering
Case studies
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Importance

IP and the Engineer

Research & Development Outputs

Inventions for commercialisation
IP wars: impact on society

Malaysia is into Innovation Economy

Technology + Innovation Economy

Innovation in Engineering can be learned
E.g. TRIZ method
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Video (Intellectual Property)

Definition

Intellectual property (IP) refers to:

creations of the mind:
inventions, literary and artistic works,
and symbols, names, images,
and designs used in commerce.
Includes product and processes
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Types of IP
IP is divided into two categories:

Industrial property, which includes

Inventions (patents)
Trademarks
Industrial designs
Layout design of an integrated circuit
Geographic indications of source

Copyright, which includes

Literary and artistic works such as novels, poems and plays, films, musical
works, artistic works such as drawings, paintings, photographs and
sculptures, and architectural designs.
Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of
broadcasters in their radio and television programs.
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IP Rights
Rights granted by law to use, exploit, assign, license and

commercialize on that IP that you have put a claim on

Why protect IP?

For commercial potential
Own commercialization through assignment, licensing, or
sale of products
Bargaining tool for cross licensing or joint
development/marketing arrangement
To distinguish products and services, which can generate
loyalty among the customer.
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IPR Legislation in Malaysia

In Malaysia, the following legislation provides for the protection of
IPR:
a) The Copyright Act 1987;
b) The Optical Disc Act 2000;
c) Patent Act 1983;
d) Trade Marks Act 1976;
e) Industrial Designs Act 1996;
f) Geographical Indications Act 2000;
g) Layout Designs of Integrated Circuit Act 2000; and

h) Trade Descriptions Act 2011.

Additionally, common law protections, under the laws of passingoff and breach of confidential information, support the
aforementioned legislation, referred to collectively as Intellectual
Property Laws.
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Intellectual Property Laws

Intellectual Property Laws provide a platform for the enforcement of any breach of
IPR, whether in civil or criminal actions.

At present, criminal action can only be initiated for infringement of copyright and
trademark.
Civil actions for copyright infringement can be taken under Section 36 of the
Copyright Act and criminal provisions are provided for under Section 41 of the
same Act.
Trademark rights can be enforced by civil action under Section 38 of the Trade
Marks Act 1976 and criminal prosecution under Section 8 of the Trade Description
Act 2011.
As for protection of rights under the laws relating to patent, industrial design,
and geographical indications, only civil actions are available to the owner.

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Intellectual Property Court

On 17 July 2007, the Malaysian government launched the Intellectual Property Court.
The Session Courts were given exclusive jurisdiction to try IPR infringement cases. This
includes all offences committed under Section 41 of the Copyright Act (1987) and the Trade
Descriptions Act (2011). Though the Session Court can pass any sentence that it deems fit
except for the death sentence, as an Intellectual Property Court, its power of sentencing is
limited by the Intellectual Property Laws itself. Section 41 provides that a person will be
guilty of an offense, unless a person is able to prove that he acted in good faith and had no
reasonable grounds for supposing that the copyright or performers rights would or might
be infringed if he or she does any of the following:
a.) makes for sale or hire any infringing copy;
b.) sells or lets for hire, or by way of trade, exposes or offers for sale or hire any infringing copy;
c.) distributes any infringing copies;
d.) possesses, otherwise than for his private and domestic use, any infringing copy;
e.) by way of trade, exhibits in public any infringing copy;
f.) imports into Malaysia, otherwise than for his own private and domestic use, an infringing copy;
g.) makes or has in his possession any contrivance used or intended to be used for the purposes of
making infringing copies;
h.) circumvents or causes the circumvention of any effective technological measures;
i.) removes or alters any electronic rights management information without authority;
j.) distributes, imports for distribution, or communicates to the public without authority, works or copies11
of works in respect of which electronic rights management information has been removed without
authority;

Intellectual Property Court

The criminal penalties imposed by this same section are a fine between RM2000
and RM20,000 per infringing copy, imprisonment for a term not exceeding five
years, or both a fine and imprisonment. For the conviction of a subsequent
offence, the penalties are a fine of between RM4000 and RM40,000 per infringing
copy, imprisonment for a term not exceeding ten years, or both a fine and
imprisonment.

For example, in one case where the infringer was found guilty and convicted for distributing
1,195 DVDs of a Japanese animated film, the Intellectual Property Court judge fined the
offender a total amount ofRM2.39 million

Support from the industry: The support from the industry is very important.
Since IPR govern private property, support from IPR owners is of top priority.

There must be complaints from the owner, and the owner must be willing to submit
evidence of ownership to support such prosecution or else the prosecution will fail.

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Enforcing IP
Two main avenues of enforcement:

Criminal enforcement, which are complaints lodged with the Enforcement

Division of the Ministry of Domestic Trade, Cooperatives and Consumerism
(ED)

For counterfeiting or piracy.

The ED has the power to seize products and prosecute offenders/ counterfeiter.

File a civil suit in the High Court: private mediation via legal professionals:

action can be filed against the infringers where the usual result is for an
injunction (i.e. a court order obliging the infringer to immediately stop their
infringing activities) and damages to be paid to the rights owner.
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PATENT
Video

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Patent

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.

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Patent
Products

or methods embodying a high level of

technological creativity; Items characterized by a
longer life cycle than an item protectable as a utility
model

Example:

pharmaceuticals or, machines used for manufacture or,

pioneering advances in semiconductors;
Computer hardware and related computer programs;
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Utility Innovation
Devices having a short life cycle, embodying a creative
idea applicable to the shape, structure or other
technological aspects of a product, while typically
showing potential for early implementation and
marketing

examples: an improved device capable of reducing the amount

of water used to flush a toilet or, a bottle cork remover capable
of faster operation than known devices

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Patentable Invention
Novel or New
Non-obvious

An invention must be sufficiently different

For example, the substitution of one material for another, or
changes in size, are ordinarily not patentable

Inventions which are useful

The gadget must do something and serve some practical

purpose
It must be able to perform its declared purpose
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Do not patent

Laws of nature (wind, gravity)

Physical phenomena (sand, water)
Abstract ideas (mathematics, a philosophy)
Literary, dramatic, musical, and artistic works. These can be
copyright protected.
Perpetual motion machines as they are considered impossible.
Patenting of things useful solely in the utilization of special nuclear
material or atomic energy for atomic weapons.
Anything designed for an illegal activity.
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TRADEMARKS
Video

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Trademarks

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.

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INDUSTRIAL
DESIGNS
Video

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Industrial Designs

What is an industrial design?

An industrial design is the ornamental or

aesthetic aspect of an article. The design may
consist of three-dimensional features such as
the shape and configuration of an article, or
two-dimensional features, such as pattern and
ornamentation. The design features must be
applied to an article by any industrial process
or means of which the features in the finished
article appeal to eye.
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INTEGRATED
CIRCUIT LAYOUT
DESIGN
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IC Layout Design
What Is A Layout-Design Of An Integrated Circuit?

A layout-design of an integrated circuit is the threedimensional 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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GEOGRAPHICAL
INDICATIONS
Video

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Geographical Indications of Source

What is Geographical Indications?
"Geographical indications" is an indication which
identifies any goods as originating in a country or
territory, or a region or locality in that country or territory,
where a given quality, reputation or other characteristic
of the goods is essentially attributable to their
geographical origin. Geographical indications can be used
on natural or agricultural product or any product of
handicraft or industry.
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COPYRIGHT
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Copyright
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.
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Innovation in
Engineering

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Malaysias Innovation Economy

K-Economy Master Plan 2002

Now moving towards Innovation Economy
Challenges of K-Economy:

Knowledge (science) does not impact the economy

Technology and Innovation do

Innovation Economy

Growth through economic restructuring and diversification into

production of manufactures goods with high value added,
including green products
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Green Economy

Emphasis on sustainability
Energy, water, food security

Technological feasibility
Economic viability
TECHNOLOGY AND INNOVATION THAT IMPACTS
THE ECONOMY !!!
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Can innovation be taught?

1946 present: originated in the work of Genrich
Altshullerin Russia-derived from analysis of more than
200,000 world wide patents-problem solvers combine
their knowledge with the knowledge of thousands of
silent inventors synthesized down to just 40,000
innovative patent key

key discoveries:
1. problems and solutions were repeated across industries & sciences
2. patterns of technical evolution were repeated across industries &
sciences
3. innovations used scientific effects outside the field where they were
developed

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TRIZ brief description

TRIZ Theory of Inventive Problem
From the analysis of a large number of good patents,
Altshuller extracted the essence of ideas which achieved
breakthroughs of conventional technology, and
condensed them into "40 Principles of Invention

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Solving"40 Principles of Invention" in TRIZ

1. Segmentation

21. Skipping

2. Taking out

22. 'Blessing in disguise

3. Local Quality

23. Feedback

4. Asymmetry

24. 'Intermediary

5. Merging

25. Self-service

6. Universality

26. Copying

7. 'Nested doll

27. Cheap short-living

8. Anti-weight

28. Mechanics substitution

9. Preliminary anti-action

29. Pneumatics and hydraulics

10. Preliminary action

30. Flexible shells and thin films

11. Beforehand cushioning

31. Porous materials

12. Equipotentiality

32. Color changes

13. 'The other way around

33. Homogeneity

14. Spheroidality

34. Discarding and recovering

15. Dynamics

35. Parameter changes

16. Partial or excessive actions

36. Phase transitions

17. Another dimension

37. Thermal expansion

18. Mechanical vibration

38. Strong oxidants

19. Periodic action

39. Inert atmosphere

20.Continuity of useful action

40. Composite material

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Samsung and Apple

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Sample Final Exam

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Question
Egypts year round moderate climate is perfect for cotton plantation and
gives it a superior quality. Among the cottons grown in Egypt, Barbadence
cotton is of the highest quality and well renowned for its long fibers and thin
yarn. Longer fibers enhance the quality of yarn, and the thin yarn allows
higher thread counts per square inches. Another factor that contributes to
the unique quality of Egyptian cotton is that it is hand-picked, which reduces
the stress on the fibers and preserves the cotton far better than mechanical
picking. As a result, the sheets made from Egyptian cotton are soft, strong
and durable.
How can Egypt protect their product against challenges from cotton
producers from the United States, China, India and other countries based on
your understanding on Intellectual Property Rights.
[10 marks]

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Answer
Egypt can protect their product through branding and international trademark.
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. Egypt can protect their product by establishing a trade mark. - 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.
[5 marks]
To avoid competition, Egypt can develop new cotton varieties with improved quality and yields to
retain Egyptian cottons competitive edge in the global market. This newer variety can be patented
and/or licensed to interest parties.
Other than as the holder of a patent Egypt can herself exploit the patent, licensing is perhaps the most
likely, and therefore most common commercialisation pathway. Licensing occurs when a licensor
grants exploitation rights over a patent to a licensee. A license is also a legal contract, and so it will set
out the terms upon which the exploitation rights are granted, including performance obligations that a
licensee must comply with. A license being a contract with those performance obligations, the failure
to comply with those obligations may lead to the termination of the license, and the reversion of
exploitation rights back to the licensor.
[ 5 marks]
Or can also include :
Geographical Indication protection can also be applied here where it provides protection for good
originating in a country or territory, with a given quality reputation or other characteristics that are
attributable to the region. Egypt can protect the produce of its region through filing for geographical
indication protection.
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References

Website of Intellectual Property Corporation of Malaysia (PHIM):

http://www.myipo.gov.my/
Past lecture notes of COEB422 on Intellectual Property Rights by
Prof Dr Norashidah Md Din.
Study on Specialized Intellectual Property Courts, International
Intellectual Property Institute (2012)
Case studies: The ASEAN IPR SME Helpdesk: http://www.aseaniprhelpdesk.eu
Case studies: World Intellectual Property Organization:
http://www.wipo.int/portal/en/
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