TOPIC 9

• Intellectual property (IP) refers to creations of the mind:

inventions, literary and artistic works, and symbols, names,
images, and designs used in commerce.
• IP is divided into two categories:
1. Inventions (patents), trademarks, industrial designs, and
geographic indications of source;
2. 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.
• The World Intellectual Property Organization (WIPO) – referred
to in abbreviated form as “WIPO” in English, and “OMPI” in
French and Spanish – was established by a convention signed at
Stockholm on July 14, 1967 and entitled “Convention Establishing
the World Intellectual Property Organization.”
• The WIPO Convention entered into force in 1970.
• The origins of what is WIPO go back to 1883 when the Paris
Convention for the Protection of Industrial Property was adopted
and to 1886 when the Berne Convention for the Protection of
Literary and Artistic Works was adopted.
• WIPO became a specialized agency in the United Nations system
of organization in 1974.
• The World Intellectual Property Organization (WIPO) is one of 16
specialized agencies in the United Nations system organizations.
• WIPO administers 23 treaties dealing with different aspects of
intellectual property protection on behalf of its 179 member
nations.
• Because each country grants different intellectual property rights
and enforces them in various ways, intellectual property laws
sometimes interfere with international trade relations.
• WIPO works with intergovernmental groups such as the World
Trade Organization (WTO) to create mechanisms for intellectual
property protection and enforcement that will minimize these
problems.
• To respond to the development of intellectual property at
domestic and global levels, the Pejabat Cap Dagangan dan
Paten was corporatized on 3 March 2003 and known as the
Intellectual Property Corporation of Malaysia (PHIM), with the
enforcement of the Intellectual Property Corporation of Malaysia
Act 2002.
• The Corporation took an important first step of rebranding when
the acronym PHIM became MyIPO on 3 March 2005 at the
inaugural National Intellectual Property Day.
• The agency is placed under the Ministry of Domestic Trade, Co-
operative and Consumerism
• Patent Acts 291 (1983) (Amendments & Regulations)
• Trade Mark Acts 175 (1976) (Amendments &
Regulations)
• Industrial Design Acts 552 (1996) (Amendments &
Regulations)
• Copyright Acts 332 (1987) (Amendments & Regulations)
• Geographical Indications Acts 602 (2000) (Amendments
& Regulations)
• IC Layout Design Acts 601 (2000)
• The word patent originates from the Latin patere, which means "to
lay open" (i.e., to make available for public inspection)
• A patent is an intellectual property right granted by the sovereign
state to an inventor “to exclude others from making, using, offering
for sale, or selling the invention or importing the invention into the
State” for a limited time in exchange for public disclosure of the
invention when the patent is granted.
• Under the World Trade Organization's (WTO) Agreement on
Trade-Related Aspects of Intellectual Property Rights, patents
should be available in WTO member states for any invention, in all
fields of technology, and the term of protection available should be
a minimum of twenty years
• A patent is protected 20 years from the date of filing.
• 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.
• The requirements for acquiring a utility model are less stringent than for
patents.
• The term of protection for utility models is shorter than for patents and
varies from country to country (usually between 7 and 10 years without
the possibility of extension or renewal).
• In most countries where utility model protection is available, patent
offices do not examine applications as to substance prior to registration.
This means that the registration process is often significantly simpler and
faster, taking, on average, six months.
• Utility models are much cheaper to obtain and to maintain.
• In some countries, utility model protection can only be obtained for
certain fields of technology and only for products but not for processes.
• Utility models are considered particularly suited for SMEs that make
‘minor’ improvements to, and adaptations of, existing products.
• The issues of a patent requires certain legal test to be
satisfied:
1. Novelty : no part of “prior art” – the first to invent (US)
or the first to file the patent (others).
2. Inventive step: “not obvious to a person skilled in the
art”. – to identify level of skill required to invent.
3. Industrial application: utility test – a patent must
specify an application for the technology & additional
patents sought for any additional technology.
4. Patentable Subject: eg: discoveries & formulae
cannot be patented in Europe but patentable in US,
Or in Malaysia:
• new, which means that the invention has not been publicly
disclosed in any form, anywhere in the world;
• 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
• industrially applicable, meaning it can be mass produced.

5. Clear & complete disclosure.

• 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 micro-organisms 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.
• A patent gives the inventor the right to stop others from manufacturing,
copying, selling or importing the patented goods without permission of
the patent holder.
• The patent holder has exclusive commercial rights to use the invention.
• The patent holder can utilize the invention for his/her own purpose. The
patent holder can license the patent to others for us.
• Licensing provides revenue to business by collecting royalties from the
users.
• The patent holder can sell the patent any price they believe to be
suitable. The patent provides protection for a predetermined period (20
years) which keeps your competitors at bay.
• Patents are partially responsible for advancements in medical science,
biotechnology, drug chemistry, computers etc.
• Patents reward inventors with the aforementioned advantages and hence,
creates bigger and better discoveries.
• A patent is an exclusive right provided to a patent holder in
exchange for the public disclosure of their invention. A full
description with claims is published and can generally be viewed
by anyone with the internet including your competitors.
• After the exclusive patent period (20 years) has passed, other
individuals or companies can freely use the invention without any
permission from, or paying royalties to the inventor.
• Applying for patent can be a very lengthy, time consuming process.
• Cost of patent filing may be surpass the actual financial gains. If a
patent is to be filed further in different countries, then again the
cost increases.
• After the patent grant, annual fees should be paid to the
respective patent offices, otherwise the patent period may lapse.
• You must be prepared to defend your patent if need be. Taking
action against infringement is costly.
 APPLICATION GRANTED
YEAR
Malaysia Foreign Total Malaysia Foreign Total
Jan 43 424 467 23 177 200
Feb 66 432 498 23 183 206
Mar 106 554 660 22 134 156
Apr 93 459 552 17 84 101
May 105 484 589 11 119 130
Jun 98 560 658 36 141 177
Jul 93 471 564 25 155 180
Aug 70 447 517 24 237 261
Sept 71 499 570 27 238 265
Oct 96 474 570 31 239 270
Nov 110 506 616 39 232 271
Dec 209 557 766 30 254 284
TOTAL 1,160 5,867 7,027 308 2,193 2,501
• 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.
• A work that eligible is protected automatically upon fulfilment 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 works first published in Malaysia.
• Works eligible for protection are;
• Literary works;
• Musical works;
• Artistic works;
• Films;
• Sound recordings;
• Broadcasts; and
• Derivative works.
• 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.
• 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.
• 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.
• Sound Recordings, Broadcasts, Films & Government
Works.
• The copyright 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 it was first published or, if it has not
been published, from the beginning of the calendar year
following the year of fixation or made or published.
• Registration allows a copyright holder to sue an infringer in
federal court, an option that is not available to copyright holders
that have not registered.
• It serves as an automatic indication that the registrant is the
actual owner of the copyright, making it the infringer's
responsibility to prove differently.
• It enables the copyright holder to sue an infringer for statutory
damages so that he doesn't have to prove that the infringer's use
of the work actually damaged him.
• Finally, registration provides notice to the world of the copyright
holder's claim of rights, preventing an infringer from claiming that
he used the work innocently, without knowledge of the creator's
existing interests.
• The need to complete a registration takes time and
costs money.
• Theoretically, some activists think copyrights stifle the
creative landscape, preventing people from taking
works and using them to make new works that will
further contribute to society.
• It is usually reported that blacksmiths who made swords in the
Roman Empire are thought of as being the first users of
trademarks.
• A trademark ("mark") is a word or words, or symbol or graphic
design, or combinations of these elements that designate the
source of products (goods) – it’s a brand name or logo.
• Trademarks are displayed on the products and/or the
packaging. A service mark is a mark used for services.
• Trademark rights provide protection against unauthorized use of
a confusingly similar 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 a 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.
• 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 (M’sia Law).

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.
• Trade mark registration is valid for ten years from the
date of application and may be renewed every ten
years.
 Trade mark Why is it acceptable
This is an invented word, arguably the most distinctive of all
FARNOOZ
trade marks

This trade mark includes the invented word "emarno". Although

emarno the word "windows" is totally descriptive of goods and services
WINDOWS relating to windows the word "emarno" is totally distinctive and
this results in an acceptable trade mark

Danryvol Another invented word

Although this mark consists of two well known words the word
Herringbone "Herringbone" is acceptable for financial services. However, the
Finance word "Herringbone" would not be acceptable for e.g. textiles
because it is a type of pattern.
Trademark Why is it unacceptable
These days many traders advertise that their goods or services are
7 days a week
available seven days a week
If you are trading in food, these two words simply describe a quality of
Tasty food your goods. Joining the two words together does not make the mark as a
whole acceptable
The word "direct" describes goods or services sold directly to the public
TOYS direct
and it is widely used by traders.
The one for you Slogans such as this are often used in trade and are not distinctive
• 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.
• A registered industrial design confers the owner of a
registered design the exclusive right to make, import or
sell or hire out any article to which the design has been
applied. Other users should obtain the consent of the
rightful owner before using the design.
• A registered industrial design is given an initial
protection period of 5 years from the date of filing
and is extendable for a further four consecutive terms
of 5 years each. The maximum protection period is 25
years.
• “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.
• A registered geographical indications is given ten
years of protection from the date of filing and is
renewable for every ten years.
• You can allow others to use it in some way in return for
some payment (a license) or sell the IPR. Licensing IPR
can have a number of benefits:
1. Reduce or eliminates production and distribution costs and
risks.
2. Reach a larger market.
3. Exploit in other application.
4. Establish standards.
5. Gain access to complementary technology.
6. Block competing developments.
7. Convert competitor into defender.
• The successful exploitation of IPR also incurs costs and
risks:
1. Costs of search, registration and renewal.
2. Need to register in various national markets.
3. Full and public disclosure of your ideas.
4. Need to be able to enforce.