Intellectual Property Rights

Patent

A patent is a form of exclusive rights granted to the rightful owner or owners, to exploit his or their invention. The grant of a patent effectively gives the rightful owner to work the invention in exclusion of other for a stipulated period of time, generally not exceeding 20 years. The Malaysian Patent System generally originates from the United Kingdom Patent System. In 1983, the local system was introduced via the Patents Act 1983. Accordingly, a complete set of governmental mechanism was established and therefore allowing examination and subsequently registration of patents.

Patent Law in Malaysia

In accordance to the Malaysian Patents Act and Regulations 1983, a grant of a patent in Malaysia gives a monopoly in an invention for 20 years from the date of filing or 15 years from the date of grant, whichever is longer. A patent can provide broad protection for an inventive concept including future developments and modifications. This protection is a valuable business asset and an important commercial tool.

Applications for patents are made to the Malaysian Patent Office, wherein an invention must meet four main criteria, as provided in Section 11 of the Patents Act 1983:

  1. It must be new [novelty];
  2. Involves an inventive step;
  3. Industrially applicable.
  4. Must not fall under Section 13, which defines the non-patentable inventions.

Accordingly, an invention may be or may relate to a product or a process, something that provides a solution to a specific problem in the field of the relevant technology.

Examples of patentable products / process: electrical / electronics, invention, food inventions, housewares, machines (internal parts), packaging, toys, cosmetics, computer hardware, chemical / biogical processes and/or products.

Grant of Patent Protection

Upon complied with all requirements and prescribed payments as provided within the Patent Act and Regulations, the registrar issues the application a certificate of grant and records the patent in the register.

In accordance to Section 36 of the Act, the owner of the patent shall have the following exclusive rights in relation to the patent:

  1. to exploit the patented invention;
  2. to assign or transmit the patent; and
  3. to conclude licence contracts.

As far as exploitation is concerned, the owner will have the rights to conduct the following acts for a product patent:

  1. making, importing, offering for sale, selling or using the product;
  2. stocking such product for the purpose of offering for sale, selling or using;

As in process patent, the owner will have the rights to conduct the following acts:

  1. using the process;
  2. doing any of the acts as mentioned above, in respect of a product obtained directly by means of the process.

The owner will have 20 years from the date of filing or 15 years from the date of grant, which ever is longer.

Trademark

In accordance to the Malaysian Trade Marks Act 1976, a trademark is a sign which distinguishes the goods and services of one trader from those of another. A sign includes words, logos, pictures, names, letters, numbers or a combination of these.

Accordingly, subject to the compliance to the said Act, a corporate identity and logos can be included as registrable marks, which are also the most valuable marketing tools which a company possesses. Quite simply, trade marks sell products and services. Registration of a trade mark protects this business asset, giving the proprietor the legal remedy to prevent others from using the same or similar mark and protecting the legitimate service industry or manufacturing base. Recently, the definition of a 'trade mark' in the Malaysia has been widened recently to include 'signs' such as the shape or colour of a container, a jingle, or even a smell.

A trade mark registration may be made before the actual use. To file a trademark registration application in Malaysia, the desired trade marks for goods or services must be distinctive and must comply with the following:

  1. An Invented word/words
  2. Names of person/firm/company mentioned in a specific manner
  3. Applicant’s signature
  4. Words with no direct relation to goods or services, geographical name or surname,
  5. Any distinctive sign such as logos, pictures, or symbol;
  6. Not deceptive or confusing, or contrary to the law and scandalous/offensive;
  7. Not identical or similar to earlier registered or application trade marks;
  8. Not identical or similar to well –known trade mark.

Trade marks protection is valid for ten years from the date of application and may be renewed.

The rightful owner of the registered trade mark has exclusive right to use their mark(s) in trading. Apart from this, the owner has the rights to take legal action for infringement under the Trade Marks Law against others who use their marks without consent. Additionally, a certificate of registration of trade mark serves as an important document to establish the ownership of goods exported to other countries.

Industrial Design

Fundamentally, 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.

The person creating a design is known as the author of the said design and accordingly the author is entitled to be the original proprietor of the design.

In order to file an industrial design protection application, the design must be new and has not been made available or disclosed in any way in Malaysia prior to the filing date of the application. The types of article which are excluded from industrial design consist of the following:

  1. the aesthetic appearance of an article is not significant or the design feature immaterial details;
  2. a method or principle of construction;
  3. designs are contrary to the public order or morality;
  4. the design of the article relates directly to the functionality of the article;
  5. the design of the article forms an integral part of another article and which is dependent upon the appearance of another article.

Upon registered, the rightful owner of the design is given an initial protection period of 5 years from the date of filing and is renewable for a further two consecutive terms of 5 years each, and thus may proceed to exploit the protected design.

Appropriately, the owner of the registered design has the exclusive rights to reproduce the design for commercial purposes.

Source: ADASTRA INTELLECTUAL SDN. BHD.