unit 7 intellectual property

7/26/2019 Unit 7 Intellectual Property

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Entrepreneurship Dept, FBM (2009)

UNIT 7

INTELLECTUAL PROPERTY

1ENT600/UNIT 7 : INTELLECTUAL PROPERTY

TECHNOLOGY ENTREPRENEURSHIP

(ENT600)


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Introduction

Any product of human intellect and

creative endeavor such as innovation,

design, trading style, artistic work or

literary work has value in the marketplace

The term intellectual is used to portray

the involvement of human imagination,

creativity, and inventiveness

Entrepreneurship Dept, FBM(2009)

ENT600/UNIT 7 : INTELLECTUAL PROPERTY 2


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Introduction (cont.)

The intellectual creations and its inherentvalue can be protected from beingexploited by other parties through

intellectual property protection

The concept of intellectual property means

that any unauthorized use of the creationor works by unauthorized parties isprohibited and protected by law

Entrepreneurship Dept, FBM(2009)

ENT600/UNIT 7 : INTELLECTUAL PROPERTY 3


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Intellectual property (IP) is defined as a

legal entitlement attached to the

expressed form of an idea, or to some

other intangible subject matter, that

enables its holder to exercise

exclusive control over the use of the IP

Definition of Intellectual Property

Entrepreneurship Dept, FBM (2009) 4ENT600/UNIT 7 : INTELLECTUAL PROPERTY


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Types of Intellectual Property (IP)

There are five types of IP rights which

provide protection for inventions or

creations against infringement by others

1. Patent2. Copyright

3. Trademark

4. Industrial design5. Trade secret



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Types of Invention Protection

In Malaysia , technological inventions are

protected under the Patents Act 1983.

The Act covers two key forms of

protection:

1. Patent2. Utility innovation



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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 some

things or offers a new technical solution to a

problem

According to Patents Act 1983, a patent is an

intellectual property right granted to an

inventor giving him or her the exclusive right

to make, use, or sell an invention for a

limited time of period (20 years)



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Utility Innovation

Utility innovation is an exclusive right granted

for a minor invention which does not require tosatisfy the test of inventiveness as required of a

patent

Utility innovation provides intellectual property

right for those incremental and lower level

inventions that would not be sufficiently

inventive to qualify for a standard patent. This is

due to the inventive threshold being lowered

compared to a standard patent, that is, the utility

innovation requires an innovative action rather

than aninventive actionEntrepreneurship Dept, FBM (2009) 8ENT600/UNIT 7 : INTELLECTUAL PROPERTY


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Why Protect an invention?

A patent or utility innovation protection gives the

owner of the patent/utility innovation theexclusive right to stop others from

manufacturing, using and/or selling the owners

invention in Malaysia without the owners

consent or permission

A patent owner has the right to use the patented

invention, or may license to other parties to usethe invention, or sell the right of the invention to

someone else who will then become the new

owner of the patent



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Who Can Apply for a Patent?

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 personsand thus also includes, for example, a

company



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Patentable Inventions

For an invention to be patented, it must satisfy the following criteria:

Functional/Technical

the invention must relate to how something works, what it does,

what it is made of, or how it is made

New

the invention has not been publicly disclosed in any form,

anywhere in the world

Involve an inventive action

the invention that could not be figured out by a person with

average knowledge of the technical field

Industrially applicable the invention must be capable of being made or used in an

industry (it can be mass produced)



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Non-Patentable Inventions

Discoveries, scientific theories and mathematical methods

A literary, dramatic, musical or artistic work 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-organism processes Schemes, rules or methods for doing business, performing purely

mental acts or playing games

The presentation of information, or some computer programs

Methods for the treatment of human or animal body by surgery ortherapy, and diagnostic methods practiced on the human or animal

body.

Anything immoral or contrary to public policy



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Pursuing a patent

Patent expert recommends the following basic guideline:

1.Pursue patents that are broad, or commercially

significant, and offer a strong position

The patent must be significantly novel or proprietary.

Record and have them witnessed so that

documentation secures a proprietary position.

2.Prepare patent plan in detail

Plan should outline the cost to develop and market

the innovation. Analyze competition and technological similarities to

the idea.

Detail out the perceived value of the innovation.



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3. Have your actions relate to your original patent plan

Stick to the original patent plan during the early stages of

establishing the patent

At a later stage, the plan may change e.g. licensing the

patent vs keeping the patent

4. Establish an infringement budget

Infringer may fear legal damages Thus prepare realistic budget for prosecuting violation of

the patent.

5. Evaluate the patent strategically

Patent process typically take 3 years

Compare this with the lifecycle of the proposed innovation

or technology.

Will the patent be worth defending in three years or will

enforcement cost more than the damages collected.

Pursuing a patent (cont.)



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Term of Protection for Patents

A patent is protected 20 years from the date of filing

A Utility innovation is protected 10 years from the date of

filing. The term may be extended twice,each on a 5year

basis (i.e. 10 + 5 + 5), subject to use, therefore providing atotal protection period of 20 years

Once a patent expires, the owner no longer holds the

exclusive rights to the invention



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Where to apply?

An applicant must file a patent or utility innovation application with the

Intellectual Property Corporation of Malaysia (in Kuala Lumpur or at the

branch offices located in Sabah and Sarawak) which will assess whether it

meets the requirements of the Patents Act 1983.

The total cost for patent application is RM 1050 and for utility innovation is

RM 900 (as stated in http://www.mipc.gov.my/index.php/faq/patent.htmlas at

June 2009 )

Applications, correspondence and enquiries should be directed to:The Registrar

The Patent Registration Office

Intellectual Property Corporation of Malaysia

32nd Floor, Menara Dayabumi

Jalan Sultan Hishamuddin

50623 Kuala Lumpur

Tel : 603-2263 2100

Fax : 603-2274 1332

http://www.mipc.gov.my/index.php/faq/patent.htmlhttp://www.mipc.gov.my/index.php/faq/patent.html


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International IP protection

Exporting firms still face problems ofimitations and counterfeit products

The solution to this is internationalizing thepatent law to protect firms operating in the

global market. To facilitate patent filing in multiple countries

with a single office rather than filing in eachseparate country, the Patent Cooperation

treaty (PCT) with over 100 participatingcountries was established



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International IP protection

The World Intellectual Property Organization

(WIPO) in Geneva is administering this facility.

This arrangement helps to reduce the cost ofmultiple patent applications by firms operatingin the global markets.

This will indirectly contribute to the economy

of the nation because it helps to curtailimitation and counterfeit products.



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Copyright

Copyright is a form of intellectual

property protection or exclusive right

given to individuals who produce

original works of art and literature,music, films, sound recording,

broadcasts, derivative works and

computer programs



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Copyright in Malaysia

Copyright protection in Malaysia is governed by the

Copyright Act 1987

A work is protected automatically upon fulfillment of the

following conditions:-

1. Sufficient effort has been spent to make the work

original in character

2. The work has been written down, recorded or

reduced to a material form3. The author is a qualified person or the work is made

in Malaysia or the work is first published in Malaysia



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What can copyright protect?

1. Literary works (e.g. novels, instruction manuals,

computer programs, song lyrics, newspaper articles andsome types of database)

2. Dramatic works(e.g. theatre presentation and stage

plays )

3. Musical works(e.g. composition)

4. Artistic works (e.g. paintings, engravings,

photographs, sculptures, collages, architecture, technical

drawings, diagrams, maps and logos)

5. Layouts or typographical arrangements(e.g. used to

publish a work for a book)6. Recordings(e.g. jingles, sounds and films)

7. Broadcasts(e.g. documentary, live coverage of events)

8. Derivative works(e.g. producing Harry Potter movie

series from the novel of the same name)



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Literary works(including software and databases), theatrical,

musical or artistic (including photographic)

The author or creator of the work is also the first owner of anycopyright in it. In some situations two or more people may be joint

authors and joint owners of copyright

Film

The principal director and the film producer are joint authors and first

owners of the copyright (and the economic rights) Sound recording

The author and first owner of copyright is the record producer, in the

case of a broadcast, the broadcaster; and in the case of a published

edition, the publisher

If a work is made by an employee (in the course of his or her

employment, unless there is any contrary agreement), the copyright in

the work shall be deemed to the person who commissioned the work

or the employer

Ownership of copyright



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Term of Protection for Copyrights

Generally, copyright subsist during the life of theauthor plus 50 years after his death

However, if a work has not been published during the

lifetime of the author, copyright in the work continuesto 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 ofthe author who dies last is used for the purpose of

calculating the copyright duration of the work



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Legal Rights of Copyright Owners

Generally, owners of copyright works 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

the commercial rental to the public.

These exclusive rights apply irrespective of whether the works

are copied partly or wholly



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What Constitutes Copyright Infringement?

A copyright is infringed when an UNAUTHORIZED person

performs any of the following acts:-

reproduces in any material form, performs, exhibits, shows or

plays or distributes to the public

communicates by cable or broadcast of the whole infringing

work or a substantial part of its original or derivative form 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

possesses, otherwise than for his private and domesticuse, any infringing copy

imports into Malaysia, otherwise than for his private and

domestic use, an infringing copy



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Trademark

Trademark is a distinctive name, mark, symbol or motto

identified with a companysproduct(s)

A trademark is a sign which distinguishes the goods and

services of one trader from those of another

A sign includes words, pictures, logos, names, letters,

numbers or a combination of these

A trademark is used as a marketing tool to enable

customers recognize the product of a particular trader



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Functions of Trademark

Origin FunctionA trademark helps to identify

the source and those responsible for the

products and services sold in the market.

Choice Function A trademark enablesconsumers to choose goods and services with

ease while shopping.

Quality Function Consumers choose a

particular trademarks for its known quality



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Functions of Trademark (cont.)

Marketing Function Trademark plays

important roles in marketing. It is normal for

consumers to make purchases based on

continuous influence of advertising. Economic FunctionEstablished trademark is

a valuable asset. Trademarks may be licensed

or franchised



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Importance of Trademark

Registration

Trademarks provide : Exclusive Rights - Registered trademark owners are conferred

exclusive right to use their marks in trade. They also have the right

to take legal action for infringement under the Trademarks Act 1976

against others who use their marks without consent. They can also

lodge complaints to the Enforcement Division of Ministry ofDomestic Trade, Cooperative and Consumerism (MDTCC) for

appropriate actions under the Trade Description Act 1972.

Legal Evidence- Registration certificate issued by the Registrar of

Trademarks under the Ministry of Domestic Trade Cooperative andConsumerism (MDTCC) of is a prima facie evidence of trademark

ownership. A certificate of registration serves as an important

document to establish the ownership of goods exported to other

countries.



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Law Governing Trademarks

In Malaysia, a trademark is governed by:

1.Trademarks Act 19762.Trademarks Regulation 1997 (Amendment

2001)



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Registration of Trademark in Malaysia

Registration of trademark is not compulsory

in Malaysia.

Unregistered trademark may still obtain

protection under Common Law by virtue ofused and reputation.

Thus taking action against infringer can still

be applied.



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However protection through usage is difficult

and tedious.

The unregistered trademark owner must

convince the court that the infringing actmisleads the public.

The infringing goods and services may be

mistaken from their own goods and services.

Registration of Trademark in Malaysia (cont.)



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Registrability of Trademark

Not all trademarks can be registered

For registration, trademarks for goods and services must bedistinctive and may take the following terms:

An invented word or words

Applicantssignature

Words with no direct relation to goods or services,geographical name or surname

Any distinctive sign such logos, pictures, symbols, etc.

Not deceptive, confusing, contrary to law, scandalous or

offensive

Not identical or similar to earlier registered trademarks

Not identical or similar to well-known trademark



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Registrability of Trademarks (cont.)

A trademark cannot be registered if it contains words or

representation prohibited under Trademarks Act 1976 andTrademarks Regulation 1997 such as:

Patent, Patented, By Royal Letters Patent, Registered,

Registered Design and Copyright

His Majesty Yang Di Pertuan Agong, Her Majesty Raja

Permaisuri Agong, The Royal Highness Sultans and TheirExcellencies Yang Di Pertuan Negeri

Royal Imperial Crown, Arms, Crest, Armorial Bearings or Insignia

The Royal Army and Royal Malaysian Police

Red Crescent, Geneva Cross in red and Swiss Federal Cross in

white or silver on red ground

Words or representation or ASEAN and National Flower



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Trademarks registered in Malaysia are not

protected abroad

If protection of trademarks is required overseas,it is necessary to apply for registration abroad

separately

Registrability of Trademarks (cont.)



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Registration Process

Every application will be examined to ensure

registrability.

If there are any objections to registration of a particulartrademark, the applicant may apply for hearing.

Trademarks accepted will be advertised in the

government gazette. If no opposition the trademarks will be registered

Registration Certificate will be issued.

Application Fee:

Application fee : RM 250.00 Advertisement in Government Gazette and Issuance

of Certificate RM 450.00



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Term of Protection for Trademarks

Valid for 10 years from the date of

application and may be renewed every 10

years.



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Industrial Design

An industrial design is the ornamental oraesthetic 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 thefeatures in the finished article appeal to eye



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Ownership Rights

A registered industrial design provides an

exclusive right to make, import or sell or hire out

any article to which the design has been applied

The owner of a registered design has the right to

take legal action against an infringer within 5

years from the act of infringement



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What is a registrable industrial design?

An industrial design must be newat the date of

application

A design is considered as new only if it has notbeen made available or disclosed to the public in

any way whatsoever in Malaysia before the filing

date



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What sort of designs is excluded from registration?

An industrial design is not registrable if: It does not have a clear aesthetic appearance.

It is a method or principle of construction.

Designs features dictated solely by function.

Integral parts which consist of features that dependent

upon the appearance of another article.

Differs only in immaterial details or in features commonly

used in the relevant trade (trade variants).

The designs those are contrary to public order or

morality.



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Filing of Industrial Designs

As claims are based on a "first-to-file" rule

basis, filing of an industrial design should be

made at the earliest possible time or before

an article is disclosed to the public

Prior disclosure will destroy the novelty of

the design. Therefore, extreme care should

be exercised to ensure secrecy of the design



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Term of Protection for Industrial 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 two

consecutive terms of 5 years each

The maximum protection period is 15 years



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How extensive is industrial design protection?

An industrial design registered in Malaysia is

only protected in Malaysia

In order to have your designs protected in othercountries, applications for registration will have

to be filed within six (6) month from the earliest

date when it was first filed in any of the Paris

Convention member countries



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Who can apply for design registration?

Only the owner of a design may apply to register the

design, though an agent can be authorized to makeapplication

Where an applicant's ordinary residence or principal

place of business is outside Malaysia, the applicant shallappoint an agent registered in the Register of IndustrialDesigns Agent

All application for the registration of industrial design

must be lodge at the Industrial Designs Registry,Intellectual Property Corporation of Malaysia



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Trade Secrets

Information that is critical to the business success but

does not qualify for patent, trademark, copyright, or

industrial design protection

Confidential information that the business needs to keep

it secret to help maintain its competitive advantage

Any formula, pattern, physical device, idea, process or

other information that provides the owner of the

information with a competitive advantage in the

marketplace



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Characteristics of information

that can be classified as trade secrets

Not known outside the company

Known only inside the company on a need-to-know

basis

Safeguarded by stringent efforts to keep the information

confidential

Valuable and provides the company a compelling

competitive advantage

Developed at great cost, time and effort

Cannot be easily duplicated, reverse engineered or

discovered

Can last longer that the term of a patent



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How to Protect Trade Secrets

Physical Methods

Restricting access (access to confidential documentsrestricted to certain key personnel)

Labeling documents (confidential documents are stamped

Private& Confidential,Restricted.)

Password protection (for confidential computer files)

Logbooks for visitors and access to confidential materials

Adequate overall security measures (alarm, security

personnel)

Written Confidentiality Agreement

a firm asks employees to sign a

confidentiality/nondisclosure agreement. If they then tell

anyone about it, this is a breach of confidence and you can

take legal action against them



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References

http://www.mipc.gov.my/retrieved on June 26, 2009.

http://www.wipo.int/portal/index.html.en retrieved on

June 26, 2009.

http://www.ipo.gov.uk/retrieved on June 26, 2009.

http://www.ipaustralia.gov.au/index.htmlretrieved on

June 26, 2009.

B.R. Barringer, R.D. Ireland, Entrepreneurship:

Successfully Launching New Ventures (Upper Saddle

River, New Jersey: Pearson Education, 2008)
http://www.mipc.gov.my/http://www.ipo.gov.uk/http://www.ipo.gov.uk/http://www.ipo.gov.uk/http://www.ipaustralia.gov.au/index.htmlhttp://www.ipaustralia.gov.au/index.htmlhttp://www.ipo.gov.uk/http://www.ipo.gov.uk/http://www.ipo.gov.uk/http://www.mipc.gov.my/

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