Stop others from selling your invention
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.
A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.
(An exclusive right is a right given to the owner the right to control their invention as provided by the law)
What is utility innovation?
A utility innovation is an exclusive right granted for a “minor” invention which does not required to satisfy the test of inventiveness as required of a patent.
Why protect an invention?
A patent or utility innovation protection gives the exclusive right to stop others from manufacturing, using and/or selling the owner’s invention in Malaysia.
National Security
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 (2) months has elapsed since filling.
Term of protection
A protection is protection 20 years from the date of filing and a utility innovation is protected 10+5+5 years from the date of filling upon proof of working.
Who may apply?
Any person may make an application for a patent or a utility innovation either alone or jointly with another. The word “person” is not limited to natural persons and thus also includes, for example, a company.
INDUSTRIAL DESIGN
An industrial design is the overall appearance of an article or a product. The design may consist of three dimension features such as the shape and configuration of an article, or two dimension features, such as pattern and ornamentation. The design features must be applied to an article by an industrial process or means of which, the features in the finished article gives it a unique appearance.
What is non-registrable design?
(i) It does not have a clear aesthetic appearance.
(ii) It is a method or principle of construction.
(iii) Designs features dictated solely by function.
(iv) Integral parts which consist features that dependent upon the appearance of another article.
(v) Differs only in immaterial details or in features commonly used in the relevant trade (trade variants).
(vi) The designs those are contrary to public order or morality.
When an application should be filed?
As claims are based on rules of ‘first to file’, 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 eliminate the novelty of the design. Extreme care should be exercised to ensure secrecy of the design.
What is the duration for protection?
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.
What qualifies an industrial design for registration?
To be eligible for registration, an industrial design must be new at the date an application for registration is filed. A design is considered new only if it has not been made available or disclosed to the public in any way whatsoever in Malaysia before the filing date of application. It also should not be on the record of the Industrial Design Register.
What rights does a registered design confer?
The owner of a registered design has 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. The owner of a registered design has the right to take legal action against an infringer within 5 years from the act of infringement.
How to claim priority date of an earlier foreign application?
The applicant needs to make the claim when filing the application where the date of priority and country should be stated. Priority date should be claimed within 6 months from the foreign filing. Priority documents and their translations should be furnished as evidence.
What can be done if someone made copies or infringed my industrial design?
The owner of a registered industrial design has the rights to take legal action. A registration certificate issued by the Industrial Design Registry is recognized by the Court as evidence of ownership. The owner can take legal action pursuant to the Industrial Design Act 1996 or under the Trade Description Act 1972.
When will an Industrial Design be manufacture or sell?
At anytime time after the application has been filed. Applicants may also exploit their industrial design in the foreign markets. However they would have to obtained protection in relevant countries.
Does one have to register an industrial design to get a protection?
Under industrial designs law, there is no protection without registration. An industrial design need to be registered to be eligible for protection. The owner of a registered industrial design has the exclusive rights over his industrial design.
How extensive is industrial design protection?
An industrial design registered in Malaysia is only protected in Malaysia. In order to have your design protected in other countries who are members of the Paris Convention and to claim priority in Malaysia, application for registration will have to be filed within 6 months from the date of filing in Malaysia.
GEOGRAPHICAL INDICATION
Geographical Indications Act 2000 defines geographical indication as 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.
Malaysia has a number of goods that can be registered as geographical indications. These goods have been commercially exploited at local and international market for example ‘Sarawak Pepper’, which is a pepper-based product produce in Sarawak. This pepper has gained reputation and recognition at international level due to the quality of the pepper. In addition, ‘Sabah Tea’, ‘Tenom Coffee’, ‘Borneo Virgin Coconut Oil’ and ‘Sabah Seaweed’ are the registered geographical indication goods in Malaysia. These four geographical indications are from Sabah.
Does geographical indication applicable only to an agricultural product?
Geographical indication is not limited to agricultural product. It can also be used on natural product such as Langkawi Gamat and any product of handicraft like Terengganu Songket, Kelantan Batek and food products such as Papar Belacan and Kelantan Budu.
Can individual register a geographical indication?
Registration of geographical indication is based on an affiliation ownership concept for the producers who are carrying on an activity in that specified geographical area and not an individual ownership concept. Geographical indication can also be registered by the competent authority such as local authority, government agency, statutory body; and trade organization or association.
What is the difference between geographical indication products and product without geographical indication?
The quality of the geographical indication goods and its unique characteristic are influence by the place of origin where the goods are originated or manufactured. The geographical indication goods with an assurance quality and has good reputation will become well known worldwide and acceptable in the market. However, goods without quality and unique characteristic that related to the place of origin are not recognized as a geographical indication goods. Due to the above reason, it is clear that the differences between geographical indication goods and other goods are based on quality, reputation and other characteristic attributable from the place of origin.
What is the duration of protection of geographical indication?
A registered geographical indication is protected for ten years from the date of filing and is renewable for every ten years as long as it is still in use.
What is the scope of protection of a geographical indication in Malaysia?
Geographical indication’s protection in Malaysia is territorial. To seek protection in other countries, application must be filed with the respective countries.
What is the difference between geographical indication and trade mark?
Trade marks is a mark which distinguishes the goods and services of one trader from those of another. It gives its owner the right to exclude others from using the trade marks. On the other hand, a geographical indication indicates where the goods are produced and has characteristics that are attributable to the place of the geographical origin. In addition, the geographical indication goods may have different trade marks amongst the traders as long as the geographical indication goods produce by the registered proprietor of geographical indication.
