Unit 7 Intellectual Property

TECHNOLOGY ENTREPRENEURSHIP
(ENT600)
UNIT 7 :
INTELLECTUAL PROPERTY
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

Introduction
• The intellectual creations and its inherent value can
be protected from being exploited by other parties
through intellectual property protection
• The concept of intellectual property means that any

unauthorized use of the creation or works by
unauthorized parties is prohibited and protected by
law

Definition of Intellectual Property
• 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.

Types of Intellectual Property (IP)
• There are five types of IP rights which
provide protection for inventions or creations
against infringement by others:
1. Patent
2. Copyright
3. Trademark
4. Industrial design
5. Trade secret
5

Types of Invention Protection
• In Malaysia , technological inventions are

protected under the Patents Act 1983.
• The Act covers two key forms of protection:

1. Patent
2. Utility innovation

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).

Utility Innovation
• 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.
• 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 an inventive action

Why Protect an invention?
• A patent or utility innovation protection gives the
owner of the patent/utility innovation the exclusive
right to stop others from manufacturing, using
and/or selling the owner’s invention in Malaysia
without the owner’s consent or permission.
• A patent owner has the right to use the patented

invention, or may license to other parties to use
the invention, or sell the right of the invention to
someone else who will then become the new
owner of the patent.

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
persons and thus also includes, for example, a
company
10

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).
11

Entrepreneurship
ENT600/UNIT 7 : INTELLECTUAL PROPERTY 12
Dept, FBM (2009)

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
or therapy, and diagnostic methods practiced on the human or
animal body.
• Anything immoral or contrary to public policy
13

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.
14

Pursuing a patent (cont.)
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.
15

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 5
– year basis (i.e. 10 + 5 + 5), subject to use, therefore
providing a total protection period of 20 years
• Once a patent expires, the owner no longer holds the

exclusive rights to the invention.
16

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.html
as at June 2009 )
• Applications, correspondence and enquiries should be directed to:
The Registrar
The Patent Registration Office
Unit 1-7, Aras Bawah, Tower B, Menara UOA Bangsar,
No. 5, Jalan Bangsar Utama 1,
59000 Kuala Lumpur
Tel : +603-2299 8400

Email : ipmalaysia @ myipo.gov.my
17

International IP protection
• Exporting firms still face problems of imitations and
counterfeit products
• The solution to this is internationalizing the patent law

to protect firms operating in the global market.
• To facilitate patent filing in multiple countries with a

single office rather than filing in each separate
country, the Patent Cooperation treaty (PCT) with over
100 participating countries was established
18

International IP protection
The World Intellectual Property Organization
(WIPO) in Geneva is administering this facility.
• This arrangement helps to reduce the cost of multiple patent

applications by firms operating in the global markets.
• This will indirectly contribute to the economy of the nation

because it helps to curtail imitation and counterfeit products.
19

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.
20

Entrepreneurship
Dept, FBM (2009)

Entrepreneurship
Dept, FBM (2009)

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 form
3. The author is a qualified person or the work is made in
Malaysia or the work is first published in Malaysia
23

What can copyright protect?
• Literary works (e.g. novels, instruction manuals, computer
programs, song lyrics, newspaper articles and some types of
database)
• Dramatic works (e.g. theatre presentation and stage plays )
• Musical works (e.g. composition)
• Artistic works (e.g. paintings, engravings, photographs,
sculptures, collages, architecture, technical drawings,
diagrams, maps and logos)
• Layouts or typographical arrangements (e.g. used to
publish a work for a book)
• Recordings (e.g. jingles, sounds and films)
• Broadcasts (e.g. documentary, live coverage of events)
• Derivative works (e.g. producing Harry Potter movie series
from the novel of the same name)
24

Ownership of copyright
• 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 any copyright
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.
25

Term of Protection for Copyrights
• Generally, copyright subsist during the life of the
author plus 50 years after his death
• However, if a work has not been published during the

lifetime of the author, copyright in the work continues
to 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 of

the author who dies last is used for the purpose of
calculating the copyright duration of the work.
26

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.
27

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 domestic
use, any infringing copy
• Imports into Malaysia, otherwise than for his private and
domestic use, an infringing copy
28

Trademark
• Trademark is a distinctive name, mark, symbol or motto identified
with a company’s product(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.
29

Entrepreneurship
Dept, FBM (2009)

Functions of Trademark
• Origin Function – A trademark helps to identify the
source and those responsible for the products and
services sold in the market.
• Choice Function – A trademark enables consumers

to choose goods and services with ease while
shopping.
• Quality Function – Consumers choose a particular

trademarks for its known quality
31

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 Function – Established trademark is a
valuable asset. Trademarks may be licensed or
franchised
32

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 of Domestic
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 and
Consumerism (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.
33

Law Governing Trademarks
In Malaysia, a trademark is governed by:
1. Trademarks Act 1976

2. Trademarks Regulation 1997 (Amendment 2001).
34

Registration of Trademark in Malaysia
• Registration of trademark is not compulsory in
Malaysia.
• Unregistered trademark may still obtain protection

under Common Law by virtue of used and
reputation.
• Thus taking action against infringer can still be

applied.
35

Registration of Trademark in Malaysia (cont.)
However protection through usage is difficult and tedious.
• The unregistered trademark owner must convince the

court that the infringing act misleads the public.
• The infringing goods and services may be mistaken

from their own goods and services.
36

Registrability of Trademark
• Not all trademarks can be registered
• For registration, trademarks for goods and services must be
distinctive and may take the following terms:
o An invented word or words
o Applicant’s signature
o Words with no direct relation to goods or services,
geographical name or surname.
o Any distinctive sign such logos, pictures, symbols, etc
o Not deceptive, confusing, contrary to law, scandalous or
offensive.
o Not identical or similar to earlier registered trademarks.
o Not identical or similar to well-known trademark.
37

Registrability of Trademarks (cont.)
A trademark cannot be registered if it contains words or
representation prohibited under Trademarks Act 1976 and
Trademarks 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 Their
Excellencies 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.
38

Registrability of Trademarks (cont.)
• Trademarks registered in Malaysia are not protected
abroad.
• If protection of trademarks is required overseas, it is

necessary to apply for registration abroad separately.
39

Registration Process
• Every application will be examined to ensure registrability.
• If there are any objections to registration of a particular
trademark, 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
40

Term of Protection for Trademarks
• Valid for 10 years from the date of application

and may be renewed every 10 years.
41

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.
42

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.
43

What is a registrable industrial
design?
• An industrial design must be new at the date of
application
• A design is considered as new only if it has not been

made available or disclosed to the public in any way
whatsoever in Malaysia before the filing date.
44

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.
45

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.
46

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.
47

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 other countries,

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.
48

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 make application.
• Where an applicant's ordinary residence or principal place of

business is outside Malaysia, the applicant shall appoint an
agent registered in the Register of Industrial Designs Agent.
• All application for the registration of industrial design must be

lodge at the Industrial Designs Registry, Intellectual Property
Corporation of Malaysia.
49

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.
50

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
51

How to Protect Trade Secrets
• Physical Methods
o Restricting access (access to confidential documents
restricted to certain key personnel)
o Labeling documents (confidential documents are stamped
“Private & Confidential”, “Restricted”.)
o Password protection (for confidential computer files)
o Logbooks for visitors and access to confidential materials
o Adequate overall security measures (alarm, security
personnel)
• Written Confidentiality Agreement

o 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.
52

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.html retrieved on
June 26, 2009.
• B.R. Barringer, R.D. Ireland, “Entrepreneurship:
Successfully Launching New Ventures” (Upper Saddle
River, New Jersey: Pearson Education, 2008)
53

54

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TECHNOLOGY ENTREPRENEURSHIP

• The term “intellectual” is used to portray the

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

• The concept of intellectual property means that any

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

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

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

• In Malaysia , technological inventions are

• The Act covers two key forms of protection:

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

• According to Patents Act 1983, a patent is an

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

• Utility innovation provides intellectual property right for

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

• A patent owner has the right to use the patented

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

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

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

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

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

2. Prepare patent plan in detail.

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

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

• A Utility innovation is protected 10 years from the date

• Once a patent expires, the owner no longer holds the

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

Tel : +603-2299 8400

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

• The solution to this is internationalizing the patent law

• To facilitate patent filing in multiple countries with a

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

• This arrangement helps to reduce the cost of multiple patent

• This will indirectly contribute to the economy of the nation

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

Copyright is a form of intellectual property protection

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

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

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

• A work is protected automatically upon fulfillment of the following

1. Sufficient effort has been spent to make the work original in

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

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

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

• However, if a work has not been published during the

• In the case of a work with joint authorship, the life of

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

• The reproduction of the works in any form (including

These exclusive rights apply irrespective of whether the works

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

• Reproduces in any material form, performs, exhibits, shows or

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

• A trademark is a sign which distinguishes the goods and

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

• A trademark is used as a marketing tool to enable customers

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

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

• Choice Function – A trademark enables consumers

• Quality Function – Consumers choose a particular

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

• Marketing Function – Trademark plays important

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

• Legal Evidence - Registration certificate issued by the Registrar of