MANAGING INTELLECTUAL

PROPERTY

LECTURE 5

M O H D RI Z A L S A L L EH
 CONTENTS

 INTELLECTUAL PROPERTY

 TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE STEP AND

INDUSTRIAL APPLICATIONS

 EXCLUSION FROM PATENTS

 PATENTS IN PRACTICE, EXPIRY OF A PATENTS AND PATENTS

EXTENSIONS

 THE USE OF PATENTS IN INNOVATIONS MANAGEMENT, DO PATENTS

HINDER OR ENCOURAGE INNOVATIONS?

 TRADEMARKS & COPYRIGHT

 REGISTERED DESIGNS, REMEDY AGAINST INFRINGEMENT, DAMAGES,

INJUCTION ACCOUNTS
 INTELLECTUAL PROPERTY

Intellectual Property:
“Intellectual property can be defined as something produced by the
mind, of which the ownership or right to use may be legally protected
by copyright, patent, trademark, etc. Intellectual property includes
industrial, literary and artistic works.”
(Al-Hawamdeh & Hart, 2002)

Types of intellectual property

 Trade secret.
 Patent.
 Copyright.
 Trade mark.
 Industrial design.
 INTELLECTUAL PROPERTY

“Intelligence is the new form of property.”

(Charles Handy)

“People with ideas – people who own ideas – have more powerful than
people who work machines and, in many cases more powerful than the
people who own machines.”
(Howkins, 2002)
 INTELLECTUAL PROPERTY

Malaysian IP protections

(1) Akta Hakcipta 1987.

(2) Akta Perihal Dagangan 1972.
(3) Akta Cap Dagangan 1976.
(4) Akta Paten 1983.
(5) Akta Hakcipta 1987.
(6) Akta Reka Bentuk Perindustrian 1996.
(7) Akta Petunjuk Geografi 2000.
(8) Akta Reka Bentuk Susun Atur Litar Bersepadu 2000.
(9) Akta Cakera Optik 2000.
 INTELLECTUAL PROPERTY

World Intellectual Property Organization (WIPO), Paris

Convention1883, Berne Convention 1886, and agreement of Trade
Related Aspects of Intellectual Property Rights (TRIPs) 1994.

Purposes
 Reward for the author
 Stimulate artistic & scientific creativity
TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE
STEP AND INDUSTRIAL APPLICATION

TRADE SECRETS/UNDISCLOSED INFORMATION:

“Trade Secrets/Undisclosed Information is protected information which is
not generally known among, or readily accessible to persons that normally deal
with the kind of information in question, has commercial value because it is
secret, and has been subject to reasonable steps to keep it secret by the lawfully
in control of the information”.

“All forms and types of financial, business, scientific, technical, economic, or

engineering information, including patterns, plans, compilations, programmed
devices, formulas, designs, prototypes, methods, techniques, processes,
procedures, programs, or codes, whether tangible or intangible, and whether or
how stored, compiled, or memorialized physically, electronically, graphically,
photographically, or in writing.”
Economic Espionage Act of 1996, 18 U.S.C. § 1839 (3)
TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE
STEP AND INDUSTRIAL APPLICATION

TRADE SECRETS/UNDISCLOSED INFORMATION -

EXAMPLES:
TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE
STEP AND INDUSTRIAL APPLICATION

Trade Secrets in a Franchise

Financial, technical, structural, marketing, engineering, distribution
techniques/documents, recipes, business formats and plans, operations
manuals, and pricing techniques are all candidates for protection as trade
secrets.

Increasing vulnerability of trade secrets

 In franchising the franchisor has to transfer all of the information relevant to

the way of doing his business to the franchisee
 If a franchisor is not careful, its products and method of doing business can
be copied by employees or franchisees who can use the information to start
competing companies.
 Advances in technology - the speed and ease with which information can
be moved has made businesses information more vulnerable to loss
 Employee mobility and shifting allegiance
TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE
STEP AND INDUSTRIAL APPLICATION

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 offer a new
technical solution to a problem. An exclusive right is a right given to the owner
the right to control their invention as provided by the law’.

PATENT - EXAMPLES :
TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE
STEP AND INDUSTRIAL APPLICATION

NOVELTY

“A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or
described in a printed publication in this or a foreign country, before the
invention thereof …
(b) the invention was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more than one year
prior to the date of the application …
(e) the invention was described in a patent granted on an application for patent
by another filed … before the invention …
(f) he did not himself invent the subject matter …
(g) before the applicant’s invention thereof the invention was made in this
country by another who had not abandoned, suppressed, or concealed it ….”

35 U.S.C. § 102
 EXCLUSION FROM PATENTS

PATENTABLE INVENTIONS:
•be new, which means that the invention has not been publicly disclosed in any form,
anywhere in the world;
•involves 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
•be industrial applicable, meaning it can be made or used in any kind of industry.

For a Utility Innovation to be granted it only has to be new.

NON-PATENTABLE INVENTIONS:

•discoveries, scientific theories and mathematical methods;

•plant or animal varieties or essential biological process for the production of
plants or animals, other than man-made living micro-organism, micro-
biological processes and the product of such micro-organism processes;
•scheme, rules or methods for doing business performing purely mental acts or
playing games;
•method for the treatment of human or animal body by surgery or therapy, and
diagnostic methods practiced on the human or animal body.
THE USE OF PATENTS IN INNOVATIONS MANAGEMENT, DO
PATENTS HINDER OR ENCOURAGE INNOVATIONS?

 Are patents a pre-condition for innovation? – no

 Can patents encourage innovation? – yes
 Do economists agree on the economic effects? – no
 Do economically successful countries have or develop strong patent systems?
– yes
 Can patents aid commercial success? – yes
 Do many innovative enterprises use patents? – yes
 Do (potential) investors like patents? – yes
 Do patents guarantee profits? – no
THE USE OF PATENTS IN INNOVATIONS MANAGEMENT, DO
PATENTS HINDER OR ENCOURAGE INNOVATIONS?

New invention

Further Further
innovation by innovation by
Patent third parties
third parties application
Recovery of
investment through
Publication of
Patent - exclusive use
granted - licensing
applications & patents
- sale

Exploitation of
patent
 TRADEMARKS & COPYRIGHT

TRADE MARK:

“A Trade Mark 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. A Trade Mark is used as a marketing tool to enable customers in
recognising the product of a particular trader.”

TRADE MARK - EXAMPLES:

 TRADEMARKS & COPYRIGHT

COPYRIGHT:
“Copyright is the exclusive right given to the owner of a copyright for specific period. Copyright
protection in Malaysia is governed by the Copyright Act 1987”.

There is no system of registration for copyright in Malaysia. A work that is eligible is protected
automatically upon fulfillment of the following conditions:
• sufficient effort has been expended to make the work original in character;
• the work has been written down, recorded or reduced to a material form; and
• the author is a qualified person or the work is made in Malaysia or the work is first published in
Malaysia.

WORK ELIGIBLE FOR COPYRIGHT PROTECTION:

•karya sastera (literary works) *including software;

•karya muzik (musical works);
•karya seni (artistic works);
•filem (films);
•rakaman bunyi (sound recording);
•siaran (broadcasts);
•karya terbitan (derivative works)
 INTELLECTUAL PROPERTY
PROTECTION SYSTEM IN MALAYSIA

Registration Authority of Intellectual Property in Malaysia:

Intellectual Property Corporation of Malaysia (MyIPO) under the Ministry of

Domestic Trade & Consumer Affairs.
Function:
Responsible in ensuring the rights of creators owners of IP are protected
worldwide and the inventors and authors are thus, recognized and rewarded for
their ingenuity.
Website : www.myipo.gov.my
 TRADEMARKS & COPYRIGHT

The International Agreement, Conventions and Treaties:

• The Paris Convention 1883
• The Berne Convention 1886
• Convention establishing World Intellectual Property Organization
(WIPO) 1976
• The Trade Related Aspects of Intellectual Property Rights
Agreement 1994 (TRIPS Agreement)
• Patent Cooperation Treaty (PCT)
• Nice Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration of Marks
1957 (Nice Agreement)
• The Vienna Agreement Establishing an international
Classification of the Figurative Elements of Marks 1973 (Vienna
Agreement)
Note: Under these Agreements, Treaties and Conventions, all the members must follow the standards
and give the same protection either for local owners or owners from the member’s countries.
INTELLECTUAL PROPERTY MANAGEMENT

Flow Chart for Patent Filing Application

Start

1 1. Invention Disclosure Form received from Inventor.

2. a 2. Invention Disclosure Form Screening Process

1 week
2.a Form Completed by Inventor – back to Activity 1
2
No

Yes

3 3. Issue Acknowledge Letter for receive of Invention Disclosure Form

4 4.Propose list of Patent Agent for Patent & Novelty Search

2 week
5 5. Issue Appointment Letter to selected Patent Agent for Patent & Novelty Search

6 6. Receive Patent & Novelty Search Reports from Patent Agent

INTELLECTUAL PROPERTY MANAGEMENT

Flow Chart for Patent Filing Application (Cont.)

No 7. Perform Patent & Novelty Search Report Assessment

7 7.a
a. Issue Acknowledgement Letter to Inventor 1 week

Yes

8 8. Selection of Patent Agent for Specification Drafting and Filing Application Process

9. Issue Appointment Letter to selected Patent Agent for Specification Drafting and
9 Filing Application Process to MyIPO
2 month
10. Prepare Specification Drafting and Filing Application to MyIPO
10

11. Receive Filing No. and Documentation (Certificate & Specification)

11

Complete
Related Documents:

•Invention Disclosure Form

•Appendix Templates
•Certificate of Filing
•Certificate of Grant of a Patent
 PATENTS & UTILITY INNOVATION GRANTING
PROCEDURE

MyIPO’s Patents &

Utility Innovation
Granting Procedure