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Seminar Mengenai Isu-Isu Paten dan Peningkatan Pengetahuan Teknikal

Pusat Latihan Harta Intelek, INTAN 7-8 Dis 2005, Pulau Pinang Introduction to Intellectual Property System in Malaysia
Professor Dr Lim Heng Gee Fakulti Undang-Undang Universiti Teknologi MARA 40450 Shah Alam, Selangor

Outline of topics to be discussed What is Intellectual Property Division of Intellectual Property Laws Other IP Rights Assignment and Licensing of IP Rights Infringement and Offences Differences between protection under the various types of IP laws

The Place of Intellectual Property

Classification of Property Real Property (Immovable Property) Land Things permanently fixed to land Movable Property (Personal Property) Tangible Intangible Intellectual Property

What is Intellectual Property?

Intellectual property refers to creations of the mind: invention, literary, artistic and musical works, and symbols, images, and designs used in commerce Since they are the creations of the human mind, the human intellect, this kind of property is called Intellectual Property All the various forms of intellectual property are protected on a national basis Thus, the scope of protection and the requirements for obtaining protection will vary from country to country There are, however, similarities between national legal norms Moreover, the current worldwide trend is towards harmonisation of the national laws.

The Traditional Types of Intellectual Property Copyright Industrial Designs Patents Trade marks Trade Secrets (Confidential Information) However, the category of intellectual property is not closed Formerly, the division was between copyright and related rights, and the other rights which are called Industrial Property All the above are now collectively known as Intellectual Property

Copyright
The purpose of copyright law is to protect artistic or aesthetic creations Applicable statute - Copyright Act 1987 This Act protects the following types of works: Literary works, Artistic works, Musical works Sound recordings, Films, Broadcasts Published editions and also Performers right

Copyright - subsistence No registration is required. The two main requirements are that sufficient effort has been expended to make the work original in character; and that the work has been written down, recorded or otherwise reduced to material form. In other words, protection is automatic as long as all the requirements are satisfied No need to register No need to use copyright notice

Copyright Exclusive Rights

The owner of a copyright work has the following exclusive rights to prevent others from exploiting his work. Reproduction Communication to the public Performing to the public Distribution of copies to the public by sale or other transfer of ownership Commercial rental to the public

Copyright Exclusive Rights

Industrial Designs - 1
The industrial design law is meant to protect the aesthetic appearance of an article. Governing statute - Industrial Designs Act 1996 S. 3(1) - "industrial design" means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include A design is said to be the face of the article A novel design may be registered Upon registration, the registered proprietor would have the exclusive right to the use of the design for the articles registered for a maximum of 15 years from the filing date.

Industrial Designs - 2 The design/copyright interface: S 7(5) Copyright Act - "Copyright shall not subsist under this Act in any design which is registered under any written law relating to industrial designs." S. 7(6) Copyright Act - "Copyright in any design which is capable of being registered under any written law relating to industrial design, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person."

Registered Designs

Patents - 1

Essentially a patent is a document, issued by the relevant government authority, conferring a monopoly on the creator of an invention. In exchange for the State-conferred monopoly, the inventor reveals the secret of his invention. The monopoly, which is for a specified number of years, gives the owner of the patent the exclusive right to exploit the invention.

Patents - 2 The patent law gives protection to the owner of an invention which solves a problem in the field of technology. If the invention satisfies the requirement of novelty, inventive step and industrial applicant, a patent may be granted to the owner of the invention. Such a patent gives the owner the exclusive right to prevent others from exploiting his invention. This right is good even against an independent creator of the same invention.

Patents - 3

An invention is new if it is not anticipated by the prior art What is the prior art? Everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention.

Patents - 4
Comic dog rings a bell Guardian 2/11/83 Paul Ushers patent application No. GB 2117179 related to a spring-loaded 12 x 8 pressure pad on the outside of a door. The pressure of a dogs paw on it closed an electric circuit which rang a bell inside the house. The Examiner drew his attention to a copy of the Dennis strip in Beano of 28/2/1981. This showed a dog with an identical problem ringing a low-level, nose-operated bell outside the kitchen door. I am a bit surprised that Beano is regarded as technical literature, said Mr Usher.

Patents - 5

Patents - 6
Priority Date

Prior Art Base B

Prior Art Base A

+ Info about invention X by Bakar

Ali's filing date for invention X 1/1/98

Date of examination of Alis application 1/1/2000

Patents - 7

An invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the state of the prior art under paragraph (a) of subsection (2) of section 14, such inventive step would not have been obvious to a person having ordinary skill in the art.

Patents - 8

Inventive Art Obvious Art Prior Art

Patents - 9

An invention shall be considered industrially applicable if it can be made or used in any kind of industry

Industry construed widely to include agriculture, horticulture etc

Patents - 10

Duration of protection - 20 years from filing Exploitation rights - Product patents: making, importing, offering for sale, selling or using the product stocking such product for the purpose of offering for sale, selling or using Exploitation rights - Process patents: using the process doing any of the acts above in respect of a product obtained directly by means of the process

Registered Trade Marks - 1

Trade marks are commercial identifications such as words, designs, slogans, logos, symbols, signatures, labels, tickets, names or combination thereof. On satisfying certain conditions, the owner of the mark may apply for registration of the mark for his goods or services under the Trade Marks Act 1976. On registration, the proprietor would have the right to prevent others from using the same or similar marks on the same goods or services. Trade marks law therefore, serve to protects owners and public from unfair competition and deception.

Registered Trade Marks - 2

Registered Trade Marks - 3 To be registrable, a mark must satisfy at least one of the following essential elements: The name of an individual, company or firm represented in a special or particular manner The signature of the applicant An invented word Words having no direct reference to the character and quality of the goods Any other distinctive mark

Registered Trade Marks - 4

Registered Trade Marks - 5

Registered Trade Marks - 6

The mark must also not be prohibited from registration for the following reasons: If the use of the mark is like to deceive or cause confusion If it comprises any scandalous or offensive matter If it contains matter which might be prejudicial to the interests or security of the nation If it is identical or confusingly similar to a well known mark

Registered Trade Marks - 7

Registered Trade Marks - 9

Duration 10 years from filing, plus further 10 years extensions The Exclusive Rights: The right to prevent others from using an identical or confusingly similar mark on goods within the scope of the registration The right to prevent others from using the registered mark in comparative advertising

Comparative Advertising

Unregistered Trade Marks This is an alternative form of action to an action for registered trade mark infringement. To be entitled to sue in passing off, certain conditions must be satisfied. If these conditions are satisfied, an action could be taken to prevent one person from passing of his goods or services as that of another person. There is no requirement for registration. The elements to be proved are: Reputation Misrepresentation Damage

Unregistered Trade Marks - Exaamples

Unregistered Trade Marks

Differences between protection under the Trade Marks Act and Passing Off: RTM protected form date of its registration, even if it has not been used cf passing off No need to prove reputation of a RTM, therefore easier to sue infringers cf passing off action, distinctiveness had to be proved to claim reputation and goodwill in the mark etc. If the mark is registered, distinctiveness is presumed. Protection of a registered trademark is nationwide, while that of passing off may be strictly local, depending on the extent of the reputation. Registration only possible for goods and services. Passing off action is wider and will cover get-up and advertising campaigns, name of business etc.

Breach of confidence - General

Confidential Information and Trade Secrets

See later

Other IP Rights Geographical Indications - 1

Geographical Indications Act 2000 "Geographical indications" means 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

Other IP Rights Geographical Indications - 2

Wines and Spirits PORT SHERRY COGNAC CHAMPAGNE BORDEAUX TEQUILA TOKAJ EGER MOSKOVSKAYA NEWCASTLE Manufactured Products SHEFFIELD SOLINGEN WATERFORD BOHEMIA THAI Natural products VICHY EVIAN HAVANA DARJEELING ASSAM KENYA CEYLON CUBA ROQUEFORT

Other IP Rights Geographical Indications - 3

A geographical indication can be protected irrespective of whether it has been registered However, any interested person can apply for registration On registration, there is a presumption that such indication is a geographical indication within the meaning of the Act Who can apply for registration? a person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application, and includes a group or groups of such person; a competent authority; or a trade organisation or association

Other IP Rights Geographical Indications - 5

Differences between a Trade Mark and a GI A trade mark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trade mark. A GI tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a GI and whose products share typical qualities.

Other IP Rights Geographical Indications - 7

Other IP Rights Integrated Circuits - 1

Integrated circuits, also known as silicon chips, is a small, thin piece of silicon onto which the transistors making up the microprocessor have been etched. A chip might be as large as an inch on a side and can contain as many as 10 million transistors. Simpler processors might consist of a few thousand transistors etched onto a chip just a few millimeters square. Relevant statute - Layout-Designs of Integrated Circuits Act 2000.

Other IP Rights Integrated Circuits - 2

Layout-design means the three-dimensional disposition, however expressed, of the elements of an integrated circuit and some or all of the interconnections of the integrated circuits or such a threedimensional disposition prepared for an integrated circuit intended for manufacture. S. 5(1) A layout-design shall be eligible for protection under this Act if the layout-design is an original layout-design and the right holder of the layout-design was, at the time the layout design was created, a qualifying person. S. 5(2) A layout design shall be original if it is the result of the creators own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation

Other IP Rights Integrated Circuits - 4

Ownership and Licensing of IP - 1

IP is a type of property - therefore can be dealt with like any other types of personal property Ownership of IP By virtue of creatorship or inventorship By virtue of relationship with creator or inventor Employer Commissioner By virtue of transfer Assignment Transmission etc

Ownership and Licensing of IP - 2

Rights of Intellectual Property Ownership

The right to exploit/commercialise the IP The right to assign or transmit the IP The right to conclude licence contracts

Ownership and Licensing of IP - 3

The Need for Dealings to be in Writing and/or Registered Copyright All assignment and licence to be in writing to have effect s 27(3) Patents No assignment shall have effect against third party unless recorded in the Register s 39(4) All licence contract must be in writing s 41(2) Registered Trade Mark Assignment must be registered s 47(1) Licence must be entered in the Register as Registered user s 48 Industrial Designs Assignment to be in writing s 23(3) and recorded in the Register to have effect against third party s 31(2)

Enforcement of Rights
By civil action - Infringements: injunction, including interlocutory injunction damages account of profits delivery up or destruction By criminal prosecution - Offences: Under the Copyright Act, Patents Act Under the Trade Description Act Printing Presses and Publication Act Price Control Act etc

Who Can Sue?

Copyright The owner and the exclusive licensee s 37(1) and s 38(2) Patents The owner - s 59(1) and any licensee if the owner, on request, had not sued within 3 months s 61(3) Registered Trade Mark The owner s 35(1) and any registered user, if the owner, on request, had not sued within 2 months s 51(1) Industrial Design The owner s 33(1) and licensee, if the owner, on request, had not sued within 3 months s 33(4)

Differences between Copyright and Confidential Information Copyright does not protect ideas - protects the expression of the ideas Subject matter of copyright must be in material form Duration of copyright usually life plus 50 - cf with forever Copyright infringement even if reverse engineered - not in BOC Copyright protection available even if the work is not confidential cf BOC information must not be in public domain

Differences between Patents and Confidential Information Patent must be registered - i.e. application formality and grant Stringent conditions to be satisfied new,

inventive, and industrial application

Duration of protection for patent is 20 years from grant Only inventions patentable - BOC any thing except trivial tittle-tattle

Difference between Patent and Copyright protection

Registration vs Automatic Ideas vs Expression Technical vs Literary, Artistic, Musical etc 20 years vs Life plus 50 Monopoly vs Protection Against Copying Paris Convention vs Berne Convention National Registration vs Automatic International Protection

Differences between Design and Copyright Protection

Registration vs Automatic Aesthetic works vs appearance of articles Original vs novelty requirement Life plus 50 vs 15 years from filing date Protection Against Copying vs Monopoly Automatic International Protection vs National Registration

Coca Cola and IP Rights

END
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