intellectual property: the catalyst for innovation … · 8 ikan terubuk mulut besar sarawak 9...
TRANSCRIPT
INTELLECTUAL PROPERTY: THE CATALYST FOR INNOVATION AND
COMMERCIALIZATION 4 November 2015
Disclaimer
The following slides have been compiled for this seminar regarding intellectual
property system in Malaysia. Every effort has been made to ensure that the information
is accurate and up-to-date; however, as the practices and laws may change from time to
time, that is not always possible.
The speaker makes no claims, promises, or guarantees about the accuracy,
completeness, or adequacy of the information, and expressly disclaims any liability,
loss or risk, personal or otherwise, which is incurred as a consequence, directly or
indirectly, of the use and application of any of the content of this seminar.
Sofia Rehan Ramli
Patent Examiner,
Intellectual Property Corporation of Malaysia (MyIPO)
2
A Brief History about IP in Malaysia
3
1950 Pej. Pendaftaran Cap Dagangan dan Jaminhak was established; Trade Mark Ordinance 1950 was enforced
1983 Pej. Pendaftaran Cap Dagangan dan Paten was established under Ministry of Trade and Industry
1990 KPDNHEP was set up, IP Deparment was placed under the Ministry
2003 IP Department was corporatized, known as Perbadanan Harta Intelek Malaysia (MyIPO)
Vision and Mission
4
VISI
To be one of the leading IP organizations
MISI
Providing strong legal infrastructure and effective
administration regime to enhance greater creativity
and exploitation of IP
MyIPO Organization Chart
5
Unit 1-7 (Ground floor) & Mezzanine,
Level 12, 12A, 13, 15, 16, 17, 18 and 19,
Tower B, Menara UOA Bangsar,
No. 5, Jalan Bangsar Utama 1,
59000 Kuala Lumpur,
MALAYSIA.
6
Intellectual Property Corporation of
Malaysia (MyIPO)
Northern Zone
(Pulau Pinang)
Headquarters
(Kuala Lumpur)
Melaka Branch Southern Zone
(Johor Bahru)
East Coast Zone
(Kuantan)
Sarawak Branch
(Kuching)
Sabah Branch
(Kota Kinabalu)
7
Intellectual Property Corporation of
Malaysia (MyIPO)
8
DEFINITION OF INTELLECTUAL PROPERTY
“intangible property that is the result of creativity”
• Oxford Dictionary
“ someone's idea, invention, creation, etc., which can be protected by law from being copied by someone else”
• Cambridge Dictionary
“Harta hasil dari kreativiti manusia”
Main purpose: to obtain exclusive rights / monopoly by stopping others from exploiting the result of the creativity
9
10
11
.. But how can I protect it?
Components of IP
IC LAYOUT DESIGN COPYRIGHT
12
OTHER FORM OF PROTECTIONS RELATED TO IP
• Trade Secret – Example: Coca-cola, Colonel Sanders’ Original Recipe, WD-40 lubricant
• Confidential Information – Example: Client’s personal information
• Traditional Knowledge – Example: medical knowledge practiced by witchdoctors, hunting technique
• Genetic Resources – Example: Mengkudu for treating boils
• Traditional Cultural Expressions – Example: wayang kulit, dikir barat
13
14
LAYOUT-DESIGN OF AN INTEGRATED CIRCUIT
• Protected under Layout-design of Integrated Circuits Act 2000
• Definition: the three-dimensional disposition of the elements of an integrated circuit intended for manufacture
• Eligible for protection automatically • Duration of protection: 10 years (from date of exploitation) - 15 years (from date of creation)
15
16
GEOGRAPHICAL INDICATION
• Protected under Geographical Indications Act
• Definition: an indication which identifies any goods as to its place of origin, where a given quality or reputation is attributable to its geographical origin
• Duration of protection: 10 years; renewable every 10 years
17
GEOGRAPHICAL INDICATION
• Who can apply?
– a person who is carrying on an activity as a producer of the goods in the geographical area specified;
– a competent authority; or
– a trade organization or association.
18
19
1 Tenun Pahang DiRaja
2 Biskut Dan San Sungai Lembing
3 Gaharu Gopeng
4 Songket Terengganu
5 Kain Songket Melaka
6 Isau Sarawak
7 Durian Nyekak Sarawak
8 Ikan Terubuk Mulut Besar Sarawak
9 Halia Bentong
10 Kayu Manis Keningau
11 Tuhau Tambunan
20
TRADE MARK
• Protected under Trade Marks Act 1976 • Definisi:
– a sign which distinguishes the goods and services of one trader from those of another
– includes words, logos, pictures, names, letters, numbers or a combination of these
• Duration of protection: 10 years; renewable every 10 years
21
TRADE MARK
• Applicants are advised to conduct a preliminary search (RM20/hour) in MyIPO before submitting an application
• Legal action that can be taken against others who use the marks without consent: – Take civil action under the TM Acts for infringement;
or – lodge complaints to Enforcement Division under
MTDCC for appropriate actions under the Trade Description Act 1972
22
TRADE MARK • Registrable trade marks:
– Name of a person, firm, company represented in a special manner;
– Signature of the applicant or of some predecessor in his business;
– An invented word or words; – Words with no direct reference to the character or
quality of the goods or services not being, according to its ordinary meaning or a geographical significance or surname
– Any other distinctive – Are not considered as prohibited trade mark [Sec. 14
of TM Acts]
23
24 24
EXAMPLES OF UNREGISTRABLE AND PROHIBITED TRADE MARK
25
26
27
28
29
30
Literary Works
Sound Recordings
Artistic Works
Musical Works
Films
Broadcasts
Section 7
Derivative Works Section 8
Translations, adaptations, arrangements and other transformations of works eligible for copyright. Collection of works eligible for copyright which by reason of selection and arrangement of their contents constitute intellectual creation.
What can be Protected under Copyright?
DURATION OF PROTECTION
• Qualified to be protected under the
Act
• Original
• Reduced into a material form ( Idea / Expression )
• Qualified Person
• First made / produced in Malaysia
LIFE OF AUTHOR + 50
YEARS:
• LITERARY
• ARTISTIC
• MUSICAL
• 50 TAHUN
• FILM
• SOUND RECORDINGS
• BROADCAST
• GOVERNMENT WORKS
WORKS THAT QUALIFY TO BE
PROTECTED
31
Proof of copyright ownership:
i. Affidavit / Statutory Declaration (Sec. 42 of Copyrights Act 1987)
i. Mail the work to own address (date stamp as proof)
ii. Deposit Safebox
32
Sec. 26A, Copyrights Act 1987
Another alternative for
proof of copyright ownership
Prima facie evidence of copyright ownership
Database
Can be used in research and
education
Copyright Voluntary Norification System
33
34
35
36
37
INDUSTRIAL DESIGN
• Protected under Industrial Designs Act 1996
• Definition:
– the ornamental or aesthetic aspect of an article
– may consist of three-dimensional features, or two-dimensional features
– the features are applied to a finished article, and are appealing to eye
38
Shape & Configuration (3D)
COCA-COLA collection – the evolution of ID
39
Shape & Configuration (3D)
40
Carpet
Pattern & Ornamentation (2D)
41
Shape
of the
vase
The pattern on the
surface of vase
Combination of 3D & 2D
42
•Fulfills the definition of ID (Sek. 3)
•Worldwide novelty (Sek. 12)
•Not contrary to public order or
morality (Sek. 13)
43
• it is a method or principle of construction;
• the designs of the articles concern exclusively with how an article functions; and
• the designs of articles that are integral parts of other articles and whose features are dependent upon the appearance of other article.
• the aesthetic appearance is insignificant / immaterial
44
method or principle of construction
45
concern exclusively with how an article
functions
46
are integral parts of other articles
47
Panel pintu
Bumper
Lampu belakang
Gril
cermin
Bonnet
Boot
48
Example: A pencil which its tip is designed to be shorter
4. The aesthetic appearance is
insignificant / immaterial
49
Wallpaper Can
• New Application Form ID1
• Application Fee RM 500 (480)
• Additional Design RM 500 (480)
• Copy of design representation
- RM200 / view
50
•5 years from date of filing
•is extendable for a further four consecutive terms
of 5 years each
•The maximum protection period is 25 years
51
• First bullet point here
• Second bullet point here
• Third bullet point here
52
PATENT
• Exclusive right
– To stop others from:
• Making
• Using
• Offering for sale
• Selling or importing
the invention without the owner’s consent
53
Revealing the technology related to the invention
That is why a patent application must contain a detailed description on
As an exchange for
How to make How to use
the invention 54
PATENT SYSTEM IN MALAYSIA
55
20 years rights to exclude others Can use or sell his/her invention
Technology disclosure To spread new
technical knowledge To avoid R&D redundancy
To foster innovation
INVENTOR IPO
WHAT IS INVENTION?
56
• "An idea of an inventor which permits in practice the solution to a specific problem in the field of technology“
–An invention is defined as a new and inventive solution to a technical problem.
• An invention may be or may relate to a product or process.
The Evolution of Invention
57
58
59
60
61
TYPE OF PROTECTION
62
Patent
An exclusive right granted by a
government to an inventor/assignee
Protected twenty (20) years from
the date of filing of an application.
Utility Innovation
An exclusive right granted for a
"minor" invention
Protected 10 + 5 + 5 years from
the date of filing subject to use.
NOVELTY INVENTIVE STEP
INDUSTRIALLY APPLICABLE
63
NON-PATENTABLE INVENTIONS
• DISCOVERIES, SCIENTIFIC THEORIES, MATHEMATICAL METHODS
• PLANT / ANIMAL VARIETIES
• SCHEMES, RULES OR METHOD OF DOING BUSINESS / PLAYING
GAMES
• METHOD FOR TREATMENTS OF HUMAN BODY
64
65
a) discoveries, scientific theories and mathematical methods
• Discovery
Not patentable!
Piezoelectric: A material that generates an electric charge when mechanically deformed. Conversely, when an electric field is applied to piezoelectric materials they mechanically deform. Inorganic crystals are the strongest piezoelectrics but polymer films such as PVDF have some piezo effect.
NON-PATENTABLE INVENTION
66
Patentable!
NON-PATENTABLE INVENTION
67
• Scientific theories
E= mc
F= ma a
b
c
2
c = a + b
2 2 2
NON-PATENTABLE INVENTION
68
• Mathematical methods
– Which are carried out on numbers and provide a result in numerical form -> not patentable
• E.g. a new way to calculate square roots, shortcut method of division
– Its application -> patentable
• A calculating machine
• Method of image processing which used the mathematical method to operate on numbers representing an image
NON-PATENTABLE INVENTION
69
b) plant and animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms
NON-PATENTABLE INVENTION
70
• Animal variety
An Israeli geneticist,
Avigdor Cahaner, created the world's first featherless chicken at the genetics faculty at the Rehovot Agronomy Institute near Tel Aviv, Israel. The idea behind the development of this naked bird is that it will create a more 'convenient' and energy efficient chicken which can live in warm countries where feathered chickens don't do well and cooling systems are too expensive to be commonly affordable.
NON-PATENTABLE INVENTION
A photo provided by the Zoo Safari and Hollywoodpark Stukenbrock shows
the zebra and horse crossbreed. Eclyse, crossbreed filly was born in 2006.
Her mother is a horse and the father is a zebra from Italy.
Animal variety
71
NON-PATENTABLE INVENTION
72
• Method for doing business
c) schemes, rules or methods for doing business, performing purely mental acts or playing games
NON-PATENTABLE INVENTION
73
NON-PATENTABLE INVENTION Method of playing a pursuit board game (US7658385)
Claim:
A method of playing a board game of pursuit
for a first player and a second player;
the method comprising the steps of:
a) providing a game board that includes
a start and a plurality of discrete spaces
that form a pathway;
b) providing a device for determining
the number of spaces to be moved
along the pathway;
c) determining an order of play such
that the first player plays first and
the second player plays second; ………
Non-patentable!
74
NON-PATENTABLE INVENTION
Method of exercising a cat (US5443036)
Claim:
A method of inducing aerobic exercise in an unrestrained cat comprising the steps of:
(a) directing an intense coherent beam of invisible light produced by a hand-held laser
apparatus to produce a bright highly-focused pattern of light at the intersection of the
beam and an opaque surface, said pattern being of visual interest to a cat; and
(b) selectively redirecting said beam out of the cat's immediate reach to induce said cat to
run and chase said beam and pattern of light around an exercise area.
Non-patentable!
75
d) Methods for treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body
NON-PATENTABLE INVENTION
Milagros The Mermaid
The surgeon has successfully
separated her legs on 1 June 2005, Peru
Methods for the treatment of human body
76
NON-PATENTABLE INVENTION
77
Description
Claim(s)
Abstract
Drawings
How to read patent document?
Title Page / Front Page
Prior Art Discussion
Description
Claim(s)
Drawing(s)
Abstract
Patent Document
Bibliographic data
1
3
2
Abstract
5
Drawing
Title of invention
79
4
Kind Code
Cited doc.
6
Fees
1.Form 1 RM 290 (manual)
RM 260 (efiling)
2.Form 22 – Statement of justifying RM80
3.Form 17 – To assign Patent Agent RM80
4.Form 5 – Request For Substantive
Examination RM 1100 (manual)
RM950 (efiling)
80
81
Industrial Property Right
Broadband antenna technology Patent right
Protect new invention (for 20 years from application)
Copyright
Program Codes
Protect creative expression (for 50 years following the author’s death)
Industrial design right
Sleek design Protect a design of goods (for 15 years after registration)
Trademark right
Brand name
Protect marks used for goods & services (for 10 years after registration) IC Layout designs
Protect layout designs of integrated circuits (for 10 years from the date of its first commercially exploited)
WHY THE RESULT OF CREATIVITY MUST BE PROTECTED?
1. To reduce the risk of infringement
– To deter other parties from filing / registering the similar same invention / trade mark / design
– To reduce the possibility of our own product infringing other IP owners’ rights
2. To strengthen market position
– To increase investors’ confidence in our potential
– To reduce competition in specific market
– To project positive image to the investors / markets
82
3. To gain more profit – To ensure the investment in R&D is worth the money – Through licensing, royalty, etc.
4. Cross-licensing
– Exchange of technology knowledge between other parties
– To foster good partnership with other companies – To gain even broader market
5. Can be used as collateral – IP as instrument to obtain grant / funding for business
83
WHY THE RESULT OF CREATIVITY MUST BE PROTECTED?
84
FROM R&D TO LICENSING
85
FROM PATENT TO COMMERCIALIZATION
Patent
IP Commercialization Policy oleh MOSTI
86
Patent
87
http://iprmarketplace.com.my/
88
IPR Marketplace
89
IPR Marketplace
TYPHIDOT : a rapid diagnostic test to
diagnose acute typhoid
-> gross sales of USD4.9 million,
more than 500 jobs worldwide
Professor Dr Asma Ismail Universiti Sains Malaysia
SUCCESS STORIES
90
MY-134867-A; US 7,132,117 B2 EP 1,313,491 B1
Bioactive Fraction of eurycoma longifolia
SUCCESS STORIES
91
TING SIE BING
MY-114898-A Congkak Board SUMBER: Pusat Sains Negara
SUCCESS STORIES
92
TIPS
How can we know that our IP will generate the maximum profit / is beneficial to the public?
93
1. Conduct searching before we start
our R&D
www.espacenet.com
www.google.com/patents
https://iponline.myipo.gov.my/iponline/
MyIPO offers a patent searching course for public / researchers / inventors
94
95
Why perform a patent search?
1. Scenario 1: Technology specialist eg. Researcher, lecturer, inventors -> where to start your research?
2. Scenario 2: Own invention -> to file or not to file?
3. Scenario 3: An agent receive an invention -> conduct prior art searching before filing
4. Scenario 4: Technology knowledge for all -> get access to the latest technology
5. Scenario 5: Competitor monitoring
2. Market-driven approach
96
• Patent searching – do not reinvent the wheel!
• Market research – market size for commercialization
• Prototype – to determine function and practicality of our product
• Cost to manufacture – is it worth it?
2. Market-driven approach
97
.. But what if you can sell 2 – 3 million of this product per year?
2. Market-driven approach
98
TIPS:
3. Do not disclose the innovation
before filing
MyIPO offers a patent drafting course for public / entrepreneurs / inventors / researchers
99
Further Info
100
Prosedur
Further Info
101
THANK YOU [email protected]
102