KUALA LUMPUR, April 28 ― Patents, trademarks, copyright, industrial designs and similar rights are referred to as “intellectual property” (IP).
The rights are “intellectual” in the sense that they protect intangible subjects, usually arising out of some form of human creativity. These rights are “property” in the sense that they are based on the legal right to exclude others from using the property and the exclusive legal right to transfer ownership.
Multiple IP rights may require protection for a single product/service. Patent rights cover the invention, industrial design rights cover the design, trademarks cover the name/brand and copyright covers the written information about the brand. Other types of IP may also apply in certain situations.
Patents protect inventions, such as machines, devices, methods and compositions of matter. A patent gives the inventor or patent owner the right to exclude others from making, using or selling the invention.
The invention must be “novel”, “non-obvious” and have utility to obtain patent protection. The earliest patents were generally embodied within a piece of equipment or apparatus, but patent protection is also obtainable for a chemical process, a method of manufacture, proteins, vaccines, and lower life forms, such as bacteria and viruses.
Generally, the term for a patent is 20 years, starting from the date of filing of the application. Malaysian patents provide rights in Malaysia only and patent protection in other countries must be separately sought and obtained.
If you think you have invented something:
- Consult a registered patent agent before making any disclosure of your invention to third parties. A disclosure made under no confidentiality agreement, prior to filing a patent, can destroy the possibility of obtaining valid patent rights;
- Before filing a patent application, consider having prior art searches made (i.e. to determine whether the same invention has been disclosed before by another party elsewhere) to assess the patentability of your invention;
- At an early stage, make efforts to determine whether or not the invention is likely to be commercially successful, while taking care not to disclose the invention to third parties except on a confidential basis;
- Instruct your registered patent agent to prepare and file a patent application at the earliest opportunity if the search results and other applicable factors appear favourable.
Trademark rights protect words, designs, numbers, two-dimensional or three-dimensional forms, sounds or colours used to distinguish the products or services of a company from those of others in the marketplace.
Almost every company that operates a business uses a trademark of one kind or another to identify its products or services.
Trademark registrations are national in scope and a trademark registration in Malaysia gives the owner the exclusive right to use the mark throughout Malaysia in association with the wares and/or services covered by the registration.
A Malaysian trademark registration is valid for 10 years and is renewable for further 10-year periods. Protection in foreign countries must be applied for separately.
Trademarks should not be confused with trade names. A trade name, or business name, is registered with the relevant provincial authorities and simply enables the public to identify a company and its business as a whole.
Words can be used interchangeably as both a trademark and a trade name. Use as a trademark will depend on the context of its use. Consulting a registered trademark agent or trademark lawyer is recommended.
Consultation with a registered trademark agent or trademark lawyer is also recommended before starting to use a trademark in the marketplace. Regardless of whether you plan to register, it is always prudent to conduct a clearance search to determine whether the mark is available.
If the search results are clear and the trademark is capable of being registered, then obtaining a federal trademark registration will increase your legal rights in the trademark. The trademark’s relative strength or weakness will also affect the scope of protection it may receive.
If your business involves licensing the use of your trademarks to others, it is vital that you consult with a registered trademark agent or trademark lawyer to ensure that you are properly protected by a trademark registration, and that the use is properly licensed.
A registered trademark agent or trademark lawyer will also advise you as to the maintenance and protection of your trademark which must be properly used at all times to remain distinctive.
In Malaysia, “copyright” refers to the bundle of statutory rights conferred by the Copyright Act 1987 on the copyright owner and author of the work. These rights arise automatically when an original literary, artistic, musical or dramatic work is fixed in a material form.
An “original” work does not need to be unique or creative, but must involve some intellectual effort in skill and judgment. Typical works in which copyright can subsist include books, articles, sheet music, illustrations, photographs, motion pictures, works of sculpture and computer software.
Copyright extends to the original expression in the work and not to any underlying idea. Consequently, copyright does not extend to underlying schemes, systems or methods, but can extend to how they are presented, for example.
The Industrial Designs Act 1996 (Act 552) defines a “design” as features of shape, configuration, pattern or ornamentation that give a finished article visual appeal. Where a feature applied to an article is wholly functional, protection under the Act cannot be obtained.
Articles which are often protected by design registration include containers, furniture, home appliances, clothing items, fashion accessories, cutlery and glassware.
The Act protects “original” designs. Originality is determined by a strictly visual assessment of the design in the context of the article on which it appears.
Since context is vital, small changes in design to articles can constitute protectable original designs. Originality can also be found in an old design put to a new use, if the new design arose from at least a spark of inspiration in the designer.
Other types of IP
There are other types of IP in addition to the above which include Integrated Circuit Topographies, Plant Breeder’s Rights, Domain Names, Trade Secrets and Geographical Indications. We will have a look at other types of IP in a forthcoming issue.
The strongest protection comes from registering your work. By doing so, you can put your claim into the public view, discouraging others from using your work without permission. Intellectual property is protected and governed by various national and international laws, depending on where the idea was created, what the idea is and many other determining factors.
If you believe you have protectable IP, we can help you to evaluate and strategise your invention or innovation by providing you a comprehensive IP services and advisory. PlaTCOM Ventures, as the national IP commercialisation platform, specialises in aligning your IP strategy with commercial strategy.
Whether you are a small start-up or a multinational organisation, taking steps to protect your intellectual property should be a priority within your business.
Your feedback is welcome at [email protected]
* Dr Viraj Perera is the CEO of PlaTCOM Ventures Sdn Bhd, the national technology commercialisation platform of Malaysia which is a wholly-owned subsidiary of Agensi Inovasi Malaysia (AIM) formed in collaboration with SME Corp Malaysia.