BUSINESS BRIEF: MALAYSIA
BUSINESS BRIEF: MALAYSIA
Malaysia provides a comprehensive legal framework governing the various intellectual property rights. Te Malaysian government’s commitment to, and emphasis on, the protection and enforcement of IP can be seen through the introduction of legislative reform, government enforcement initiatives and the creation of IP policies and incentives.
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Patent protection can be secured by filing a patent with the IP Corporation of Malaysia (MyIPO) where the application will be examined to ascertain whether it meets the requirements of registrability under the provisions of the Patents Act 1983 and the Patents Regulations 1986. A patent has to be new, has to involve an inventive step and must be industrially applicable in order meet the condition of registration. Once granted, a patent is valid for a period of 20 years from the filing date.
Malaysia also acceded to the Patent Cooperation Treaty (PCT) on May 16, 2006. Tis has enabled Malaysian patent right owners and companies to take advantage of the PCT filing system, filing and prosecuting patent applications and protect inventions internationally. Te PCT system further simplifies the procedure for foreign applicants who wish to protect their patents in Malaysia.
Where can you find information on existing patents in your jurisdiction?
It is advisable to conduct a search in order to ascertain whether an invention is new prior to filing the patent. A search on Malaysian patents can be conducted at the public search room at MyIPO or via the Internet on the Patent and Trade Mark Administration System (PANTAS) for searches on earlier Malaysian patent documents.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Key threats to a patent owner are the risk of a patent
being invalidated and the risk of infringement of their patents. Disclosure of an invention prior to filing the patent is a common mistake among patent owners as such a disclosure can affect the novelty requirement. Securing a patent and taking proactive steps to avoid the patent from being vulnerable to patent invalidation suits are also concerns for patent owners. Companies should be aware that ignorance of the existence of a patent right may not be a defence to infringement.
Embarking on a patent litigation suit at first instance may be very costly. Sending a cease and desist letter to the wrongdoer is a pre-contentious measure which could be self-funding as damages and cost could be sought. Other preemptive measures should also be considered.
Have there been any changes to the patent law in the last 18 months?
On February 15, 2011, amendments were made to the patent regulations to introduce the provision of expedited examination, whereby applicants may request approval to undertake an expedited examination aſter 18 months from the priority date or filing date of the application, which helps reduce the time frame for obtaining patent registration.
Trademarks
How do you register or secure trademark rights and what protection does it grant? Te registration of trademarks is governed under the Trademarks Act 1976 and the Trademark Regulations 1997. An application to register a trademark can be made by any party claiming to be the bona fide owner of the mark. Registration of a trademark provides exclusivity to the registered proprietor to use the mark on the goods or services for which the mark is registered, and the prima facie right to take legal action under trademark infringement against wrongful use of the registered mark, or any confusingly similar mark, in relation to the goods or/services in respect of which the mark is registered. Te trademark is protected for a
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period of 10 years and can be renewed every 10 years thereaſter.
If the trademark is not registered, the proprietor of the mark will have to rely on the common law remedy of passing off; this involves the owner of the mark establishing its rights through evidence, which is more burdensome and expensive to establish.
What are the key threats to trademark owners? A key threat to trademark owners is the unlawful misappropriation of their trademark rights, which has become ever more frequent with the growth of the online trading environment.
What are the most common mistakes trademarks owners make?
A common mistake of trademark owners is to invest in product development, branding and the marketing of their products only to realise later that the trademark is not available for use and registration. Adopting a brand protection and registration strategy, including an emphasis on pre-filing searches in the local and foreign trademark registers, is an important consideration before embarking on a new brand
Have there been any changes to the trademark law in the last 18 months?
Expedited examination of trademark applications was introduced on February 15, 2011. Online filing of trademarks and patents has also been implemented. Malaysia is expected to accede to the Madrid Protocol in 2013.
An expected and significant change to the trademark legislation is the introduction of non-traditional trademarks which would expand the definition of a trademark to include 3D marks, colour, smell, sound and other non-conventional marks.
Copyright
How should people ensure they are protected against copyright infringement? Copyright protection is governed under the
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