INTELLECTUAL PROPERTY

LEARNING OBJECTIVES
1. To define intellectual property
2. To identify the types of intellectual
property
3. To differentiate the types of intellectual
property
 INTRODUCTION
 Any product of human intellect and creative endeavor
such as innovation, design, trading style, artistic work
or literary work has value in the marketplace
 The term “intellectual” is used to portray the
involvement of human imagination, creativity, and
inventiveness.
 The intellectual creations and its inherent value can be
protected from being exploited by other parties through
intellectual property protection.
 The concept of intellectual property means that any
unauthorized use of the creation or works by
unauthorized parties is prohibited and protected by law
 Intellectual Property (IP)
 Legal entitlement attached to the expressed form of
an idea, or to some other intangible subject matter,
that enables its holder to exercise exclusive control
over the use of the IP.
 Refers to creations of the mind; inventions, literary &
artistic works, symbols, names, images and designs
used in commerce.
 Need to be registered before can be protected.
 In Malaysia, Malaysian Intellectual Property
Corporation (MyIPO) is authorized organization to
administer activities related to intellectual property
registration in Malaysia.
 Types of Intellectual Property (IP)
1. Patent
5. Copyright

2. Trademark Composition

/// Art work

3. Industrial
Design
Film
3. Industrial
4. Trade Secret
Design
Soundtrack
6. Geographical
Indications Broadcasting
7. Layout Design of
Integrated Circuit Book, Magazines etc
 1. Patent
 A patent is an exclusive right granted for an
invention that provides a new way of doing
some things or offers a new technical solution
to a problem.
 Patent granted to an inventor the exclusive right to
make, use, or sell an invention for a limited time of
period.
 Once a patent expires, the owner no longer
holds the exclusive rights to the invention.

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 Utility innovation is an exclusive right granted for a
minor invention which does not require to satisfy
the test of inventiveness as required of a patent.
 Utility innovation provides intellectual property right
for those incremental and lower level inventions
that would not be sufficiently inventive to qualify for
a standard patent.
 Patents Act 1983 covers two key forms of
protection:
 Patent (20 years)
 Utility innovation (10 years - extended twice (10
+ 5 + 5), total protection period of 20 years
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 Why Protect an invention?

• A patent or utility innovation protection gives

the owner the exclusive right to stop
others from manufacturing, using and/or
selling the owner’s invention in Malaysia
without the owner’s consent or permission.
• A patent owner has the right to use the
patented invention, or may license to other
parties to use the invention, or sell the right
of the invention to someone else who will
then become the new owner of the patent.
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 Patent Application

Any person may make an application for a patent

or for a utility innovation either alone or jointly
with another person. The word "person“ is not
limited to natural persons and thus also includes,
for example, a company.

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 Patentable Inventions
 Functional/Technical
 the invention must relate to how something works,
what it does, what it is made of, or how it is made.
 New
 the invention has not been publicly disclosed in any
form, anywhere in the world
 Involve an inventive action
 the invention that could not be figured out by a person
with average knowledge of the technical field
 Industrially applicable
 the invention must be capable of being made or used
in an industry (it can be mass produced). 11
 Non-Patentable Inventions
 Discoveries, scientific theories and mathematical methods
 A literary, dramatic, musical or artistic work
 Plant or animal varieties or essentially biological processes for the
production of plants or animals, other than man-made living micro-
organisms, micro-biological processes and the products of such
micro-organism processes
 Schemes, rules or methods for doing business, performing purely
mental acts or playing games
 The presentation of information, or some computer programs
 Methods for the treatment of human or animal body by surgery or
therapy, and diagnostic methods practiced on the human or animal
body.
 Anything immoral or contrary to public policy 12
 Pursuing a patent
1. Pursue patents that are broad, or commercially
significant, and offer a strong position.
 The patent must be significantly novel or
proprietary.
 Record and have them witnessed so that
documentation secures a proprietary position.
2. Prepare patent plan in detail.
 Plan should outline the cost to develop and
market the innovation.
 Analyze competition and technological similarities
to the idea.
 Detail out the perceived value of the innovation.13
3. Have your actions relate to your original patent plan
 Stick to the original patent plan during the early stages of
establishing the patent
 At a later stage, the plan may change – e.g. licensing the
patent vs keeping the patent
4. Establish an infringement budget.
 Infringer may fear legal damages
 Thus prepare realistic budget for prosecuting violation of
the patent.
5. Evaluate the patent strategically
 Patent process typically take 3 years
 Compare this with the lifecycle of the proposed innovation
or technology.
 Will the patent be worth defending in three years or will
enforcement cost more than the damages collected. 14
 International IP Protection
 Exporting firms still face problems of imitations and
counterfeit products
 The solution to this is internationalizing the patent
law to protect firms operating in the global market.
 Administer by World Intellectual Property
Organization (WIPO) in Geneva.
 To facilitate patent filing in multiple countries
with a single office rather than filing in each
separate country, the Patent Cooperation treaty
(PCT) with over 100 participating countries was
established.
 To reduce the cost of multiple patent applications
by firms operating in the global markets by curtail
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imitation and counterfeit products

 2. Trademark
 Distinctive name, mark, symbol or motto identified with
a company’s product(s).
 Distinguishes the goods and services of one trader
from those of another.
 Includes words, pictures, logos, names, letters, numbers
or a combination of these.
 A trademark is used as a marketing tool to enable
customers recognize the product of a particular trader.

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 Functions of Trademark
 Origin Function – A trademark helps to identify the
source and those responsible for the products and
services sold in the market.
 Choice Function – A trademark enables consumers to
choose goods and services with ease while shopping.
 Quality Function – Consumers choose a particular
trademarks for its known quality
 Marketing Function – Trademark plays important roles in
marketing. It is normal for consumers to make purchases
based on continuous influence of advertising.
 Economic Function – Established trademark is a
valuable asset. Trademarks may be licensed or franchised
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 Importance of Trademark
 Exclusive Rights
 Right to use their marks in trade.
 Right to take legal action for infringement under the
Trademarks Act 1976 against others who use their
marks without consent.
 Lodge complaints to the Enforcement Division of
Ministry of Domestic Trade, Cooperative and
Consumerism (MDTCC) for appropriate actions
under the Trade Description Act 1972.
 Legal Evidence
 Registration act as a prima facie evidence of
trademark ownership.
 Important document to establish the ownership 18of
goods exported to other countries.
Registration of Trademark in Malaysia
 Not compulsory in Malaysia.
 Unregistered trademark may still obtain protection
under Common Law by virtue of used and
reputation.
 Thus taking action against infringer can still be
applied.

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 Registrability of Trademark
Invented words:

Applicant’s signature:

 Any distinctive sign such logos, pictures, symbols:

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 Words with no direct relation to goods or services,
geographical name or surname.:
• KODAK - Film / camera
• COLGATE - tootpaste
• MAGGI – Instant Mee
• ADIDAS - Kasut / kasut sukan;

 Not deceptive, confusing, contrary to law,

scandalous or offensive:

Detergent Cooking Oil

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• Not identical or similar to earlier registered trademarks
or to well-known trademark.

VS
VS
 Non-Registrability of Trademarks
1. Patent, Patented, By Royal Letters Patent,
Registered, Registered Design and Copyright
2. His Majesty Yang Di Pertuan Agong, Her Majesty
Raja Permaisuri Agong, The Royal Highness
Sultans and Their Excellencies Yang Di Pertuan
Negeri.
3. Royal Imperial Crown, Arms, Crest, Armorial
Bearings or Insignia.
4. The Royal Army and Royal Malaysian Police
5. Red Crescent, Geneva Cross in red and Swiss
Federal Cross in white or silver on red ground.
6. Words or representation or ASEAN and National
Flower. 23
 Registration Process
• Every application will be examined to ensure
registrability.
• If there are any objections to registration of a particular
trademark, the applicant may apply for hearing.
• Trademarks accepted will be advertised in the
government gazette.
• If no opposition the trademarks will be registered
• Registration Certificate will be issued.
• Application Fee:
Application : Form TM5 (RM370)
Government Gazette – Form TM31 (RM650)
• Valid for 10 years from the date of application and may
be renewed every 10 years 24
3. Industrial Design
 An industrial design is the
ornamental or aesthetic aspect of an
article.
 The design features must be applied
to an article by any industrial
process or means of which the
features in the finished article
appeal to eye.
 Provides an exclusive right to make,
import or sell or hire out any article
to which the design has been
applied. 25
 The owner of a registered design has the
right to take legal action against an infringer
within 5 years from the act of infringement.
 A registered industrial design is given an
initial protection period of 5 years from the
date of filing and is extendable for a further
three consecutive terms of 5 years each
(5+5+5+5).
 Protected under Industrial Design Act 1996.

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 What is Protected?
The design may consist of three-dimensional
features such as the shape and configuration
of an article, or two-dimensional features,
such as pattern and ornamentation

 Two dimension (2D)

 Three dimension (3D)

Combination (3D+2D)

+ =
 Registrable Industrial Design

 An industrial design must be new at

the date of application
 A design is considered as new only if it
has not been made available or
disclosed to the public in any way
whatsoever in Malaysia before the
filing date.

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 Non-registrable Industrial Design
It does not have a clear aesthetic appearance.
It is a method or principle of construction.
Designs features dictated solely by function.
Integral parts which consist of features that
dependent upon the appearance of another
article.
Differs only in immaterial details or in features
commonly used in the relevant trade (trade
variants).
The designs those are contrary to public order or
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morality.
 Filing of Industrial Designs
 Claims are based on a "first-to-file" rule
basis.
 Should be made at the earliest possible time
or before an article is disclosed to the public.
 Prior disclosure will destroy the novelty of
the design.
 Therefore, extreme care should be
exercised to ensure secrecy of the design.

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How extensive is industrial design protection?
 An industrial design registered in Malaysia is
only protected in Malaysia.
 In order to have your designs protected in
other countries, applications for registration
will have to be filed within six (6) month from
the earliest date when it was first filed in any
of the Paris Convention member countries.

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 Industry Design Application
 Only the owner of a design may apply to
register the design, though an agent can be
authorized to make application.
 Where an applicant's ordinary residence or
principal place of business is outside
Malaysia, the applicant shall appoint an
agent registered in the Register of Industrial
Designs Agent.
 All application for the registration of industrial
design must be lodge at the Industrial
Designs Registry, Intellectual Property 33

Corporation of Malaysia.
 4. Trade Secrets
 Information that is critical to the business
success but does not qualify for patent,
trademark, copyright, or industrial design
protection.
 Confidential information that the business
needs to keep it secret to help maintain its
competitive advantage.
 Any formula, pattern, physical device, idea,
process or other information that provides the
owner of the information with a competitive
advantage in the marketplace. 34
 Classification of Trade Secrets

 Not known outside the company

 Known only inside the company on a “need-to-know”
basis
 Safeguarded by stringent efforts to keep the
information confidential
 Valuable and provides the company a compelling
competitive advantage
 Developed at great cost, time and effort
 Cannot be easily duplicated, reverse engineered or
discovered
 Can last longer that the term of a patent 35
 Trade Secrets Protection
 Physical Methods
 Restricting access (access to confidential documents
restricted to certain key personnel)
 Labeling documents (confidential documents are stamped
“Private & Confidential”, “Restricted”.)
 Password protection (for confidential computer files)
 Logbooks for visitors and access to confidential materials
 Adequate overall security measures (alarm, security
personnel)
 Written Confidentiality Agreement
 Asks employees to sign a confidentiality/ nondisclosure
agreement. If they then tell anyone about it, this is a
breach of confidence and you can take legal action against
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them.
 5. Copyright
 Protection or exclusive right given to individuals who
produce original works of art and literature, music,
films, sound recording, broadcasts, derivative works
and computer programs.
 Protected automatically upon fulfillment of the
following conditions:-
 Sufficient effort has been spent to make the work original in
character
 The work has been written down, recorded or reduced to a
material form
 The author is a qualified person or the work is made
in Malaysia or the work is first published in Malaysia.
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 Governed by the Copyright Act 1987.
 What can copyright protect?
1. Literary works (e.g. novels, instruction manuals,
computer programs, song lyrics, newspaper articles and
some types of database)
2. Dramatic works (e.g. theatre presentation and stage
plays )
3. Musical works (e.g. composition)
4. Artistic works (e.g. paintings, engravings,
photographs, sculptures, collages, architecture, technical
drawings, diagrams, maps and logos)
5. Layouts or typographical arrangements (e.g. used to
publish a work for a book)
6. Recordings (e.g. jingles, sounds and films)
7. Broadcasts (e.g. documentary, live coverage of events)
8. Derivative works (e.g. producing Harry Potter movie
series from the novel of the same name) 38
 Ownership of copyright
 Literary works(including software and databases),
theatrical, musical or artistic (including photographic)
 The author or creator of the work is also the first owner of any
copyright in it. In some situations two or more people may be
joint authors and joint owners of copyright.
 Film
 The principal director and the film producer are joint authors
and first owners of the copyright (and the economic rights).
 Sound recording
 The author and first owner of copyright is the record producer,
in the case of a broadcast, the broadcaster; and in the case of
a published edition, the publisher.
 If a work is made by an employee (in the course of his or her
employment, unless there is any contrary agreement), the
copyright in the work shall be deemed to the person who
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commissioned the work or the employer.
 Term of Protection
 Subsist during the life of the author plus 50 years
after his death.
 If a work has not been published during the lifetime of
the author, copyright in the work continues to subsist
until the expiration of 50 years, following the year in
which the work was first published
 In the case of a work with joint authorship, the life of the
author who dies last is used for the purpose of
calculating the copyright duration of the work

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 Legal Rights of Copyright Owners

These exclusive rights apply irrespective of whether the

works are copied partly or wholly:
 the reproduction of the works in any form (including
photocopying, recording etc)
 the performing, showing or playing to the public
 the communication to the public
 the distribution of copies to the public by sale or
other transfer of ownership
 the commercial rental to the public.
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 What Constitutes Copyright Infringement?
When an UNAUTHORIZED person performs these acts:-
 reproduces in any material form, performs, exhibits,
shows or plays or distributes to the public
 communicates by cable or broadcast of the whole
infringing work or a substantial part of its original or
derivative form
 makes for sale or hire any infringing copy
 sells, lets for hire or by way of trade, exposes or offers
for sale or hire any infringing copy
 possesses, otherwise than for his private and
domestic use, any infringing copy
 imports into Malaysia, otherwise than for his private 42
and domestic use, an infringing copy
 6. Geographical Indication
• Sign used on products that has specific
geographical origin and qualities of the
product has some significant
• Protection is 10 years and renewable every
10 years.
• Governed by Geographical Indication Act
2000.
• Typically used for agricultural products,
handicrafts, industrial products, foodstuffs.
• Examples: Sabah Tea, Sarawak Pepper,
Songket Terengganu etc.
 7. Layout Design Integrated Circuit
• A three dimensional disposition of the elements
of an integrated circuit and some or all of the
interconnections of the integrated circuit or
such three-dimensional disposition prepared for
an integrated circuit intended for manufacture.
• Governed by Layout-designs of Integrated
Circuits Act 2000
 EXAMPLES OF
PRODUCT WITH FEW
IP
 Teknologi antenna
jalur lebar
Brand Patent

Melindungi Rekacipta/Ciptaan baru

Trademark (20 tahun dari tarikh pemfailan)

Layout Design of
Integrated Circuit
Melindungi Cap Dagang yang digunakan
dalam penjualan produk dan servis Melindungi rekabentuk susun
(10 tahun dari tarikh pemfailan dan atur litar bersepadu
boleh diperbaharui setiap 10 tahun) (10 tahun dari tarikh ia mula
dieksploitasi secara perdagangan di
Industrial Malaysia atau di tempat lain)
Design Program Codes
Sleek design
Melindungi rekabentuk produk Copyright
(5 tahun dari tarikh pemfailan tetapi boleh
Melindungi karya kreatif
diperbaharui sehingga 25 tahun )
(sepanjang hayat pengarang sehingga 50
tahun selepas kematiannya )
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