A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a technical solution to a problem. A patent provides protection for a period of 20 years from the date of filing.
2. What is a utility innovation?
A utility innovation is an exclusive right granted for a ‘minor’ invention. Utility innovations are protected for an initial period of 10 years which may be extended for another two 5-year terms, providing a total protection period of 20 years.
3. What rights does patent owner have?
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.
4. Is it possible to find out if the invention is new before the applicant applies for protection?
Yes. A search can be conducted at the Public Search Room, MyIPO or via internet access to Patent and Trade Mark Administration System (PANTAS) on earlier Malaysian patent documents.
5. Can the applicant get protection after the invention is made public before filing a patent application?
Yes, provided that the applicant files an application within 12 months of the disclosure.
6. What is the total cost to file a patent and utility innovation application?
The total cost for patent application – RM 1,390 (manual) and for utility innovation – RM1,240 (manual).
7. Where can the applicant seek assistance in preparing patent application?
The applicant could seek services from a registered patent agent for preparation of a patent application.
8. Are all applications treated as confidential?
Yes, all applications are confidential until after 18 months from the priority date or filing date of the application for the purpose of public inspection.
9. Can the applicant take a court action against an infringer while his application is still pending?
A court action cannot be taken while an application is still pending. Nevertheless, a court action can be taken as soon as the patent is granted. The protection of a patent commences from the date of filing.
10. What happens after the patent expires?
Once a patent expires, the owner no longer holds the exclusive rights to the invention.
11. How can an applicant get protection for his invention in other countries?
There are two ways in which an invention can be protected in other countries. An applicant can either apply directly to the relevant countries, or use the international patent application system (Patent Cooperation Treaty).
12. What is the Patent Cooperation Treaty (PCT)?
The PCT is an international treaty, administered by World Intellectual Property Organization (WIPO),with more than 135 Paris Convention member countries. The PCT facilitates the filing of an international patent application of an invention in other countries by filing a single application.
13. Where can an international patent application be filed?
An international patent application can be filed at MyIPO which acts as a Receiving Office (RO).
14. What are the costs for filing an international patent application?
There are three types of fees for filing an international application : (i) international filing fee; (ii) search fee; and (iii) transmittal fee. Applicant would have to pay only a single set of fees, payable in Malaysian Ringgit. (For details on PCT Fees, please refer to www.myipo.gov.my)
15. How long is the international patent application process before entering the national phase?
An international patent application takes about 18 months from the filing date to be processed, prior to that application entering into the national phase. The processing includes search conducted by the International Searching Authority (ISA) and publication of the search report by the International Bureau (WIPO).
16 What is an international search?
An international search is a high quality search of the relevant patent documents and other technical literatures. The ISA issues an international search report and a written opinion on the novelty of the invention.
17. What is an international publication?
An international publication is publication of the content of the international patent application to the world together with the international search report by WIPO, 18 months after the priority date.
18. What is an international preliminary examination?
An international preliminary examination is an examination on the patentability of an invention whereby a report on the patentability of the invention will be issued. The report provides a written opinion on the criteria for patentability of each claims whereby examination is carried out to evaluate the chances of obtaining patent protection.
19. When and how does an international patent application enter the national phase?
An applicant has to apply for entry into the national phase before the expiry of the 30 months period from the priority date. The applicant shall fulfill the requirements for entering the national phase such as paying the national entry fees and submitting a copy of the international application in English language.
20. What are the advantages of the PCT?
The PCT facilitates the filing of an international patent application of an invention in other countries by filing a single application whereby this filing system is cost effective.
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Patent Cooperation Treaty (PCT)
FILING OF AN INTERNATIONAL APPLICATION (PCT) :- INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MYIPO) AS RECEIVING OFFICE
1.Can I file an international application in Malaysia ? Yes, any Malaysian national or resident can file an international application in Malaysia at theIntellectual Property Corporation of Malaysia (MyIPO) as a receiving office.
2.What are the contents of the international application ? An international application shall contain: i.a request (Form PCT/RO/101) ii.a description iii.one or more claims, iv.one or more drawings (if any) v.and an abstract
3.What are the requirement to obtain an international filing date ? The requirement to obtain an international filing date are as following : a.The applicant must be a national or a resident of Malaysia, b. The language of the international application must be in English, c.The international application must contain: i.an indication that it is intended as an international application, ii.a request which has the effect of making all possible designation, iii.the name of the applicant, iv.a description of the invention, v.a claim or claims
4.What are the fees payable ? The following fees are payable for an international application filed at MyIPO: a.Transmittal Fee (MyIPO) b.International Filing Fee (International Bureau) c.Search Fee (International Searching Authority)
5.Which International Searching Authorities can be specified/chosen by the applicant to conduct the international search for international application? a.Korean Intellectual Property Office b.Australian Patent Office c.European Patent Office
6.Beside MyIPO, is there any other office where a Malaysian national or resident can file his international application? A Malaysian national or resident can file his international application with the International Bureau of WIPO which acts as a receiving office for nationals and residents of all PCT Contracting States.
7.How can I file my international application (PCT) ? PCT application can be filed directly to MyIPO or via postal delivery.
8.Where can I obtain additional information on PCT ? For further information on PCT, you can visit this link.
** If you have any other question regarding PCT, please contact us.
1. What is a Trade Mark?
A Trade Mark is a mark which distinguishes the goods and services of one trader from another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these.
A Trade Mark is used as a marketing tool to enable customers to choose a product or services in the market place.
2. What are the functions of trade marks?
Origin Function – A trade mark indicates the source of goods or services in the market place.
Choice Function – A trade mark facilitates consumers in making choices of goods or services.
Quality Function – Consumers have preference to choose a particular trade mark for its known quality.
Marketing Function – Trade marks act as an effective medium of advertising for producer in marketing their goods or services.
Economic Function – A trade mark which is well known with a quality or reputation may be licensed or assigned as an economic asset.
Exclusive Right – Registered trade mark owners are conferred exclusive right to use their marks in trade. They also have the right to take legal action for infringement under the Trade Marks Act 1976 against others who use their marks without consent. They can also lodge complaints to the Enforcement Division of Ministry of Domestic Trade and Consumer Affairs (MDTCA) for appropriate actions under the Trade Description Act 1972.
Registration Conclusive – Registration Certificate issued by the Registrar is conclusive evidence of trade mark ownership in the court of law. Furthermore the certificate is an important document of trade mark ownership in the course of trade or business.
5. Is trade mark registration compulsory?
Registration of trade mark is indeed important to obtain exclusive rights for purposes of exploitation and commencing infringement actions. However, registration is not compulsory.
6. What happens if the trade mark is not registered in an action for infringement?
The owner cannot commence any action under the provisions of the Trade Marks Act 1976. However, actions may be instituted under the common law principals whereby the trade mark owner has a duty to convince the court that the infringing act had mislead the public and the infringing goods or services may be mistaken as his goods or services. This action is very contentious and costly.
7. Are all trade marks registrable?
No, in order for a Trade Mark to be registrable it must be:
– An invented word/words; – Name of a person/firm/company represented in a specific or particular manner; – Legible applicant’s signature; – Words with no direct reference to goods or services, or geographical significance; – Any distinctive mark such as logo, picture, symbol etc.; – Not deceptive, cause confusion, contrary to law, scandalous or offensive; – Not identical or similar to earlier registered/applied trade marks; and – Not identical or similar to well-known trade marks. – A trade mark is not registrable if it contains words or representations prohibited under Section 15, Trade Marks Act 1976 and Regulations 13, 14 and 15 of Trade Mark Regulation 1997; that is: – Patent, Patented, By Royal Letters Patent, Registered, Registered Design and Copyright. – His Majesty Yang di-Pertuan Agong, Her Majesty Raja Permaisuri Agong, The Royal Highness Sultans and Their Excellencies Yang di-Pertua Negeri. – Royal or Imperial Crowns, Arms, Crest, Armorial bearings or insignia. – The Royal Malaysian Army and Royal Malaysia Police. – Red Crescent, Geneva cross in red and Swiss Federal Cross in white or silver on red ground. – Words or representation or ASEAN and National Flower (Hibiscus).
8. Does Malaysian registration for trade mark give protection abroad?
No, trade mark protection is territorial in nature.
9. How does one secure protection abroad?
An applicant may file trade mark application separately in each intended country. However, a Malaysian application may be used as a basis for Priority Date Claim in the countries which are party to the Paris Convention or World Intellectual Property Organization (WIPO).
10. What are the filing procedures?
Each applicant must:
– File form TM5 (5 copies); – Submit a Statutory Declaration declaring ownership of the mark; – Pay the prescribed fee. If payment is by cheque/money order/postal order, should be in the name of Perbadanan Harta Intelek Malaysia; – Submit other supporting documents such as Form 49 for company (sole proprietor and partnership),documents for Priority Date Claim (PDC) and others.
11. What is the duration of a trade mark protection?
The period of protection is 10 years, renewable for a period of every 10 years thereafter.
12. When can an application for registration of a trade mark be made?
An application for trade mark may be filed at any time immaterial of the fact whether the trade mark has been used, being used or proposed to be used.
13. What is the total cost to file a trademark application?
Any person who is the owner of trade mark using the trade mark or proposes to use the trade mark may apply for registration in Malaysia. The owner may be an individual, partnership, company or organization.
15. Is it necessary for an applicant to appoint a registered trade mark agent for purposes of filing an application?
A local applicant may file a trade mark application directly himself. A foreign application can only be filed through a registered trade mark agent.
16. Who is a registered trade mark agent?
A registered trade mark agent may be an individual, firm or company who has been registered in the Register of Trade Marks Agent. They are appointed by the applicants to act on their behalf in obtaining trade mark registration.
17. Where can one file an application?
One may file an application of a trade mark at Intellectual Property Corporation of Malaysia (MyIPO) Kuala Lumpur or office in Sabah or Sarawak. Any further inquiries can be made at:
Intellectual Property Corporation of Malaysia (MyIPO) Unit 1-7, Ground Floor, Menara UOA Bangsar No. 5 Jalan Bangsar Utama 1 59000 Kuala Lumpur Tel: +603-22998400 Fax: +603-22998989
Sabah Office Intellectual Property Corporation of Malaysia 6th Floor, Blok C, 49, Jalan Karamunsing, 88000 Kota Kinabalu, Sabah.
Phone Number : +6088 254 524 Fax Number : +6088 257 046
Sarawak Office: Intellectual Property Corporation of Malaysia Lot 9936, (Sub Lot 5),3rd Floor, Queen’s Court, 93000 Kuching, Sarawak.
Phone Number : +6082 459 075/ +6082 459 076 Fax Number : +6082 455 052
** If you have any other question regarding trademark, please contact us.
1. What is an industrial design?
An industrial design is the overall appearance of an article or a product. The design may consist of three dimension features such as the shape and configuration of an article, or two dimension features, such as pattern and ornamentation. The design features must be applied to an article by an industrial process or means of which, the features in the finished article gives it a unique appearance.
2. What is non-registrable design?
(i) It does not have a clear aesthetic appearance. (ii) It is a method or principle of construction. (iii) Designs features dictated solely by function. (iv) Integral parts which consist features that dependent upon the appearance of another article. (v) Differs only in immaterial details or in features commonly used in the relevant trade (trade variants). (vi) The designs those are contrary to public order or morality.
3. How to file an application for registration of an industrial design?
Requirement to file an application for registration: (i) A completed application form ID Form 1 in English or RBP 1 in Malay. (ii) Six set of representations of the article either photograph or drawing. (iii) A statement of novelty in respect of the industrial design to which the design is applied. However for registering wallpaper, lace or textile, the statement of novelty can be attach separately in the following page. (iv) Payment in full of the appropriate filing fee. (v) Statement justifying applicant’s right should be filed if the applicant is not an author.
4. When an application should be filed?
As claims are based on rules of ‘first to file’, filing of an industrial design should be made at the earliest possible time or before an article is disclosed to the public. Prior disclosure will eliminate the novelty of the design. Extreme care should be exercised to ensure secrecy of the design.
5. Who can apply for design registration?
Only the owner of the design may apply to register the design. The owner may authorize an agent to file an application on his behalf. 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.
6. What is the duration for registering an industrial design?
An application will be registered within 8 months from the date on which a completed application form, documents and prescribed fees are received. The duration could be extended to 14 months due to non compliance of requirements such as incomplete documents and fees not paid.
7. What is the duration for protection?
A registered industrial design is given an initial protection period of 5 years from the date of filing and is extendable for a further four consecutive terms of 5 years each. The maximum protection period is 25 years.
8. What qualifies an industrial design for registration?
To be eligible for registration, an industrial design must be new at the date an application for registration is filed. A design is considered new only if it has not been made available or disclosed to the public in any way whatsoever in Malaysia or elsewhere (worldwide) before the filing date of application. It also should not be on the record of the Industrial Design Register.
9. What rights does a registered design confer?
The owner of a registered design has the exclusive right to make, import or sell or hire out any article to which the design has been applied. Other users should obtain the consent of the rightful owner before using the design. The owner of a registered design has the right to take legal action against an infringer within 5 years from the act of infringement.
10. How to claim priority date of an earlier foreign application?
The applicant needs to make the claim when filing the application where the date of priority and country should be stated. Priority date should be claimed within 6 months from the foreign filing. Priority documents and their translations should be furnished as evidence.
11. What can be done if someone made copies or infringed my industrial design?
The owner of a registered industrial design has the rights to take legal action. A registration certificate issued by the Industrial Design Registry is recognized by the Court as evidence of ownership. The owner can take legal action pursuant to the Industrial Design Act 1996 or under the Trade Description Act 1972.
12. When will an Industrial Design be manufacture or sell?
At anytime time after the application has been filed. Applicants may also exploit their industrial design in the foreign markets. However they would have to obtained protection in relevant countries.
13. Are registered designs made public?
Registered designs are open to public inspection and details of the registration are recorded in the Register of Industrial Designs and published in the IP Official Journal.
14. Does one have to register an industrial design to get a protection?
Under industrial designs law, there is no protection without registration. An industrial design need to be registered to be eligible for protection. The owner of a registered industrial design has the exclusive rights over his industrial design.
15. How extensive is industrial design protection?
An industrial design registered in Malaysia is only protected in Malaysia. In order to have your design protected in other countries who are members of the Paris Convention and to claim priority in Malaysia, application for registration will have to be filed within 6 months from the date of filing in Malaysia.
16. Where should I file my application?
Applications may be filed at:
Headquarter Intellectual Property Corporation of Malaysia (MyIPO) Unit 1-7, Ground Floor, Menara UOA Bangsar, No. 5 Jalan Bangsar Utama 1, 59000 Kuala Lumpur Tel: +603-2299 8400 Fax: +603-2299 8989
Sabah Office Intellectual Property Corporation of Malaysia 6th Floor, Blok C, 49, Jalan Karamunsing, Bangunan KWSP PO BOX 8068 88999 Kota Kinabalu, Sabah.
Phone Number : +6088 254 524 Fax Number : +6088 257 046
Sarawak Office: Intellectual Property Corporation of Malaysia Lot 9936, (Sub Lot 5),3rd Floor, Queen’s Court, 93000 Kuching, Sarawak.
Phone Number : +6082 459 075/ +6082 459 076 Fax Number : +6082 455 052
** If you have any other question regarding industrial designs, please contact:
Mr. Mohd Faiizudin Mohd Sharuji
Ms. Teh Norleza Zakaria
1) What is Geographical Indication?
Geographical Indications Act 2000 defines geographical indication as 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.
2) Does Malaysia have product that qualifies to be registered under Geographical Indications Act 2000?
Malaysia has a number of goods that can be registered as geographical indications. These goods have been commercially exploited at local and international market for example ‘Sarawak Pepper’, which is a pepper-based product produce in Sarawak. This pepper has gained reputation and recognition at international level due to the quality of the pepper. In addition, ‘Sabah Tea’, ‘Tenom Coffee’, ‘Borneo Virgin Coconut Oil’ and ‘Sabah Seaweed’ are the registered geographical indication goods in Malaysia. These four geographical indications are from Sabah.
3) Does geographical indication applicable only to an agricultural product?
Geographical indication is not limited to agricultural product. It can also be used on natural product such as Langkawi Gamat and any product of handicraft like Terengganu Songket, Kelantan Batek and food products such as Papar Belacan and Kelantan Budu.
4) Does registration of geographical indication compulsory?
Registration of geographical indication is not compulsory. However, registration of geographical indication is encouraged to protect the interest of producer and consumer. The registered proprietor of geographical indication has the exclusive rights to exploit the geographical indication and gains recognition at domestic and international level.
5) Can individual register a geographical indication?
Registration of geographical indication is based on an affiliation ownership concept for the producers who are carrying on an activity in that specified geographical area and not an individual ownership concept. Geographical indication can also be registered by the competent authority such as local authority, government agency, statutory body; and trade organization or association.
6) What is the difference between geographical indication products and product without geographical indication?
The quality of the geographical indication goods and its unique characteristic are influence by the place of origin where the goods are originated or manufactured. The geographical indication goods with an assurance quality and has good reputation will become well known worldwide and acceptable in the market. However, goods without quality and unique characteristic that related to the place of origin are not recognized as a geographical indication goods. Due to the above reason, it is clear that the differences between geographical indication goods and other goods are based on quality, reputation and other characteristic attributable from the place of origin.
7) What is the duration of protection of geographical indication?
A registered geographical indication is protected for ten years from the date of filing and is renewable for every ten years as long as it is still in use.
8) What is the scope of protection of a geographical indication in Malaysia?
Geographical indication’s protection in Malaysia is territorial. To seek protection in other countries, application must be filed with the respective countries.
9) What is the difference between geographical indication and trade mark?
Trade marks is a mark which distinguishes the goods and services of one trader from those of another. It gives its owner the right to exclude others from using the trade marks. On the other hand, a geographical indication indicates where the goods are produced and has characteristics that are attributable to the place of the geographical origin. In addition, the geographical indication goods may have different trade marks amongst the traders as long as the geographical indication goods produce by the registered proprietor of geographical indication.
10) What action can an aggrieved party commence in the event a geographical indication has been falsely represented to the public?
Any aggrieved party may file an action in the High Court (Intellctual Property).
** If you have any other question regarding geographical indication, please contact us.
1. What is copyright? Copyright is the exclusive right given by law for a determinable time period to the author of the work to control the use of the work in Malaysia.
2. Which Act governs the protection of copyright in Malaysia? Copyright protection is governed by the Copyright Act 1987.
3. What works get copyright protection? The following works are protected:-
(i) Literary works; (ii) Musical works; (iii) Artistic works; (iv) Films; (v) Sounds recordings; (vi) Broadcasts; and (vii) Derivative works.
4. Does Malaysia have a registration system for copyright? There is no registration for copyright in Malaysia. The work is protected automatically upon creation.
5. What are the ways to prove ownership of copyright? To prove ownership of copyright, the owner can either:-
(i) Make a Statutory Declaration in accordance with the Statutory Declaration Act 1960; or (ii) Self address the work in a sealed envelope.
6. What are the qualifications for protection of copyright?
(i) Sufficient effort has been expanded to make the work original in character; (ii) The work has been written down, recorded or otherwise reduced into material form; (iii) The author is a qualified person; and (iv) The work is made in Malaysia or the work is first published in Malaysia.
7. How owns copyright? Ownership of copyright is dependent on the following:-
(i) The work is produced under a contract of service; – Copyright is owned by the employer.
(ii) The work is produced under a contract for service; – Copyright is owned by the author.
(iii) Commissioned work – Copyright is owned by the person who commissioned the work.
8. Can copyright be transferred? Copyright is transferable by assignment, testamentary disposition and by operation of law.
9. Other than the commercial right of the owner and author of the work, what other right is given to the author of the work? The Copyright Act 1987 grants moral right to the author of the works.
10. What types of moral right are given by the Act?
Two type of moral right are given:- (i) The right of paternity; and (ii) The right of integrity.
11. What right can be utilized by the owner of copyright for infringement of moral right? The owner can sue inter alia for statutory damages and injunction.
12. What is the duration for copyright protection?
(i) For literary, music and artistic works, copyright subsist during the life of the author and 50 years after the death; (ii) For sounds recording, films and broadcasts, copyright subsist 50 years from the year following the publication of the work; and (iii) For published edition, copyright subsist 50 years from the year following the year of edition was first published.
13. What are the exclusive rights of the owner? The copyright owner has the exclusive right to control the whole or substantial part of the work especially:-
(i) The reproduction in any material form (including making photocopies, recording and others); (ii) The communication to the public; (iii) The performance, showing or playing to the public; (iv) The distribution of copies to the public by sale or other transfer pf ownership; and (v) The commercial rental to the public.
14. What acts amount to infringement of copyright? The copyright in a work infringed when a person, not being owner of the copyright, and without license from the owner, does or authorizes any of the following acts:-
(i) Reproduced in any material form, performs, shows or plays or distributes to the public. (ii) Communicates by cable or broadcast of the whole works or a substantial part thereof either in its original or derivative form; (iii) Import any article into Malaysia for the purpose of trade or financial gains; (iv) Make for sale or hire any infringing copy; (v) Sells, lets for hire or by way of trade, exposes of offers for sale or hire any infringing copy; (vi) Distributes infringing copies; (vii) Possesses, otherwise then for his private and domestic use, any infringing copy; (viii) By way of trade, exhibits in public any infringing copy; (ix) Imports into Malaysia, otherwise than for his private and domestic use, an infringing copy; (x) Make or has in his possession any contrivance used or intended to be used for the purpose of making infringing copy; or (xi) Causes the work to be performed in public.
15. What are the exceptions to the exclusive right granted by the Copyright Act 1987 to the user of the work? Usage of the work by way of fair dealing for the following purpose accompanied by an acknowledgement of the title of the work and authorship is allowed:- (i) non-profit research; (ii) private study; and (iii) Review or the reporting of current event.
16. Who is responsible for enforcement of copyright? The Minister of Domestic Trade, Cooperative and Consumerism (Enforcement Division) and The Royal Malaysia Police are responsible for enforcement of the law.
17. What is Collective Management Organisation (CMO)? A Collective Management Organisation (CMO) is a body empowered by the owner to collect payment/ royalty on behalf of the copyright owner.
18. Does the Government of Malaysia recognize these Collective Management Organisation (CMO)? These Collective Management Organisation (CMO) are recognized by the Government of Malaysia.
19. What is the right given by the Collective Management Organisation (CMO) to the parties applying for a license? The Collective Management Organisation (CMO) can grant a license to play the copyright work in public to the applicant.
20. What dose the Collective Management Organisation (CMO) do with the royalty collected? The royalty is distributed by the society to the copyright owner each year.
21. Does the Government determine the rate of the royalty collected by the Collective Management Organisation (CMO)? The government does not control or is government involved in determining the rate. It is determined contractually between the owner and the Collective Management Organisation (CMO).
22. Why is the Government not involved? Copyright is a private right belonging to the right holder.
23. If there is a dispute between the owner and the Collective Management Organisation (CMO),where are the avenues available to the owner? The dispute can be settled via assistance from the Copyright Tribunal.
24. What is meant by performance right? Performers’ rights are right granted to those taking part in a live public performance.
25. What is the duration of protection for performers right? Protection is granted for a period of 50 years from the date of the performance.
26. What are the qualifications for protection performers? Performers right shall subsist in every live performance of which the performer is:- (i) A citizen or permanent resident of Malaysia; or (ii) Not a citizen or permanent resident of Malaysia but whose performance:- • Takes place in Malaysia; • Is incorporated in sound recording that are protected under this Act: or • Has not been fixed in a sound recoding but is included in a broadcast qualifying for protection under this Act.
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