Patent Introduction Patent law concerns new, industrially applicable inventions.

Patent Introduction • Patent law concerns new, industrially applicable inventions. • Patent law grants a monopoly for a limited period of time in respect of an invention in return for disclosure of the details concerning the invention. • Patent law provides aid towards the technical efficiency and the growing wealth of the community as a whole. P

Patent law provides aid towards the technical efficiency and the growing wealth of the community as a whole. • Patent encourages inventions and any subsequent innovative work to practical use. • Patent procures information about the invention for the rest of the industry and the general public.

What is a Patent? • A Patent is a limited monopoly granted to the inventor in exchange for disclosure of technical information of the invention.

A patent is a grant from the government giving exclusive right for the an invention, which may include a product or a process that provides a new way of doing something or solving a technical problem or contain at least inventiveness over what is previously known.

Useful references:- - Patent Act 1983 (Amended in 1986 and 1993) - Patents Regulations 1996 - PHIM Patents in Malaysia Applicant’s Guide - WIPO Patent Agent’s Manual - WIPO Introduction to Patent Law & Practice - Case Laws

The importance of a Patent • The justification for granting protection of a registered patent is based on the premise that the invention will benefit the wider community. • Another importance of a patent is to reward the inventor and it provides an incentive to the future inventors.

What does it mean by “invention”? • An invention means an idea of an inventor, which permits in practice the solution to a specific problem in the field of technology. (S.12 PA 1983) • It may be a product or a process/method.

Requirements for Patentability For a patent to be granted, the invention must: • be new (novelty) • involve an inventive step • be capable of industrial application

Novelty • An invention shall be taken to be new if it does not form part of the state of the art. • State of the art refers to all information in the public domain at the priority date. • Priority date is the date of filing of the application.

Inventive step • “such inventive steps would not be obvious to a person having such ordinary skill in the art” (S.15 PA 1983) • Whether there is an inventive step is a matter of opinion - bases on a combination of several grounds.

Capable of industrial application • must be something which can be made industrially or relate to an industrially process. • under S.16 PA 1983 an invention is capable of industrial application if it can be made or used in any kind of industry.

What are non-patentable inventions? S.13(1) PA 1983 • Those that did not satisfy the requirements of patentable inventions e.g. not new, obviously common sense, doesn’t involves inventive steps or industrially not applicable.

Discoveries, scientific theories and mathematical methods • Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living microorganisms, microbiological processes and the products of such microorganism process. • Schemes, rules or methods for doing business, performing purely mental acts or playing games • Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.

What is Utility Innovation? Protect the invention from being infringed by others either by way of duplicating the invention and thereafter claiming to be the inventor or exploiting that invention for monetary gain.

How long is the protection? • A patent is protected 20 years from the date of filing. • A utility innovation is protected 10+5+5 years from the date of filing upon proof of working. It is renewable annually which starts from the second anniversary of the date of grant.

Who may apply? • The inventor or any person, either alone or jointly with another. (S.18 PA 1983) • The word “person” is not limited to natural persons and thus includes an artificial legal personality e.g. a company.

Where to apply? • Intellectual property Division, Ministry of Domestic Trade and Consumer Affairs in Kuala Lumpur or • at one of the branch offices located in Sabah and Sarawak which will assess whether it meets the requirements of Patents Act 1983.

Bahagian Patent Perbadanan Harta Intelek Malaysia Tingkat 32, Menara Dayabumi Jalan Sultan Hishamuddin 50623 Kuala Lumpur

Patent application procedures • Applicant to file Form 1 together with patent specification ( a fee of RM 200 ) • Applicant must file Form 5 requesting substantive examination ( a fee of RM 700 ) • Attach 3 sets of Claims – 2 for PHIM, 1 as acknowledgement ( evidence )

Basic information needed in the application • Title of invention – must be clearly and concisely • Name of applicant – Company or individual? (It may or may not be the inventor)

Name of applicant – Company or individual? (It may or may not be the inventor) Note: The applicant’s nationality and residence shall be indicated or if not natural person, the name of the State whose laws it is constituted.

Section 23A provides that “no person resident in Malaysia shall, without written authority granted by the registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless – (a) An application for a patent for the same invention has been filed in the Patent Registration Office not less than two months before the application outside Malaysia; and

(b)either no directions have been issued by the Registrar under section 30A in relation to the application or all such directions have been revoked. Section 30A is on the prohibition of publication of information which might be prejudicial to the nation.

Name and address of inventor – An artificial legal entity cannot be used as an inventor’s name. If the applicant is not the inventor, he must fill in and submit the “Statement Justifying the Applicant’s Right to the Patent’ form.

Division of Application (S.26A PA 1983) – if there is several inventions in the application, the applicant is required to divide the application into two or more applications. Each divisional application shall be entitled to the priority date of the initial application.

Infringement • Direct infringement • where the invention is a product - makes - disposes of / offer to dispose of - uses - imports - keeps it whether for disposal or otherwise

where the invention is a process - uses the process - offers it for use - disposes of / offers to dispose of - imports any product obtained directly by means of that process - keeps any such product whether for disposal or otherwise

Indirect infringement When the infringer supplies or offers to supply a person with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put the invention into effect.

Remedies • Injunction • Damages • An account of profits • An order for delivery up or destruction • A declaration that the patent is valid and has been infringed by the defendant N

Patent Introduction Patent law concerns new, industrially applicable inventions.