MANAGING INTELLECTUAL PROPERTYLECTURE 5 MOHD RIZAL SALLEH CONTENTS y INTELLECTUAL PROPERTY y TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE STEP AND INDUSTRIAL APPLICATIONS y EXCLUSION FROM PATENTS y PATENTS IN PRACTICE, EXPIRY OF A PATENTS AND PATENTS EXTENSIONS y THE USE OF PATENTS IN INNOVATIONS MANAGEMENT, DO PATENTS HINDER OR ENCOURAGE INNOVATIONS? y TRADEMARKS & COPYRIGHT y REGISTERED DESIGNS, REMEDY AGAINST INFRINGEMENT, DAMAGES, INJUCTION ACCOUNTS 2002) Types of intellectual property y Trade secret. trademark. .INTELLECTUAL PROPERTY Intellectual Property: ³Intellectual property can be defined as something produced by the mind. y Patent. etc. y Industrial design.´ (Al-Hawamdeh & Hart. Intellectual property includes industrial. of which the ownership or right to use may be legally protected by copyright. y Trade mark. literary and artistic works. patent. y Copyright. ´ (Charles Handy) ³People with ideas ± people who own ideas ± have more powerful than people who work machines and.INTELLECTUAL PROPERTY ³Intelligence is the new form of property. 2002) . in many cases more powerful than the people who own machines.´ (Howkins. Akta Paten 1983. Akta Hakcipta 1987. Akta Reka Bentuk Susun Atur Litar Bersepadu 2000. Akta Reka Bentuk Perindustrian 1996. .INTELLECTUAL PROPERTY Malaysian IP protections (1) (2) (3) (4) (5) (6) (7) (8) (9) Akta Hakcipta 1987. Akta Cap Dagangan 1976. Akta Cakera Optik 2000. Akta Perihal Dagangan 1972. Akta Petunjuk Geografi 2000. and agreement of Trade Related Aspects of Intellectual Property Rights (TRIPs) 1994. Purposes y Reward for the author y Stimulate artistic & scientific creativity . Berne Convention 1886. Paris Convention1883.INTELLECTUAL PROPERTY World Intellectual Property Organization (WIPO). or readily accessible to persons that normally deal with the kind of information in question. scientific. 18 U. economic. or in writing. and has been subject to reasonable steps to keep it secret by the lawfully in control of the information´.´ Economic Espionage Act of 1996. procedures. designs. business. processes. including patterns. compilations. methods. NOVELTY. PATENTS. techniques. electronically. programs.C. programmed devices. whether tangible or intangible. ³All forms and types of financial. § 1839 (3) . or engineering information. plans. and whether or how stored. has commercial value because it is secret. photographically. INVENTIVE STEP AND INDUSTRIAL APPLICATION TRADE SECRETS/UNDISCLOSED INFORMATION: ³Trade Secrets/Undisclosed Information is protected information which is not generally known among.TRADE SECRETS. prototypes.S. or memorialized physically. or codes. formulas. technical. graphically. compiled. INVENTIVE STEP AND INDUSTRIAL APPLICATION TRADE SECRETS/UNDISCLOSED INFORMATION EXAMPLES: . PATENTS. NOVELTY.TRADE SECRETS. the speed and ease with which information can be moved has made businesses information more vulnerable to loss Employee mobility and shifting allegiance . distribution techniques/documents. marketing. INVENTIVE STEP AND INDUSTRIAL APPLICATION Trade Secrets in a Franchise Financial.TRADE SECRETS. structural. Increasing vulnerability of trade secrets y In franchising the franchisor has to transfer all of the information relevant to the way of doing his business to the franchisee y If a franchisor is not careful. Advances in technology . technical. NOVELTY. PATENTS. engineering. recipes. and pricing techniques are all candidates for protection as trade secrets. its products and method of doing business can be copied by employees or franchisees who can use the information to start competing companies. business formats and plans. operations manuals. or offer a new technical solution to a problem. An exclusive right is a right given to the owner the right to control their invention as provided by the law¶. PATENTS.TRADE SECRETS.EXAMPLES : . which is a product or a process that provides a new way of doing something. INVENTIVE STEP AND INDUSTRIAL APPLICATION PATENT: ³A Patent is an exclusive right granted for an invention. NOVELTY. PATENT . or patented or described in a printed publication in this or a foreign country.C. INVENTIVE STEP AND INDUSTRIAL APPLICATION NOVELTY ³A person shall be entitled to a patent unless (a) the invention was known or used by others in this country. suppressed. before the invention thereof « (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. PATENTS. § 102 .´ 35 U. NOVELTY.TRADE SECRETS.S. or concealed it «. more than one year prior to the date of the application « (e) the invention was described in a patent granted on an application for patent by another filed « before the invention « (f) he did not himself invent the subject matter « (g) before the applicant¶s invention thereof the invention was made in this country by another who had not abandoned. scheme. scientific theories and mathematical methods. .EXCLUSION FROM PATENTS PATENTABLE INVENTIONS: be new. For a Utility Innovation to be granted it only has to be new. anywhere in the world. and diagnostic methods practiced on the human or animal body. rules or methods for doing business performing purely mental acts or playing games. that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention. NON-PATENTABLE INVENTIONS: discoveries. which means that the invention has not been publicly disclosed in any form. and be industrial applicable. meaning it can be made or used in any kind of industry. involves an inventive step. other than man-made living micro-organism. plant or animal varieties or essential biological process for the production of plants or animals. method for the treatment of human or animal body by surgery or therapy. microbiological processes and the product of such micro-organism processes. DO PATENTS HINDER OR ENCOURAGE INNOVATIONS? y Are patents a pre-condition for innovation? ± no y Can patents encourage innovation? ± yes y Do economists agree on the economic effects? ± no y Do economically successful countries have or develop strong patent systems? y y y y ± yes Can patents aid commercial success? ± yes Do many innovative enterprises use patents? ± yes Do (potential) investors like patents? ± yes Do patents guarantee profits? ± no .THE USE OF PATENTS IN INNOVATIONS MANAGEMENT. THE USE OF PATENTS IN INNOVATIONS MANAGEMENT.exclusive use . DO PATENTS HINDER OR ENCOURAGE INNOVATIONS? New invention Further innovation by third parties Further innovation by third parties Recovery of investment through .sale Patent application Publication of applications & patents Patent granted Exploitation of patent .licensing . names.´ TRADE MARK .EXAMPLES: . numbers or a combination of these. pictures. logos. A Trade Mark is used as a marketing tool to enable customers in recognising the product of a particular trader. letters. A sign includes words.TRADEMARKS & COPYRIGHT TRADE MARK: ³A Trade Mark is a sign which distinguishes the goods and services of one trader from those of another. and the author is a qualified person or the work is made in Malaysia or the work is first published in Malaysia. filem (films). There is no system of registration for copyright in Malaysia. WORK ELIGIBLE FOR COPYRIGHT PROTECTION: karya sastera (literary works) *including software. karya seni (artistic works). karya muzik (musical works).TRADEMARKS & COPYRIGHT COPYRIGHT: ³Copyright is the exclusive right given to the owner of a copyright for specific period. rakaman bunyi (sound recording). karya terbitan (derivative works) . A work that is eligible is protected automatically upon fulfillment of the following conditions: sufficient effort has been expended to make the work original in character. Copyright protection in Malaysia is governed by the Copyright Act 1987´. recorded or reduced to a material form. siaran (broadcasts). the work has been written down. recognized and rewarded for their ingenuity.my . Function: Responsible in ensuring the rights of creators owners of IP are protected worldwide and the inventors and authors are thus.gov.myipo.INTELLECTUAL PROPERTY PROTECTION SYSTEM IN MALAYSIA Registration Authority of Intellectual Property in Malaysia: Intellectual Property Corporation of Malaysia (MyIPO) under the Ministry of Domestic Trade & Consumer Affairs. Website : www. Treaties and Conventions. .TRADEMARKS & COPYRIGHT The International Agreement. Conventions and Treaties: The Paris Convention 1883 The Berne Convention 1886 Convention establishing World Intellectual Property Organization (WIPO) 1976 The Trade Related Aspects of Intellectual Property Rights Agreement 1994 (TRIPS Agreement) Patent Cooperation Treaty (PCT) Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957 (Nice Agreement) The Vienna Agreement Establishing an international Classification of the Figurative Elements of Marks 1973 (Vienna Agreement) Note: Under these Agreements. all the members must follow the standards and give the same protection either for local owners or owners from the member¶s countries. Propose list of Patent Agent for Patent & Novelty Search 2 week 5 5. Receive Patent & Novelty Search Reports from Patent Agent .a Form Completed by Inventor ² back to Activity 1 No 4 4. a 2 Yes 3 3. Invention Disclosure Form received from Inventor. Issue Appointment Letter to selected Patent Agent for Patent & Novelty Search 6 6. Invention Disclosure Form Screening Process 1 week 2. Issue Acknowledge Letter for receive of Invention Disclosure Form 1. 2.INTELLECTUAL PROPERTY MANAGEMENT Flow Chart for Patent Filing Application Start 1 2. a 1 week Yes 8. Perform Patent & Novelty Search Report Assessment a. Issue Appointment Letter to selected Patent Agent for Specification Drafting and Filing Application Process to MyIPO 2 month 10 10. Selection of Patent Agent for Specification Drafting and Filing Application Process 8 9 9.) 7.INTELLECTUAL PROPERTY MANAGEMENT Flow Chart for Patent Filing Application (Cont. Prepare Specification Drafting and Filing Application to MyIPO 11 11. and Documentation (Certificate & Specification) Complete . Issue Acknowledgement Letter to Inventor 7 No 7. Receive Filing No. Related Documents: Invention Disclosure Form Appendix Templates Certificate of Filing Certificate of Grant of a Patent . PATENTS & UTILITY INNOVATION GRANTING PROCEDURE MyIPO¶s Patents & Utility Innovation Granting Procedure .