Iskandar Project offers a full service range of intellectual property application, creation and filing.
Patents - creating, drafting and filings.
What are patents?
Patents are legally enforced rights that give the patent owner (when granted by an authority) the exclusivity to use their inventions commercially for the life of the patent (twenty years from filing date).
Patents are granted for their unique device, substance, method or process, and must be:
Any protection granted is only in the jurisdiction that granted it. Its country wise so if you need protection in another country, you will need to file it there as well.
Some countries also grant a lesser patent termed Utility Innovation (UI). Malaysia is one of them. There is no need to prove for an inventive step, thus getting a UI grant is easier. But its protection is likewise narrower.
Malaysian Patent Prosecution Pathway
Steps to be taken
1) The first thing is to draft(with required format)the patent specification which would describe the invention.
2) A patent application should be first file in his country of origin. So if you are a Malaysian, then you will need to first file it Malaysia. You will then be given an allowance of 12 months to file (non pct) in another country. However, under sections 23A and 30A of the Patent Act 1983, the government retains the right to prohibit the publication (after 18 months) of details of an invention, whether here or abroad for reasons of national interest.
A Malaysian patent application has three basic elements: 1. application form; 2. specification (plus drawings if any); and 3. filing fee.
After filing, you will be alloted a file number
After filing, an application will be vetted on its formating. And if approved, then you will be informed by the patent office. You may then proceed with filing for substantive examination. Substantive examination will probably take about 5 years. You may also ask for an expedicted pathway (faster by 6 months) by requesting for it and also paying a fee. However, if the examiner finds any objections, then you will be informed and you will need to make amendments if allowed. The process then continues until you will be granted a grant of patent, or if the Registrar is satisfied that your application does not comply with the requirements of the Patent Act, then you will have to abort your application.
Duration of Patent Grant is 20 years from the date of filing [Amend. Act 2000], subject to yearly renewal (fees). The owner of the patent has the right to assign or to license the use of a patent with certain limitations determined by the Patent Act.
Enforcement is empowered by the Minister of Domestic Trade in Malaysia and any infringments thereof will be severly punished with fines and imprisonments.
Granted Patents can be invalidated under Section 56(1) & (2) of the Patents Act which provides for any aggrieved person to institute Court proceedings against the patent holder for invalidation of the patent on the following grounds:
(1) that the invention was not a patentable invention within the meaning of the Act;
(2) that the descriptions or claim does not comply with the requirement of the Regulations;
(3) that any drawings which are necessary for the understanding of the claimed invention have not been furnishes;
(4) that the right to the patent does not belong to the person to whom the patent was granted, or
(5) incomplete or incorrect information has been deliberately provided by the applicant or his patent agent in relation to a request for full substantive examination.
Utility Innovations (UI) are granted in liu of a full patent in Malaysia. UI's does not have to satisfy the step of inventiveness and therefor is easier to obtain.
You might want to choose the PCT Pathway instead of the normal Malaysian pathway.
Industrial designs - creation, drafting and filings.
What is an Industrial Design?
Industrial designs are intellectual property rights that make exclusivity of the visual shape of the object. There is no utilitarian aspect of it unlike patent. An Industrial Design (also some time called design patent) can be rendered in 2D or 3D configuration and is valued more about its aesthetic value. In some jurisdictions, color is taken into consideration. A good example is a shape of a chair (different parts shaped differently to value its uniqness) whilst a massage cushion chair will termed as a patent because it has internal part processing that renders the masssging effect.
Trademarks - creating, drafting and filings.
What are Trademarks?
Trademark can be a symbol, word, or words ( also color and smell according to the Madrid Protocol) legally registered or established by use as representing a company or product. Protection is granted for a certain period to prevent others from using the same.
Malaysian Trademark Filing
The Malaysian lower house of parliament has approved Trade Descriptions (Amendment) Bill 2019 and Trademarks Bill 2019 were passed with a simple majority following debate among eight MPs in the Dewan Rakyat on 11th July 2019.
As such, Malaysia will accede to the Madrid Protocol, which is administered by the International Bureau of Wipo in Switzerland, and on it, allows a trademark owner to seek protection of the trademark in several countries simultaneously by filing one application with a single office, in one language and by paying one fee.
With Malaysia's acceding to the Madrid Protocol, Malaysian businesses would get trade mark protection from over 150 member countries. It would mean that Malaysian Businesses will get protection with a lower cost. Previously, trademark filings has to be made in individual countries. It would be very much easier now as businesses would only have to make one application in Malaysia.
Copyrights - creating, drafting and reporting.
What are Copyrights?
An exclusive and assignable legal right, given to the originator for a fixed number of years (extensable), to print, publish, perform, film, or record literary, artistic, or musical material.
The novel that you wrote is automatically copyrighted with its creation but you need to file it for in case you have to fight it out in court for the creation owner.
Geographical Indications - drafting and filing.
What are Geographical Indications?
A GI is a geographical indication sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.
A good example is the Darjeeling Tea which is only grown in West Bengal, India.
Filings in Malaysia and foreign countries. You may want to access here
In case you are not sure as to what is it that you have, you can always consult us