Big Or Small Ideas, We Protect Them All.
PATENT
TRADEMARK
INDUSTRIAL DESIGN
COPYRIGHT
TRADE SECRET
Description
The Patents Act 1983 and the Patents Regulations 1986 govern patent protection in Malaysia. An applicant may file a patent application directly if he is domicile or resident in Malaysia. A foreign application can only be filed through a registered patent agent in Malaysia acting on behalf of the applicant. In accordance with TRIPS, the Patents Act stipulates a protection period of 20 years from the date of filing of an application. Under the Act, the utility innovation certificate provides for an initial duration of ten years protection from the date of filing of the application and renewable for further two consecutive terms of five years each subject to use. Malaysia has acceded to the PCT in 2006 and since then, the PCT International Application can be made at the Intellectual Property Corporation of Malaysia (MyIPO) office. Patents are granted in Malaysia if the applications meet the criteria of Novelty, Inventive Step (also known as Non-obviousness) and Industrial applicability.
Novelty
An invention is new if it has no precedence in the industrial prior art which means that the invention was not disclosed to public anywhere at any time whether by written, oral disclosure or by use or any other method which allows the understanding of the invention.
Industrial Applicability
The invention can be used on an industrial level.
Non-Obviousness
The invention should have technical development which is not obvious to any skilled person related to field of technology to which the invention belongs. All patent applications filed at the MyIPO are subject to substantive examination and are bound to meet the above mentioned patentability criteria for receiving acceptance by the Patent Office.
Duration
20 years from the date of filing. Annual maintenance fee.
Description
Malaysia has been a member of the Paris Convention for the Protection of Industrial Property since January 1, 1989. The International Classification of Goods and Services for the Purpose of the Registration of Marks under the Nice Agreement (10th edition) is followed in Malaysia. Trade Marks protection in Malaysia is governed by the Trade Marks Act 1976 and the Trade Marks Regulation 1997. Multiple class application is not allowed in Malaysia. A separate application has to be filed with respect to each class of goods or services. Once a trademark application is filed, it is examined as to its registrability. Trademark applications accepted by the Registrar are published in the Trademark Gazette. Any interested party may file a notice of opposition to the registration of the mark within 60 days from the date of any publication. In the absence of opposition, a trademark is registered and the relative certificate of registration is issued which would last for ten (10) years from the date of filing. A trademark registration is valid for 10 years as of the date of filing the application renewable for similar periods. The renewal fees of a trademark registration can be paid during the final year of the protection period.
Registrable Trademarks
Name of individual, company, or firm presented in a special or particular manner
Signatures
Invented words
Distinctive marks
Non-Registrable Trademarks
Directly descriptive of good services, or quality
Against public morality or national security
Geographical name
Causes confusion to the public
Duration
10 years from the date of filing. Renew every 10 years.
Description
Industrial Designs are exclusive rights granted under Malaysia Industrial Designs Act 1996. 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.
Requirement
New
Not disclosed to the public anywhere worldwide
Not recorded in the Industrial Design Register
Non-Registrable Industrial Designs
It does not have an apparent aesthetic appearance
A method or principle of construction, designs or features dictated solely by function
Integral parts which consist of features that depend upon the appearance of another article
Differ only in immaterial details or in features commonly used in the relevant trade
Designs which are contrary to public order or morality
Duration
Requires renewal every 5 years up to a maximum of 25 years
Description
Copyright is an exclusive right given to the owner of a copyright for a specific period of time. Copyright protection in Malaysia is governed by the Copyright Act 1987. As of 1st of June 2012, Malaysia has introduced Voluntary Notification Registration System.
What does Copyright Protect
Work eligible for protection are;
Literary Works
Musical Works
Films
Sound Recordings
Broadcasts
Derivative Works
These works shall be protected irrespective of their quality and purpose for which they were created. However, the Copyright protection shall only extend to expression and not ideas, procedures, methods of operation or mathematical concept and etc.
Who owns Copyright?
Copyrights in a work vests initially in the author (writer, composer, maker of the work, etc). However, where the making of a work is made by an employee in the course of his employment, unless there is any contrary agreement, the copyright in the work shall be deemed to vest in the person who commissioned the work or the employer. The author’s right is transferable by assignment, testamentary disposition or by operation of law, in which case the assign shall be the owner.
How long does Copyright last?
Generally, Copyright in any literary, musical or artistic form shall subsist during the life of the author, plus another 50 years after the author’s death.
1. What is Trade Secret
Trade secrets are intellectual property rights on confidential information which may be sold or licensed. Any confidential business information which has a competitive advantage to the business and is undisclosed to third parties may be fall under trade secret protection.
2. Criteria
a) Must be a confidential information. It must only be known to a limited number of people involved in the business, never been disclosed to the public and must not exist in the public domain.
b) Commercially valuable to the business.
c) Reasonably clear to all parties involved that the information disclosed is considered to be a trade secret. Should there be no indication that the information disclosed is a trade secret, then the information may not be protected as such.
Some reasonable steps have been taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees.
3. How long is the protection
Unlike other IPR, there is no specific amount of time for the trade secret protection. The trade secret is protected as long as it meets the eligibility for being a trade secret. As such, if the trade secret is no longer a confidential information, or its no longer commercially valuable, then it is no longer a trade secret and will not receive the same legal protection as it received before.
4. How to protect
Malaysia does not have specific regulation to govern and administer the trade secret protection. However, one can take a legal action again others if their trade secret has been exploited/used/retrieved without their permission. Trade secret protection is enforced through legally binding contracts.
The process of challenging a third party who you believe to have had infringed upon your trade secrets will be taken through via regular Malaysian courts instead of the Malaysian Intellectual Property court.
Some of the ways to protect trade secret is:
- Confidentiality agreements with the thirds parties, or any party involved
- Non-disclosure agreements (NDAs) to prevent third parties from disclosing a company’s confidential information
- Non-competition agreement (NCA)
- Robust IT security infrastructure.
- Encryption of data, password protection to the system, a physical safe box.
5. Advantages & disadvantages
Advantages
- Business will have a unique advantage from other competitors.
- Can be sold and licensed at a higher price due to the secrecy and commercial value.
- Trade secrets involve no registration costs.
- Trade secret protection does not require disclosure or registration, unlike for example a patent which becomes public information after registration
- No time limit for the trade secret protection, unlike for example a patent which only lasts for twenty years;
- Trade secrets have an immediate effect of the protection
- Easy to fulfill as it does not have substantive requirement like a patent
Disadvantages
- Cost incurred to maintain the secrecy of the trade secret and preventive measures to protect trade secrets against theft or misappropriation.
- No specific regulations to protect the trade secret
- Cost incurred to take legal action on the illegal/disclose of the confidential information
- Cannot claim the ownership or initiate infringement proceedings if third party independently attains and commercialise the same trade secret
6. Types of trade secrets
a. Technical Information
i.e Information concerning manufacturing processes, pharmaceutical test data, designs and drawings of computer programs; research and engineering data, engineering drawings, process sheets, computer software source codes.
b. Commercial Information
i.e Distribution methods, list of suppliers and clients, advertising strategies, marketing strategy, production data or recordings regarding commercial activity.
c. Combination of Elements
Each of which by itself is in the public domain, but where the combination, which is kept secret, provides a competitive advantage.
7. Examples of trade secrets
- Coca-Cola’s recipe;
- Google’s search algorithm;
- KFC’s recipe;
- Company’s financial information;
- Scientific formulas; and
- Recipes and source codes.
8. Extra notes
However, it has to be noted that to determine whether the trade secret protection has been violated or not, it will be depending on the circumstances of each case.
A trade secret owner cannot prevent others from using the same technical or commercial information, if they acquired the same confidential information independently by their own R&D or market analysis. Unlike other Intellectual Property rights such as Patents and Copyright, trade secrets do not provide a “defensive” protection and since they are not in public domain, they cannot be cited as being a prior art. As such, in the event that the confidential information which may be a trade secret of one company, has been independently obtained by the other competitor company, the competitor company may still be able to obtain a patent/ utility innovation on the same invention.
Learn more about Trade Secrets at Tee Consulting Group
