What is Intellectual Property?
Types of intellectual properties
Intellectual Property is a registrable or unregistrable intangible property that refers to creation of the mind, which includes an idea, information and knowledge. It can be divided into three categories :
(i) Industrial property
- geographical indications;
- plant varieties;
- trade dress;
- industrial designs;
- patents; and
- integrated circuit layout – designs.
(ii) Copyright which covers literary works
- performances rights;
- plays; and
- architectural designs.
(iii) Unregistered intellectual properties
- trade secret; and
Intellectual property protection is either automatic or granted upon application. Examples of automatic protected intellectual property is copyright and through application is patents, trademarks and industrial designs.
There can be multiple types of intellectual property rights to protect an invention or a product. For example, a bottle of Coke, the registered trademark protects the brand “Coca-Cola” from being used or monetise by others without consent from its owner. The formula for the actual soda is a trade secret, copyright protects the product packaging, while the design of the bottle is protected under design patent.
Having the right type of intellectual property protection will prohibit others from unauthorised use of the invention or product and its intellectual properties, such as stealing or copying them for a party’s commercial gain or benefit. The right type of protection enables the owner or the creator to earn recognition and gain financial benefit from their inventions or creations.
Owning intellectual property
A person (an individual or a corporation) owns an intellectual property, if he or she creates an intellectual property and protects it under the right type of protection (copyright, patent, design), or bought intellectual property rights from the creator or previous owner.
There can be more than one owner of an intellectual property, i.e. joint ownership by multiple owners. An intellectual property can also be sold or assigned or transmitted to others.
What is a Patent?
A patent is an invention or a product of which you have to apply at the Intellectual Property Corporation of Malaysia (“MyIPO”) for protection. A patent application takes around 3 to 4 years to be granted in Malaysia, if allowed. Under the Patents Act 1983, the term for a patent is 20 years from the filing date, and must be annually renewed with a fee to keep its enforceability. The protection gives the owner the right to take legal action against anyone who reproduce, use or sell an invention without the permission of the owner. The said invention must be new, inventive and has industrial application for it to be patented.
All information relating to the invention must not be disclosed to the public or any party before an application is made. The owner may not obtain a patent for its invention if public disclosure of such information is made. If the owner needs to discuss the invention with anyone, the information can be protected with a non-disclosure agreement signed between the owner and the other party.
Malaysia adopts a first to file rule, where the first person to file an application for his or her invention has priority over others for the same invention.
What is a Utility Innovation?
An invention that does not meet the “inventive step” requirement for a patent, may be applied to be protected under utility innovation.
Utility innovation is considered particularly suited for protecting invention which creates a new product or process, or any new improvement of a known product or process which is capable of industrial application and includes an invention. Generally, an utility innovation does not display a high degree of inventiveness in comparison to an invention qualifying for a patent.
Utility innovation is protected for 10 years from the filing date of the application which can be renewed for 2 consecutive terms of 5 years each, subject to proof of use of the utility innovation in Malaysia, or a satisfactory explanation of non-use with a payment of a fee.
Copyright is the protection of literary and artistic works for a limited period of time (usually 50 years after the death of the person who created the work). On the other hand, the protection of any work published after the author’s death, will be 50 years from the date of publication of the work.
Formal registration is not mandatory in Malaysia to secure protection. However, the creator or author or owner can register voluntarily in MyIPO and obtain registered certificate as proof of ownership of the copyright as provided in Section 26A of the Copyright Act 1987. Such certificate shall be considered a prima facie evidence in Malaysian courts.
Generally, the author of a created work would also be the copyright owner. However, when work is commissioned to a third party, or if the work is created in the course of the author’s employment, in such instances, copyright ownership vests in the commissioner or employer, subject to any agreement to the contrary between the author and the owner.
A trade mark does not have to be a word. It may be a device, a logo, a combination of letters and numerals, a design, one or more colours, a slogan or combination of those elements such as a label. In some jurisdictions it is even possible to protect certain sounds and smells as a trade mark. Similar trade marks can be registered for similar goods by different companies in different countries, and can be registered for different classes of services or goods.
A trade mark must distinguish the goods or services of one trader from those of another. The more distinctive and original the mark, the easier it is to protect.
A registered proprietor of a trade mark can allow any person to use his or her trade mark, by lawful contract on all or any goods and services the trade mark is registered for. The said registered proprietor must apply for the said user to be entered on the register in MyIPO, as a registered user, with or without restrictions or conditions.
A trade mark application takes around 1 to 2 years to be granted in Malaysia if allowed.
Registration rights last for 10 years with unlimited renewal period in every 10 years upon payment of a fee.
In Malaysia, a mark becomes the property of the person first using it. An unregistered mark can be protected in Malaysia under the tort of passing-off. The burden of proof on the first use of the said mark is on the said person claiming first use of such mark. The evidence of use of the mark is to prove reputation and goodwill of the business in connection with the used mark. However, it is advisable to register the mark as a trade mark, as registration always confers stronger rights than mere user rights and it is generally easier and cheaper to take legal action against imitators on the basis of registered rights than on the basis of user rights claiming passing-off.
In addition, a well-known mark can also be protected in Malaysia without trademark registration, via passing off. The owner of the well-known mark can restrain the unauthorised use of the mark which is identical or an essential part of the mark is identical or nearly resembles the well-known mark in respect of the same goods and services and the use of such mark will likely deceive the public to be the well-known mark.
Some examples of trade marks :In special typeface
Any confidential information which provides a corporation, a competitive edge and has a commercial value by reason of the secrecy, may be considered as a trade secret. A trade secret consists of information that can include a formula, pattern, compilation, program, device, method, technique or process. The unauthorised use of such information by persons other than the holder is regarded as a violation of the trade secret.
Trade secret can be identified in 2 kinds, i.e. (i) an invention that does not meet the patentability criteria (such as customers lists or manufacturing process), or (ii) invention that would fulfil the patentability criteria but the holder does not wish to disclose information of the invention to the public.
A trade secret is more difficult to enforce than a patent. In Malaysia there is no statute or regulation that governs the rights of a trade secret. Although trade secret has the advantage of not being limited in time and involve no registration costs, trade secret of an invention does not provide the exclusive right to exclude others from making commercial use of the said invention. Nevertheless, the holder may keep the information secret and restrict its use through a non-disclosure agreement.
What is a know-how?
Like trade secret, in Malaysia there is no statute or regulation that governs the rights of a know-how. Although a know-how is not protected by any particular intellectual property right, it can be protected by signing a confidentiality or non-disclosure agreement.