MANAGING INTELLECTUAL PROPERTY
LECTURE 5 MOHD RIZAL SALLEH
y INTELLECTUAL PROPERTY y TRADE SECRETS, PATENTS, NOVELTY, INVENTIVE STEP AND
y EXCLUSION FROM PATENTS y PATENTS IN PRACTICE, EXPIRY OF A PATENTS AND PATENTS
y THE USE OF PATENTS IN INNOVATIONS MANAGEMENT, DO PATENTS
HINDER OR ENCOURAGE INNOVATIONS?
y TRADEMARKS & COPYRIGHT y REGISTERED DESIGNS, REMEDY AGAINST INFRINGEMENT, DAMAGES,
2002) Types of intellectual property
y Trade secret. patent. Intellectual property includes industrial. y Trade mark.
. y Copyright. literary and artistic works. y Industrial design. y Patent. of which the ownership or right to use may be legally protected by copyright.´ (Al-Hawamdeh & Hart. trademark.INTELLECTUAL PROPERTY
Intellectual Property: ³Intellectual property can be defined as something produced by the mind. etc.
´ (Charles Handy) ³People with ideas ± people who own ideas ± have more powerful than people who work machines and. 2002)
³Intelligence is the new form of property. in many cases more powerful than the people who own machines.´ (Howkins.
Akta Cakera Optik 2000. Akta Reka Bentuk Susun Atur Litar Bersepadu 2000. Akta Petunjuk Geografi 2000.INTELLECTUAL PROPERTY
Malaysian IP protections (1) (2) (3) (4) (5) (6) (7) (8) (9) Akta Hakcipta 1987. Akta Perihal Dagangan 1972. Akta Cap Dagangan 1976. Akta Reka Bentuk Perindustrian 1996.
. Akta Paten 1983. Akta Hakcipta 1987.
y Reward for the author y Stimulate artistic & scientific creativity
. Paris Convention1883. Berne Convention 1886. and agreement of Trade Related Aspects of Intellectual Property Rights (TRIPs) 1994.INTELLECTUAL PROPERTY
World Intellectual Property Organization (WIPO).
economic. has commercial value because it is secret. plans. designs. procedures. whether tangible or intangible. § 1839 (3)
. scientific. business. or codes.´ Economic Espionage Act of 1996. prototypes. INVENTIVE STEP AND INDUSTRIAL APPLICATION
TRADE SECRETS/UNDISCLOSED INFORMATION:
³Trade Secrets/Undisclosed Information is protected information which is not generally known among. programmed devices. formulas. programs. photographically. technical. processes. or memorialized physically. or in writing. or engineering information. techniques. including patterns. and has been subject to reasonable steps to keep it secret by the lawfully in control of the information´.C.S. NOVELTY. PATENTS. electronically. graphically. compilations. and whether or how stored. 18 U.
³All forms and types of financial. compiled. or readily accessible to persons that normally deal with the kind of information in question. methods.TRADE SECRETS.
PATENTS.TRADE SECRETS. INVENTIVE STEP AND INDUSTRIAL APPLICATION
TRADE SECRETS/UNDISCLOSED INFORMATION EXAMPLES:
distribution techniques/documents. marketing. structural. business formats and plans. and pricing techniques are all candidates for protection as trade secrets. technical. Advances in technology . operations manuals. NOVELTY.the speed and ease with which information can be moved has made businesses information more vulnerable to loss Employee mobility and shifting allegiance
. 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. PATENTS. recipes. engineering. its products and method of doing business can be copied by employees or franchisees who can use the information to start competing companies. INVENTIVE STEP AND INDUSTRIAL APPLICATION
Trade Secrets in a Franchise Financial.TRADE SECRETS.
TRADE SECRETS. An exclusive right is a right given to the owner the right to control their invention as provided by the law¶. NOVELTY. PATENTS.EXAMPLES :
PATENT . 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. or offer a new technical solution to a problem.
NOVELTY. or patented or described in a printed publication in this or a foreign country. § 102
. or concealed it «. suppressed.´ 35 U. INVENTIVE STEP AND INDUSTRIAL APPLICATION
³A person shall be entitled to a patent unless (a) the invention was known or used by others in this country.C.S.TRADE SECRETS. 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. PATENTS. 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.
EXCLUSION FROM PATENTS
be new. and diagnostic methods practiced on the human or animal body. other than man-made living micro-organism. plant or animal varieties or essential biological process for the production of plants or animals. and be industrial applicable.
discoveries. rules or methods for doing business performing purely mental acts or playing games. method for the treatment of human or animal body by surgery or therapy. scheme. scientific theories and mathematical methods. anywhere in the world. that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention. involves an inventive step. which means that the invention has not been publicly disclosed in any form. For a Utility Innovation to be granted it only has to be new. microbiological processes and the product of such micro-organism processes. meaning it can be made or used in any kind of industry.
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.
Publication of applications & patents
Exploitation of patent
. DO PATENTS HINDER OR ENCOURAGE INNOVATIONS?
New invention Further innovation by third parties Further innovation by third parties Recovery of investment through .exclusive use .licensing .THE USE OF PATENTS IN INNOVATIONS MANAGEMENT.
letters. A sign includes words. numbers or a combination of these. A Trade Mark is used as a marketing tool to enable customers in recognising the product of a particular trader. logos. names.EXAMPLES:
. pictures.TRADEMARKS & COPYRIGHT
³A Trade Mark is a sign which distinguishes the goods and services of one trader from those of another.´
TRADE MARK .
recorded or reduced to a material form. siaran (broadcasts). the work has been written down.TRADEMARKS & COPYRIGHT
COPYRIGHT: ³Copyright is the exclusive right given to the owner of a copyright for specific period. Copyright protection
in Malaysia is governed by the Copyright Act 1987´. karya seni (artistic works). There is no system of registration for copyright in Malaysia. 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. filem (films). rakaman bunyi (sound recording). karya terbitan (derivative works)
WORK ELIGIBLE FOR COPYRIGHT PROTECTION:
karya sastera (literary works) *including software. karya muzik (musical works). and the author is a qualified person or the work is made in Malaysia or the work is first published in Malaysia.
myipo. Function: Responsible in ensuring the rights of creators owners of IP are protected worldwide and the inventors and authors are thus.my
. recognized and rewarded for their ingenuity.gov.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.
Invention Disclosure Form Screening Process 1 week 2. Receive Patent & Novelty Search Reports from Patent Agent
.a Form Completed by Inventor ² back to Activity 1 No
4. 2.Propose list of Patent Agent for Patent & Novelty Search
2 week 5 5. Issue Appointment Letter to selected Patent Agent for Patent & Novelty Search
6. Invention Disclosure Form received from Inventor. a 2 Yes 3 3.INTELLECTUAL PROPERTY MANAGEMENT
Flow Chart for Patent Filing Application
Start 1 2. Issue Acknowledge Letter for receive of Invention Disclosure Form
Receive Filing No. Selection of Patent Agent for Specification Drafting and Filing Application Process
Yes 8. Issue Appointment Letter to selected Patent Agent for Specification Drafting and Filing Application Process to MyIPO 2 month
10. Issue Acknowledgement Letter to Inventor
7.INTELLECTUAL PROPERTY MANAGEMENT
Flow Chart for Patent Filing Application (Cont. and Documentation (Certificate & Specification)
. Perform Patent & Novelty Search Report Assessment a. Prepare Specification Drafting and Filing Application to MyIPO
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