Overview of

Intellectual
Property including
outreach and
support activities
for SMEs
by Associate Professor Rohazar Wati Zuallcobley

Deputy Director General (Industrial Property) MyIPO

7/9/06
 Creation
Innovation
The IP Commercialization
Chain of
Activities Protection
Enforcement
 Industrial
Copyright
Property

a.Trademarks b. Patent

Intellectual
property c. Industrial d. Confidential
designs information

e.
Geographical
Indications
 IP as intangible property

Tangible property Land, houses, estates,car Intangible property -intellectual property Intangible wealth, easily
appropriated and
reproduced,once created the
marginal cost of reproduction
is negligible
 1. economic rights of creators

2.commercial exploitation of owner of IP

The role of IP 3.capital expenditure

as intangible 4.transfer of technology
property
5.cultural development
 • Capital expenditure for new products
• R and D
Why IP • Marketing and advertisement
protection is • No free loaders
• Maintaining loyal followers
given
• profit
 Can be sold

Can be bought
IP as a Can be lease or rent
property
Can pass under a will

Can be assigned
 MyIPO is the legal custodian.

Three machinery of administration

The Legal - the IP office

Framework for
IP - the external machinery

- the court
 Paris Convention for Protection of
Industrial Property 1967 ( 1989)
Berne Convention for the Protection of
Literary and Artistic Works 1971 ( 1990)
Internationa
Trade-related aspects of Intellectual
l Property Agreement 1994 ( 1995)
Convention WCT ( digital agenda)
for IP
PCT 2004
 Protection for
industrial Trade mark
property

Unfair
Paris Patent
competition
Convention
Governed by
domestic
legislation
Berne Convention

Protection of literary and artistic Governed by national legislation

work
Wipo Copyright Treaty

Digital agenda. Technological measures such as circumvention

of technological maesures.
 Additional to Paris and Berne.

Minimum requirement.

TRIPS 1994
Most favoured nation treatment.
(1995)
Strong enforcement procedure.
 Making it easier to make
paten application

Patent
Cooperation Designated country.
Treaty
International phase to
national phase.
Basic principle of international convention

Laying down the minimum requirement for the national legislation.

“members may but shall not be obliged to implement more extensive

protection in their law than is required by the agreement. TRIPS 1(1)
The principle of national treatment

• “Each members shall accord to the

nationals of other Members
treatment no less favourable than it
accord to its own national”
 State to state
Obligation Not open to individual.
of
convention Example : India v USA.
 Copyright Act Trademarks Patent Act
1987 Act 1976 1983

The Laws For Industrial Geographical

Design Act Indications Law of Tort
Intellectual 1996 Act 2000
Property
Confidential
Protection -passing-off
information
 Protection given by law
Work include literary,
for a term of years to the
artistic, musical,films,
composer, author etc…
sound
to make copies of their
recordings,broadcasts.
work..

Protection for
Copyright
Commercial and moral No registration
rights. provision.
 Commercial To identify the
exploitation of a product, giving it a
product name

Protection
for trade “mark” includes a
device, brand,

marks
heading, label,
Does not include
ticket, name,
sound or smell
signature,word,
letter, numeral or
any combination.
 Can either be Advantages of
registered or not registered trade
registered marks

Trade marks
(cont.) Application can be
Perform certain
function such as
made for goods and indication of
services quality,identifying a
trade connection
 Compare
the trade
mark
“Dove” to
using the
mark
“crows”.

Choosing the
correct mark o uld an
Wo
u
W sm “Fr ld the
a rk d r es o g
M an n d tau
e r
e k acc ” be ant
We ex be ble ept
S pta a
c c e ? ble
a ?
 Basic idea of granting a patent

“ the applicant applied to the government for the right

Protection for of patent and in return for the monopoly given he must
disclose everything about the invention in the patent
patent document” ( the description)

Duration 20 years.
 Patent can be
Patent for applied for a
invention product or a
process.

Patent (cont.) Patentable

invention must be
new,involves an Priority date- first
inventive step and to file
industrially
applicable
The role of patent

Anticipating the
Innovation changes that is - Kodak
coming

- Polaroid - Haeir
The various route for application

THE NATIONAL THE PARIS ROUTE THE PCT ROUTE

ROUTE
Protection for industrial designs

Protection for industrial designs that

are new or original

Design are feature of shape,

configuration, pattern or ornament

The design must be applied to an

article

The design must be applied by an

industrial process.

Appeal to the eye.

Commercialization strategies

Effect of failure
to register
Novelty
before
marketing
 • Meaning “ an indication which
identifies any goods as originating
Protection in a country or territory, or a region
or locality where a given quality,
for reputation or other characteristic of
geographical the goods is essentially attributable
to their geographical origin”
indications
Protection for geographical indication

Product must come from a particular

geographical territory

Uses a name link to the particular

geographical nature of the territory

Such as labu sayung from the sayung

Perak,

Batik Trengganu,batik Kelantan etc.

To stop others from using

Examples of GI

Swiss made Swiss Sarawak Salted egg Sweet

chocolates pepper tamarind
Protection under the law of Tort

There is no
Based on
legislation
common
pass by
law
Parliament

Strict
Enforced by
application
court’s
of
decision.
precedent.
Passing-off

FOR TRADE MARK ( STARTED FROM THE DECEIVER, REQUIREMENT OF

REGISTERED AND THE TORT OF THE AUDIENCE “GOODWILL”
UNREGISTERED) DECEITS. AND THE VICTIM.
 Protection for confidential
information under contract,
Protection under the law of
employer-employee
tort
relationship,husband and
wife,etc

Confidential Need to show:- - information are confidential

information
- recipient who obtained the - damages suffered by the
information uses it owner
Illustration

CUSTOMERS LIST SECRET RECIPES SMELLS OF A NEW

PERFUME
 Protection are territorial.

Procedural requirement must be met.

Qualification for
Intellectual Property Corporation Malaysia
protection of act as the governing body.
Intellectual
Forms submitted,search made,prescribe time
property in period observed.
Malaysia.
Abiding to International Convention.
 Life + 50
50
20
Duration of
15
protection
10
Payment of statutory fee.
 -employer and
Who is the Proper plaintiff
employee
owner? rule.
relationship

- independent - government - joint-

Ownership contractor. employee. ownership.

Commissioned
works
 TO CONTROL THE THE REPRODUCTION IN THE COMMUNICATION
WHOLE OR A ANY MATERIAL FORM. TO THE PUBLIC.
SUBSTANTIAL PART OF
THE WORK.:-

Exclusive rights

THE PUBLIC DISTRIBUTION BY SALE COMMERCIAL RENTAL

PERFORMANCE,SHOWIN OR OTHER TRANSFER TO THE PUBLIC.
G OR PLAYING
 Fair dealing exception

Statutory exception under section 13(2)

Temporal ( duration)
The exception to
Geographic
the exclusive
right Non-material works

Compulsory licenses
 Enforcing IP rights

Civil action

Criminal prosecution

Cost in litigation

Assistance from Enforcement Division

Being vigilant/ self help

 Civil action

STARTING A CIVIL ADVANTAGES LIABILITY FOR COST MONETARY

ACTION COMPENSATION IN
TERM OF DAMAGES
 Making a complaint

Criminal
prosecution Police or enforcement division

Cost borne by the government

No monetary compensation

Remedy in term of fines or

imprisonment for the offender
 Primary infringement
IP
- who does or causes
infringement
-making the product

Secondary infringement

- commercial activities

- selling,distribution for sale etc

 sells,lets for hire or by way of
trade exposes or offer for sale
Secondary or hire any infringing copies.
infringement
Distribute infringing copies.

Importing into Malaysia

Commercialization Assignment

Licenses

- exclusive

- non-exclusive
Intellectual property
awareness in Malaysia
Only 20 % of IP rights such as
in patent, trade marks are owned
by Malaysian.

80 % are owned by foreigners.

 Multi Multi
level tasking
MyIPO outreach
Programs The role The role
of the of the
IPTC PRO
 Allocation of funding for activities

IPTC funding of RM500000.Additional

funding from MyIPO office.
Support
Separate funding for the National
activities Intellectual Property Day ( RM2.5 million)

Funding for PRO RM3 million.

 - this year in February
Examples of IPR- Powering the
SMEs seminar funded
- outreach program all
over Malaysia.
support by ECAP.
activities for
SMEs
- in different languages
The NIPP

THE AIM OF NIPP. THE STRATEGIES THE INTENDED “ A SOCIETIES OF

OUTCOME CREATORS RATHER
THAN USERS”
The IP curriculum

MYIPO PROACTIVE ENTREPRENEUR SKILL STUDENT IN A FREE

MEASURES. CURRICULUM IN ENTERPRISE
UNIVERSITIES
MyIPO proactive measures

Special
- kain Pua - Batik
assistance for - Labu sayung
Sarawak Kelantan
GI.

- Batik - Tenun - Tenun

Trengganu Kelantan Trengganu
Other actions

INTER-DEPARTMENTAL ASSISTANCE FOR ALL REQUEST ARE

ACTIVITIES AWARENESS AND WELCOME!
UNDERSTANDING OF IP EG
MOFAZ
• Thank you.