Talk on Intellectual Property

The Need for Intellectual Property Protection for Inventors (a Seminar on Building Industry Solution’s To Sustainable Development held on 7th August 2007 in Putra World Trade Centre organized by CIDB Malaysia)

Tan Sri, Datuk, Ladies and Gentlemen, I must take this time to thank the organizers for allowing me to deliver this piece. This topic is of great importance but unfortunately there is a lack of awareness of its importance.

Introduction
We protect our tangible properties in our daily life. We install alarms in cars and houses to deter ‘breakins’. We lodge caveats in the land office when we purchase property to avoid unauthorized dealings with our property. We know the boundaries and limitations in protecting our tangible properties because we are able to see, touch and feel them.

So what is intellectual property then?
Almost everyone in society is a user and potential creator of intellectual property. Its protection, through a system of national and international rules called intellectual property rights, is necessary to provide incentives and financing for innovation and creation, which in turn leads to economic, cultural and social progress. Protection for intellectual property also encourages the production and dissemination of knowledge and a wide range of quality goods and services. As such Intellectual property rights add value for consumers and can provide a guarantee of where it comes from and its quality.

Intellectual property protection contributes to economic growth in both developed and developing countries by stimulating innovation, cultural diversity and technical development as part of a larger policy framework such as the establishment of the recent Northern Corridor Economic Region and the Iskandar Regional Development in Southern Johore. Thus, intellectual property rights can also be key tools for the alleviation of poverty through trade and business.

Intellectual property protection in Malaysia comprises that of patents, trademarks, industrial designs, copyrights, geographical indications and layout designs of integrated circuits. In a nutshell, IP is a useful information or knowledge that is the property of the inventor/creator. Strong intellectual property protection is essential to the success and in some cases to the survival of thousands of owners of licenses around the world.

Why the need for IP protection?
Society provides legal rights over intellectual property to encourage the production of inventions and creative works that benefit society and to help innovators and creators make a living from their work through commercialisation. Without such protection Commercialisation becomes worthless and meaningless as it will be exploited by others. These rights, which can belong to individuals or organizations, are recognized by governments and the courts.

The system is designed to benefit society as a whole, in both developed and developing countries, striking a delicate balance to ensure that the needs of both the creator and the user are satisfied. This balance is maintained through checks within the intellectual property system itself and in the larger regulatory framework, to ensure that the system is sustainable and beneficial to all stakeholders.

Areas of Intellectual Property in a summary

Patents
The Patents Act 1983 and the Patents Regulations 1996 govern patent protection in Malaysia. Similar to legislations in other countries, an invention is patentable if it is new, involves an inventive step and is industrially applicable. In accordance with TRIPS, the Patent Act stipulates a protection period of 20 years from the date of filing of an application.

The owner of a patent has the right to exploit the patented invention, to assign or transmit the patent, and to conclude a licensed contract. In the event of infringement where any party that manufactures, uses, sells, or offers for sale patented technology, during the term of the patent and within the country that issued the patent, the patent holder may take a civil action under section 58 Patents Act 1983 for infringement which allows a remedy of an injunction and award of damages. Section 61(4) Patents Act 1983 provides other forms of remedy and as such the remedies above is non exhaustive.

Trade Marks
Trade mark protection is governed by the Trade Marks Act 1976 and the Trade Marks Regulations 1997. The Act provides protection for registered trade marks and service marks in Malaysia. Once registered, no person or enterprise other than its proprietor or authorised users may use them.

Infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees. It may occur when the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party. An owner of a trademark may commence legal proceedings against a party which infringes its registration. The period of protection is ten years, renewable for a period of every ten years thereafter. The proprietor of the trade mark or service mark has the right to deal or assign as well as to license its use.

There can be a Criminal Prosecution under the Trade Description Act 1972 as well as a civil action under the Trade Marks Act 1976 and under the common law tort of passing off. The remedy allowed would be an application for an Injunction, Damages or in lieu of damages, an account for profits, order for delivery up of offending matter or obliteration of the offending trade mark or sign or a declaration that the Defendant has infringed.

Industrial Design
Industrial design protection in Malaysia is governed by the Industrial Designs Act 1996 and Industrial Designs Regulations 1999. The Act provides the rights of registered industrial designs as that of a personal property capable of assignment and transmission by operation of the law. To be eligible for registration, industrial designs must be new and do not include a method of construction or design that is dictated solely by function. In addition, the design of the article must not be dependent upon the appearance of another article of which it forms an integral part.

Registered industrial designs are protected for an initial period of five years which may be extended for another two 5-year terms, providing a total protection period of 15 years.

Copyright
The Copyright Act 1987 provides comprehensive protection for copyrightable works. The Act outlines the nature of works eligible for copyright (which includes computer software), the scope of protection, and the manner in which the protection is accorded. There is no registration of copyright works.

Copyright protection in literary, musical or artistic works is for the duration of the life of the author and 50 years after his death. In sound recordings, broadcasts and films, copyright protection is for 50 years after the works are first published or made. The Act also provides protection for the performer's rights in a live performance which shall continue to subsist for fifty years from the beginning of the calendar year following the year in which the live performance was given. A unique feature of the Act is the inclusion of provisions for its enforcement. A special team of officers is appointed to enforce the Act and empowered to enter premises suspected of having infringing copies and to search and seize infringing copies and contrivances.

International Laws and Treaties

Let’s look at some international memorandums, laws and treaties where Malaysia is a member of the World Intellectual Property Organization (WIPO) and a signatory to the Paris Convention for the Protection of Industrial Property, signed in Paris, on March 20, 1883, is an important and one of the first intellectual property treaties where Malaysia accede to the convention in January 1st,1989 and Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne Convention, is an international agreement about copyright, which was first adopted in Berne, Switzerland in 1886 where Malaysia accede to it in 1st October 1990.

In addition, Malaysia is also a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO). TRIPS also specifies enforcement procedures, remedies, and dispute resolution procedures. Therefore, Malaysia's intellectual property laws are in conformance with international standards and provide adequate protection to both local and foreign investors.

Recently Malaysia acceded to the Patent Cooperation Treaty in August 16th 2006. This Treaty provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States (137 countries as at 25th July 2007). A patent application filed under the PCT is called an international application or PCT application. It is a single filing of an international application is made with a Receiving Office (RO). It then results in a search performed by an International Searching Authority (ISA), accompanied with a written opinion regarding the patentability of the invention. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. The PCT does not lead to the grant of an "international patent", which does not exist.

Other Memorandum, Treaties and Laws not signed by Malaysia are the Hague Agreement Concerning the International Registration of Industrial Designs, Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and some others not mentioned here

Conclusion
Technologies and creations that have touched and changed millions of lives would probably not exist today without the incentives provided by intellectual property rights. As such Intellectual Property protection has spurred the development of key technologies of the future.