Patent industrial design

1. PATENT
Industr
ial Design,
Trade Mark,
Copyright
By,
Prof Ir. Dr. Sapuan Salit

3. • A patent is an exclusive right
granted for an invention, which is
a product or a process that
provides a new way of doing
something, or offers a new
technical solution to a problem
What is a Patent?

4. Patents Act, 1983
Amended in
 1983
 1993
 2000
 2002
 2003
 2006
Laws andRegulations
Patents Regulation
Amended in
 1990
 1995
 2001
 2002
 2003

5. • Any person may make an application for a
patent either alone or jointly with another
person. The word "person" is not limited to
natural persons and thus also includes, for
example, a company.
Who may apply?

6. • An applicant must file a patent application
with the Intellectual Property Corporation of
Malaysia which will assess whether it meets
the requirements of the Patents Act 1983.
How can a patent or utilityinnovationbe protected?

7. A patent protection gives the owner of the
patent/utility innovation the exclusive right to
stop others from manufacturing, using and/or
selling the owner's invention in Malaysia
without the owner's consent or permission.
Why Protect an Invention?

8. • A patent is protected 20 years from the date of
filing.
Where to Apply?
An applicant must file a patent application with the
Intellectual Property Corporation of Malaysia
(MyIPO), in Kuala Lumpur or at one of the branch
offices located in Sabah and Sarawak.
Term of protection

9. • For reasons of national interest and security,
any Malaysian resident wishing to apply for a
patent or certificate protection outside
Malaysia must first seek written authority
from the Registrar
National Security (Section 23Aand 62A)

10. • Discoveries, scientific theories and mathematical methods;
• Plant or animal varieties or essentially biological processes
for the production of plants or animals, other than man-
made living micro- organisms, micro-biological processes
and the products of such micro-organism processes;
• Schemes, rules or methods for doing business, performing
purely mental acts or playing games;
• Methods for the treatment of human or animal body by
surgery or therapy, and diagnostic methods practiced on
the human or animal body.
Non-Patentable Inventions

11. • For a patent to be granted an invention must be :
• new, which means that the invention has not been
publicly disclosed in any form, anywhere in the world;
• involve an inventive step, that is to say the invention
must not be obvious to someone with knowledge and
experience in the technological field of the invention;
and
• industrially applicable, meaning it can be mass
produced.
Patentable Inventions

12. Stages : FromFiling To Grant Of Patent
Application process
An application must be filed with MyIPO including:
• the name and address of the applicant;
• the name and address of the inventor;
• a description of the invention, together with any necessary
drawings referred to in the description;
• at least one claim; and
• payment of the filing fees, consisting of a basic fee plus a fee for
each claim in excess of 10.

13. • Additional formal requirements, that may be completed later if
necessary, include:
• an abstract
• the serial number of the priority application (due within 3 months
of the Malaysian filing date)
• an Appointment of Patent Agent form, duly signed by the applicant,
where a registered patent agent is engaged to file the application
• where the applicant is not the inventor, a statement justifying the
applicant’s right to the patent (for example, by virtue of employment
or assignment).

18. Industrial Design
By
Prof Ir. Dr. Sapuan Salit

19. Industrial Designs Act
1996
Amended in
• 2000
• 2002
• 2013
Laws andRegulations
Industrial Design
Regulation 1999
Amended in
• 2012
• 2013

20. • An industrial design is the ornamental or aesthetic
aspect of an article. The design may consist of three-
dimensional features such as the shape and
configuration of an article, or two-dimensional
features, such as pattern and ornamentation. The
design features must be applied to an article by any
industrial process or means of which the features in
the finished article appeal to eye.
What is an industrial design?

21. • Filing of an industrial design should be made
at the earliest possible time or before an
article is disclosed to the public. Prior
disclosure will destroy the novelty of the
design. So extreme care should be exercised
to ensure secrecy of the design.
When should one file for registration?

22. • A registered industrial design confers the owner of a
registered design the exclusive right to make, import
or sell or hire out any article to which the design has
been applied. Other users should obtain the consent
of the rightful owner before using the design. The
owner of a registered design has the right to take
legal action against an infringer within 5 years from
the act of infringement
What rights does a registereddesign confer?

23. • A registered industrial design is given an initial
protection period of 5 years from the date of
filing and is extendable for a further four
consecutive terms of 5 years each. The
maximum protection period is 25 years.
How long is the periodof protection?

24. • An industrial design registered in Malaysia is
only protected in Malaysia . In order to have
your designs protected in other countries,
applications for registration will have to be
filed within six month from the earliest date
when it was first filed in any of the Paris
Convention member countries.
How extensive is industrial design protection?

25. • Anytime after the application has been filed.
Applicants wishing to exploit the design in
foreign markets may do so by obtain well
corresponding protection abroad.
How soon can one manufacture andsell articles made to
design?

26. • Registered designs are open to public
inspection and the details of the registration
and the details of the registration are
recorded in the Register of Industrial Designs
and published in the Intellectual Property
Official Journal.
Are registereddesigns made public?

27. • To be registrable an industrial design must be
new at the date an application for its
registration is filed. A design is considered to
be new only if it has not been made available
or disclosed to the public in any way
whatsoever in Malaysia or elsewhere before
the filing date of the application and it is not
on the record the Register of Industrial
Designs.
What is a registrable industrial design?

28. • The designs of certain types of article are specifically excluded
from design registration. An industrial design is not registrable
if: the aesthetic appearance of an articles is not significant or the
design features differs only in immaterial details;
• it is a method or principle of construction;
• the designs are contrary to public order or morality;
• the designs of the articles concern exclusively with how an article
functions; and
• the designs of articles that are integral parts of other articles and
whose features are dependent upon the appearance of other
article.
What sort of designs is excludedfromregistration?

29. • Only the owner of a design may apply to register the
design, though an agent can be authorized to make
the application.
Where an applicant's ordinary residence or principal
place of business is outside Malaysia, the applicant
shall appoint an agent registered in the Register of
Industrial Designs Agent.
Who can apply for design registration?

30. Filing an application to register a design requires:-
• A completed application form (ID Form 1) in Malay or English;
• One copy of representation of the article to which the design is
applied (drawings or photograph);
• A statement of novelty in respect of the industrial designs to which
the design is applied. (However a statement of novelty is not
required when registering wallpaper, lace or textile articles); and
• Payment, in full, of the appropriate filing fee
How to file an application for the registration of an industrial design?

31. • All application for the registration of industrial
design must be lodge at the Industrial
Designs Registry, Intellectual Property
Corporation of Malaysia
Where to lodge your application?

35. TRADEMARK
• DEFINITION OF TRADE MARK
• Trade mark is a sign which distinguishes the goods and services of one
trader from those of another. A mark includes a device, brand, heading,
label, ticket, name, signature, word, letter, numeral or any combination of
these.
• NON-REGISTRABLE TRADE MARK
• Prohibited Marks
If the use of which is likely to confuse or deceive the public or contrary to
law.
• Scandalous or Offensive Matter
If it contains or comprises any scandalous or offensive matter or would not
otherwise be entitled to protection in any court of law.
• Prejudicial to the Interest or Security of the Nation
Registrar bears the responsibility of determining the trade mark, whether
it might be prejudicial to the interest or security of the nation. It may be
that a mark contains an inflammatory statement or words.

36. • FUNCTIONS OF TRADE MARK
• Origin – A trade mark helps to identify the source and those linked for the products and services
trade in the market.
• Choice – A trade mark assists consumers to choose goods and services with ease.
• Quality – Consumers define a certain trade mark for its known quality.
• Marketing – Trade mark play a significant role in promoting. It’s common for consumers to make
purchases based on continuous effect of advertising.
• Economic – Recognized trade mark is a valuable asset. Trade marks may be licensed or franchised.
• IMPORTANCE OF TRADE MARK REGISTRATION
• Intellectual Proprietary privileges in relation to a trade mark may be established through actual use
in the marketplace and registration provides for:
• Exclusive Rights – Registered trade marks owners have exclusive right to use their marks in trading.
They also have the rights to take legal action for infringement under the Trade Mark Law against
others who use their marks without consent. They can either take civil action or lodge complaints
to Enforcement Division for appropriate actions under the Trade Description Act 1972.
• Legal Evidence – Registration certificate issued by Registrar Office is a prima facie evidence of trade
mark ownership. A certificate of registration serves as an important document to establish the
ownership of goods exported to other countries.
• DURATION OF REGISTRATION
• Trade mark registration is valid for ten years from the date of application and may be renewed
every ten years.

38. COPYRIGHT
• DEFINITION OF COPYRIGHT
• Copyright is the exclusive right to control creative works created by the author, copyright
owner and performer for a specific period governed under the Copyright Act 1987.
• WORKS ELIGIBLE FOR COPYRIGHT
• literary works;
• musical works;
• artistic works;
• films;
• sound recordings;
• broadcasts; and
• derivative works
• DURATION OF COPYRIGHT
• Literary, Musical or Artistic Works
Generally, this categories of copyright work reflects to the human beings which shall subsist
during the life of the author plus 50 years after his death.
• Film, Sound Recordings and Performer
This categories of copyright work shall subsist for 50 years from the work was published,
fixed in a fixation for the film and sound recording. For performer, the copyright work shall
subsist from the performances was perform or fixation in a sound recording.

39. • THE RIGHTS OF COPYRIGHT OWNERS
• Legal Rights
Author, copyright owner and performer is given an exclusive right to control under the
copyright law. Legal rights that are given to them includes the rights to enforce their
copyrighted works in cases for infringement either by civil or criminal action. In term of
criminal prosecution, it is conducted by the Enforcement Division of Ministry of Domestic
Trade, Cooperative and Consumerism (MTDCC) or Royal Malaysian Police.
• Economic Rights
Economic rights that are given to rightholders includes rights of reproduction, rights of
communication to public, rights to perform, showing or playing to the public, rights of
distribution and rights of commercial rental. This rights can be exercised during the period of
protection governed under Copyright Act 1987. Economic rights allows the owner of rights to
derive financial reward from the use of his works by the user or commercial purposes. Form
of economic rights can be by way of assignment, licensing and testamentary disposition.
• Moral Rights
– Paternity Rights
This rights allows the author to claim the originality rights of his or her creation.
– Integrity Rights
This right authorizes the author to prevent any users from distortion, mutilation or other
modifications of his or her works whereby the result of the modification will significantly
alter the original work and adversely affect the author’s honor or reputation.

40. • COPYRIGHT INFRINGEMENTS
• Whoever use any copyrighted works without consent or authorization from the
author, copyright owner and performer, it may constitute an infringement under
Copyright Act 1987. Amongst the act of infringement includes:
• reproduces in any material form, performs, shows or plays or distributes to the
public,
• imports any article into Malaysia for the purpose of trade or financial gains;
• makes for sale or rent any infringing copy;
• sells, rent or by way of trade, exposes or offers for sale or rent any infringing copy;
• distributes infringing copies;
• possesses, otherwise than for his private and domestic use, any infringing copy;
• exhibits in public any infringing copy by way of trade;
• makes or has in his possession any contrivance used or intended to be used for the
purpose of making infringing copies

44. Terima Kasih | Thank You