What is Intellectual Property ?

Musbri Mohamed
DIL; ADIL ( ITM )
MBL ( UKM )

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Business are not only concerned
with real property such as land
and chattels. Incorporeal property
such as intellectual property may
be of great concern to certain
businesses and many individuals
and corporations.

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This area of law is sometimes also known as the law of
industrial property. Patents, trade marks, confidential
information, plant variety, geographical indication and
industrial designs were once considered distinct from
copyright because they all have a clear and direct
connection with trade and commerce.

In contrast, copyright relates to such things as literary,

musical and artistic works, which may not necessarily
relate to trade and commerce. This whole area of
property rights is often simply referred to as intellectual
property.

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In short, intellectual or industrial
property comprises:-

1. Copyright
2. Design
3. Patent
4. Trademarks
5. Confidential Information
6. Plant Variety
7. Geographical Indication

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Intellectual property holds the key to the future. Of
foremost importance is the preservation and
advancement of the standards for the protection of
intellectual property.

Intellectual property awareness in Malaysia;

only 20 % of IP rights such as in patent, trade
marks are owned by Malaysian. Balance of
80 % are owned by foreigners.

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As Peter Drucker, author of Innovation and
Entrepreneurship, says, with intellectual
property protection,
“(i)nnovation is the specific instrument of
entrepreneurship…the act that endows
resources with a new capacity to create
wealth” for all.

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Strong patent laws provide incentives for new
inventions that create wealth in the market place. For
example, the United States Supreme Court clarified that
living things are patentable under U.S. law in 1980.

Since that time, the biotechnology industry in the

United States has experienced tremendous growth and
has brought countless, life saving inventions onto the
market.

Today, the United States leads the biotechnology

industry with more than 1,500 biotech companies
employing more than 900,000 people with salaries that
average more than $60,000 per year.

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INTELLECTUAL PROPERTY PROTECTION

Intellectual property protection in Malaysia comprises that of

patents, trademarks, industrial designs, copyrights, geographical
indication, confidential information and plant variety.

Malaysia is a member of the World Intellectual Property

Organization (WIPO) and a signatory to the Paris Convention and
Berne Convention, which govern these intellectual property rights.

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). Therefore, Malaysia's intellectual property laws are in
conformance with international standards and provide adequate
protection to both local and foreign investors.

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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.

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Section 7(1) of the Copyright Act 1987 provides
for works eligible for copyright are :

(a) literary works;

(b) musical works;
(c) artistic works;
(d) films;
(e) sound recordings; and
(f) broadcasts.

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PATENTS

The Patents Act 1983 and the Patents Regulations 1996 govern patent
protection in Malaysia. An applicant may file a patent application
directly if he is domicile or resident in Malaysia. A foreign application
can only be filed through a registered patent agent in Malaysia acting on
behalf of the applicant.

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. Under the Act, the
utility innovation certificate provides for an initial duration of ten years
protection from the date of filing of the 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.

Issues of patent valuation and exploitation are gaining in importance in the public
and private sectors and will benefit from continued exchanges among stakeholders
from business, government and academia.

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Efforts are needed to make the contribution of
patents to economic value more visible. As patents
are more frequently used as vehicles for
transferring information to markets, investors and
customers seek reliable and valid information
regarding patent value upon which to base
decisions. Companies also need reliable
information in order to better manage their patent
portfolios.

To date, accounting and tax practices have not kept

pace, and few companies report on the value of
their patents.

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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 action
can be initiated against abusers. 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. In accordance with TRIPS,
Malaysia prohibits the registration of well-known trade marks by
unauthorised persons and provides for border measures to
prohibit counterfeit trade marks from being imported into
Malaysia.

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What does a trademark do?

A trademark provides protection to the owner of the mark by ensuring the

exclusive right to use it to identify goods or services, or to authorize
another to use it in return for payment. The period of protection varies, but
a trademark can be renewed indefinitely beyond the time limit on payment
of additional fees. Trademark protection is enforced by the courts, which
in most systems have the authority to block trademark infringement.
In a larger sense, trademarks promote initiative and enterprise worldwide
by rewarding the owners of trademarks with recognition and financial
profit. Trademark protection also hinders the efforts of unfair competitors,
such as counterfeiters, to use similar distinctive signs to market inferior or
different products or services. The system enables people with skill and
enterprise to produce and market goods and services in the fairest possible
conditions, thereby facilitating international trade.

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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 ust not be dependent upon
the appearance of another article of which it forms an integral part.

Local applicants can file registrations individually or through a registered

industrial designs agent. However, foreign applicants will need to seek
the services of a registered industrial designs agent. 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.

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Why protect industrial designs?

Industrial designs are what make an article attractive and

appealing; hence, they add to the commercial value of a
product and increase its marketability.
When an industrial design is protected, the owner - the
person or entity that has registered the design - is assured an
exclusive right against unauthorized copying or imitation
of the design by third parties. This helps to ensure a fair
return on investment. An effective system of protection also
benefits consumers and the public at large, by promoting
fair competition and honest trade practices, encouraging
creativity, and promoting more aesthetically attractive
products.

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Layout – Designs of Integrated Circuits Act
2000 which gives protection similar to
copyright and patent right in respect to original
circuit layouts for integrated circuit. These right
are electronic layouts (EL) rights.
The person who first makes an eligible layout is
the owner unless he or she did so as an
employee, in which case the owner is the
employer.

The owner of EL rights has the exclusive right

to copy, manufacture or to exploit the layout
commercially.

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GEOGRAPHICAL INDICATION

The Geographical Indications Act 2000 provides

protection upon registration to goods following the
name of the place where the goods are produced. This
protection is applicable to goods such as wine,
agricultural products and handicraft. Geographical
indications which are contrary to public order or
morality shall not be protected under the Act. Actions,
penalties and remedies concerning infringement of
geographical indications are similar to those applicable
for trade marks.

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What is a geographical indication?

A geographical indication is a sign used on goods that have a

specific geographical origin and possess qualities, reputation or
characteristics that are essentially attributable to that place of
origin. Most commonly, a geographical indication includes the
name of the place of origin of the goods. Agricultural products
typically have qualities that derive from their place of
production and are influenced by specific local factors, such as
climate and soil. Whether a sign is recognized as a geographical
indication is a matter of national law. Geographical indications
may be used for a wide variety of products, whether natural,
agricultural or manufactured.

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Plant Variety Protection Act 2004

The Malaysian government has realized the importance of

PVP for the development of the country. Malaysia, a
member of World Trade Organization (WTO) and a
signatory to the TRIPS Agreement, which under Article
27.3 (b), stipulates that member countries shall provide for
the protection of plant varieties by a patent or by an
effective sui generis system or by any combination thereof.
As such, Malaysia is able to fulfill its obligation of Article
27.3 (b) for the TRIPS Agreement with the introduction of
the PVP legislation.

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Confidential Information: Data Protection Principles

Fairly and lawfully processed.

Processed for limited purposes.
Adequate, relevant and not excessive.
Accurate.
Not kept longer than necessary.
Processed in accordance with the data subjects’ rights.
Secure.
Not transferred to countries outside the European.
Economics Area without adequate protection.

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The knowledge economy requires more and more
integration of IP strategies into business plans, for IP
rights to be used for business development or be
themselves commercialised, and for revenues from IP
licensing agreements to be reinvested into R&D
activities subsequently.

The issues related to valuation and exploitation of IP should

be first tackled by market forces, and governments should
only ensure a proper legal administrative and judicial
framework.

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Governments have two main roles to play in promoting
valuation and exploitation of IP.

First of all, to define the legal framework for patenting via

legislation, where the role of patent examiners is crucial for its
application in ensuring that patent rights are clearly defined
and granted for genuine inventions offering clear value added.

Second, to design a patent policy that encourages SMEs to

increase their use of IP protection and prompts all firms to
make patents a strategic element in their corporate policy.

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Turning an idea into a successful
innovation requires extensive strategic
planning which should be covered by
intensive acquisition of information. By
making all the information contained in
patent applications and grants available
to the public, the patent system delivers
early hints on activities of companies,
competitors, possible partners and
potential customers.

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The Malaysian government realises and appreciates
that invaluable knowledge and ideas should be
harnessed for wealth creation and societal well-being,
and that the traditional resource based economy is fast
being replaced by knowledge based economy. The
aim of the government is to encourage an environment
where research and innovation will flourish - a Garden
of Eden for researchers and inventors alike.

Successful creation of a commercially viable end product will bring

huge benefits not only for all parties involved but to consumers as
well. However, such parties should be careful that their rights are
fully protected and that they would not end up with nothing after
years of research work. Therefore, inventors and researchers are
strongly recommended to seek professional advice on their legal
and intellectual property rights whilst pursuing their goal to have
creations accredited to their names.

Thank You.

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