Beruflich Dokumente
Kultur Dokumente
4/3/2016
INTELLECTUAL PROPERTY
Every social enterprise would have a business name, a logo, a website and a product or a
service which the founders consider to be its competitive edge the very reasons driving its
existence. In each of these, are elements of intellectual property (IP).
1. WHY IS IP IMPORTANT?
Intellectual property is often created at the social enterprises earliest stages and if
intellectual property rights are not addressed properly from the start, the social enterprise
may not be maximizing the value of its assets, or worse, find it being subject of a costly
litigation suit for infringing the rights of another.
2. WHAT IS IP ?
IP are creations of the human mind in tangible form which the law accords the status of
property in the same way the law accords status and value to real property like land and
buildings and physical assets like office equipment.
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Type of IP
How to secure
protection?
Literal,
artistic and
musical
work -Life
of author
plus 50
years
a) Must exist in a
tangible medium
Copyright
Trademark
Literary Work;
Musical Work;
Artistic Work;
Film;
Sound Recording;
Broadcasts;
Derivative Work;
Published Edition;
or
Live
Performance.
Words
Logos
Names
Images
Signature
Brand
Heading
b) Originality :
independently
created
c) Author must be a
qualified person
under the law citizen or
permanent resident
of Malaysia.
Automatic upon
the original work
is reduced to any
material form
If the author is a
body corporate it
must be established
in Malaysia and
constituted or
vested with legal
personality under
the laws of
Malaysia.
Name of individual
or company in a
special or
particular manner
Signature of the
applicant for
registration or some
predecessor in the
business
An invented word
A word having no
direct reference to
the character of the
goods, according to
its ordinary
meaning or a
geographical name
Duration
of
protection
?
Registration with
MyIPO
Other than
Literal,
Artistic and
musical
work - 50
years from
the date of
publication
10 years
from the
date of
filing
application
and
renewable
every 10
years.
Examples
Company logo
Slogan/ tagline
Contents of
website
Books
Films
Songs
Video Games
Trademarks
such as :Coca Cola
Starbucks
Nike
Intel logo
Because
youre worth it
Loreal Paris
Roaring Lion
for MGM
Entertainment
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of surname
Industrial
Design
Any other
distinctive mark
Not dependent
upon the
appearance of
another component
article
Registration with
MyIPO
Five (5)
years from
the date of
filing and
renewable
for four (4)
consecutiv
e terms of
5 years
each,
Household
utensils
Electronic
gadgets
Furniture
designs
Secret recipes
Trade
Secret
Confidentiality
Agreement
between parties.
Protection
is
maintained
so long as
it remains a
secret and
does not
become
public
knowledge.
Product
Formulae
Source Codes
Customers List
Business Plans
Marketing
strategy and
techniques
Employees
training manuals
Patent
Original invention
New process
covering a new
solution to a
specific
technological
problem.
a) It must be
novel/new. An
invention is
new/novel when it
has not been
disclosed to the
public anywhere in
the world in any
manner prior to
filing of the
application.
b) It must involve an
inventive step.
c) It must be
industrially
applicable.
Capable of being
made and used in
any kind of industry.
Therefore, it must
Registration with
MyIPO
Biological
inventions
20 years
from the
date of
application
Business
methods
Pharmaceutical
compositions
Computer
software which
affects
functional
operability
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enterprise.
PHASE 3: DESIGNING A WEBSITE
In designing a corporate website, there will be commentary related to the social enterprise,
its work profile as well as images or photographs being used. The contents of the website
itself will be protected by copyright. Any literal and artistic work that has been reduced in
material form can be protected under the law.
Copyright does not require any form of registration. However, it is important to ensure that in
the course of creating the website, any information or any images used from any external
sources must provide credit to the original owner(s). In some circumstances, one will need to
seek the permission from the owner to use his works, for example if the website has
accompanying music, permission must be sought from the copyright owner of the musical
works .This is essential to ensure there is no infringement of copyright.
PHASE 3 RECOMMENDED ACTION STEPS
Protecting copyright is important but it is equally important to ensure the social
enterprise is not infringing other trademarks and copyright and make it as its own.
(1) If using website designers, to secure releases that all materials are original work or
have been properly licensed for use.
(2) If website being developed by own employees, to ensure materials used are original
and if using external sources, to provide credit to the original owner.
(3) If using materials available in the public domain, for completeness, to check whether
there are applicable conditions attached to the material.
(4) Ensure website itself contains copyright notices and if possible, to build in copyresistant features especially if website itself constitutes a primary competitive edge to
the social enterprise.
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(1) .A third party may use materials on the website as their own for commercial
purposes, weakening competitive.
(2) If releases are not secured, there may be exposure to the original owners of work
making a claim of infringement which will lead to valuable management time and
resources being allocated towards handling of the disputes.
(3) Websites stand as the virtual window of the social enterprise and if any part of the
website is being challenged or has to be redesigned, this may affect consumer
confidence and credibility.
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Once the business is set up, strong office policies will help sustain the business for future
development. Effective policies ensure the business is run smoothly and help maintain the
goodwill of the business. One of the important features is to ensure all confidential
information to the business maintain as trade secret. This includes the list of customers,
secret recipes, pricing table and business plans. Maintaining confidentiality is the key to
trade secret protection.
PHASE 6 : RECOMMENDED ACTION STEPS
(1) Physical security - restrict access to only senior
documents
(2) Mark all secret trade information as CONFIDENTIAL,
a. all employees employment contract must include a strict confidentiality
clause. external contractors who have contact with trade secret information
should sign a Non-Disclosure Agreement (NDA) that includes the obligation
to keep company information confidential,
b. continue this confidentiality obligation after the employment or business
relationships ends;
(3) Use passwords on documents/computer access and placing confidentiality blocks
on documents
(4) Adopt internal need to know disclosure policies and restrict dissemination of top
secret information only amongst founders.
(5) Establish an IP management policy.
(6) Employment aagreements should also provide explicitly that the social enterprise
owns all intellectual property developed in course of employment or outside course
of employment, if using any company data or resources.
PHASE 6 :RISKS OF NOT PROTECTIING IP
(1) Breach of confidentiality
(2) Value of intellectual asset eroded.
(3) Publishing or disclosing invention before filing a patent application will also destroy
novelty and will affect any patent protection adversely.
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(4) Employment Agreements when outsourcing any work, to provide explicitly that the
social enterprise owns intellectual property, this may lead to ambiguity and
challenges.
(5) Similar adverse effects if non disclosure agreements are not signed with external
consultants in any outsourcing arrangements or even when discussing your
intellectual property with others.
(6) Trade secrets of your business are free to be shared among others which may
jeopardize the business as a whole.
PHASE 7: BUSINESS EXPANSION -PROTECTING INTELLECTUAL PROPERTY RIGHTS
OVERSEAS
Securing a local or domestic trade mark or patent application does not protect the social
enterprise mark or invention outside Malaysia. To obtain protection in a foreign country, a
separate application must be submitted. Protection should be sought in every country in
which the social enterprise envisages a business presence.
protection prior to the commencement of business to ensure the business can run smoothly.
PHASE 7: RECOMMENDED ACTION STEPS
(1) Determine which country the social enterprise would like to seek protection for all of
the IP of the business.
(2) Engage a professional in the relevant jurisdiction to determine if there are any similar
IP that has been registered, also to assess the likelihood of the IP to get protection in
the country of choice.
(3) Ensure all documentation and proof of ownership of the IP is documented, this would
to help with the registration process.
PHASE 7: RISKS OF NOT PROTECTIING IP
(1) IP registration in Malaysia does not afford protection in any other country. A third
party in any relevant jurisdiction may exploit any trade names/ logos/ materials/
marketing strategy available on the internet and this may lead to them securing
registration in a first to file territory.
(2) There will be no available remedy against the third party if there is any infringement
of IP in the country where the social enterprise has not sought IP protection. In an
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increasingly virtual world, any infringement issues in another market may equally
affect local consumer confidence and credibility.
SUMMARY : Checklist for IP management steps and procedures Minimum
compliances steps and procedures
Before using any IP components, ensure the social enterprise owns it, or has the
enterprise.
Ensure partners working on joint-projects have the necessary rights and permissions
by their former employer or any other persons. Keep a record of such restrictions.
Ensure employees under confidentiality restrictions; do not work on projects where
forums.
Ensure that the chain of title for licensed material has been properly linked from all IP
owners.
Ensure confidentiality agreements are in place before discussing any ideas with
partners with whom the organization may be collaborating.
COMMERCIAL CONTRACTS
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Like all other business entities, a social enterprise would, for the purposes of its operation,
be required to enter into various commercial contracts. These may range from contracts with
its suppliers, vendors, service providers and customers to contracts with its landlords,
creditors, banks, agents, distributors, franchisors and consultants, depending on the nature
of the business of the social enterprise. Common examples of commercial contracts include
contracts for the provision of goods and services, banking or funding facilities, procurement,
franchising, marketing, outsourcing, consultancy, operations and maintenance and tenancy.
Commercial contracts may exist in various forms or under various names letters of
undertaking, letters of offer, letters of appointment, memorandums of understanding, deeds,
agreements, contracts, heads of terms, term sheets, standard form purchase orders or
invoices, terms and conditions and any other appropriate name as designated by the parties.
However, notwithstanding the name or description accorded to a commercial contract, the
substance or content of the contract is the determining factor to:
(i)
(ii)
(iii)
The primary purpose of a commercial contract is to identify and set out the actual
commercial consensus, arrangement, bargain, understanding or deal agreed between the
contracting parties. Commercial contracts are important to ensure the smooth and profitable
operation of a business entity. Apart from that commercial contracts also:
(i)
Function as the ASSET of a business, which provide value to the overall strength and
(ii)
(iii)
(iv)
against
change of
economic and
political
PROMISE);
WHAT is the price, value or remuneration, monetary or otherwise, which is paid or
(iii)
received as payment in return for the promise fulfilled (THE CONSIDERATION); and
WHAT are the consequences for the non-fulfilment of the promise or non-payment of
the consideration, namely for breach of the contract (THE RIGHTS AND REMEDIES),
(v)
(a) for individuals - not a minor, no mental incapacity or not a bankrupt; and
(b) for business entities - not insolvent or a valid legal entity.
Intention to create legal relations the intention to be legally bound by the contract.
risk of disputes.
EASE A written form provides for ease of reference to the contracting parties to be
(iii)
(iv)
(v)
contracts.
INVESTMENT - A written form enables the business entity to evidence its commercial
contracts as part of its assets or strength in the event of any future business dealings
including any investment in the business, sale of the business to a third party or to
(vi)
(vii)
(i)
CLEAR - The contracting parties must understand the details of the business
arrangement that they are entering into their obligations, rights and most importantly
(ii)
their liabilities. Any ambiguity could give rise to potential dispute and costly litigation.
COMPREHENSIVE The contract must seek to provide for all terms and
contingencies. Although it may appear to be arduous to provide for everything
exhaustively, however key terms must be identified and dealt with comprehensively in
(iii)
2) READ carefully all terms of the commercial contract and ascertain if such terms are
reflective of your end of the bargain. Do not assume that all commercial contracts,
standard forms especially, would have sufficient provisions to safeguard your interests.
All clauses, including boiler-plate clauses, must be read and considered carefully.
3) SEEK help from legally qualified advisers if you are unable to draft, understand or
negotiate commercial contracts on your own, especially complex commercial contracts.
Although it may seem cost-effective for start-ups to attempt commercial agreements on
their own accord for the initial stages, however, if legal house-keeping, of which
NO.
1.
PROVISIONS
Parties
DESCRIPTION
Provides
the
description
SAMPLE C
of
the
BETWEEN
AND
2.
Recitals
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SAMPLE C
3.
Definition
Interpretation
Main Operative
Provisions (the
main commercial
Obligations
Provides the main responsibilities /
liabilities of the parties under the
terms)
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SAMPLE C
Consideration
in this Agreement.
terms
or
otherwise
lawful consideration).
Conditions Precedent
Provides the pre-conditions which need
Term / Duration
Provides the length or period for which
the contract shall be valid and shall be
performed.
Warranties
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SAMPLE C
other party.
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SAMPLE C
incurred
by
by
the
other
party
Agreement.
the
Agreement
breach,
Termination
ways:
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SAMPLE C
obligations)
2) Mutual Termination (by consensus
of both parties)
3) Unilateral Termination (by notice of 1
party)
4) Events of Default (due to breach by
one party).
Consequences of Termination
Confidentiality
Provides protection for the confidential
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SAMPLE C
proprietary
utilized
in
the
commercial
Dispute Resolution
shall
be
interpreted
or
5.
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SAMPLE C
Boilerplate
Stamp Duty
Clauses
Amendments
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SAMPLE C