INTRODUCTION TO

INTELLECTUAL PROPERTY
Facilitator:
Assoc. Prof. Dr. Mohd Amir Abas

Intellectual property

z Copyright
z Industrial Property
a. Trademarks
b. Patent
c. Industrial designs
d. Confidential information
e. Geographical Indications
z Layout Designs of Integrated Circuit

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IP as intangible property

zTangible property
zLand, houses, estates, car
zIntangible property
-intellectual property
zIntangible wealth, easily appropriated and
reproduced, once created the marginal
cost of reproduction is negligible

The role of IP as intangible property

z1. economic rights of creators

z2. commercial exploitation of owner of IP
z3. capital expenditure
z4. transfer of technology
z5. cultural development

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Why IP protection is given

zCapital expenditure for new products

zR and D
zMarketing and advertisement
zNo free loaders
zMaintaining loyal followers
zProfit

IP as a property

zCan be sold
zCan be bought
zCan be lease or rent
zCan be pass under a will
zCan be assigned

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International Convention for IP

zParis Convention for protection of

Industrial Property 1967 (1989)
zBerne Convention for the Protection of
Literary and Artistic Works 1971 (1990)
zTrade-related aspects of Intellectual
Property Agreement 1994 (1995)
zWCT (digital agenda)
zPCT 2004

Paris Convention

zProtection for industrial property

zTrade mark
zPatent
zUnfair competition
zGoverned by domestic legislation

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Berne Convention

zProtection of literary and artistic work

zGoverned by national legislation

WIPO Copyright Treaty

zDigital agenda
zTechnological measures such as
circumvention of technological measures.

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TRIPS 1994 (1995)

zAdditional to Paris and Berne.

zMinimum requirement.
zMost favoured nation treatment.
zStrong enforcement procedure.

Patent Cooperation Treaty

zMaking it easier to make paten application

zDesignated country
zInternational phase to national phase.

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The Laws For Intellectual Property
Protection
zCopyright Act 1987
zTrademarks Act 1976
zPatent Act 1983
zIndustrial Design Act 1996
zGeographical Indications Act 2000
zLaw of Tort
z-passing-off
zConfidential information

Protection for Copyright

zProtection given by law for a term of years

to the composer, author etc…to make
copies of their work.
zWork include literary, artistic, musical,
films, sound recordings, broadcasts.
zCommercial and moral rights
zNo registration provision.

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Protection for trade marks

zCommercial exploitation of a product

zTo identify the product, giving it a name.
z“mark" includes a device, brand, heading,
label, ticket, name, signature, word, letter,
numeral or any combination.
zDoes not include sound or smell

Trade marks (cont.)

zCan either be registered or not registered

zAdvantages of registered trade marks
zApplication can be made for goods and
services
zPerform certain function such as indication
of quality, identifying a trade connection

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Protection for patent

zBasic idea of granting a patent

z“the applicant applied to the government
for the right of patent and in return for the
monopoly given he must disclose
everything about the invention in the
patent document” (the description)
zDuration 20 years

Patent (cont.)

zPatent for invention

zPatent can be applied for a product or a
process.
zPatentable invention must be new,
involves an inventive step and industrially
applicable
zPriority date-first to file or first to invent.

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Protection for industrial designs

zProtection for industrial designs that are

new or original.
zDesign are feature of shape, configuration,
pattern or ornament.
zThe design must be applied to an article
zThe design must be applied by an
industrial process.
zAppeal to the eye.

Protection for geographical indications

zMeaning “an indication which identifies

any goods as originating in a country or
territory, or a region or locality where a
given quality, reputation or other
characteristics of the goods is essentially
attributable to the geographical origin”

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Protection for geographical indication

zProduct must come from a particular

geographical territory
zUses a name link to the particular
geographical nature of the territory
zSuch as labu sayung from the sayung
Perak
zBatik Terengganu, batik Kelantan etc.
zTo stop others from using

Examples of GI

zSwiss made
zSwiss chocolates
zSarawak pepper.

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Protection under the law of Tort

zBased on common law

zThere is no legislation pass by parliament
zEnforced by court’s decision.
zStrict application of precedent.

Passing-off

zFor trade mark (registered and

unregistered)
zStarted from the tort of deceits
zThe deceiver, the audience and the victim.
zRequirement of “goodwill”

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Confidential information

zProtection under the law of tort

zProtection for confidential information
under contract, employer-employee
relationship, husband and wife, etc.
zNeed to show:-
z- information are confidential
z-recipient who obtained the information
use it
z-damages suffered by the owner.

Qualification for protection of

Intellectual property in Malaysia
zProtection are territorial.
zProcedural requirement must be met
zIntellectual Property Corporation Malaysia
act as the governing body.
zForms submitted, search made, prescribe
time period observed.
zAbiding to International Convention.

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Duration of protection

zLife + 50
z50
z20
z15
z10
zPayment of statutory fee.

Ownership

zWho is the owner?

zProper plaintiff rule.
z-employer and employee relationship.
z-independent contractor.
zGovernment employee.
zJoint-ownership.
zCommissioned works

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Exclusive rights

zTo control the whole or a substantial part

of work.:-
zThe reproduction in any material form.
zThe communication to the public.
zThe public performance, showing or
playing.
zDistribution by sale or other transfers
zCommercial rental to public.

The exception to the exclusive right

zFair dealing exception

zStatutory exception under section 13(2)
zTemporal (duration)
zGeographic
zNon-material works
zCompulsory licenses

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Enforcing IP rights

zCivil action
zCriminal prosecution
zCosts in litigation
zAssistance from Enforcement Division
zBeing vigilant/self help

Civil action

zStarting a civil action

zAdvantages
zLiability for cost
zMonetary compensation in term of
damages

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Criminal prosecution

zMaking a complaint
zPolice or enforcement division
zCost borne by the government
zNo monetary compensation
zRemedy in term of fines or imprisonment
for the offender.

IP infringement

zPrimary infringement
z-who does or causes
z-making the product
zSecondary infringement
z-commercial activities
z-selling, distribution for sale etc

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Secondary infringement

zSells, lets for hire or by way of trade

exposes or offer for sale or hire any
infringing copies.
zDistribute infringing copies
zImporting into Malaysia.

Example of IP law in motion

zCarrotina
zApplication for patent for oil content,
zCarrotina is registered as trade marks,
zApplication for industrial designs for the
bottle
z“User’s Instruction”-copyright

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Intellectual property awareness in
Malaysia

zOnly 20 % of IP rights such as in patent,

trade marks are owned by Malaysian.
z80 % are owned by foreigners.

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Intellectual Property Website
zwww.wipo.int
zhttp://academy.wipo.int/
zwww.myIPO.gov.my
zwww.google.com/patents

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