INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (Perbadanan Harta Intelek Malaysia)
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1 INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (Perbadanan Harta Intelek Malaysia) WIPO Regional Seminar on the Legislative, Economic and Policy Aspects of Utility Models Protection System 3 4 September, Kuala Lumpur Utility Models Protection in Malaysia Utility Innovation Fatimah Rohada Dahalan Patent Division, MyIPO 1
2 Outline of Presentation Corporate Profile Utility Innovation in Malaysia 2
3 Corporate Profile 3
4 Corporate Profile MINISTRY OF DOMESTIC TRADE, CO-OPERATIVE AND CONSUMERISM, MALAYSIA INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO) 4
5 Background INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO) Corporatized 3 March 2003 Intellectual Property Corporation Act 2002 Responsible for the development and management of intellectual property system in Malaysia Semi-autonomous body - able to recruit and train staff on its own terms - manage its own finance 5
6 Our Vision, Mission and Motto Vision To be one of the leading IP organizations Mission Provides effective legal infrastructure and administration regime to enhance greater creativity, protect innovation and realize the value of intellectual property Motto Protecting Innovation Advancing Competitiveness 6
7 Organisational Structure Director General Corporation Secretary Deputy Director General (Industrial Property) Patent Division Industrial Design Division Trade Mark and Geographical Indication Division Strategic Planning Division Internal Audit Division Management Services Division Information Technology Division Legal and Advisory Division Region Operational Division Deputy Director General (Corporate) IP Training Centre Copyright & IC Layout Design Division Corporate Communication Division 7
8 Demographic Profile 413 staff (251 Females, 162 Males) 327 (79.18%) under 40 years old 82 patent examiners 53 trade mark examiners 8
9 International Treaties Or Conventions World Intellectual Property Organization (1 January 1989) Paris Convention (1 January 1989) Berne Convention (1 October 1990) Agreement on Trade Related Aspects of Intellectual Property Rights (WTO ) Patent Cooperation Treaty (16 May 2006) Nice Agreement (28 June 2007) Vienna Agreement (28 June 2007) 9
10 Protection of Invention in Malaysia 10
11 Divided into two main sections: The Formality Section The Patent Examination Section o Engineering Section o Applied Sciences Section 11
12 PROTECTION OF INVENTION Patent Utility Innovation (UI) Term : 20 years Term : 10 (5+5) years 12
13 Utility Innovation(UI) To provide protection for minor inventions Target groups: Local individual inventors Students Local SMEs 13
14 Utility Innovation (UI) Limited to only one (1) claim Fee RM140 (45USD) for request of grant and RM1,100 (354USD) for substantive examination Subjected to substantive examination 14
15 Utility Innovation (UI) Substantive Examination for UI: Non-patentable inventions (Section 13) Novelty (Section 14) Industrial application (Section 16) No examination on inventive step easier to get a grant 15
16 Differences between UI and Patent Items PATENT UI Form 1 RM290(USD93) - Form 14 - RM140(USD45) Form 5 RM1,100(USD352) RM1,100(USD352) Patentability Criteria -New -Inventive -Industrially applicable -New -Industrially applicable Term of Protection 20 years 10 + (5 +5) years 16
17 Utility Innovation(UI) Non-patentable inventions: Discoveries, scientific theories and mathematical methods Plant or animal varieties or essentially biological processes for the production of plants or animal Schemes, rules or methods for doing business, performing purely mental acts or playing games Methods of treatment of human or animal body by surgery or therapy 17
18 Utility Innovation (UI) Applications can be converted from patent to UI and from UI to patent Patent and UI cannot be granted for the same invention Protection for 10 years years 18
19 Statistics Year of Filing Foreign Local Total UI Applications Percentage from total applications (%) Total
20 Statistics Year of Filing Total UI applications Total patent applications
21 Patent vs. UI 21
22 Identified Reasons Limitation to only one claim claim too specific No priority treatment to UI Protection for 10 years years need to show the utilization of UI for extension 22
23 Proposed Amendment To change to non-substantive examination system To provide cheap and fast grant of UI More claims allowed Could request substantive examination after grant A lower level of inventiveness A more practical period of protection 23
24 Thank You
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