Comparison Between Patent, Copyright and Industrial Design

Intellectual Property (IP)/
Subject Matter

Patents Act
1983

Copyright Act
1987

Industrial Design Act
1996

Registration Requirements

  • The invention needs to fulfill these three (3) conditions[1] :-

    (a) new[2] ;

    (b) involves an inventive step[3] ; and

    (c) industrially applicable[4] .

  • The following inventions are NOT patentable[5] :-

    (a) discoveries, scientific theories & mathematical methods;

    (b) plant/animal varieties or essentially biological processes for the production of plants/animals other than man-made living micro-organisms;

    (c) schemes/rules or methods for doing business, performing purely mental acts or playing games;

    (d) methods for the treatment of human/ animal body by surgery or therapy and diagnostic methods practised on the human/animal body.

  • The protection needs NO registration as it is automatically protected upon creation of the work.
  • No certificate will be given since there is no registration requirement.
  • A work that is eligible for protection must fulfilled these three (3) conditions :-
    (a) sufficient effort has been expended;


    (b) the work has been written down/ recorded/ reduced to material form;


    (c) work is done by a Malaysian citizen/ permanent resident and is created/ published in Malaysia.

  • Works eligible for protection[6] :-

    (a) literary;

    (b) musical;

    (c) artistic;

    (d) films;

    (e) sound recordings;

    (f) broadcasts; or

    (g) derivative works.[7]

  • The protection ONLY covers expression & NOT ideas, procedures, methods of operation or mathematical concepts as such.
  • To assert ownership of copyright can be done by way of:-

    (a) executing a Statutory Declaration (SD); or

    (b) self-address the work in a sealed envelope.

  • An industrial design must be :-

    (a) new[8] at the date of application for registration is filed.

  • It is only considered to be new if it has NOT been disclosed to the public or made available in any way whatsoever in Malaysia before the date of filing the application.
  • Industrial design that are NOT registrable:-

    (a) if the aesthetic appearance of an articles is NOT significant or the design features differs only in immaterial details which is a method or principle of construction[9] ;

    (b) contrary to public order or morality[10] ;

    (c) the designs of the articles concern exclusively with how an article functions;

    (d) the designs of articles that are integral parts depend on the appearance of other article.

Procedures

  • Every application has to be filed with the Patent Registration Office (MYIPO).
  • The procedure for patent registration involves four (4) stages :-
  • [STAGE 1] APPLICATION STAGE
    File to Malaysian Intellectual Property Corporation of Malaysia (MyIPO) and secure a Filing Date together with an Application Number.
  • [STAGE 2] PRELIMINARY EXAMINATION
    Application is examined on formalities. Received Certificate of Filing and Clear Formalities Report.
  • [STAGE 3] SUBSTANTIVE EXAMINATION (SE)
    Need to request for this examination within 18 months (or 2 years for PCT National Phase Entry) from the Filing Date (or a deferment is filed - otherwise the application will be deemed to be abandoned)


    Can request for a MODIFIED SE , if patent is granted in USA / EPO / UK / Australia / Japan / Korea for the same invention.

    RESULT 1: ADVERSE REPORT
    Objection raised, if any. Decide whether to counter or to give up. If the MyIPO maintains on the objection, can appeal to the High Court of Malaya

    RESULT 2: CLEAR REPORT
    Certificate of Grant issued

  • [STAGE 4] RENEWAL STAGE
    Upon grant, the invention will be retrospectively protected for a period of 20 years calculated from the filing date. Annual renewal fees need to be paid after the grant.
  • NO procedures involved as there is no registration requirement.
  • Every application has to be filed with the Industrial Designs Registration Office (MYIPO).
  • The procedure for industrial design registration involves three (3) stages :-
  • [STAGE 1] APPLICATION STAGE

    Secure a filing date and an Application Number.

  • [STAGE 2] EXAMINATION STAGE

    Examined on Formalities and Registrabilities.

  • [STAGE 3] RENEWAL STAGE

    Upon grant, the protection of the design will be for 5 years calculated from the Filing Date and is extendable for another two consecutive terms of 5 years.

Validity

  • The duration of a patent shall be 20 years from the filing date of the application[11] .
  • Literary/ Musical/ Artistic Works:

    The life of the author & 50 years after his death[12] .

  • Films[13]/ Broadcasts / Sound Recordings[14]:

    50 years from the beginning of the calendar year next following the year when it was published.

  • Government Works :

    Continue to subsist until the expiry of a period of 50 years computed from the beginning of the calendar year next following year in which the work was first published[15] .

  • The initial term of registration for a Malaysian design is 5 years from the filing date of the application for registration [16] .

Renewal

  • A patent once registered is valid for a term of 20 years and will be subject to protection, subject to payment of annual renewal fees. Renewal fees need to be paid after the grant, annually.

  • Can be renewed further for two (2) consecutive terms of 5 years each, giving a maximum term of 15 years.

Ownership of the Intellectual Property

INVENTIONS MADE BY AN EMPLOYEE OR PURSUANT TO A COMMISSION

S. 20 (1) & (2):

  • The rights to a patent shall be considered to be the Employer's if there are NO terms in the contract of employment with certain proviso .
  • The right shall be considered to be the Employer, if the contract of employment does not require the Employee to engage in inventive activity with certain proviso .

S. 20 (3):

  • The rights under (1) & (2) shall NOT be restricted by contract.

    JOINT OWNERS

S. 22

  • The patent can only be applied for jointly by all the joint owners if the right to obtain is owned jointly.

FIRST OWNERSHIP OF COPYRIGHT

S. 26 (1):

  • The copyright mentioned under S. 10 will be given initially in the author.
  • whereby under S. 10 (1) (QUALIFICATION FOR PROTECTION) stated that the copyright will exist in every work eligible for copyright in the case of:-
    • the author;
  • work of joint authorship;or
  • at the time when the work is made that person is qualified person (as been defined inS.3 ).

S. 26 (2):

  • Exceptions, where a work:-

    (a) is done by the Employees; or

    (b) commissioned works;

    the copyright must be considered to transfer to the person who commissioned the work or author's employer.

S. 26 (3):

  • The Government/ Government organization or international body will be given the copyright first as mentioned under S. 11 and not in the author.

S. 26 (4):

  • Subject to the above subsection:-

    (a) the name on a work asserted to be the name of its author will be considered as such;

    (b) the publisher whose name is indicated in the work in the case of anonymous or pseudonymous work will entitled to exercise and protect the rights belonging to the author;

    (c) in the case of unpublished work where the identity of the author is unknown, but there is reason to presume that he is a citizen of Malaysia, then the copyright given by the Act will be asserted to the Minister charged with the responsibility for Culture.

S. 26 (5):

  • When the identity of the author becomes known then S. 26 (4) (b) and(c) must cease to apply.

OWNERSHIP OF REGISTERED INDUSTRIAL DESIGNS

S. 10 (1):

  • The author of an industrial design will be treated as the original owner (in this section).

S. 10 (2):

  • If the industrial design is created under a commission for money/money's worth, the person commissioning the design will be treated as the original owner of the design.

S. 10 (3):

  • In the case of an industrial design created by an employee in the course of his employment, the Employer will be treated as the original owner of the design.

S. 10 (4):

  • The original owner / the assignee of any interest can assign the whole/ any part of his interest to another person by way of writing.

S. 10 (5):

  • For the purpose of S.11 , the original owner/ any other person than the owner will be considered as the owner or as the original owner of the design in relation to that article.

S. 10 (6):

  • The person who makes the arrangement for the creation of the industrial design which created by computer will be considered as the author.

RIGHT TO APPLY & OBTAIN REGISTRATION

S. 11 (1):

  • The application for the registration of industrial design can be done by the original owner.

S. 11 (2):

  • If there are two (2) or more persons own interest in the design, all of the persons, acting jointly, permitted to make an application for the registration of the design.

RIGHTS OF OWNER ARE PERSONAL PROPERTY

S. 29 (1):

  • The registered owner of industrial design have the following rights:-
    • personal property;
    • capable of assignment;
  • and

  • transmission by operation of law.

S. 29 (2):

  • The laws applicable to ownership and devolution of personal property will be applicable with regards to the registered design.

S. 29 (3):

  • The assignment referred to in S. 29 (1) must be in writing.

JOINT OWNERSHIP

S. 31 (1):

  • If the industrial design is registered towards two (2) or more, each of them entitled to an equal undivided share in the registered industrial design.

S. 31 (2):

  • The two (2) or more persons which are joint owners of a registered design will be entitled:-

    (a) to do any act, for his own benefit & without the consent of or the need to account the others; and

    (b) to any such act which must NOT amount to infringement of the registered industrial design.

S. 31 (3):

  • The two (2) or more persons which are joint owners need to get consent of the other(s) either to:-
    • grant a license to
      • use;
      • assign; or
      • mortgage his interest in the registered industrial design.

S. 31 (4):

  • The subsections (1) - (3) will have the effect towards the right to apply for the registered industrial design & references to the registered design will include the references to a right to apply for the registration of an industrial design.

Assignment/transmission of Intellectual Property applications

ASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND PATENTS

S. 39 (1) & (2):

  • The patent application or patent can be assigned/ transmitted.
  • It can be applied to the Registrar in the prescribed manner to have the assignment or transmission recorded in Registrar.

    S. 39 (3):

  • The assignment/ transmission will only be recorded if:-

    (a) the prescribed fee has been paid; and

    (b) it is in writing signed/ on behalf of the contracting parties (for assignment cases)

    S. 39 (4):

  • The assignment/ transmission will have NO effect against 3[rd] party which is NOT recorded with the Registrar.

    JOINT OWNERSHIP OF PATENT APPLICATIONS OR PATENTS

    S. 40

  • When there is NO agreement, joint owners of a patent application/patent can:-
  • separately, assign/ transmit their rights in the patent application/ patent;
  • exploit the patented invention; and
  • take action against person exploiting the invention without their consent.
  • However, they CAN ONLY jointly:-
  • withdraw the patent application;
  • surrender the patent; or
  • conclude a license contract.

ASSIGNMENT, LICENSES AND TESTAMENTARY DISPOSITION

S. 27 (1):

  • The Copyright is transferable by:-
    • assignment;
    • testamentary disposition; or
    • operation of law.

S. 27 (2):

  • The assignment/ testamentary disposition may be limited depending on:-
    • some acts which owner has exclusive right;
    • part of the period copyright;
    • specified country;
    • other geographical areas.

S. 27 (3):

  • The assignment/license must be in writing.

S. 27 (4):

  • The assignment/license granted by one (1) owner shall have effect as if the assignment/license granted by his co-owners (subject to any agreement, fees received shall be divided between all the co-owners).

S. 27 (5):

  • A person who shares joint interest (whole or any part) considered to be co-owners.

S. 27 (6):

  • It can be granted or made towards a future work/ existing work even though the copyright does not yet subsist.
  • The future copyright can also be transferable by operation of law as movable property.

S. 27 (7):

  • A person under a testamentary disposition is entitled beneficially/ otherwise to a copyright work even if the work has not been published before the death of the testator (as long as the testator was the owner of the copyright).

REGISTRATION OF ASSIGNMENT, TRANSMISSION OR OTHER OPERATION OF LAW

S. 30 (1):

  • Any person becomes entitled to the registered industrial design must apply to the Registrar to have the assignment/ transmission or other operation of law recorded in the Register.

S. 30 (2):

  • The assignment/ transmission or other operation of law with regards to the registered industrial design will NOT affect against 3 [rd] parties.

[1] Section 11 of the Patents Act 1983
[2] Section 14 of the Patents Act 1983
[3] Section 15 of the Patents Act 1983
[4] Section 16 of the Patents Act 1983
[5] Section 13 (1) (a) - (d) of the Patents Act 1983
[6] Section 7 (1) (a) - (f) of the Copyright 1987
[7] Section 8 (1) of the Copyright Act 1987
[8] Section 12 (1) of the Industrial Design Act 1996
[9]http://www.myipo.gov.my/en/industrial -design/general-information.html
[10] Section 13 of the Industrial Design Act 1996
[11] Section 35 (1) of the Patents Act 1983
[12] Section 17 (1) of the Copyright Act 1987
[13] Section 22 of the Copyright Act 1987
[14] Section 19 of the Copyright Act 1987
[15] Section 23 of the Copyright Act 1987
[16] Section 25 (1) of the Industrial Designs Act 1996

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