Building a Competitive Edge:Protecting Inventions by Utility Models and / or Patents : Case Studies

By P. KandiahKASS International Sdn.Bhd. KASS

To qualify for a patent, the invention must be:

i) novel / new throughout the worldii) not obvious to a person skilled in that field of technologyiii) industrially applicable

- Generally, all countries require similar criteria.

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Utility Innovation (UI) in Malaysia

- novel / new throughout the world

UIs suitable for simple modifications to existing products, process of methods of manufacture

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Not all countries grant UIs. UIs, Petty Patents, Utility Models

available in Germany, Japan

Fundamental Misconceptions on International Patent Rights Amongst Malaysian

i. A UK granted patent enforceable in all Commonwealth countries

ii. A US patent is enforceable worldwideiii. Patent granted in Malaysia is enforceable in other countriesiv. A “PCT Patent” is enforceable in all countries v. A foreign granted patent can be registered in Malaysia

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Traditional International Patent Filing (1) (before 1.1.1989)

Malaysia

Overseas Filing

Traditional International Patent Filing (cont.) (post 1.1.1989 – Paris Convention)

a)

Malaysia

0 (months) 12Overseas (only Paris Convention Countries)

Non Paris Convention Countries

b)Malaysia

Taiwan

Paris Convention FilingLocal patent application followed within 12 months by overseas applications claiming Paris Convention priority- multiple formality requirements- translation and national fees required at 12 monthsSome rationalization because of regional arrangements - ARIPO, EAPO, OAPI, EPO

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Paris Convention Filing (cont.)

No independent opinion whether application meets patentability criteria- Decision of need to file overseas has to be made at 8-10 months after national filing - Too early to decide in which countries to file applications

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What are the PARIS Convention countries?

(See list given)

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PCT System (in Malaysia from16.8.2006)

Full disclosure of application to world

International publication

0 12 16 18 22 28 File in File PCT International (Optional) (Optional) M’sia Appl. search report File demand International

and written for International Preliminary opinion Preliminary Report on

Examination Patentability Report on state of the art (prior art documents Request an The additional patentability and their relevance) + additional analysis designed to assist initial patentability opinion patentability in national phases

analysis on basis decision making of amended application

30 EnterNational/regional phase

List of PCT countries as at today

Is there a need to obtain patents in all countries?

- Global Patenting is costlyObtaining and Maintaining Patent on a Single Invention in the 50+ Major Countries costs more than US$500,000 over the 20 years life of the patent!

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Factors to consider in filing in foreign countries

1. Cost in each country2. Ability to obtain and enforce Patent

vs deterrent factor 3. Need for exclusivity4. Return on Investment5. Technological relevance of country

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Factors to consider in filing in foreign countries (cont)

Need to factor in- Patents last 20 years from date of filing- As technology capabilities of countries develop patent rights

may not be needed now but needed later- Enforcement procedures are continuously being improved in

most countries under WTO- More people are using patent document information to legally

obtain technology free of charge- Impact of data on internet

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Case Study A:

Certificate for Utility Innovation for “Nylon-fiber glass rollers for and in dipped latex industries”

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Exclusive right in UI challenged by third party. Action taken against third party. Court decision in favour of patentee; kept other potential offenders out of the industry .

Patentee used advantageous position to strengthen position by expanding production.

Now spends more on R & D – patents being applied for.

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1st patent

Patent on production machine / machine parts

2nd patent on related products

Patents on newproducts

No. ofCountries

Time / Sales

The Company also concentrated on:

- registration of industrial design where patents / UIs not available

- registration of trademarks for their products

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Case Study B Company initially involved in

protection of submerged structures against

barnaclebuild-up

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-> Gave areas to oil and gas industries

-> Developed new product for corrosion control of nut and bolt fittings in drilling platforms

-> Obtained patent rights

Obtained exclusivity under: Vendor Development Program (VPP) of Petronas Bhd.

- now grown into a reputable company with specialized knowledge in corrosion control of oil / gas pipelines

- listed in MESDAQ Market

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Common thread in Case Study A and B

obtain patent for their first product↓

Strengthen their market position(Pricing of patented product)

↓spent money on further R&D on new or related

products to spread their “exclusivity” to whole “business”

↓obtain more patents

↓ Consider globalization of their business

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Patent Rights assisted in growing into new areas:

by cross-licensing with other players in the industry

- companies continue to build a broad and strong patent portfolio.- companies conduct technology minning to find new product / process to improve on

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Enforce your patents against infringement to gain respect for your patent portfolio.

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P. Kandiah

Tel : 03 2284 7872Fax : 03 2284 1125E-mail : ipr@kass.com.my

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