Shall Malaysia join Madrid Protocol?

On May 27, I attended a seminar on Madrid Protocol organized by MyIPO and WIPO. WIPO was kind to send Alan Datri of WIPO, Federico Guicciardidni of WIPO, Jonathan Clegg of FJ CLeveland (UK) and Louis Chan of IPOS (Singapore) to enlighten us on the benefits of joining Madrid Protocol.

Filing trademark in multiple countries involves multiple procedures, multiple languages, multiple currencies and multiple renewal operation.

Madrid protocol is a system of filing trademark registration in multiple countries. It provides a single procedure, single language, single currency and single renewal operation. It provides cost savings to trademark owner who intends to file trademark in multiple countries. However, Malaysia is not a member of Madrid Protocol.

The event was officiated by the Director General of MyIPO. By joining Madrid protocol, he mentioned that emphasis will be given to national interest to allow our home grown brand to have easy access into the world market.

Gulf Country Council Patent Office

A client of mine is interested in the Gulf Country Council (GCC). GCC is a trade bloc involving six Arab states of the Persian Gulf with many economic and social objectives. The six Arab states are Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. The GCC formed a GCC Patent Office in Riyadh, Saudi Arabia. The GCC patent office provides patent protection in the six states concerned without national phase application.

The GCC Patent Regulations provide that an invention is patentable if it is (i) new, (ii) involves an innovative development that is industrially applicable, and (iii) does not violate the rules of Islamic law, public morality or public order as applied in the GCC member states.

There is a provision that a patent owner is required to use the patented invention in the GCC within three years after the patent is granted. Otherwise, a compulsory license may be granted to a third party who is interested to exploit the patent in the GCC.

The official language of GCC is Arabic. Hence, the patent needs to be translated into Arabic.

New MyIPO Director General - The Edge

MyIPO's new director-general, Kamel Mohamad, says MyIPO has been working together with other ministries like the Ministry of International Trade and Industry and the Ministry of Science, Technology and Innovation to find ways in which it can contribute.

"MyIPO wants to strive for excellence as an organisation and we are here to promote and protect Malaysia's interest in the area of intellectual property. One of the areas for us to focus on is the partnership that we have with other government bodies. Under the NIPP; the various parties will meet when there is something to discuss. There is an inter-ministry planning group that gets together to share information on what each government body is doing. We are now talking with partners in the areas of ICT and bio-tech. Our original mandate is just to administer the IP process, but I think we need to playa part in facilitating it," he explains.

Kamel adds that a recent statement released by the World Intellectual Property Organisation (WIPO) indicates that there has been a shift in terms of patent growth to Asia. China, South Korea and Japan had made it to the list of top 10 countries with the highest number of patent filings, while Northeast Asian countries recorded notable growth for the fourth consecutive year. In 2007, patent filings from these countries accounted for 25.8% of all international applications. South Korea and China both overtook France and the Netherlands for the fourth and seventh spots on the top 10 list respectively.

"Last year, there was a fivefold growth in patents filed in India. As for Malaysia, since we signed the PCT, there has been about 70 % growth in the number of patents that go through international filing - from 60 to 103. To cater for the increase in patent filings, we hired 20 patent examiners in 2006 and 19 more recently. At present, we have 72 patent examiners but in terms of experience, it is quite a challenge. The total experience per individual averages out to only 5.25 years and it takes two years for them to be fully on their own. We turn to our international counterparts for help in terms of training, but we need to really fast-track our people in this area," says Kamel.

In a bid to follow in the footsteps of Stanford University, Silicon Valley's talent mill, MyIPO has signed memorandums of understanding with several local universities to provide advice to help them set up technology licensing offices within the campuses. The big difference here is that IP registration can be done within Stanford grounds, but these technology licensing offices will not provide this service. Asked if MyIPO is looking into setting up branches in leading research universities, Kamel says there are no plans to do so yet.

Patents for Computer Software

I was away to attend a Training on Patent Protection for Computer Software (May 5-12). The event was organized by MyIPO and JICA (Japan International Cooperation Agency). The speaker is Hideyo Sato, a patent attorney and lecturer of Nihon University. Halve of the attendees are MyIPO patent examiners.

Japan is one of the industrialized country which actively develop their own patent law. Today they have a one and only unique patent law which rest on part of their constitution. Japan have their own interpretation on the laws of nature. Matters that doesn't need human intervention are considered to be law of nature.

The training covers the development of software industry and patent laws with regards to software. They actively develop their own software. It is natural that Japan wants to optimize protection for their home grown software. Examples of software patents, including business method in software was introduced. In Japan, business method is worded as part of a software invention incorporated in a hardware to automate information processing.

Everyone enjoyed the training and it was a good networking session. The training is an eye opener for me to learn Japan's perspective on patent laws.

UPM bagged National IP Award 2008 on World IP Day

Universiti Putra Malaysia (UPM) bagged the National IP Award 2008 in the individual category and organization category. The proud individual winner of UPM is researcher Prof Madya Dr Raja Noor Zaliha in her work on Lipase 205y. Lipase 205y is an organic solvent tolerant lipase from Bacillus sphaericus 205y. It has specific cleansing properties which makes it attractive to be used in soaps, cosmetics or pharmaceutical products.

UPM won the award in the organization category due to their success with 14 granted patents, 134 pending patents and 16 commercialized product. UPM is the top patent applicant in Malaysia. Their portfolio of patent applications and commercialization success can be viewed at:

http://www.icc.upm.edu.my/

The award was conferred by MyIPO and Domestic Trade Ministry in conjunction with "Hari Harta Intelek Negara" or National IP Day in conjunction with World IP Day. An expo was held in KLCC from 24th to 27th April.

Patent Strategy for China

I was advised by patent attorneys in China to file for a patent and a utility model for national phase filing. Utility model is not examined in China. Hence, a certificate for utility model may be obtained within one year from the date of filling. The certificate is valuable for enforcing IP rights in China. Their town council have enforcement rights to raid factories. Hence, factories manufacturing license are at the mercy of town councils.

The utility model may be withdrawn to make way for a granted patent. It takes three years to get a patent granted in China.