Saturday, December 16, 2017

Court has no jurisdiction to revoke patents

The High Court has ruled, in a departure from 13 previous cases, that it has no jurisdiction to revoke patents, when it rejected a move by a defendant to have one revoked.

The court noted that the 13 past decisions did not raise objections to the right of a defendant to counterclaim and revoke a patent on the grounds that it was invalid.

"With due respect and deference to those cases, the fact that there is a practice does not provide a basis to establish jurisdiction as a matter of law. Nor can practice trump law," said Justice George Wei in judgment grounds issued on Thursday.

Sun Electric, which sells solar energy to consumers here, had sued a holding company for a licensed electricity retailer and developer of rooftop photovoltaic systems.

Sun claimed the company, Sunseap, had breached Sun's patent, which was for a power grid system and a method of determining power consumption at building connections in the system.

Sunseap denied the allegations and, among other things, made a counterclaim to have the patent revoked.

Sun Electric then sought to strike out Sunseap's bid to revoke the patent, but failed before a High Court assistant registrar.

Through a team of lawyers led by M. Ravindran, the company then appealed to the High Court in June.

Mr Ravindran argued that the right to apply to revoke patents was confined to the Registrar of Patents and Sunseap could not start revocation proceedings in the High Court, not even by a counterclaim.

But defence lawyer Lau Kok Keng cited past cases in which such proceedings to revoke a patent had been brought to the High Court by counterclaim, and noted that academic opinion also supported such moves.

Justice Wei said the cases referred "implicitly suggest" the High Court may hear such cases but "it does not appear that this question was ever directly raised, contested or ruled upon in any of the cases. It follows that these decisions cannot be treated as precedents to determine the question of law at hand."

In his 81-page judgment grounds, Justice Wei analysed the relevant provisions of the Patents Act and found the High Court did not possess jurisdiction to revoke a patent, or by way of a counterclaim.

The judge allowed Sun Electric's appeal to strike out the bid by Sunseap to revoke its patent.

Justice Wei acknowledged the decision would draw public interest and be of concern, adding that there was much to be said to reconsider anew, at an appropriate time, the court's jurisdiction and patent procedures by the relevant law reform body and Parliament. - Vijayan, Straits Times, Singapore

Monday, December 11, 2017

LES Malaysia New Office Bearers 2017/2018

On 29 Sep, 2017, the Annual General Meeting of the Licensing Executives Society Malaysia was held. The following executive officers were elected:

President: Michelle Loi
Vice President: Anita Kaur
Secretary: Dennis Tan
Assistant Secretary: Sri Sarguna
Treasurer: Jillian Chia
Committee members: Lim Pui Keng, Eddie Poh, Suaran Singh, Chong Tze Lin

LES Malaysia is the national section of LES International, an organization that advances the business of intellectual property globally.

Saturday, December 9, 2017

IPO Phillipines Appointed as PCT International Search Authority

The Intellectual Property Office of the Philippines (IPOPHL) was appointed as an International Search Authority at the 57th WIPO General Assembly on 5 Oct 2017.

IPOPHL is the 23rd in the world and 2nd in ASEAN to be appointed as search authority. The appointment is a form of recognition over the patent bureau's capability in examining patent applications.

Josephine Santiago, director general of IPOPHL said that the bureau of patents undertook a number of improvements in the last two years in order to meet the requirements for appointment. These requirements are:

(1) sufficient number of technical and man power competence to carry out search and examination in required technical fields. There are 110 full time patent examiners.

(2) use of comprehensive commercial and publicly accessible databases covering patent and non-patent science and engineering databases.

(3) a comprehensive and multi-tiered quality management system namely, in process quality check, ISO QMS 9001:2008 and internal Patent Quality Review System (PQRS),

(4) recommendation by established international authorities, particularly the Japan Patent Office (JPO) and IP Australia.

Santiago also cited the vibrant Philippine economy and the country’s achievement of having a highly successful network of Innovation and Technology Support Offices or ITSOs. This network of research institutions and universities is a potential source of patent filings. The Philippines has also been identified by WIPO as a “hub for intellectual property creation and commercialization”. The UN Conference on Trade and Development (UNCTAD) ranked Philippines among the top 15 preferred investment destinations of multinational enterprises.

Philippines is the fifth most active country for patents after Singapore, Malaysia, Indonesia and Thailand.

Each search authority can set their own search fee. IPOPHL have not announced their search fee. Search fee by Offices of Australia, Japan, and Singapore are USD1688, USD1372 and USD1645, respectively.

Monday, November 27, 2017

CopyrightX 2018 Spreading the Word



This year, I had the opportunity to enroll in CopyrightX, an online course on copyright conducted by the prestigious Harvard Law School. This is a comprehensive 12 weeks free course with access to lectures and tutorials conducted by Harvard faculty (http://copyx.org/lectures/). I have successfully completed the program and obtained a certificate
(https://www2.harvardx.harvard.edu/certificates/copyrightx17/41ad4c3edd/certificate.pdf)

Enrollment for 2018 program is currently open. I believe the program may be of interest to people who deal with copyright. Kindly refer the course website (copyx.org) or forwarded mail for more information.

 
---------- Forwarded message ----------


Dear CopyrightX Alumnus,

As you may know, we are currently getting ready for the 2018 version of CopyrightX. As a past participant in the course, we were hoping you could help us spread the word! Most importantly, we are currently accepting applications for the 2018 course!

We encourage you to tell your friends and colleagues about the course. Because you come from such diverse backgrounds, you likely have access to people who might not otherwise hear about the course. In addition to spreading the word through your personal and professional networks, we advocate promotion of the course through social media.

Please point your friends and colleagues to the course website (copyx.org) or the HarvardX portal
(http://online-learning.harvard.edu/course/copyrightx?keywords=copyrightx) for more information about the course. Applications for the course can be found here (https://brk.mn/applycx18). For social media, the shortened URL for the course application is (brk.mn/applycx18). Please note, the application closes December 13th.

For inquiries, please write to copyrightx@cyber.law.harvard.edu.

Much Thanks,

The CopyrightX Team

Monday, November 13, 2017

11 TPP countries agree to move ahead by suspending 20 provisions (IP included)

Malaysia, together with the 10 remaining Trans Pacific Partnership (TPP) trade deal countries, have agreed that 20 provisions of the TPP agreement -- more known as TPPA in Malaysia -- be suspended to revive the deal, according to Malaysia's Ministry of International Trade and Industry (MITI).

The 11 members -- namely Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam -- also agreed on the text of the agreement, which has been renamed as the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership or CPTPP in short.

"Following the withdrawal of the US from the TPPA deal, the remaining countries have decided the way forward to implement the agreement is by suspending a limited number of provisions, while maintaining the high standard and comprehensive nature of the agreement," MITI said in a statement today.

US President Donald Trump earlier this year turned his back on the TPPA brokered by his predecessor Barack Obama in favor of his “America First” stance.

Following that, the trade deal was in limbo, though many of the remaining members had voiced they were keen to push forward with it when they met at the Asia Pacific Economic Cooperation (Apec) summit this week in Da Nang, Vietnam. But on Friday, there were reports of Canada saying it was not ready to move forward with the trade deal as Prime Minister Justin Trudeau skipped a planned meeting to discuss it, and that talks to revive the agreement had collapsed.

Now, despite Canada's hesitation, MITI said ministers of the 11 countries have agreed on 20 provisions to be suspended, and that a number of issues remain to be finalised before the signing of the agreement, though it did not give a timeline. MITI minister Datuk Seri Mustapa Mohamed highlighted that among the provisions to be suspended that are of interest to Malaysia include biologics, patent term adjustment and copyrights.

To finalise the outstanding issues, he said Malaysia will continue to work closely with other countries in the work programme.

"The signing of the CPTPP will be decided by all parties once all the technical work and outstanding issues are finalised. Following the signing, the agreement is open for ratification. The agreement will enter into force once six signatories have ratified it," the statement read.

MITI stressed that despite the absence of the US, Malaysia still stands to gain benefits from market access to countries like Canada, Peru and Mexico.

“Overall, we believe that the benefits from CPTPP will outweigh its costs in the context of Malaysia. Our continued involvement in the CPTPP is a testament of Malaysia’s commitment to globalisation and multilateralism”, said Mustapa.

Another consideration, he said, is the impact to the local economy should Malaysia decide not to join the CPTPP, while the remaining 10 countries move ahead. "We will not only miss out on the opportunities to strengthen our trade and investment ties with these 10 countries, but also with those countries that have registered their interest to join the CPTPP in future," he said.

“The agreement reached here in Da Nang, Vietnam will be brought back for further engagement with the relevant stakeholders back home," he added. - The Edge

Monday, October 23, 2017

Malaysia, Japan in cooperation to strengthen intellectual property protection

Malaysia will work with Japan to strengthen its local intellectual property (IP) protection mechanism.

Domestic Trade, Cooperatives and Consumerism Minister Datuk Seri Hamzah Zainudin said the move included cooperation with Todai Technology Licensing Office Ltd (Todai TLO), a Tokyo University subsidiary, in terms of providing commercial value assessment.

“The initiative will benefit IP owners, and add value as well as enable local IPs to be more widely promoted. The ministry will see how it could find valuers to assess the IPs in our country.

“It will make it easier for them to borrow from a financial institution and prove that their IPs have vast commercial value,” he told Malaysian media after visiting the Japanese Consumers’ Cooperative Union (JCCU) here today.

Aside from TLO and JCCU, Hamzah, who is on a three-day working visit here, also dropped by at Japan Patent Office (JPO) to study how the country, renowned for its innovation, manages and commercialises its intellectual properties.

He noted that the analysis conducted by JPO found that companies which had registered their intellectual properties were able to make more profit compared with those who did not.

Hence, he said, local producers, particularly small and medium enterprises (SMEs) should be aware of the advantage of registering and securing patents for their products and services.

The minister disclosed that he had also directed the Intellectual Property Corporation of Malaysia (MyIPO) to hold further discussions with JPO and Todai. — Bernama

Monday, October 16, 2017

BlackBerry patent licensing director says he has left company

A key attorney executing BlackBerry Ltd’s (BB.TO) patent licensing strategy has left the company, the second recent departure from the team tasked with making money from the Canadian company’s intellectual property.

Victor Schubert, who was a licensing director for BlackBerry, told Reuters in a brief LinkedIn message that he was no longer with the company. He did not say when he left or why.

Monetizing the company’s intellectual property is a key part of Chief Executive John Chen’s plan for turning around the company whose revenues have declined for six straight years as sales of its once ubiquitous smartphones have tumbled.

Company representatives did not respond to requests for comment on Schubert. Two switchboard operators at the Canadian company said his name was not in a global employee directory.

News of his exit follows the recent departure of Mark Kokes, who lead BlackBerry’s overall patent strategy. Kokes last month joined a health technology company.

Schubert joined BlackBerry in March 2015, according to his LinkedIn profile, as the company was embarking on a major push to boost licensing revenue.

BlackBerry is trying to persuade other companies to pay licensing royalties to use its trove of some 40,000 global patents on technology including operating systems, networking infrastructure, acoustics, messaging, automotive subsystems, cybersecurity and wireless communications.

Schubert has created and executed patent-licensing programs for at least four companies, including BlackBerry, dating back to 1992, according to his LinkedIn profile. It lists portfolio mining, patent valuation and negotiating patent sales as areas of expertise.

He was due to represent BlackBerry at a Seattle-area patent conference next month to discuss how operating companies can make money off their intellectual property, according to an agenda posted on the conference website in August. He is no longer listed as a panelist. - Reuters