Viagra(R) Patent Invalidated in Canada

The Supreme Court of Canada has invalidated the patent for Viagra. The patent is invalidated because the claims do not point to the exact compound that induces penile erection in impotent males. The exact compound, sildenafil, is mentioned alongside with many others that did not achieve the desirable effect. By failing to describe the compound, the patent did not sufficiently describe the embodiment to achieve the desired effect.

Kodak Sells Patent to get Financing

Kodak is half way out of bankruptcy status by selling its patents to Intellectual Ventures for US$525 million. The sale enables Kodak to repay substantial amount of loan and secure new financing of US$793 million obtainable from Centerbridge Partners, L.P., GSO Capital Partners LP, UBS and JPMorgan Chase & Co, if Kodak can sell their patents for more than US$500 million. The US$525 milestone satisfies the preset financing terms. Initially, banks tried to auction the 1,100 patents. However, initial bids received were between US$150 to US$250 million, which were much below valuation of US$2.6 billion. The low bid forced Kodak to suspend the auction of the patent portfolio. By taking time to look for suitable buyers, Kodak manage to secure a better deal.

Proton acquires Petronas engine technology (117 patents for RM63 million)

A report by Bernama states that Proton has acquired all of Petronas’ engine technologies as well as the associated technology patents at a cost of RM63 million. The deal encompasses seven engine technologies as well as 117 technology patents.

The reports adds that the acquisition gives Proton immediate ownership of a family of normally-aspirated engines and turbocharged 2.0 litre engines, as well as a 2.2 litre turbocharged version to complement its existing Campro engine line-up, according to Proton chairman Datuk Seri Khamil Jamil.

“Proton and Petronas initiated the engine technology exploration in 1996. It is now time to take over from Petronas, since the company decided in 2010 to exit completely from all engine development activities,” he told reporters at the agreement signing.

The only Petronas-developed engine revealed to date is the E01e inline-four, 16-valve DOHC engine with variable valve timing, which is a normally-aspirated unit, so the mention of turbocharging could mean previously unrevealed tech.

Designed to be configurable in three displacements (1.8, 2.0 and 2.2 litres), the E01 first appeared in 1998 in a Proton Waja and a Satria GTI.

The original design target for the unit was 200 PS and 200 Nm of output as well as a 120 kg weight – when delivered, these benchmark numbers were surpassed, the rated output being 204.3 PS at 7,300 rpm and 203 Nm at 5,300 rpm, and the engine tipped the scales at 108.9 kg.

Commercially, the engine never made its way into series production Protons, despite an intention to do so. In 2005, it was reported that Nanjing Automobile would be using the Petronas E01 technology in its vehicle line-up. It was later mentioned that the unit was to be built in China. - Paultan

Protecting Intangibles

WHEN formulating an idea to develop a product, you spend a great deal of time to conceptalise and finally create it. It would be a sad story if you didn’t take measures to protect it. Anything that’s the result of your mind’s creation is intellectual property (IP) and protecting it is a sure way to avoid one major business blunder that includes copyright issues which can lead to losses.

It’s more discernible for physical products, but intangible assets are also described as “property” because it can be owned, sold and transferred just like property. Thus, the IP owner has every right to prevent any unauthorised use or sale of his property. According to the World Intellectual Property Organization (WIPO), IP refers to innovation, inventions, literary and artistic works, images, designs and even phrases and names. These assets must have their own IP rights that include either copyrights, trademarks, patents and industrial design rights.

“Many people aren’t aware that they own intellectual property as they assume only big companies are the ones who safeguard their assets. But anything that is unique to the individual’s creation is already IP,” explained Malaysian Intellectual Property Association (MIPA) president Peter Desmond Wee Tian Peng.

There are serious ramifications if an individual fails to protect his IP. Some of these are theft and copying from others; loss of reputation (where someone may use your work and name for their own benefit but in inappropriate ways); a loss of income and a general devaluation of your assets because it has lost its uniqueness and innovative value due to replications and brand dilution.
With this in mind, MIPA aims to build a strong IP partnership and networking among all IP owners, users, practitioners and stakeholders as well as people in the IP business community.
“We see MIPA as a platform to work together with the IP industry and the government namely the Ministry of Domestic Trade, Cooperatives and Consumerism and the Intellectual Property Corporation of Malaysia (MyIPO) to raise awareness in all IP related innovations and inventions: beginning from creation, management to commercialisation on a proactive basis,” said Wee at the association’s cocktail gathering and networking session between IP owners, users practitioners and stakeholders recently.

MIPA will also play a front-line role in announcing new laws or policies of the government to its members and the IP business community. “MIPA will focus on conducting IP valuation courses and training programmes. As one of the IP stakeholders for MyIPO, we’ll work hand in hand with the corporation in this aspect of IP valuation training exercises and see how to establish a board of valuers where to certify and appoint qualifying IP valuers. The association has already finalised its 2013 calendar of events that include annual conferences, workshop seminars and networking sessions.

It recently held its first workshop on “Managing your IP Assets” with IP practitioners. We’ve also appointed Fabulous Association Management Company, an as our partner for all our subsequent programmes. Fabulous AMC shares the same vision as us to increase interaction with the members and business community,” said Wee. - The Star

Global IP Filings Continue to Grow: Plant Variety Protection

Between 1995 and 2011, the number of plant variety applications7 worldwide increased from 10,000 to over 14,000. In 2011, they grew by 7.8% - the fastest growth since 2007. Growth in applications in Israel and the Community Plant Variety Office (CPVO) of the European Union (EU) accounted for 60% of the total growth in 2011.

The CPVO received the largest number of applications (3,184), followed by the offices of China (1,255), the US (1,139), Japan (1,126) and Ukraine (1,095). - WIPO

Global IP Filings Continue to Grow: Industrial Designs

Industrial design applications worldwide grew strongly over the last two years. In 2011, design filings increased by 16%, following 13.9% growth in 2010. This considerable growth was mostly due to strong growth in China. SIPO accounted for 90% of total growth from 2009 to 2011. The 775,700 industrial design applications filed worldwide in 2011 consisted of 691,200 resident and 84,500 non-resident applications.

Unlike patents, the list of top 20 offices includes 8 offices located in middle-income countries. China – a middle-income country – received the largest number of design applications (521,468) in 2011. Turkey, another middle-income country, received 41,218 filings, which is larger than the number of filings at the JPO or the USPTO. Between 2010 and 2011, the IP offices of China (23.8%), India (16.7%), Mexico (17.2%), Turkey (17.6%) and Ukraine (17.5%) each saw rapid growth in filings. -WIPO

Global IP Filings Continue to Grow: Trademarks

A record 4.2 million trademark applications were filed worldwide in 2011. Around 6.2 million classes were specified in these applications. Of the 6.2 million application class counts, residents accounted for 4.5 million and non-residents for 1.7 million.5

Applications grew by 13.3% in 2011, while application class counts saw a 9.6% increase. Rapid growth in filings in China has been the main contributor to growth in recent years. In 2011, China accounted for 61.8% of growth worldwide.

The majority of the top 20 offices saw growth in filings in 2011 (based on class count data), with China (31.2%), Brazil (21.6%), the United Kingdom (16.4%) and China Hong Kong, SAR (16.1%) recording the fastest growth. The IP office of India has also seen considerable increases over the past few years. In fact, India surpassed Japan in 2010 and the Republic of Korea in 2011.
German applicants filed more than 2.1 million equivalent applications worldwide in 2011.6

Residents of China (1.4 million), the US (1.3 million) and France (1.0 million) were the only three other origins to have filed more than a million applications each. The bulk of Chinese filings were filed domestically. In contrast, the majority of the applications originating in Germany, France and the US were filed abroad. - WIPO

Global IP Filings Continue to Grow, China Tops Global Patent Filings

A new WIPO report shows that while the global economy continued to underperform, intellectual property (IP) filings worldwide kept growing strongly in 2011. It also finds that China’s patent office became the largest in the world, as measured by the number of patent applications received. Before 2011, China already accounted for most filings of utility models (UMs), trademarks and industrial designs.1

World Intellectual Property Indicators 2012 shows that patent filings worldwide grew by 7.8% in 2011, exceeding 7% growth for the second year in a row. Similarly, UM, industrial design and trademark filings increased by 35%, 16% and 13.3%, respectively.

“Sustained growth in IP filings indicates that companies continue to innovate despite weak economic conditions. This is good news, as it lays the foundation for the world economy to generate growth and prosperity in the future,” said WIPO Director General Francis Gurry.

China’s State Intellectual Property Office (SIPO) overtook the United States Patent and Trademark Office (USPTO) in 2011 to become the largest patent office in the world, after having surpassed the Japan Patent Office (JPO) in 2010. In the 100 years before 2011, only three patent offices – Germany, Japan and the United States - had occupied the position of largest office.

In the Report’s foreword, Mr. Gurry points out that “even though caution is required in directly comparing IP filing figures across countries, these trends nevertheless reflect how the geography of innovation has shifted.”

For the first time in 2011, the total number of patent applications filed worldwide exceeded the 2 million mark. The 2.14 million applications filed consisted of 1.36 million resident and 0.78 million non-resident applications. Following a drop of 3.6% in 2009, patent applications rebounded strongly in 2010 with growth of 7.5% and with 7.8% growth in 2011.

In 2011, China received 526,412 applications compared to 503,582 for the US and 342,610 for Japan. The growth in patent filings in China was mostly due to sharp growth in resident filings. Between 2009 and 2011, patent filings worldwide increased by 293,900. SIPO accounted for 72% of this increase.

The majority of the top 20 offices saw growth in patent fillings in 2011, with China (34.6%), China Hong Kong (SAR, 15.3%) and South Africa (13.5%) seeing double-digit growth. Filing behavior at offices of middle- and low-income countries show mixed trends.2 The offices of Algeria (11.3%), Madagascar (41.9%) and Saudi Arabia (6.3%) saw considerable growth in 2011, mainly due to growth in non-resident filings. In contrast, Guatemala (-13.1%), Jamaica (-27.6%) and Jordan (-15.6%) saw substantial filing declines.

Data by applicants’ country of origin show that residents of Japan filed the largest number of applications (472,417) across the world in 2011. China, which saw 41.3% growth in 2011, overtook the US to become the second largest country for origin counts.

The field of digital communication saw the highest average annual growth rate (+8.1%) between 2006 and 2010. Filings for pharmaceuticals have continuously declined since 2007.3 Computer technology accounted for the largest number of applications (126,897) filed worldwide.4
Patent applications for four energy-related technologies – fuel cells, geothermal, solar and wind energy - increased by 8% in 2010 to 34,873. Residents of Japan filed the largest number of applications relating to solar energy and fuel cell technologies, while residents of Germany and the US accounted for the largest numbers of applications relating to geothermal and wind energy, respectively.

In 2011, the estimated number of patents granted approached the 1 million mark, with 606,800 issued to residents and 390,000 to non-residents. Grants worldwide grew by 9.7% in 2011. The JPO (with 238,323) granted the largest number of patents, followed by the USPTO (224,505).
The number of potentially pending applications worldwide – defined as all unprocessed applications at any stage in the applications process – declined by 4.9% in 2011, following a 3.3% decrease in 2010. The JPO was the main contributor to this trend. Based on estimates from 76 offices, the number of potentially pending applications worldwide stood at 4.8 million in 2011.
An estimated 670,700 UM applications were filed across the world in 2011, corresponding to a 35% increase on 2010. Filings at SIPO accounted for most of this increase. Residents of Japan and the US filed the largest numbers of UM applications abroad, of which a large proportion were received by SIPO. - WIPO

TRIZ as a tool for Patent Analysis

I had the opportunity to learn TRIZ this year. TRIZ is a Russian acronym for Theory of Inventive Problem Solving. It was developed by Genrich Altshuller when he analyzed a great number of patent documents. He hypothesized and distilled several universal principles of invention from the contents of patent documents. He believed that these principles can be taught to people to create or enhance their innovative capabilities. It is preached by many Fortune 500 companies. I manage to participate in TRIZ level 1 workshop which was conducted by Dr TS Yeoh, president of MyTRIZ and engineer of Intel Malaysia. A book on TRIZ in manufacturing is authored by him.

In November, MyTRIZ hosted a conference and workshop in Penang with guest speakers, including Dr Sergei Ikovenko of Massachusetts Institute of Technology, Dr Song Mijeong of Samsung and Anatoly Guin, a Russian TRIZ educator.

Dr Sergei conducted a workshop on patent circumnavigation. He taught how TRIZ principles can be used to patent around existing competitive patent. Case studies from Hyundai and L'Oreal were shared. I have learnt various valuable lessons that I can use to advise my clients in patent search and analysis.

Dr Song Mijeong shared how TRIZ is practiced in Samsung while Anatoly Guin shared how TRIZ is implemented in schools to get children to be innovative. Each participants is provided with two books by him.

Head of the U.S. patent office to step down

The popular director of the U.S. Patent and Trademark Office, David Kappos, will be stepping down in January, according to an email sent to agency employees on Monday.

In the email, Kappos said he would be leaving around the end of January and thanked agency employees for their work. A patent office spokesman confirmed that Kappos would step down.

Kappos, who is famous for his long hours, has been popular with patent attorneys and industry for being responsive to their desire for more communication and a reduced backlog in patent applications.

Under Kappos, the huge and much-criticized backlog of patent applications fell from more than 750,000 in 2009 to about 605,000 currently, according to patent office data.

He also improved communication between the patent office and lawyers who help companies apply for patents.

"He's also given examiners more time to work on cases, especially at the beginning," said Gene Quinn, a patent attorney and blogger for IPWatchdog Inc. "He encouraged examiners to not just reject claims but to make suggestions for patentability. He did fundamentally alter the relationship between the attorney and examiners." - Reuters

Talam cannot be Trinity

High-end project developer Trinity Group Sdn Bhd has succeeded in stopping the former Talam Corporation Bhd from calling itself Trinity Corporation Berhad.

The Puchong-based developer has won the right to stop Trinity Corp from using the name after claiming that it has caused confusion over the widely publicised Talam Corp debt recovery exercise with the Selangor Government.

“The recent Talam debt recovery exercise has caused a lot of confusion among our customers, business partners and the general public,” said Trinity Group managing director Datuk Neoh Soo Keat during a press conference here.

“There were many enquiries urging us to clarify the issue, as many mistook our company for Talam Corporation Berhad.

“This confusion in the marketplace has greatly affected our business,” Neoh added. 

Trinity Group was awarded the injunction by the Kuala Lumpur High Court on Sept 26 - almost a year after the suit was filed in Oct 2011. - Star Biz

Budget 2013 Goodies for Innovation based Industries

PM Najib has announced the following goodies for innovation based industries:
1. Frawework to enable Intellectual Property to be used as Collateral for Financing
An IP Financing Fund scheme amounting RM200mil is offered through Malaysian Debt Ventures Bhd. The government will provide a 2% interest rate subsidy and guarantee of 50% through Credit Guarantee Corp Malaysia Bhd
2. Creation of IP Valuation Training and Market Platform
Allocation of RM19million through MyIPO to train local IP valuers and create platform for market of intellectual property
3. Emphasis of high impact research in Research Universities
Allocation of RM600million to five research universities
4. Tax incentive for commercialization of non-resource based findings
The current tax incentive for commercialization of resource based findings is extended to commercialization of non-resource based findings. The tax incentives allow any company, which invest in a subsidiary company that commercialize R&D findings of local universities or research institution, to be given deduction based on total investment made in the subsidiary. A tax exemption of 100% for 10 years can also be enjoyed by the subsidiary company.
5. Angel Investors
A deduction equal to the amount of investment made by angel investors to be set off against his income
6. Green Technology Financing Scheme
An allocation of RM2bil for the development of green technology
7. Inclusive Innovation Development
Initiative to be taken by Ministry of Science, Agensi Inovasi Malaysia and non-governmental organizations to plan and implement knowledgeable, creative and innovative activities.

Impact of America Invents Act on PCT Applications

America Invents act will enter into force on 16 September 2012. PCT applications filed on or after 16 September 2012, will no longer have a requirement that inventors be named as applicants solely for the purposes of the U.S. designation. However, U.S. national law will still require that a U.S. inventor’s oath or declaration be submitted for national phase. To assist PCT applicants/agents in implementing the change of practice that will result from the America Invents Act, some frequently asked questions relating to the change have been published on the PCT website at:

http://www.wipo.int/pct/en/faqs/aia.html

WARNING: Requests for Payment of Fees

Did you receive any letter from an organization to pay fees for a particular service? WIPO has issued a warning notice on such letter:

It has come to the attention of the International Bureau that PCT applicants and agents are receiving invitations to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT.  Whatever registration services might be offered in such invitations, they bear no connection to WIPO or to any of its official publications.
The invitations often identify a particular PCT application by its international publication number (eg: WO 02 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols; examples of such invitations can be viewed here.

PCT applicants and agents should note that it is the International Bureau of WIPO alone which publishes all PCT applications promptly after the expiration of 18 months from the priority date (see PCT Article 21(2)(a)); there is no separate fee for such international publication, and the legal effects of international publication are set out in PCT Article 29.
In case of doubt in relation to such an invitation, please contact the International Bureau by telephone +41 22 338 83 38 or facsimile +41 22 338 83 39 or contact your IP agent.

Save knowledge of medicinal plants

DOCUMENTING indigenous knowledge of medicinal plants is crucial for its existence, said state Tourism, Culture and Environment Minister Datuk Masidi Manjun.

He added that while the communities in many parts of Sabah knew about the medicinal value of plants, this knowledge was not well documented.

"It may be lost as its custodians are passing away," he said in his speech at the launch of the Imbak Canyon Ethno- Forestry study and workshop on accessing and commercialising bio-diversity here yesterday.

The speech was read by his assistant, Datuk Elron Angin.

Masidi said the indigenous people had an understanding of the properties of plants and animals, the functioning of eco-system and the techniques for using and managing them that was particular and often detailed.

"So far, there has been little systematic ethno-botanical survey in this area."

With the advancement in science and technology, he said there was an increased interest in appropriating indigenous knowledge for scientific and commercial purposes.

"Some research and pharmaceutical companies are patenting, or claiming ownership, of traditional medicinal plants although indigenous people have used such plants for generations.

"In many cases, these companies do not recognise indigenous people's traditional ownership of such knowledge and deprive them of their fair share in the economic, medical or social benefits that accrue from the use of their traditional knowledge or practices."

He said the study and workshop was timely and would catapult Sabah into a leading position in biotechnology and pharmaceuticals.

"Traditional healers are very old and dwindling in number by the day.

"There is a danger of traditional knowledge disappearing soon." - NST

The Apple-Samsung Verdict

The verdict of Apple-Samsung lawsuit is out and there are a lot of news report on the matter. Computing Forever made the following feedback on the verdict:

There are several patents in dispute including industrial design, known as design patent in the United States of America. For a list of patents involved, Wall Street Journal made a graphical list of patents involved in the infringement and the jury's vote over the corresponding products involvement in patent infringement.

Interestingly, Robert Scoble, an author and creator of the influential Scoblelizer blog, says paying out $1 billion to become a huge mobile force is a small price to pay for Samsung. He believes that RIM, Nokia, HTC and co won't mind spending that money if they can be in Samsung's currrent healthy mobile business position.

Is licensing a better way to introduce new products?

Hanya 71 Yang Mendaftar (Hakcipta)

Sejak penubuhan pada 1 Jun lalu, hanya 71 permohonan pendaftaran hak cipta diterima oleh Perbadanan Harta Intelek Malaysia (MyIPO) melalui Sistem Pemberitahuan Secara Sukarela Hak Cipta.

Jumlah itu masih lagi jauh daripada sasaran awal yang ditetapkan oleh MyIPO iaitu sebanyak 500 pendaftaran hak cipta diterima agensi itu menjelang akhir tahun ini.

Pengarah Bahagian Hak Cipta MyIPO, Mohamed Fairuz Mohd Pilus berkata, Sistem Pemberitahuan Secara Sukarela Hak Cipta ditubuhkan oleh kerajaan atas permintaan penggiat seni dan para karyawan tanah air itu sendiri.

Katanya, kerajaan telah membelanjakan berjuta-juta ringgit untuk membangunkan sistem tersebut dan sekiranya tidak dimanfaatkan, ia menjadi satu kerugian yang amat besar kepada golongan tersebut.

"Para karyawan seni tempatan perlu menggunakan kesempatan ini. Mungkin pendaftaran ini tidak penting buat masa sekarang, namun akan datang mereka tidak tahu apa yang akan berlaku.

"Pendaftaran yang dibuat akan membantu pemilik karya membuktikan hak milik mereka dalam apa-apa pertikaian undang-undang selagi mana karya tersebut mematuhi peruntukan Akta Hak Cipta (Pindaan) 2012," katanya kepada Kosmo!

Sistem Pemberitahuan Secara Sukarela Hak Cipta dilancarkan secara rasminya oleh Menteri Perdagangan Dalam Negeri, Koperasi dan Kepenggunaan, Datuk Seri Ismail Sabri Yaakob sempena Hari Himpunan Bintang MyIPO-Kosmo! 2012 pada 25 Jun lalu.

Sistem itu merupakan satu langkah pembaharuan dan penambahbaikan bagi membantu industri hak cipta negara, khususnya para karyawan tanah air dalam menangani isu berkaitan perlindungan hak cipta.

Antara karya yang layak mendapat perlindungan hak cipta di bawah pindaan akta tersebut ialah karya sastera, karya muzik, karya seni, filem, rakaman bunyi, siaran dan karya terbitan. - Kosmo!

Malaysia: 32nd Most Innovative Country

According to Global Innovation Index, Malaysia is ranked 32 out of 141 economies in the world. Malaysia is praised for providing conducive market sophistication and business sophistication. Ease of getting credit, conducive investment environment, and healthy trade and competition contributed to good scores for market sophistication. The availability of knowledge workers, and high knowledge absorption and adoption, has contributed to high scores for business sophistication.

However, institutions, infrastructure, and human capital and research have dragged down Malaysia's innovation ranking. There are only 715.4 researchers over a million population (rank 64).

Malaysia is also cited to have low creative output and low knowledge and technology output. Malaysia scored poorly in providing creative goods and service and involvement in online creativity. Only ICT business model creation and ICT organizational model creation provides good score.

Low knowledge and technology output is reflected by low patent activity and low output of scientific and technical articles. Hence, Malaysia has poor innovation efficiency (rank 84) due to low innovation output.

Malaysia Identified as Innovation Learners

In early July 2012, WIPO along with leading business school INSEAD, published The Global Innovation Index 2012: Stronger Innovation Linkages for Global Growth. The GII, prepared in conjunction with knowledge partners Alcatel-Lucent, Booz & Co., and the Confederation of Indian Industry (CII), reports on the innovation capabilities and performance of 141 economies. The GII measures the degree to which countries and businesses integrate innovation into their political, business and social spheres.

Switzerland, Sweden and Singapore topped the GII rankings, followed by Finland, the UK, the Netherlands, Denmark, Hong Kong (China), Ireland, and the US. These “innovation leaders” have succeeded in creating innovation ecosystems that support human capital and stable innovation infrastructures.

Other so-called “innovation learners” (countries in which levels of innovation are rising as a result of notable but fragmented improvements in institutional frameworks and innovation infrastructure; a skilled labor force; and a more sophisticated business community) are also identified. These include – among middle-income countries – Latvia, Malaysia, China, Montenegro, Serbia, the Republic of Moldova, Jordan, Ukraine, India, Mongolia, Armenia, Georgia, Namibia, Viet Nam, Swaziland, Paraguay, Ghana and Senegal. Among low-income countries, Kenya and Zimbabwe stand out. - WIPO Magazine

Apple, Google bid on Kodak patents

Eastman Kodak, which is planning to auction 1,100 digital patents, received two bids from investor groups including Apple Inc and Google Inc of between US$150 million and US$250 million, the Wall Street Journal reported on Monday.

Bankrupt Kodak is selling the patents, which it believes could be worth $2.6 billion, in order to repay creditors. The company filed for Chapter 11 protection in January after failing to keep up as consumers and rivals shifted to digital photography from film photography.

A spokeswoman for the company declined to discuss the report in detail, citing court-ordered confidentiality surrounding the auction process.

"Kodak believes that speculation about the details and potential outcome of the auction is inappropriate," spokeswoman Stefanie Goodsell said on Monday.

Bids can rise quickly in bankruptcy auctions. Nortel Networks Inc in 2011 sold its patent portfolio for $4.5 billion after initial bids came in at just $900 million.

Kodak's auction is slated to begin on Wednesday morning. - Reuters

Counter Operating Hours of MyIPO

Counter operating hours of MyIPO on Fridays from 13/07/2012 onwards will be revised to:
8.30 am to 12.15 pm
2.30 pm to 5.15 pm
Operating hours for Monday to Thursday will remain at 8.30 am to 5.15 pm

MIPA 22nd AGM 2012

The 22nd Annual General Meeting of Malaysian Intellectual Property Association (MIPA) was held on 26th June 2012 at Royal Lake Club, Kuala Lumpur. Election was held and the new line up of office bearers and executive committee members are:

President
Peter Desmond Wee

Vice President
Dr Koshy Philip

Honorary secretary
Dennis BL Tan

Honorary treasurer
Robin Low

Executive committee members
Dr Chris Hemingway
Lee Lin Li
Lim Bee Yi
Naidu Appanan
Ong Boo Seng

I wish to express appreciation towards former MIPA exco for having confidence in me to pick up the position of honorary secretary. I will do my best to carry on the good work and legacy that you have created. I will be reachable and open to MIPA members for any feedback to improve the organization.

Caution over Copyright Notification for Computer Program

Malaysia has introduced a voluntary copyright notification system. Most of the literary and artistic work, such as song, article and picture, may be submitted as it is, to be deposited in the Register of Copyright.

Currently, there is no sui generis protection for computer program. According to WIPO, computer program is treated as literary works, as provided by the Berne Convention. Computer program executes instruction on a computer to achive a particular effect. Hence, the source code, which provides the instruction, instead of the program itself, is protected by copyright. A deposit of the source code shall be provided, for a person to claim copyright over the computer program.

However, any person may request to examine the Register. Some computer program contains source code which are treated as trade secret. If the source code contains trade secret, than the trade secret will be uncovered. Care should be taken, if copyright notification is required without compromising the trade secret of the computer program.

Launch of Voluntary Copyright Notification

Authors of creative work in Malaysia, rejoice! MyIPO has launched a voluntary copyright notification system for authors to submit their work, today 1 June 2012. The voluntary copyright notification system will allow authors to claim authorship over literary and artistic works which can be affixed to a physical or digital media. The list of work which can be submitted, which is not exhaustive include:

- novels, stories, books, pamphlets, manuscripts, poetical works
- plays, dramas, stage directions, film scenarios, scripts, choreographic works
- treatises, historical works, biographies, essays, articles, encyclopaedias, dictionaries
- computer programs, website, database, PowerPoint presentation
- graphic, photograph, sculpture, collage, work of architecture, work of craftsmanship
- musical works
- film
- sound recordings
- translations
- adaptations
- compilations

By allowing authors to claim a creative work as their original work, the authors may approach prospective clients with proof that the work is original. It is believed that this system will facilitate more transparency and credible transaction.

Most of the works may be submitted as it is, but special care must be exercised for audio visual work, computer programs, website and database.

The Regulations for forming a Copyright Licensing Body is also launched on the same day.

Malaysia Australia FTA

Malaysia inked free trade agreement with Australia, which will come to effect from 1 Jan 2013. Intellectual property is one of the subject matter of the free trade agreement.

In the agreement, each party shall ratify as soon as practicable, the following agreements: WIPO Copyright Treaty, WIPO Performances and Phonograms Treaty, Madrid Protocol and Singapore Treaty on Trademarks. The former two treaties define specific rights of authors and performers, while the latter provides a simple and harmonized international trademark registration system. Protection of non-traditional trademarks shall also be implemented. Harmonisation according to international industrial property system are encouraged to be implemented, to reduce complexity and cost to users.

Both parties also agreed that patent and trademark databases will be made available on the internet. Protected geographical indications shall also be published.

Malaysia's venture capital industry poised to bounce back

Malaysia's venture capital industry is expected to reverse its declining trend this year, as it is looking at about 25% growth by the year-end from the current RM5.4bil of total assets under management.

Malaysian Venture Capital and Private Equity Association (MVCA) chairman Darawati Hussain gave the positive outlook based on the increasing level of confidence among investors, particularly from the Middle East, the United States and Europe on the economic environment from 2013 onwards.

“Our private investors who have been stagnant in terms of outsourcing funds due to the global economic crisis are now re-looking at this part of the world again,” she told reporters yesterday after the opening of the 4th Islamic Venture Capital and Private Equity Conference 2012 by Minister in the Prime Minister Department Tan Sri Nor Mohamed Yakcop.

The RM5.4bil of assets under management are from the 28 members of the MVCA. About RM1bil of the total amount is Islamic venture capital. Currently, about two-thirds of the RM5.4bil has been invested.

On the declining trend, Darawati said that it was due to the sliding trend of funds outsourcing by the private sector due to the global economic crisis.

Total assets under management had slid to RM5.4bil currently from RM5.9bil.

But, she said fortunately the funds from the Government were increasing during these difficult times.

The largest fund in the venture capital industry still comes from the Government which commands 54% of the total fund.

Meanwhile, Malaysia Venture Capital Management Bhd (Mavcap) chief executive officer Jamaludin Bujang said that it was working on a programme to mutually raise some money from its counterparts in the United States, Europe and Asia.

“This programme is looking at matching contributions from us and our counterparts, and if all goes well in the next few months, we should be able to bring in about US$100mil (RM303.7mil) this year,” he said.

Meanwhile, Nor Mohamed said there was a need to grow venture capital funds in Malaysia, which currently stood at eight funds.

“Undoubtedly, we need to grow not only in the number of funds but also companies that have the potential to be multinationals, too.

“It is time we created companies with innovative technology that the Muslim world can be proud of.

“We also need to have more private sector involvement and capital from pension funds and sovereign wealth fund to ensure that our venture capital industry matures,” he said.

Darawati said venture capital tenures were usually long term in nature at three, five and even up to seven years (for investment in companies that are still in infancy stage).

“This is important for our customers to grow, get their customer base and get more institutionalised.

“Nevertheless, venture capital investment will look at companies that have the potential to double or triple their top-line growth or margin expansion apparent in most innovative technology companies, especially those that made breakthough innovations,” she said.

The conference was jointly hosted by MVCA and the Islamic Banking and Finance Institute Malaysia. - StarBiz

Korea fares Poorly in Timeliness of Preparing Search Report

Each PCT application has to nominate an international search authority to perform international search report. Malaysian PCT applicant has a choice of nominating Australia, European Patent Office, or Republic of Korea to perform the search. The search report contains a list of documents relevant for assessing the patentability of the invention. A written opinion is provided along with the search report to give a detailed analysis of te potential patentability of the invention.

The Republic of Korea is the most popular choice among Malaysians due to PCT schedule of lowest search fees (RM4,259 in May 2012). USA and Canada also nominate Korea to perform the search. According to the PCT Yearly Review 2011, only 16.9% of search report are established by Korea within 17 months of the priority application. The timeliness is important so that the applicant has enough time to come out with proper national phase strategy.

Australia has become an alternative choice for those who are unhappy with the poor timeliness of Republic of Korea. Australia search fee is RM6,347 in May 2012. Singapore and New Zealand also nominate Australia to perform the search. According to PCT Yearly Review 2011, a favorable 89.4% of search report are established by Australia within 17 months of the priority application.

European Patent Office is the least popular choice among Malaysians due to PCT schedule of highest search fees (RM7,834 in May 2012). Germany, France, and even USA placed great dependance on European Patent Office to perform the search. According to PCT Yearly Review 2011, Europe has a fair 61.3% of search report established within 17 months of the priority application.

Our short analysis and recommendation of search authority:

Australia
- high timeliness of preparing search report

Republic of Korea
- lowest search fee
- thorough search of patents in Korean language other than patents in English language

European Patent Office
- widely recognized search report
- thorough search of patents in German and French language other than patents in English language

Of course, the market of the invention shall play an important role as well. If market and patent protection is desired in a particular country, than that country shall be chosen as the search authority.

Mimos Ranked 7th among Government Research Institutions

The PCT Yearly Review provides a list of PCT top applicants among business, universities and government research institutions. Mimos made a surprise entry in government research institution category. According to the report, Mimos, ranked 7th among government research institutions.

The Commissariat à l’Énergie Atomique et aux Énergies Alternatives (France) filed the largest number of PCT applications in the government and research institutions category. It is the only applicant with more than 300 applications. The Fraunhofer- Gesellschaft zur Förderung der angewandten Forschung e.V. (Germany) ranks in second position and the Centre National de la Recherche Scientifique (CNRS) (France) third.

Mimos Berhad is a government research institution set up by the Malaysian government to spear head the country's research in information and communications technology.

New PCT Contracting State: Brunei Darussalam

On 24 April 2012, Brunei Darussalam deposited its instrument of accession to the PCT, thus becoming the 145th Contracting State of the PCT, and on 24 July 2012, will become bound by the PCT. Consequently, any international application filed on or after 24 July 2012 will automatically include the designation of Brunei Darussalam.

Also, because Brunei Darussalam will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 24 July 2012. Furthermore, nationals and residents of Brunei Darussalam will be entitled, as from 24 July 2012, to file international applications under the PCT. - WIPO

Boon IP welcomes Brunei as PCT member. Currently members of PCT in Southeast Asia includes Brunei, Indonesia, Laos, Malaysia, Phillipines, Singapore, Thailand and Vietnam. Cambodia, East Timor and Myanmar are not members of the PCT.

Malaysia removed from IP violations ‘watch list’

Malaysia has been removed from the United States Trade Representative’s (USTR) “watch list” on intellectual property (IP) violations.

Domestic Trade, Cooperatives and Consumer­ism Minister Datuk Seri Ismail Sabri Yaakob said the move would make US businessmen confident about investing in Malaysia.

“Previously, investors were reluctant to come because of concern towards our laws and enforcement on IP violations,” he said yesterday. “We believe that now they will see Malaysia from a better perspective and the American government may encourage them to invest here.”

The news was noted in USTR’s “Special 301 Report” dated April 30.

That report is a review of 77 trading partners of the United States, which have been examined for IP protection and enforcement. - the Star

2012 IP Day Award Winners

IP Day Award ceremony was held in Kuantan to ackowledge the contribution of organizations and individuals towards the development of national intellectual property. The winners are selected based on their intellectual property activity in 2011. The list of winners are:

Organization: Universiti Putra Malaysia
Innovation: Universiti Perguruan Sultan Idris
Industrial design: Fadmi Holdings Sdn Bhd
Innovation (Secondary school): Sekolah Raja Perempuan Taayah, Perak

The award was presented by YAB Dato' Sri Diraja Adnan Yaakob, Pahang Chief Minister and YB Dato Sri Ismail Sabri Yaakob, Domestic Trade Minister. Boon IP mengucapkan tahniah to the winners.

Intellectual property can be used as collateral soon

A valuation system is being drawn up to allow intellectual property (IP) to be used as collateral for business development soon.

Domestic Trade, Cooperatives and Consumerism Minister Datuk Seri Ismail Sabri Yaakob said although IPs were a new source of income generation for the country, these had yet to be accepted as collateral by financial institutions.

“This is important because this type of financing plays a big part in business development. The Govern­ment realises this situation and is in talks with agencies to form an intellectual property valuation model for this purpose,” he said after the launch of the National Intellectual Property Day here yesterday.

Ismail Sabri added that the model, which would make it easier for the exploitation of IPs from lab to market, would benefit their owners.

“We hope financial institutions will support this initiative,” he said.

Developed countries, he added, already had IP valuation systems, which allowed properties such as films and songs to be used as collateral because of the value tagged to them. “It is still very early for us.”

Pahang Mentri Besar Datuk Seri Adnan Yaakob, who launched the event, urged IP owners to register their products in order to avoid these from being copied by others.

“Without registration, the products will be exposed to copycat risks by irresponsible parties. This will cause great loss to owners and their businesses,” he said. - the Star

I-Bhd sells iHome trademark

Property developer I-Bhd has entered into a deal to sell its “iHome” trademark in Malaysia, Singapore, Thailand, Indonesia, Vietnam, Brunei and China for RM1.8mil cash to Hong Kong-based iHome Asian Trademark Holdings Co Ltd.

The company said in a statement to Bursa Malaysia that the sale of the trademark was in line with the group's focus in property development following its cessation of the home appliances business. - StarBiz

IP involved in Euro 2012

European soccer’s most coveted trophy is protected in various ways, by copyright law, and variously through the European Community Trademark System (CTM 007463821) including in 3D (CTM 8860025) and the Madrid System for the International Registration of Marks (IR 1020340). The trophy is also protected as a registered design (RCD 635750-33-34).

The registration and defense of marks is at the heart of UEFA’s IP protection strategy. As the holder of registered marks, UEFA is in a position to guarantee exclusive licensing rights to the commercial partners associated with its competitions. Such protection is often enshrined in a contract.

In the absence of special legislation, the protection afforded by trademark/service mark law remains the best way to combat the many infringements of the commercial rights linked to major sports competitions. The registration of a mark is often key to obtaining the support of the national authorities (in particular customs authorities, the police and trading and standards agencies) responsible for tackling infringing activities.

Marks for sporting events are unlike other well-known marks in that they have a very short shelf life. Those linked with the UEFA European Football Championship, for example, are specially created for the competition held in a particular year. This can be a challenge given the fact that registration procedures in some countries are not always adapted to the competition cycle. In this respect, the WIPO Madrid System for the International Registration of Marks is very useful as it guarantees the registration of events marks within 18 months, whereas in certain countries that are not part of the Madrid system, registration can take much longer. As these events are world renowned, the associated marks are registered not only in the host countries and all those taking part in the tournament, but also at the global level. The marks are also registered in almost all classes of goods and services to cover those offered by UEFA’s official partners.

The main designations linked to this year’s championship, namely, UEFA EURO 2012 and POLAND UKRAINE 2012 are, along with their local equivalents, protected as word marks, as are the different language versions of the official slogan “Creating History Together”. UEFA has also sought to protect the figurative elements of the UEFA EURO 2012 emblem, mascots and trophy. These official marks are widely protected through trademark or service mark registration, copyright and other IP laws. - WIPO Magazine

2012 National Intellectual Property Day will be held in Sultan Ahmad Shah International Convention Centre (SASICC), Kuantan. Intellectual Property Day is an initiative by the government to promote and increase awareness of intellectual property. There will be sixty organizations participating the event on 27 & 28 April 2012. Malaysian Intellectual Property Association (MIPA) is invited to be part of the event. There are various activities organized for the public.

27 & 28 April 2012, IP Exhibition, Exhibition Hall 1

28 April 2012
9 am National IP Day Award, Ballroom (by invitation)
2 pm Public Seminar on Copyright, Silk Hall
2 pm Public Seminar on Trademark, Cashmere Hall
2.30 pm Retro Star Competition, Exhibition Hall 1
8.30 pm Intellectual Property Concert, Padang Taman Kemunting

The latest amendment on Copyright Act and Regulations may be presented during the public seminar. For more information, visit MyIPO.

223 Trademarks, 24 Patent Applications Received Under Expedited Examination Process

The Intellectual Property Corporation of Malaysia (MyIPO) received 223 applications for trademarks and 24 for patents and utility renewals under the expedited examination process introduced last Feb 15.

Domestic Trade, Cooperatives and Consumerism Minister Datuk Seri Ismail Sabri Yaakob said the initiative was well received as it facilitated the registration process.

The registration period for patents normally takes 26 months but under the expedited examination, it only takes 20 months while for trademark registration, which usually takes 12 months, it can now be done in less than seven months. "However, these are only for applications which are in order and without any objection being raised by the registrar," he told reporters after attending the 2011 MyIPO Excellent Service Award here.

Ismail Sabri said MyIPO received 28,833 trademark applications, including 15,832 from foreign parties last year, up from 26,370 applications during the previous year.

A total of 6,559 applications for patents and utility renewals were received last year compared to 6,464 the year before.

MyIPO also received 1,871 applications for industrial design registrations and seven applications for geographical indication products last year compared to 940 and five applications respectively in 2010.

Although the figure might seem huge, he said, the awareness among entrepreneurs to register their products for patents and trademarks was still low and in some cases, applications from foreigners far outnumbered those from the locals. -Bernama

Amendments to Copyright Act to come into force by April

New regulations following the amendment of the Copyright Act 1987 last year, which include a wider jurisdiction for the Copyright Tribunal, are expected to be submitted to the Attorney-General for implementation from April.

Domestic Trade, Cooperatives and Consumerism Minister Datuk Seri Ismail Sabri Yaakob said the ministry and the national creative industry players would be holding their last meeting to finalise the regulations at the end of this month before submitting it to the Attorney-General.

Among the new regulations to be enforced included a system of voluntary registration of copyright works and the registration of a royalty collection body, he told reporters after holding the second meeting with the national creative industry players on the issues of the new regulations at the office of Intellectual Property Corporation of Malaysia (MyIPO) here Wednesday.

"The new regulations of the Copyright Tribunal should involve expanding the jurisdiction of the tribunal on matters relating to payment of royalties to artistes.

"The tribunal should be expanded to ensure the individual responsible for collecting royalty should be transparent apart from informing the artistes concerned on their work used," he said.

Among the arts industry player representatives present were Persatuan Karyawan Malaysia, Persatuan Penulis Skrin Malaysia, Persatuan Penerbit Filem Malaysia as well as local actors and singers. - Bernama

Tan: How I made money from Facebook

Friendster was among the first social networking websites. It preceded MySpace and Facebook. Starting operations in 2003, Friendster found the going tough and lost money for years.

The company continued to raise but spent money aggressively. In running up losses, Friendster had, nonetheless, built up a base of 140 million registered users, of which 40 million were active.

Vincent Tan said the losses then stemmed from Friendster not monetising its user base. Finding it hard to make money from its users, it was losing an average of US$10mil a year.

Eventually, the patience of the owners and investors in Friendster wore thin and they wanted to exit the business. Friendster then called for a process to sell the business and now Friendster CEO, Ganesh Kumar Bangah, who was then working with Tan, informed him that Friendster was for sale.

“I asked for the numbers and found that 140 million registered users and 40 million active users was interesting. If we could make them spend some money, maybe Friendster would be a good investment. Of course, the downside was the business will continue to lose US$10mil a year,” he said.

Vincent Tan said the owners of Friendster initially wanted US$100mil for the business but with losses mounting, he knew no one would pay that much for the company. “At that time, Facebook wanted to buy Friendster’s patents but Facebook was willing to pay US$10mil cash and later increased it to US$20mil cash.”

Tan was made to understand then that the owners felt that taking US$20mil only to lose US$10mil a year will soon see that cash vanish and then decided to accept US$40mil for Friendster but wanted a quick sale. “They gave the potential buyers about a week to decide. Many people were looking, including large firms from China and Japan, at Friendster.

“They were much larger than MOL but with the owners of Friendster needing a fast sale, I told Ganesh to do a quick due diligence on Friendster.

“We took two days for the due diligence and made a bid. We said since Friendster owed people US$2mil, we offered US$38mil.

“With other potential buyers doing their due diligence, I told them that if they accepted US$38mil, we will do the deal right away. They accepted our proposal,” said Tan.

After buying Friendster in 2008, Tan then turned his attention to Facebook, which remained interested in Friendster’s patents and whose offer of US$20mil cash for the technology rights was still on the table. “We had a conference call with the people at Facebook. I accepted their price but I wanted shares.”

Facebook officials told him that Mark Zuckerberg, the boss of Facebook, did not want to dilute the shares in the company but Tan stood firm and said “if there was no shares, forget it”.

Tan insisted on getting shares in Facebook because he felt the company will be big in the future. Finally, Zuckerberg agreed to a share exchange for the patents and Tan got his 700,000 shares. His shares have grown to 3.5 million following a 5-for-1 split in Facebook’s shares before the IPO process. - StarBiz

Facebook Acquired Friendsters Patent through MOL

Facebook bought the entire Friendster portfolio of patents in 2010. The eighteen patents had been transferred to MOL Global when it bought Friendster for about $39.5 million in 2009.

Friendster, the first social networking website, was launched by Jonathan Abrams in 2002. The Friendster patents, which date back to the early days of social networking, are incredibly broad. They cover things like making connections on a social network, friend-of-a-friend connections through a social graph, and social media sharing. Friendster had received its first patent back in 2006, when it was already on the decline. At the time, Friendster President Kent Lindstrom said the company had nearly forgotten it had ever applied for the patents, but added that “We’ll do what we can to protect our intellectual property.”

MOL Global, which is controlled by Vincent Tan, is said to have 3.5 million shares in Facebook as part of the patent acquisition deal. Assuming Facebook IPO price is set at US$40 a piece, this would translate to US$140mil (RM420mil), and even more after the listing.