Patent Boon

Malaysia Australia FTA

2012-05-23T12:37:00.001+08:00

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

2012-05-22T13:11:00.002+08:00

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

2012-05-16T12:01:00.001+08:00

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

2012-05-16T11:38:00.000+08:00

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

2012-05-16T10:41:00.001+08:00

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’

2012-05-04T09:48:00.001+08:00

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

2012-04-30T11:52:00.000+08:00

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

2012-04-29T16:22:00.000+08:00

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

2012-04-24T11:00:00.001+08:00

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

2012-04-23T22:56:00.001+08:00

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

2012-04-23T12:34:00.001+08:00

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

2012-03-20T13:55:00.001+08:00

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

2012-03-18T16:20:00.001+08:00

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

2012-02-04T11:53:00.005+08:00

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

2012-02-03T15:09:00.007+08:00

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.

ID filed across the world grew by 13%

2011-12-22T22:42:00.003+08:00

In 2010, industrial design applications saw robust growth after slowing during the preceding two years. The number of applications filed across the world grew by 13%, mainly due to high growth in China which accounted for 83% of total growth. The IP office of China received around 70,000 additional applications in 2010 compared to 2009.

The total consists of 637,000 resident and 86,700 non-resident applications. The non-resident share (12% in 2010) has declined over time, due to high growth in China where residents account for the great majority of applications.

The IP office of Canada registered 20% growth in 2010 (as measured by the number of designs contained in applications). The IP offices of China (20%), Australia (14%), Spain (13%) and the US (12.6%) also saw substantial increases in application levels in 2010 . France and the Republic of Korea are the two major offices with slight declines in applications.

The share of China in the world total increased from 54% in 2009 to 58% in 2010, which is more than five times higher than the share of second largest office – OHIM. The IP offices of Japan, the Republic of Korea and the US together accounted for around 16% of the world total. -WIPO

Malaysia filed 35 trademark applications per billion GDP

2011-12-22T22:20:00.003+08:00

The estimated total of 3.66 million trademark applications worldwide in 2010 consisted of 2.78 million resident and 0.88 million non-resident applications. The IP office of China accounted for three-fifths of the 11.8% growth in applications worldwide.

Most of the large offices returned to positive growth in applications in 2010, having seen declines the previous year. The IP office of China received around a quarter of a million additional applications in 2010 compared to 2009 – more than the number of total annual applications received by France, Germany, and the UK together. A number of other large offices saw double-digit growth in 2010, notably China Hong Kong (SAR) (18.3%), Mexico (16%), France (13.1%), OHIM (12.2%), Brazil (11.5%) and the Russian Federation (11.4%).

The picture is more mixed for offices in low- and middle -income economies. A number of Eastern European countries such as Estonia (-15.1%), Georgia (-13%) and Lithuania (-14.8%) saw considerable declines in applications, whereas several non-European countries, such as Argentina (17.1%), Madagascar (16%), Panama (24%) and South Africa (13.9%), saw rapid filing growth.

Residents of Germany filed around 1.9 million “equivalent applications” in 2010. Residents of China and the US also filed more than one million applications each. The reason for the high number of applications for German and US residents is their extensive use of the Office for Harmonization in the Internal Market (OHIM) to seek protection in the EU. Each application at OHIM covers all EU member states, elevating the number of equivalent applications.

The Report shows that middle-income countries filed a higher number of trademark applications per GDP as compared to high-income countries. Chile filed 218 trademark applications per billion GDP in 2010. Bulgaria (166), Ecuador (157) and Viet Nam (128) also show high ratios of trademark filings per GDP, exceeding those for Germany (72), Japan (39) and the US (22). Malaysia filed 35 trademark applications per billion GDP in 2010. - WIPO

Mimos Ranked 11th among Government Research Institutions

2011-12-22T17:58:00.010+08:00

The World IP Report 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 256th among PCT applicants, manage to rank 11th 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.

Malaysia Ranked 32nd in Patent by Residents of Origin

2011-12-22T16:53:00.007+08:00

According to World IP Report 2010, Malaysia ranked 32nd in patent application by residents of origin. Ranking of patent application by residents of origin is a measure to indicate a country's patent activity. Malaysia filed the most patent in South East Asia compared to Thailand (33), Singapore (37), and Vietnam (47).

Fillings by non residents are not considered in this ranking. The top rankings of countries of interest are China (1), Japan (2), USA (3), Republic of Korea (4), Germany (5), UK (8), India (13), and Australia (25).

For trademark fillings by residents of origin, Malaysia ranked 41. Vietnam (23) filed the most trademark in South East Asia compared to Thailand (28) and Singapore (52). The top rankings of countries of interest are China (1), USA (2), Germany (3), Russia (4), India (5), Republic of Korea (6), Japan (11), UK (12), and Australia (16).

For industrial design fillings by residents of origin, Malaysia ranked 41. Thailand (16) filed the most industrial design in South East Asia compared to Vietnam (33) and Singapore (43). The top rankings of countries of interest are China (1), Germany (2), Republic of Korea (3), Italy (4), Japan (5), UK (10), India (12), and Australia (20).

Note that Indonesia did not participate in the 2010 statistic.

China overtook Japan to become the 2nd largest recipient of patent applications in 2010

2011-12-22T16:24:00.005+08:00

The World IP Report, which contains detailed statistical information on national and international data up to 2010, shows that China and the US accounted for four-fifths of the 7.2% worldwide growth in patent filings.

The US patent office saw 7.5% growth in 2010 - after two years of near zero growth - and received the largest total number of applications (490,226).

The patent office of China (391,177 filings) overtook the office of Japan (344,598 filings) to become the second largest recipient of patent applications in 2010. This mirrored wider economic trends in a year in which China overtook Japan to become the second largest economy in the world, as measured by GDP.

The majority of the top 20 offices saw growth in applications in 2010, in contrast to 2009. Double digit growth was reached in China (24.3%), the European Patent Office (12.2%), Singapore (11.9%) and the Russian Federation (10.2%).

In the past decade, the patent office of China has seen the most dramatic increases in application levels. Between 2001 and 2010, annual growth averaged 22.6%, with patent filings rising from 63,450 in 2001 to 391,177 in 2010.

Applications at the patent offices of middle and low-income economies also rebounded strongly in 2010 after falling in 2009. Colombia, Malaysia, Philippines, Ukraine and Vietnam saw double-digit growth in applications in 2010.

The Report also analyzes the numbers of filings by resident applicants. These show similar trends, with Chinese residents (293,066 applications) overtaking Japanese residents (290,081 applications) to become the most active patent filers in 2010.

Residents of Japan (172,945 applications) and the US (178,355 applications) filed, by far, the largest number of patent applications outside their own country. However, residents of Canada, Israel, the Netherlands and Switzerland filed more than 80% of their total applications abroad. Residents of China, on the other hand, filed only a small proportion (5%) of applications abroad.

Looking at patenting activity across different technology fields, the Report shows that computer technology, electrical machinery, audio-visual technology and medical technology accounted for the largest shares of patent filings worldwide. However, the relative importance of different technology fields varied substantially across countries. Broadly defined information communications and technologies (ICTs) accounted for the largest share of filings in Finland and Sweden, with pharmaceuticals more prominent in Belgium, India and Switzerland.

Patents granted (as distinct from patent applications filed) have recorded uninterrupted growth since 2000. In 2010, the total number of grants worldwide stood at 909,000 - an additional 100,000 grants over 2009 or growth of 12.4%. Resident grants accounted for two-thirds of the total increase. The patent offices of Japan and the US accounted for around 80% of total growth. The majority of the top 20 offices issued more patents in 2010 than in 2009.

The number of “potentially pending” patent applications across the world totaled 5.17 million in 2010, - a 3.3% reduction over 2009. The world total is based on data from 70 patent offices, which include most of the top 20 offices (with China among the exceptions). The patent office of Japan saw a significant reduction (-20%) in pending applications undergoing examination 2010. The EPO (-6.9%) and the US office (-2.3%) also had fewer pending applications in 2010 compared to 2009. Medium-sized offices, such as Chile (-11.6%), Israel (-8.8%), Mexico (-3.6%), Poland (-14.6%) and Ukraine (-5.9%) also saw considerable reductions in pending applications. -WIPO

IP Filings Worldwide Rebound in 2010 despite Economic Turmoil

2011-12-22T16:18:00.003+08:00

A new report published by WIPO today shows that intellectual property (IP) filings worldwide rebounded strongly in 2010 after a considerable decline in 2009.

The recovery in IP filings was stronger than the overall economic recovery. Patent and trademark filings grew by 7.2% and 11.8% respectively in 2010 compared to growth of 5.1% in the global gross domestic product (GDP), with China and the United States (US) accounting for the greatest share of the increased filings.

In Europe, IP filing growth by France, Germany and the UK far exceeded the GDP growth rate of the three largest European economies in 2010.

The 7.2% growth in patent applications in 2010 - the highest growth rate in five years - followed a 3.6% decline in 2009. The total number of 1.98 million patent applications worldwide was an all time high. Similarly, trademark filings rose by 11.8% in 2010 to reach 3.66 million– another all time high – having fallen by 2.6% in 2009.

In his foreword to the 2011 World Intellectual Property Indicators (WIPI) Report, WIPO Director General Francis Gurry notes that the upturn in IP filings shows that companies across the globe have been continuing to innovate. “This can help to create new jobs and generate prosperity once macroeconomic stability is restored,” he writes, while cautioning that “if economic conditions were to deteriorate sharply in the short term – as happened in 2009 – companies might be forced to curtail or abandon their investments in innovation, stifling an essential source of growth.” -WIPO

America Invents Act

2011-12-22T15:53:00.002+08:00

On September 16, 2011, U.S. President Barack Obama signed into law the Leahy-Smith America Invents Act. Albert Tramposch, Director of International and Governmental Affairs at the United States Patent and Trademark Office (USPTO), discusses the implications of this milestone in the history of the U.S. patent system.

The America Invents Act creates an innovation-friendly patent system that will reduce costs, level the playing field for businesses small and large, and spur economic growth. The new law enables a better-resourced USPTO to grant patent rights with greater speed, predictability, clarity, and quality.

Over the decades, patent law harmonization negotiations have contemplated a system with two major elements: (1) first-to-file and (2) a 12-month grace period (e.g., the draft Patent Law Treaty of 1991). On March 16, 2013, the U.S. will transition to a first-to-file (FTF) system to provide the transparency that banks, venture capitalists, and other investors need to invest in new businesses while establishing the stability that companies need to bring new products to globalized markets.

Along with a transition to a first-to-file system, the America Invents Act also provides for an improved grace period, which will help secure investment. Under the current system, an inventor who discloses an invention to a potential buyer or investor without entering into a confidentiality agreement risks losing patent rights. The new provisions allow the inventor to engage in critical negotiations with potential buyers or investors without fear of losing their right to a patent.

Provisional U.S. applications will continue to be available. Since 1995, inventors who wish to preserve their rights in their invention while evaluating its potential can do so by submitting a provisional application and paying a nominal fee, thereby establishing an internationally recognized priority date. The inventor may, within a 12-month period, convert that provisional application into a full U.S. application if the invention is worth pursuing.

The America Invents Act further harmonizes U.S. law by broadening the definition of prior art, eliminating the Hilmer doctrine and virtually eliminating the best mode requirement. The reform provides that prior art under U.S. law includes non-printed disclosures, including oral disclosures, made available to the public anywhere in the world. New provisions also provide an incentive for early disclosure (i.e., one year or less before the effective filing date) by insulating inventors who disclose their inventions against third party disclosures, if the inventor’s disclosure precedes that of a third party. The elimination of the Hilmer doctrine ensures that patents and published applications filed in the U.S. are prior art as of the earliest effective filing date to which they are entitled to claim a right of priority. Additionally, the earliest effective filing date is no longer limited to only U.S. filings; it can now also originate from a foreign filing. The new U.S. law also eliminates the best mode requirement as a defense in infringement actions in court and USPTO post-grant review.

The law supports small businesses and independent inventors by creating a pro bono program in conjunction with intellectual property law associations. The law also requires the USPTO to maintain a Patent Ombudsman Program to provide patent filing services to qualifying small businesses and independent inventors. Additionally, to help foster innovation by independent inventors and universities, various fees are reduced for micro-entities. Transitioning to an FTF system will also support small businesses in attracting the investments they need to startup their operations and bring new products to market. -WIPO Magazine

Apple scores limited victory in smartphone patent war

2011-12-22T10:46:00.002+08:00

Apple Inc scored a narrow victory against Taiwan’s HTC Corp in a patent lawsuit over smartphone technology that will set the stage for further battles between the rival makers in the fiercely competitive market.

In a case seen as a proxy for a larger fight between Google Inc’s Android operating system and Apple’s iOS, the US International Trade Commission ruled that HTC infringed on one of four patents Apple had disputed and imposed a sales ban on some of the Taiwan maker’s phones.

While the ruling is unlikely to hurt HTC as much as initially feared because it will have time to work around the offending technology and has until April before the ban becomes effective, it offers Apple ammunition to pursue other makers it believes infringe on its technology.

“This is one skirmish in one battle, which is forming a much larger war and each side has got some ammunition left,” said David Wilson, a London-based partner at the intellectual property group with Herbert Smith LLP.

The patent in question, ‘647, relates to technology that helps users clicking on phone numbers and other types of data in a document, such as an email, to either dial directly or click on the data to bring up more information.

As it is widely used in almost all smartphones, industry experts foresee similar rulings should Apple bring other cases. -Reuters

Notice of Amendment (Industrial Design Regulations 1999)

2011-12-17T13:46:00.008+08:00

MyIPO has issued a notice that the Industrial Design Regulations will be amended in January 2012. New scale of fees will be introduced by the amendment. This is not a surprising move; in February 2011, the Patent Regulations and Trade Mark Regulations were amended to accommodate new schedule of official fees (increase of up to 40%). Any design protection may still be initiated this year before the price increase.

MDeC To Unveil IP Valuation Model In 2012

2011-11-24T11:01:00.001+08:00

The Multimedia Development Corporation (MDeC) is striving for Intellectual Property (IP) rights to be accepted as assets or collateral through the IP valuation model which is set to be introduced in the first quarter of next year.

MDeC chief operating officer Ng Wan Peng said currently there is no collectively acceptable IP valuation framework which financial institutions can adhere to when processing applications for financial assistance.

She said financial institutions are reluctant to accept IP as assets or collateral because of the difficulty in determining the value of Intellectual Property.

Ng said the introduction of the IP valuation model is the first step taken in assisting financial institutions to refer to a specific methodology in valuing IP rights.

MDeC, the driver of MSC Malaysia's National ICT Initiative, is working very closely with Intellectual Property Corporation of Malaysia (MyIPO) in getting the necessary approvals for the IP valuation model.

At the 22nd MSC Malaysia Implementation Council Meeting (ICM), organised by MDeC last year and chaired by the Prime Minister, it was decided that MyIPO should formulate an IP valuation model in accordance with the National IP Policy, she said.

Since then MDeC and MyIPO, together with other stakeholders, have been collaborating in preparing an introductory IP valuation framework that looks into the different types of IP rights. MDeC and MyIPO are confident that the framework would be ready and be tested with a few IP owners soon.

"More needs to be done as it is a new area and not many have experience in this. We must start getting the financial institutions to value IP rights as something of high value. Educating and increasing the level of awareness is necessary in order to ensure more people understand and appreciate IP," Ng told Bernama in an interview.

Ng revealed that hundreds of MSC Malaysia-status small-and-medium enterprises (SMEs) that possess IP rights such as patents, copyrights and trademarks are facing difficulties in getting financial assistance to commercialise their products.

"More than 1,000 SMEs with MSC Malaysia status have IP rights which range from patents to trademarks, copyrights and industrial designs. Not all need financial assistance to commercialise their products but most of them will be happy to have some kind of recognition that the IP created by them actually has value," she said.

According to Ng, the IP valuation model could serve as a guide for the financial institutions as well as stakeholders in conducting valuation or use it as a basis to get third party valuators to undertake the valuation process.

Ng said IP owners, financial institutions and Bank Negara have provided input for the valuation initiative for the IP. MyIPO together with MDeC had conducted feedback sessions with some financial institutions, industry players as well as IP owners to make them understand this area better as well as share their concerns in the valuation of IP rights.

"We are happy with the cooperation provided by the parties involved in this IP valuation initiative. MyIPO has been working hard in driving this initiative including looking at the amendments of the IP laws to allow the adoption of IP rights as security," she said.

Although the government has been promoting an innovation and knowledge-based economy, support from financial institutions is not forthcoming as they find it very difficult to accept IP rights as a collateralisable asset.

"I think they are more comfortable in giving out the loan based on business plans on tangible assets or proven business rather than looking at IP as collateral. It's not that they don't want to value the IP, the problem is that they don't know how to value IP rights," she said.

"We do not see financial institutions keen in readily accepting IP as collateral at this moment. We were told by some companies, most of them SMEs, that they have difficulties in getting banks to recognise their IP rights," she added.

Ng said the ultimate goal of the IP valuation initiative is for IP rights to be recognised by financial institutions as an asset that can be put up as collateral.

"These are also opportunities for the banks. Financial institutions have to start developing capability in these areas as more and more companies will have less and less tangible assets. In becoming more competitive, financial institutions would need to know how to value intangible assets and put a defensible value that can mitigate the perceived risk attached to assets such as IP.

"Eventually, we hope that local companies will continue to create IP which will be accepted as an asset that can be transacted and thus help increase our competitiveness as a nation," she said. -Bernama