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Trade Mark Specification and Classification for the Engineering Sector in Malaysia: An Exhaustive Guide to the Nice Classification and Specification Drafting

2026-02-13T16:39:00.003+08:00

Trade Mark Specification and Classification for the Engineering Sector in Malaysia: An Exhaustive Guide to the Nice Classification and Specification Drafting

1. Introduction to the Framework of Malaysian Trademarks

The landscape of intellectual property protection in Malaysia underwent a profound and historical transformation with the enactment of the Trademarks Act 2019 (Act 815), which received Royal Assent on November 22, 2019, and formally replaced the legacy Trade Marks Act 1976. This sweeping legislative overhaul modernized the nation's trademark regime, aligning domestic statutes with global commercial standards and facilitating Malaysia's highly anticipated accession to the Madrid Protocol.

This article provides an analysis of the trademark classification system as it applies to the engineering sector within the jurisdiction of the Intellectual Property Corporation of Malaysia (MyIPO). It delineates the structural nuances of the international classification taxonomy, explores the stringent statutory requirements of MyIPO regarding the precise specification of goods and services, and details the profound taxonomic shifts introduced by the Nice Classification.

2. The Architecture and Evolution of the Nice Classification System

The classification of goods and services in Malaysia is governed by an internationally harmonized system known as the International (Nice) Classification of Goods and Services for the Purposes of the Registration of Marks. This taxonomy was established by a multilateral treaty concluded at the Nice Diplomatic Conference on June 15, 1957, subsequently revised at Stockholm in 1967 and Geneva in 1977, and is currently administered by the World Intellectual Property Organization (WIPO). The countries party to the Nice Agreement constitute a Special Union within the framework of the Paris Union for the Protection of Industrial Property, and the system is utilized by over 150 national and regional IP offices globally, including the United States Patent and Trademark Office (USPTO), the European Union Intellectual Property Office (EUIPO), and MyIPO.

Prior to the formal registration of a trademark, every good or service intended to be covered by the application must be classified into its appropriate class according to this controlling system. The Nice Classification simplifies and standardizes the trademark application process, ensuring that goods and services are classified uniformly across disparate jurisdictions, thereby facilitating international trademark searches and multi-jurisdictional filings under the Madrid Protocol.

The Structural Components of the Taxonomy

The Nice Classification divides the entirety of global commerce into 45 distinct classes. Classes 1 through 34 are dedicated to physical goods, while Classes 35 through 45 are dedicated to services.

3. Statutory Requirements and Specification Drafting at MyIPO

The process of defining the scope of trademark protection requires an exacting balance between the commercial objective of achieving maximum market exclusivity and the stringent statutory requirements for linguistic clarity, precision, and demonstrable commercial justification. The Trademarks Act 2019 and the accompanying Trademarks Regulations 2019 impose rigid boundaries on how goods and services must be articulated during the application process.

The Prohibition of Ambiguity: The "Articles" and "Machinery" Principle

MyIPO maintains uncompromising guidelines regarding the semantic clarity of goods and services specifications. Broad, indeterminate categories that fail to notify the public and competitors of the exact nature of the commercial monopoly are systematically rejected during substantive examination.

A foundational interpretative principle within MyIPO's examination framework involves the use of generic nouns such as "articles," "systems," or "machinery." The registry explicitly dictates that specifications containing the word "articles" must be clearly and unequivocally qualified by their function, material, or specific industry application. For example, submitting an application specifying merely "articles of wood" in Class 19 is categorically unacceptable. The examiner will raise an immediate objection, mandating that the applicant further qualify the description to indicate the intended commercial goods, such as "articles of wood for building purposes". Conversely, descriptions that inherently possess definitive boundaries by virtue of the preceding adjective, such as "jewellery articles" in Class 14 or "thermal insulating articles" in Class 17, are accepted without objection.

This principle applies directly to the engineering sector. Claiming broad protection for generic terms like "machinery" or "industrial equipment" in Class 7 is a pervasive error that will trigger an Office Action. Applicants often utilize vague terms under the mistaken belief that ambiguity provides broader protection; however, the registry requires high specificity to accurately assess cross-class conflicts. The functional application or the specific industry must be defined, resulting in acceptable phraseology such as "agricultural tractors," "industrial excavators," or "machine tools for metalworking". As established in foundational trademark jurisprudence, words of ordinary English usage cannot be monopolized without distinct context; attempting to claim ownership over the mere word "machinery" would inappropriately appropriate common language from the public domain.

Regulation 11(4): The Danger of Over-Specification

A pervasive and highly dangerous misconception in trademark prosecution strategy is the belief that an applicant should propose claiming every theoretically possible good or service within a particular class to grant the client the "broadest protection possible". This exhaustive approach is not merely procedurally risky; it is legally precarious and often counter to the client's best interests in Malaysia.

Under Regulation 11(4) of the Trademarks Regulations 2019, MyIPO possesses the statutory authority to police over-specification. The regulation stipulates that in the case of an application for registration in respect of all the goods or services included in a particular class, or of an excessively large variety of goods or services, the Registrar may formally refuse the application. The Registrar will only permit such broad specifications if satisfied that the sweeping claim is genuinely "justified by the use of the trademark which the applicant has made, or intends to make if and when the trademark is registered".

Consequently, adopting a broad, unqualified term in the specifications—such as "retail or wholesale services" in Class 35—will highly likely attract a formality objection. The applicant will be compelled to limit the specification to identify the exact items traded, resulting in a narrowed, compliant specification such as "retail or wholesale services relating to engineering components".

Furthermore, engaging in over-specification severely heightens the trademark's vulnerability to non-use cancellation proceedings. Section 179 of the Trademarks Act 2019 dictates that an aggrieved party—such as a competitor blocked from entering the market—can apply to the Court or the Registrar to revoke a registered trademark if it has not been used in good faith in Malaysia for a continuous period of three years in relation to the specific goods or services for which it is registered. Therefore, if an engineering firm specializing exclusively in structural analysis software broadly registers its mark across all physical navigational and photographic apparatus in Class 9, a competitor could file for partial revocation of the unused goods. This exposes the client to unnecessary, highly expensive litigation costs and diminishes the overall robustness of the brand portfolio.

5. Financial and Procedural Framework: The MyIPO Fee Structure and Pre-Approved List

To streamline the substantive examination process and encourage taxonomic harmonization, MyIPO heavily incentivizes the utilization of its Goods and Services (Pre-Approved) List. This proprietary database contains thousands of standardized terms that the registry has already pre-vetted and deemed entirely compliant with the Nice Classification system.

6. Taxonomic Analysis of Goods Classes Pertinent to the Engineering Sector

To effectively specify goods for an engineering enterprise, an applicant must possess a nuanced, highly technical understanding of the intersection between mechanical design, electrical integration, and material science, mapping these physical realities seamlessly to the theoretical structures of the Nice Classification. The physical manifestations of engineering practice primarily traverse Classes 6, 7, 9, and 11.

Class 6: Common Metals and Structural Elements

Class 6 serves as the foundational taxonomic category for structural fabrication, and metallurgy. It is rigorously defined to encompass common metals and their alloys, unrefined ores, and robust metal materials expressly intended for building, storage, and structural construction.

The inclusion criteria for Class 6 are highly specific to structural integrity and industrial fastening. It includes heavy construction materials such as metal materials for railway tracks, rigid pipes, and heavy-duty tubes of metal. It also captures the granular components of mechanical assembly, including small items of metal hardware like industrial bolts, heavy-duty screws, nails, window fasteners, and furniture casters. Beyond basic hardware, Class 6 includes transportable buildings or structures constructed of metal, such as prefabricated temporary site offices, metallic swimming pools, cages for wild animals, and large-scale metal containers utilized for industrial storage or maritime transport, alongside high-security safes. A critical inclusion for modern engineering involves raw materials for advanced manufacturing: metals in foil or powder form designated specifically for further industrial processing, such as specialized titanium or aluminum powders utilized in industrial 3D printers, fall squarely into Class 6. Furthermore, non-electric cables and wires constructed of common metal are housed here.

The exclusions governing Class 6 highlight the Nice Classification's reliance on functional purpose over mere material composition. Despite being manufactured predominantly from highly conductive metals, electric cables are strictly excluded from Class 6; their primary function is the transmission of electricity, necessitating their placement in Class 9. Similarly, metals in foil and powder form intended for use by painters, decorators, and artists are classified in Class 2, distinguished entirely by their aesthetic end-use. Furthermore, metals processed specifically for their chemical properties or utilization in scientific chemical reactions are relegated to Class 1, while flexible pipes and hoses, even if they contain metallic elements, are classified under Class 17 if they are not rigid metallic structures.

Class 7: Machines, Machine Tools, and Industrial Robotics

Class 7 is the epicenter of mechanical engineering, automated manufacturing, and heavy industrial operations. It comprehensively covers machines, machine tools, power-operated tools, and all motors and engines, with one critical, sweeping exception: motors and engines destined for land vehicles. For clients producing heavy construction machinery, automated assembly lines, or specialized manufacturing equipment, Class 7 is the primary vector for intellectual property protection.

The breadth of Class 7 is vast, encompassing the entirety of mechanized physical labour. It covers industrial manufacturing equipment such as large-scale 3D printers, cord making machines, concrete mixers, mechanical presses utilized for metalworking, and specialized machinery like meat processing robots and meat scoring machines. Heavy earthmoving and specialized non-transportation machinery dominate the class, including bulldozers, road-sweeping machines, mechanical shovels, snow ploughs, asphalt road making machines, and the rubber tracks utilized as integral parts of their crawling mechanisms.

Crucially, Class 7 protects the internal components and mechanisms that generate and control mechanical power. This includes core engine parts such as connecting rods, cylinders, starters, mufflers, and mechanical speed variators being parts of machines. It also covers intricate control mechanisms specifically designed to operate these machines, including hydraulic controls, pneumatic controls, and mechanical control apparatus for industrial robots. Valve and regulatory engineering also finds its home here, with pressure reducing valves, pressure regulating apparatus, and pressure transducers acting as integral parts of machinery falling within this class. Furthermore, mechanized lifting and dispensing apparatus, including mechanical hoists, mechanical vehicle stacking elevators, and automatic vending machines, are included.

Equipment Category	Examples of Acceptable Specifications in Class 7
Agricultural & Earthmoving	Mechanical lawn aerators; Mechanical dethatchers; Bulldozers; Agricultural implements other than hand-operated.
Industrial Robotics	Industrial robots; Meat processing robots; Mechanical control apparatus for industrial robots.
Power Transmission & Control	Hydraulic controls for machines; Connecting rods for motors; Mechanical and hydraulic couplings for marine vessels.
Pressure Regulation	Pressure reducing valves [parts of machines]; Pressure regulators; Pressure switches as parts of machines.
Material Processing	Concrete mixers [machines]; Mechanical presses for metalworking; 3D printers; Meat slicing machines.

Table 1: Categorical Breakdown of Engineering Goods within Class 7.

Classification within Class 7 relies heavily on the presence of automated, motorized, or pneumatic power. Hand-operated hand tools and implements, such as manual wrenches, hand-held crimpers, or manual slicing tools, are strictly excluded and form the foundation of Class 8. A vital, unyielding distinction must also be made concerning vehicular engineering: engines, motors, and transmission components explicitly intended for land vehicles, alongside vehicle treads and tires, are categorically excluded from Class 7 and belong in Class 12. However, mechanical engine parts that do not serve as the primary locomotive engine for a land vehicle—such as auxiliary power units—may still reside in Class 7.

The treatment of robotics within the Nice Classification is highly nuanced and distributed based on the robot's primary function rather than its mechanical nature. While industrial manufacturing robots belong in Class 7, humanoid robots equipped with artificial intelligence, security surveillance robots, and teaching robots fall into Class 9. Robotic cars are classified in Class 12, surgical and laboratory robots belong in Class 10 due to their medical utility, and toy robots are relegated to Class 28.

Class 9: Scientific Apparatus, Safety Equipment, and Software

Class 9 is arguably the most expansive, complex, and commercially critical class in the modern engineering landscape, capturing the convergence of physical measurement instrumentation, safety engineering, and the entirely digital realm of computer algorithms. It governs apparatus and instruments for scientific research, navigation, surveying, weighing, measuring, signalling, detecting, testing, and, most importantly, information technology.

For engineers involved in research and development, Class 9 covers the essential laboratory and testing equipment, including apparatus for scientific research, material testing instruments, and diagnostic apparatus not intended for medical purposes. Aerospace and marine engineers rely on Class 9 to protect critical control and navigation systems, encompassing navigational instruments, GPS apparatus, compasses, and intricate instruments for controlling and monitoring aircraft, watercraft, and unmanned aerial vehicles. It also includes advanced simulation technology, such as training apparatus, vehicle steering simulators, and resuscitation mannequins.

Safety and security engineering is heavily represented within Class 9. It includes signalling lights, traffic-light apparatus, sound alarms, and safety nets. Crucially, it protects specialized personal protective equipment engineered to prevent serious or life-threatening injuries, such as bullet-proof clothing, fire protection gear, protective helmets, and mouth guards utilized in sports. Prior to the implementation of NCL 13-2026, large-scale safety equipment like fire engines also resided here, though they have since transitioned to Class 12. Class 9 also encompasses optical apparatus essential for engineering inspection, such as magnifying glasses and mirrors for inspecting work.

However, the overwhelming majority of modern Class 9 filings relate to software and computing infrastructure. It comprehensively covers hardware devices, microprocessors, smartwatches, wearable activity trackers, and automated teller machines. More vitally, it is the home for all downloadable and pre-recorded computer software.

When drafting specifications for engineering software within Class 9, utilizing broad, unmoored terms such as "computer programs" or "software" without qualification is a fatal error that will result in immediate objection. MyIPO and global USPTO/WIPO standards demand a clear indication of the software's subject matter or functional purpose. An acceptable specification must be detailed, reading, for example, "Downloadable computer software for use in finite element structural engineering analysis" or "Pre-recorded embedded software for controlling multi-axis industrial robotic arms". The distinction between physical, downloadable software (Class 9) and software provided over a network (Class 42) is absolute and must be navigated with extreme care.

Class 11: Environmental Control, Heating, and Cooling Installations

While Class 7 covers the generation of kinetic power, Class 11 focuses entirely on thermodynamic manipulation and environmental control. It encompasses apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, and sanitary water supply.

For mechanical and HVAC engineers, Class 11 is critical. It includes industrial and commercial temperature control systems, such as condensing installations, refrigerating apparatus, and heavy-duty air conditioning units. It also covers specialized heating systems, including laboratory ovens—an anomaly, given that most laboratory equipment falls under Class 9—as well as commercial ice-making machines and electric appliances for food preparation. Furthermore, it captures the entirety of sanitary and plumbing engineering, including bath installations, plumbing fixtures, toilets, urinals, and municipal water purification installations.

Exclusions from Class 11 are dictated by the mechanism of action. Steam producing apparatus that function primarily as integral parts of machines belong in Class 7. Apparatus for pumping or dispensing volatile fuels are classified in Class 7 rather than being considered liquid supply installations under Class 11. Specialized lamps intended exclusively for medical utilization are placed in Class 10, while those strictly for laboratory diagnostics remain in Class 9. Additionally, under the new NCL 13-2026 taxonomy, electrically heated clothing, previously housed in Class 11 as heating apparatus, has been systematically transferred to Class 25 to align with other wearable garments.

7. Taxonomic Analysis of Service Classes Pertinent to the Engineering Sector

Engineering is inherently a service-oriented, consultative profession. While the act of manufacturing a tangible machine results in goods protected under Classes 6, 7, and 9, the intellectual act of designing the machine, the physical act of constructing a facility to house it, and the ongoing labor required to repair and maintain it require trademark protection under the service classes (Classes 35 through 45). The three primary service vectors for engineering firms are categorized within Classes 37, 40, and 42.

Class 37: Construction, Installation, and Repair Services

Class 37 captures the physical implementation and execution of engineering designs in the real world. The Explanatory Notes define Class 37 as encompassing services in the field of construction, as well as services involving the physical restoration of objects to their original condition or their preservation without altering their fundamental physical or chemical properties. This class is indispensable for civil engineering contractors, mechanical installers, systems integrators, and industrial maintenance companies.

The core of Class 37 lies in heavy civil construction and infrastructure development. It explicitly covers the construction, erection, and demolition of permanent buildings, roads, bridges, dams, and complex electrical transmission lines. It also encompasses the specialized installation services required to make these structures functional, including heavy plumbing, industrial heating equipment installation, roofing, and interior/exterior painting. Marine engineering execution, specifically shipbuilding and marine vessel repair, is uniquely situated within this class.

Furthermore, Class 37 covers the vital logistics required for large-scale engineering execution, specifically the rental and hiring of heavy construction tools, machines, and equipment, such as the rental of bulldozers, excavators, and industrial cranes.

A significant portion of Class 37 is dedicated to repair and maintenance services. This includes the repair of complex electrical systems, physical computer hardware, sensitive measuring instruments, and industrial tools. The guiding taxonomic principle is that these services must be intended to restore the object to its original working condition or preserve it, without fundamentally changing its essential properties.

When drafting specifications for Class 37, a critical distinction must be maintained between the physical act of building and the intellectual act of designing. The term "Construction engineering services [construction design]" is frequently a point of fatal confusion; the physical, labor-intensive act of building the structure is unequivocally Class 37, while the intellectual drafting of the construction plans, the architectural blueprinting, and the engineering consultancy preceding the physical build fall exclusively under Class 42.

Class 40: Treatment of Materials and Custom Manufacturing

Class 40 acts as the industrial bridge between raw materials and finished engineering goods. The official Nice Classification defines Class 40 as encompassing the "Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation". In practical engineering terms, Class 40 includes services rendered through the mechanical or chemical processing, dramatic transformation, or custom production of inorganic or organic objects. If an engineering fabrication facility alters the fundamental properties of a material for a third-party client, or manufactures bespoke, non-standard equipment to a client's exact, unique specifications, Class 40 protection is legally required.

The scope of material transformation within Class 40 is vast, covering the core activities of metallurgical and mechanical fabrication. It includes heavy metalworking, structural fabrication, industrial soldering, highly specialized welding services, laser cutting, metal shaping, and precision abrasion. It also captures chemical, thermal, and surface treatments designed to alter the durability or aesthetics of a material, such as silver plating, tin plating, industrial vulcanization, heavy powder coating, stripping of industrial finishes, and window tinting treatment acting as a surface coating. Environmental engineering processes, executed on an industrial scale, are also housed here, including municipal air purification, large-scale water treating, hazardous waste treatment, and industrial upcycling of recyclable materials.

Fabrication / Processing Activity	Applicable Nice Class	Taxonomic Justification under WIPO Guidelines
Mass Production of Standard Valves	Class 7 (Goods)	The creation of standard products marketed by the maker as their primary commercial trade. It is the sale of a good, not the rendering of a service to a specific client order.
Custom Manufacturing of Tunneling Equipment	Class 40 (Services)	Production effected entirely for the account of another person, built strictly to their unique order, blueprints, and specifications.
Routine Maintenance of an Industrial Motor	Class 37 (Services)	Preserving the motor in its original condition without changing its essential physical properties or metallurgy.
Chromium Plating of a Motor Vehicle Bumper	Class 40 (Services)	Even if performed during a "repair," the chemical plating process fundamentally transforms the material's essential surface properties.

Table 2: Differentiating Custom Manufacturing and Material Treatment from Standard Production and Repair.

The Explanatory Notes for Class 40 provide critical, highly restrictive guidance on distinguishing the manufacturing of goods from the rendering of manufacturing services. The production or manufacturing of goods is considered a service (categorized in Class 40) only in cases where it is effected strictly for the account of another person, to their specific order and precise specification. If an engineering firm mass-produces standard, off-the-shelf hydraulic valves and sells them to the public, they are functioning as a manufacturer of Class 7 goods, and the activity is not a Class 40 service. However, if a civil engineering client provides proprietary blueprints for a highly specialized, one-off trenchless tunneling machine that the firm then fabricates on a contract basis, the firm is providing a Class 40 custom manufacturing service.

Class 42: Scientific, Technological, and Engineering Services

Class 42 represents the intellectual, theoretical, and highly analytical zenith of the engineering profession. The class is defined as "Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software". It exclusively covers services provided by persons—such as chemists, physicists, software developers, and professional engineers—in relation to the theoretical and practical aspects of complex fields of activities. This is the quintessential, indispensable class for consulting engineers, architectural firms, surveying agencies, and software development corporations.

Class 42 encompasses the entirety of engineering consultancy, theoretical design, and technical reporting. It includes the professional services of engineers and scientists who undertake complex evaluations, estimates, theoretical research, and the drafting of technical reports in the scientific and technological fields. This includes the meticulous preparation of engineering drawings, construction drafting consultancy, architectural design, urban planning, and comprehensive technological consultancy across disciplines ranging from energy technology to environmental technology. The production of specialized documentation, such as the preparation of technological research reports, scientific reports, and technical writing, is securely anchored in Class 42.

Physical testing and site inspection—provided it requires scientific analysis rather than mere mechanical labor—also falls under Class 42. This includes highly technical material testing, textile testing, scientific laboratory services, environmental testing services designed to detect biological contaminants in water, water analysis, equipment testing, and the evaluation of real estate for the presence of hazardous materials. It also captures specialized industrial evaluations, such as the evaluation of biorefining processes, control of anaerobic processes, and general industrial analysis.

However, the most explosive growth within Class 42 over the last decade has occurred in the realm of software, digital infrastructure, and data security. The development, programming, implementation, and updating of computer software are exclusively Class 42 services. This extends to the maintenance of computer programs, including complex database software, communication systems software, and even cutting-edge quantum computing and quantum programming algorithms.

The integration of Industry 4.0 paradigms into traditional mechanical and civil engineering has dramatically elevated the strategic importance of Class 42. A modern mechanical engineering firm (traditionally operating entirely in Class 7) now frequently provides real-time, remote condition monitoring of its deployed heavy machinery via proprietary cloud-based dashboards. Because this service utilizes non-downloadable software hosted on a remote server, it constitutes a Software as a Service (SaaS) or Platform as a Service (PaaS) offering, which is strictly and exclusively categorized under Class 42. Similarly, the rental of web servers, cloud computing operations, data encryption services, and technological services for securing computer data against unauthorized access are vital Class 42 services that modern engineering firms must protect to safeguard their digital ecosystems.

8. Cross-Class Convergence and Strategic Filing Methodologies

Given the fundamentally multifaceted nature of modern engineering, relying on a single-class trademark application is a severe strategic vulnerability. Trademark applicants must engage in rigorous "cross-class convergence" analysis, dissecting a client's commercial offering into its constituent physical, digital, and service-based elements to build an impenetrable intellectual property moat.

Scenario Analysis: The Autonomous Robotic Welding Cell

Consider a complex hypothetical client scenario: an advanced manufacturing enterprise is launching a revolutionary new product line branded as the "AeroWeld Autonomous Robotic Cell." This highly sophisticated product involves a physical multi-axis robotic arm, an integrated high-powered laser welder, a proprietary local software operating system embedded within the machine, physical installation services, and an ongoing cloud-based predictive maintenance subscription that utilizes artificial intelligence to prevent mechanical failures.

To achieve optimal, holistic protection without falling prey to the dangers of over-specification under Regulation 11(4), the trademark agent must dissect the product into its precise Nice Classification components:

Class 7: The physical industrial robot itself, the automated laser welding machine, and the mechanical control apparatus operating the arm.
Class 9: The downloadable or embedded control software operating the robotic hardware, as well as the integral sensor arrays and measuring apparatus utilized by the robot to guide the weld.
Class 37: The physical installation of the massive robotic cell at the customer's manufacturing facility, and the ongoing physical maintenance, lubrication, and repair of the mechanical joints and hardware.
Class 42: The SaaS platform providing the predictive maintenance analytics, the newly recognized Artificial Intelligence as a Service (AIaaS) utilized to optimize the welding paths, the remote monitoring of the computer systems, and the engineering consultancy services required to customize the software workflow for the specific automotive client.

By filing a multi-class application across Classes 7, 9, 37, and 42 utilizing the provisions of the Trademarks Act 2019, the trademark applicant ensures that every vector of the product's commercialization is legally protected. If the client, seeking to minimize filing fees, only filed in Class 7 for the physical machinery, a competitor could potentially use a highly similar mark to offer independent software integrations (Class 9) or analytical consulting services (Class 42) for that specific machinery, capitalizing on the original brand's established goodwill without facing direct infringement liability.

Distinguishing Class 37 vs. Class 42 in Civil Site Operations

A persistent, complex challenge in drafting civil engineering trademark specifications is the accurate demarcation between site operations belonging in Class 37 and those belonging in Class 42. The taxonomic boundary lies strictly between physical execution and intellectual analysis.

Civil Engineering Activity	Appropriate Nice Class	Rationale based on WIPO Explanatory Notes
Site Supervision & Construction Management	Class 37	The physical management, logistical oversight, and direct execution of the building and demolition process on the physical site.
Plumbing & Heavy Equipment Installation	Class 37	The physical alteration, integration, and installation of complex heating or plumbing systems into the constructed edifice.
Site Inspection & Environmental Testing	Class 42	The scientific analysis of soil samples, testing for hazardous materials, water quality analysis, and the preparation of technical evaluation reports.
Surveying & Construction Drafting	Class 42	The theoretical topographical mapping, CAD design, architectural blueprinting, and urban planning services conducted prior to the commencement of physical labor.

Table 3: Taxonomic Demarcation of Site Operations (Class 37 vs. Class 42).

A failure to distinguish these activities accurately will lead to immediate formality objections from MyIPO examiners, delaying the application timeline and incurring additional professional fees for amendment.

9. Procedural Best Practices and Mitigation of Formality Objections

In navigating the intricacies of the Malaysian trademark registry, applicant must meticulously align client commercial expectations with uncompromising statutory realities. The standard trademark registration process in Malaysia typically spans an average of eighteen months, provided that no substantive objections from the Registrar or third-party oppositions arise during the publication phase. Therefore, front-loading the strategic analysis and preemptively mitigating potential grounds for refusal is imperative to avoid costly, multi-year delays.

Final Strategic Maxims for Engineering Specifications

To systematically minimize office actions and procedural friction during the 18-month MyIPO examination lifecycle, agents should strictly adhere to the following drafting maxims:

First, whenever commercially viable, construct the application's specifications using terminology strictly adopted from MyIPO's Goods and Services (Pre-Approved) List. This strategy achieves dual objectives: it significantly reduces the official filing fee by RM150 per class (from the manual fee of RM1100 down to the pre-approved fee of RM950), and it effectively nullifies the risk of an examiner rejecting the terminology during formal examination for being ambiguous or overly broad.

Finally, trademark practice requires extreme foresight. For multi-year engineering mega-projects and forthcoming brand launches scheduled for the late 2020s, agents must pre-emptively integrate the NCL 13-2026 taxonomic updates into their strategic counseling immediately. Recognizing definitively that Artificial Intelligence as a Service (AIaaS) now securely resides in Class 42, and that emergency response vehicles have shifted to Class 12, ensures that the rapidly evolving software and hardware divisions of engineering conglomerates remain legally insulated against future classification disputes and infringement vulnerabilities in the decades to come.

Patent Prosecution in Malaysia: A Guide to Substantive Examination

2026-02-10T10:50:00.003+08:00

Patent Prosecution in Malaysia: A Guide to Substantive Examination

1. Introduction: The Malaysian Patent Landscape

The protection of intellectual property rights, particularly patents, serves as a cornerstone for economic development and technological advancement in Southeast Asia. For a layperson or a client entering this jurisdiction for the first time, the Malaysian patent system offers a robust framework governed by the Patents Act 1983 and the Patents Regulations 1986, both of which underwent significant transformation via the Patents (Amendment) Act 2022. This article serves as an exhaustive guide to navigating the critical phase of patent prosecution known as "Substantive Examination."

Unlike copyright, which arises automatically upon creation, or trademarks, which protect brand identity, a patent is a state-granted monopoly for a technical invention. This monopoly is not given lightly. It must be "earned" through a rigorous process of scrutiny known as examination. In Malaysia, the Intellectual Property Corporation of Malaysia (MyIPO) acts as the regulatory gatekeeper. Their role is to ensure that a patent is only granted if the invention is novel (new to the world), involves an inventive step (not obvious to an expert), and is industrially applicable.

For the applicant, the prosecution process is not merely a bureaucratic hurdle but a strategic negotiation. The choices made regarding when to request examination, and whether to defer that request can determine not only the costs incurred but the very validity and enforceability of the final patent. The 2022 amendments have fundamentally altered this strategic landscape, removing the flexibility that once allowed applicants to indefinitely pause their applications. Today, the system demands proactive management and a clear understanding of strict statutory deadlines.

This article will dissect the mechanisms of Substantive Examination, analyze the new restrictions on deferment, and provide a roadmap for managing the critical 18-month or 4-year deadlines that define the pulse of a Malaysian patent application.

A substantive examination is the critical "make or break" phase of the patent application process where a patent examiner conducts a rigorous technical and legal review of your invention. Unlike the initial formal examination—which just checks if you filled out the paperwork correctly—this stage dives into the actual essence of your claims to determine if the invention deserves a legal monopoly. The examiner searches global databases for prior art (any existing evidence that your invention was already known) to ensure the application isn't overstepping its bounds or claiming something that already exists.

2. What Do Examination Covers: The Patentability Requirements

To pass this phase, the examiner verifies that your application meets several strict legal criteria:

Novelty: The invention must be "new." If even a single piece of prior art shows your exact invention before your filing date, it fails this test.
Inventive Step (Non-Obviousness): This is often the highest hurdle. The examiner checks if your invention would have been "obvious" to a person having ordinary skill in the art (PHOSITA). It shouldn’t just be a logical next step or a simple combination of two known things.
Industrial Applicability: The invention must be capable of being made or used in some kind of industry. It cannot be purely theoretical or a violation of the laws of physics (like a perpetual motion machine).
Sufficiency of Disclosure: You must describe the invention clearly enough that someone else in your field could actually build and use it based solely on your written description.
Clarity and Conciseness: The "claims"—the specific legal boundaries of your invention—must be clearly defined so the public knows exactly what they are prohibited from infringing upon.

3. The Architecture of Patent Deadlines

In the realm of patent law, time is the most unforgiving variable. A missed deadline typically results in the irrevocable loss of rights. To understand the strategy of examination, one must first master the timeline that governs a Malaysian patent application. This timeline varies significantly depending on the route of entry: the Direct National Filing or the PCT National Phase Entry.

3.1 The Direct National Filing Route

A "Direct" filing occurs when an applicant files a patent application directly with MyIPO, without going through the international Patent Cooperation Treaty (PCT) system. This often happens when a Malaysian company files locally first, or a foreign company files in Malaysia claiming priority under the Paris Convention within 12 months of their home filing.

For these applications, the clock ticks rapidly. The most critical deadline for prosecution is the request for examination.

The 18-Month Guillotine

Under the Malaysian system, a request for substantive examination must be filed within 18 months from the filing date of the application. This is a distinct departure from many other jurisdictions where the examination deadline is calculated from the "priority date" (the date of the first filing abroad). In Malaysia, the countdown starts from the moment the application lands at MyIPO.

The Calculation: If an application is filed on January 1, 2024, the deadline to request examination is July 1, 2025.
The Pressure: This 18-month window is relatively short. In many cases, if the applicant has filed a corresponding application in the US or Europe, those foreign patent offices may not have issued a search report or examination result within 18 months. This forces the direct applicant in Malaysia to make a "blind" decision—investing in the Malaysian examination process before knowing if the invention is truly patentable globally.

3.2 The PCT National Phase Route

The Patent Cooperation Treaty (PCT) is a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent applicant who files a "PCT application" gets a significant extension of time before they must enter the "National Phase" in individual countries like Malaysia.

The 4-Year Strategic Window

For applications entering Malaysia via the PCT route, the deadline to request substantive examination is 4 years (48 months) from the International Filing Date.

The Calculation:

International Filing Date: January 1, 2020.
National Phase Entry Deadline (30 months): July 1, 2022.
Examination Request Deadline (48 months): January 1, 2024.

The Advantage: This timeline offers a massive strategic advantage. By the time the 4-year mark arrives, the applicant has likely received the corresponding Clear Examination Report from the “Prescribed Countries” (Australia, UK, Japan, Republic of Korea, USA, and the European Patent Office).

3.3 Visualizing the Deadlines

The following table contrasts the critical dates for a layperson to visualize the urgency difference between the two routes.

Milestone	Direct National Filing	PCT National Phase Entry
Trigger Event	Filing Date in Malaysia	International Filing Date (PCT Filing)
Priority Deadline	12 months (to claim foreign priority)	N/A (Already claimed in PCT)
National Entry Deadline	N/A	30 months from Priority Date
Exam Request Deadline	18 Months from Filing	48 Months from International Filing
Consequence of Miss	Application Deemed Withdrawn	Application Deemed Withdrawn

3.4 The Consequences of Inaction: "Deemed Withdrawn"

If the 18-month or 4-year deadline passes without a request for examination (Form 5) or a request for deferment (Form 5B, only for MSE), the application status changes to "Deemed Withdrawn".

4. The Examination Dichotomy: Standard vs. Modified

Once the applicant decides to proceed, they face a pivotal choice. Malaysia operates a dual-track examination system. The applicant must choose between Substantive Examination (SE) and Modified Substantive Examination (MSE). This choice is not merely procedural; it dictates the scope of the patent, the speed of the grant, and the future defensibility of the rights.

4.1 Standard Substantive Examination (SE)

The Mechanism: Standard SE is the traditional route. It involves a full, independent review by a MyIPO examiner. The examiner conducts their own search of the prior art (existing technology) and assesses whether the invention meets the Malaysian requirements for novelty, inventive step, and industrial applicability.

The Obligation to Disclose (Form 5): Even though SE is an independent review, the Patents Act places a burden on the applicant to assist MyIPO. When filing Form 5, the applicant must provide information regarding corresponding applications filed in "Prescribed Countries" (Australia, UK, Japan, Republic of Korea, USA, and the European Patent Office).

Applicants must submit the status of these applications, specifically any search results or patent numbers if granted.
Strategic Note: This does not mean the Malaysian examiner will blindly follow the US or UK examiner. They may disagree. However, they use the foreign search results as a starting point to avoid duplicating work.

When to Choose SE:

No Foreign Grant Exists: If the application is unique to Malaysia or the foreign applications are still pending/rejected, SE is the only option.
Divergent Claims: An applicant may want broader claims in Malaysia than were allowed in the US or Europe. For example, the US might have cited a piece of "prior art" that is not valid in Malaysia (due to different grace period rules). SE allows the applicant to argue for broader protection based strictly on Malaysian law.
Independence: A patent granted via SE is standalone. It is harder for a competitor to attack it solely based on the invalidation of a foreign patent.

4.2 Modified Substantive Examination (MSE)

The Mechanism: MSE is a streamlined route designed to facilitate the grant of patents that have already been vetted by major patent offices. It is based on the principle of reliance. If a patent has already been granted for the same invention in a "Prescribed Country" (AU, UK, JP, KR, US, EP), MyIPO allows the applicant to request MSE.

The Requirement (Form 5A):

To file for MSE, the applicant submits Form 5A along with a Certified Copy of the foreign patent.

The Catch: The claims in the Malaysian application must be amended to be "substantially the same" as the claims in the granted foreign patent. This is a strict conformity requirement. If the US patent was granted with 5 narrow claims, the Malaysian application must be amended to match those 5 narrow claims.

When to Choose MSE:

Cost Efficiency: The official fee for MSE (RM 640) is significantly lower than SE (RM 1,100). Furthermore, professional fees are often lower because the patent agent does not need to draft complex responses to examiner objections; the process is largely administrative.
Speed: Since the substantive patentability question has already been settled abroad, MyIPO examiners typically process MSE requests much faster, often leading to a grant within 12-18 months of the request.
Simplicity: It avoids the risk of a Malaysian examiner finding new prior art that the US examiner missed.

4.3 Comparative Analysis: Pros and Cons

Feature	Standard Substantive Examination (SE)	Modified Substantive Examination (MSE)
Official Form	Form 5	Form 5A
Official Fee	RM 1,100	RM 640
Prerequisite	None (can be first filing)	Must have a granted patent in AU, US, UK, JP, KR, or EP
Claim Scope	Flexible (Independent of foreign results)	Strict (Must match foreign grant)
Speed	Slower (Full search & exam)	Faster (Administrative check)
Risk Factor	Examiner may find new objections.	Tied to foreign patent's fate. If foreign patent is weak, Malaysian patent is weak.

Strategic Warning: Clients must be wary of the "MSE Trap." If a foreign patent is used as the basis for MSE, and that foreign patent is later revoked in its home country (e.g., via Inter Partes Review in the US), the Malaysian patent remains valid technically, but the groundwork of its grant is compromised. A savvy competitor might use the same arguments that killed the US patent to invalidate the Malaysian patent in court. SE provides a layer of insulation against this domino effect.

5. The 2022 Amendment: The New Deferment Regime

Perhaps the most critical update for any client entering the Malaysian market in 2024-2025 is the drastic change in deferment rules introduced by the Patents (Amendment) Act 2022. Prior to March 18, 2022, the system was forgiving. Applicants could request to defer any examination (SE or MSE) for almost any reason, often buying years of time to delay costs.

This option has been abolished. The new regime reflects a policy shift towards efficiency and reducing backlog. MyIPO now demands that applicants commit to the prosecution process unless there is a specific, statutorily valid reason to wait.

5.1 The Abolition of SE Deferment

Under the amended Section 29A(6) of the Patents Act, deferment of the filing of a request for examination is now only available for Modified Substantive Examination (MSE).

The Implication: An applicant cannot request to defer a Standard Substantive Examination (Form 5).
The Deadlines are Absolute: The 18-month (Direct) and 4-year (PCT) deadlines for Form 5 are now hard ceilings. You cannot file a "Form 5B" to delay a standard exam request simply because you are short on funds or undecided on strategy. You must file the request or lose the application.

5.2 The MSE Deferment Exception (Form 5B)

The legislature recognized a practical problem: MSE requires a foreign grant. Foreign patent offices (especially the USPTO or EPO) can take 3, 5, or even 7 years to grant a patent. If the Malaysian deadline is 4 years, an applicant might be forced to abandon the MSE route simply because the US office is slow.

To solve this, deferment is still permitted for MSE candidates.

The Mechanism: The applicant files Form 5B (Request for Deferment).
The Justification: The applicant must declare that they are waiting for a patent to be granted in a Prescribed Country for the same invention.
The Fee: RM 150.
The Result: The deadline to request examination is extended to 5 years from the Malaysian Filing Date (or International Filing Date).

5.3 The "Switch" Safety Net: Regulation 27B

A common strategic fear arises: "I deferred my Malaysian application to Year 5, waiting for a US patent. But at Year 4.9, the US patent is rejected. Now I can't file MSE, and I missed the deadline for SE. Is my application dead?"

The 2022 Amendments anticipate this. Regulation 27B introduces a "switch" mechanism or grace period.

The Rule: If an applicant deferred filing for MSE but, by the end of the deferment period (5 years), the foreign patent has not been granted or is not available, the applicant may file a request for Standard Substantive Examination (Form 5).
The Window: This request must be filed within 3 months from the expiry of the deferment period.
The Procedure:

Deferment expires (e.g., at Year 5).
Applicant realizes no foreign grant is coming.
Applicant files Form 5 + Fee (RM 1,100) within the next 3 months.
Prosecution proceeds as a normal, independent examination.

Strategic Pivot: This 3-month window acts as a crucial safety net. It allows applicants to gamble on the cheaper/faster MSE route without risking total loss if the foreign patent fails to materialize. However, this requires meticulous docketing. Missing this 3-month post-deferment window is fatal.

6. Strategies for Acceleration: PPH and Expedited Exam

For some clients, deferment is the opposite of what they need. Startups seeking venture capital, or companies facing infringement, often need a granted patent immediately. Malaysia offers two powerful acceleration tools: the Patent Prosecution Highway (PPH) and Expedited Examination.

6.1 The Patent Prosecution Highway (PPH)

The PPH is a work-sharing arrangement between MyIPO and other major patent offices. It allows MyIPO to reuse the positive search and examination results from a partner office to speed up the Malaysian process.

Partner Offices: MyIPO has PPH agreements with the Japan Patent Office (JPO), United States Patent and Trademark Office (USPTO), European Patent Office (EPO), China National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO).
How it Works:

You receive a "Notice of Allowance" or a positive examination report in the US or Japan.
You file a request for PPH at MyIPO (often concurrent with Form 5).
You submit the claims allowed by the US/Japan office and a claims correspondence table showing how the Malaysian claims match.

The Benefit: The MyIPO examiner fast-tracks the application. While they are not legally bound to grant it, the existence of a positive foreign report makes acceptance highly likely and significantly faster (often reducing the wait from years to months).

6.2 Expedited Examination (Rule 27E)

If an applicant does not have a foreign grant (and thus cannot use PPH), they can pay for speed via the Expedited Examination provision.

The Cost: This is the premium option.

Form 5H (Request for Approval): RM 250.
Form 5I (Expedited Exam Fee): RM 2,800. (Total: RM 3,050 vs RM 1,100 for standard).

The Criteria: Acceleration is not granted on demand; it must be justified on specific grounds:

National Interest: The invention relates to national security or public health.
Green Technology: The invention promotes environmental sustainability.
Infringement: There is evidence that a third party is infringing or preparing to infringe the invention.
Commercialization: The applicant needs the grant to secure funding or commercialize the product within 2 years.
Government Grants: The patent is a requirement for a university or research grant.

The Trade-off: Speed cuts both ways. While the examiner issues a report quickly (often within 4 weeks of approval), the applicant is also placed on a "shot clock." The response time to examiner objections is shortened (e.g., to 3 weeks), requiring the legal team to be highly responsive.

7. Financial Planning: Fee Schedules and Management

Navigating the patent system requires budget forecasting. The costs involve Official Fees (paid to the government) and Professional Fees (paid to the patent agent). While professional fees vary, official fees are statutory.

7.1 Comprehensive Official Fee Schedule (2024/2025)

The following table details the key costs associated with examination and deferment management.

Action	Form No.	Official Fee (RM)	Strategic Note
Request for Substantive Exam	Form 5	1,100.00	Standard route.
Request for Modified Exam	Form 5A	640.00	Requires certified foreign grant.
Deferment of MSE Request	Form 5B	150.00	Extends deadline to 5 years.
Request for Expedited Exam	Form 5H + 5I	3,050.00	(250 + 2800). For urgent cases.
Reinstatement of Lapsed Patent	Form 5E	150.00	Plus surcharges; high risk.
Voluntary Amendment	Form 5B/Other	varies	Can be filed to align claims.
Restoration of Priority	Form 1A	150.00	If 12-month priority missed.
Certificate of Grant	N/A	Included	No separate grant fee (usually).
Annual Renewal (Year 2)	N/A	290.00	Fees rise annually.

7.2 The Hidden Costs of "Deemed Withdrawn"

While the RM 150 fee for Form 5E (Reinstatement) seems low, the true cost of missing a deadline is much higher.

Surcharges: Late payment often attracts a 100% surcharge on the original fee.
Legal Costs: Proving "unintentional delay" requires drafting statutory declarations and affidavits, which incurs significant attorney fees.
Risk of Loss: There is no guarantee MyIPO will accept the reinstatement. The cost of a lost patent is the potential loss of market exclusivity.

8. Strategic Case Studies

To contextualize these rules, we examine two hypothetical scenarios for a layperson client.

Case Study A: The "Tech Giant" (US-First Strategy)

Profile: A US software company files a PCT application, then enters Malaysia. They have a pending US application.

Timeline:

PCT Filing: Jan 2020.
Malaysia Entry: July 2022 (30 months).
Exam Deadline: Jan 2024 (48 months).

Dilemma: By Jan 2024, the US patent is not yet granted.
Strategy:

File Form 5B (Deferment) before Jan 2024. Pay RM 150.
This extends the deadline to Jan 2025 (5 years from filing).
Scenario 1: US Patent grants in Dec 2024. -> File Form 5A (MSE) immediately.
Scenario 2: US Patent still pending in Jan 2025. -> Utilize Regulation 27B. File Form 5 (SE) within 3 months (by April 2025). The application proceeds to full examination, ensuring it is not lost.

Case Study B: The "Local SME" (Direct Filing)

Profile: A Malaysian manufacturing company files directly with MyIPO.

Timeline:

Filing: Jan 2024.
Exam Deadline: July 2025 (18 months).

Constraint: Limited budget.
Strategy:

The SME cannot defer. Form 5B is not available because they have no foreign application to rely on.
They must file Form 5 (RM 1,100) by July 2025.
Cost Saving Tip: If the SME decides to abandon the application, the SME could save the RM 1,100 fee and future prosecution costs.

9. Conclusion: The New Rules of Engagement

The Malaysian patent system has evolved from a flexible, permissive regime to one that prioritizes efficiency and decisiveness. For the client new to this jurisdiction, the key takeaways are clear:

Deadlines are Rigid: The 18-month (Direct) and 4-year (PCT) deadlines are the single most critical dates in the prosecution lifecycle.
Deferment is Restricted: You can no longer buy time for a standard examination. Deferment is exclusively a tool for those waiting to use the cheaper Modified Examination (MSE) route.
The Safety Net Exists: The Regulation 27B "switch" mechanism allows you to aim for MSE but fall back on SE if foreign grants are delayed—but only if you act within the strict 3-month window.
Speed is Available: PPH and Expedited Examination offer viable paths for urgent commercial needs, provided the budget and documentation are in order.

Success in Malaysian patent prosecution requires not just invention, but procedural vigilance. By aligning your strategy with these statutory milestones, you ensure that your intellectual property remains a secured asset rather than a procedural casualty.

Disclaimer: This article provides general information based on the Patents Act 1983 and Regulations as of 2025. It does not constitute legal advice. Patent deadlines and fees are subject to change. Professional counsel from a registered Malaysian patent agent is strongly recommended for specific applications.

Don’t Be Fooled: How to Identify Unsolicited IP Services

2026-01-13T16:55:00.004+08:00

It has come to our attention that several of our clients have recently received unsolicited letters and invoices regarding the renewal of their Intellectual Property (IP).

Please be aware that these requests often come from private companies that are not affiliated with our firm.

How to spot these unsolicited notices: These notices are designed to look official. They often use names, acronyms, and formatting that mimic government correspondence. They may:

Create a false sense of urgency (e.g., "Your IP will expire immediately if not paid").
Demand payment of fees.
Imply that you must use their specific service to secure your rights.

Official Communication Channels Please remember that as your appointed patent and trademark agents, we track your deadlines and handle your renewals. If you receive a bill from a third party, do not pay it without verifying it first.

The Reality These companies are private entities. They have no authority over your IP rights. While they may technically offer to renew your IP, they may take your money without performing the renewal.

Our Advice You have already engaged us as your IP agents to manage your portfolio. We monitor your deadlines and will always notify you well in advance when a renewal is due.

If you receive a letter asking for payment:

Do not pay.
Check the sender. Is it from our firm? Is it from an official government email?
Forward it to us. We can confirm if it is a legitimate requirement or a solicitation to be discarded.

Innovation with Integrity: How Boon IP Aligns with SDG and ESG Standards

2025-12-25T17:16:00.003+08:00

In today’s global economy, Intellectual Property (IP) is more than just a legal necessity—it is a driver of sustainable economic growth. At Boon IP Enterprise, we believe that Patent and Trademark Agents play a critical role in the global ecosystem. We don’t just file paperwork; we safeguard the infrastructure of innovation.

As we move into 2026, Boon IP is proud to formalize our commitment to the UN Sustainable Development Goals (SDGs) and ESG (Environmental, Social, and Governance) principles. Here is how we are driving impact through our daily work.

The "Why": Our Commitment to the UN SDGs

Our mission aligns directly with Goal 9 (Industry, Innovation, and Infrastructure) and Goal 8 (Decent Work and Economic Growth). We view IP protection as the bridge between a raw idea and a commercially viable asset.

Bridging innovation and integrity

1. Fostering Domestic Innovation (SDG 9)

Target 9.5 & 9.b: We actively support technology development by providing high-quality, patent drafting. Our technical team works from "scratch" to ensure inventions are robustly protected.
Our Track Record: Since 2008, we have assisted top research institutions like the University of Malaya and Monash University Malaysia in protecting inventions that contribute to the technological infrastructure.

2. Securing Economic Growth (SDG 8)

Target 8.3: By helping entrepreneurs secure Trademarks and Patents, we enable them to formalize their creativity into tradable assets. This increases business valuation, attracts investment, and creates high-value jobs in the economy.

3. Enabling Partnerships (SDG 17)

Target 17.6: Patents are the currency of technology transfer. Our rigorous work ensures that technology can be safely shared, licensed, and commercialized across borders, facilitating international cooperation.

The "How": Our Focus on ESG Governance

While SDGs define our mission, ESG principles define our operations. As a professional service provider, our strongest contribution lies in the "G" (Governance).

Clients today—especially large corporations and government bodies—need partners who are low-risk and highly compliant. Boon IP stands on a foundation of strict professional ethics.

1. Regulatory Compliance & Ethics

As a Registered Patent Agent, we adhere to a professional code of conduct that guarantees the integrity of the IP system.

2. Data Privacy & Information Security

We prioritize the security of our clients' trade secrets. We utilize comprehensive Non-Disclosure Agreements (NDAs) and strict data handling protocols to ensure that your "Confidential Information"—from design logic to unfiled patent claims—remains secure.

3. Anti-Corruption & Transparency

We maintain a zero-tolerance policy towards corruption and bribery. Our business engagements are transparent, ensuring that we meet the compliance standards required by multinational corporations and government tenders. We attended the Corporate Integrity Development Programme (CIDP) and pledged compliance with the guidelines set by the Malaysian Anti-Corruption Commission (MACC).

The Boon IP Difference: "From Scratch" to Success

Our alignment with these global goals is not just theoretical; it changes how we work with you.

Because we are committed to SDG 9 (Innovation), we take the time to draft patents from zero (the "from scratch" approach), ensuring no technical nuance is lost. Because we are committed to ESG Governance, we ensure that this drafting process is handled with absolute confidentiality and legal rigor.

Ready to protect your innovation with a partner who values integrity? Contact Boon IP Enterprise today to discuss how we can secure your intellectual property assets for a sustainable future.

Protecting Your Brand: A Business Owner's Guide to Trademarks in Malaysia

2025-10-06T13:07:00.005+08:00

As a business owner, you pour your heart and soul into building your brand. You meticulously craft a name, logo, and identity that represents your unique offerings and resonates with your customers. But have you truly protect this invaluable asset? This is where trademarks come in.

A trademark isn't just a fancy symbol; it's a legal shield for your brand, preventing others from using something similar and confusing your customers. Without it, you leave your brand vulnerable to copycats, counterfeiting, and a diluted market presence.

So, let's break down the essentials of trademark applications in Malaysia, and how we from Boon IP, can make this crucial process seamless for you.

What You Need: Trademark Application Requirements

Before embarking on the application journey, here's what you'll typically need to have in order:

Your Proposed Trademark: This can be a word, phrase, logo, symbol, design, sound, smell, or even a combination of these. It must be distinctive and not descriptive of your goods or services.
Applicant Details: This includes the full name, address, and nationality/country of incorporation of the individual or company applying for the trademark.
List of Goods and Services: You'll need to specify the exact goods and/or services your trademark will be used for. These are categorized according to the international Nice Classification system. A common mistake is to be too broad or too narrow, so getting this right is crucial.
Date of First Use (if applicable): If you've already been using the trademark in Malaysia, you'll need to provide the date of first use.

The Trademark Application Process in Malaysia

The journey from application to registration involves several key steps, each with its own nuances:

Trademark Search (The Crucial First Step): Before you even think about filing, we must conduct a search of the MyIPO database. This step is designed to discover if any identical or similar trademarks have already been registered or are pending registration. A search saves you from potential rejection down the line and ensures your proposed brand name is available for you to own.
Filing the Application: Once the search confirms your mark is clear, we proceed with filing the formal application with the Intellectual Property Corporation of Malaysia (MyIPO). It's crucial that all details are accurate and complete to avoid delays.
Formal Examination: MyIPO will check if your application meets all the formal requirements, such as correct classification and complete applicant details.
Substantive Examination: This is a critical stage where a MyIPO examiner assesses your trademark for distinctiveness and checks for any existing similar trademarks that might cause confusion. They will raise objections if there are any issues.
Publication: If your trademark passes the examination, it will be published in the MyIPO official gazette for a period of two months. This allows third parties who believe they might be negatively affected to file an opposition.
Opposition Period: During the publication period, any interested party can oppose your trademark registration. If an opposition is filed, it will lead to a formal hearing process.
Registration: If there are no oppositions, or if any oppositions are successfully overcome, your trademark will proceed to registration! You'll then receive a Certificate of Registration, confirming your exclusive rights for 10 years from the filing date.

The entire process can take anywhere from 9 months to several years, depending on various factors like objections or oppositions.

The Undeniable Benefits of Trademark Registration

Why go through this process? The benefits are significant and long-lasting:

Exclusive Rights: You gain the exclusive right to use your trademark in relation to the registered goods and services. This means others cannot use it without your permission.
Legal Protection: A registered trademark provides you with legal recourse to prevent infringement. You can take action against those who copy or imitate your brand.
Brand Value and Asset: Your trademark becomes a valuable intellectual property asset that can be licensed, sold, or used as collateral. It significantly enhances your brand's equity and market value.
Consumer Recognition & Trust: A registered trademark builds trust and confidence with your customers. They know they are buying genuine products or services from you.
Deterrent to Infringement: The presence of a registered trademark (often indicated by the ® symbol) acts as a strong deterrent against potential infringers.
Expansion Opportunities: With a registered trademark in Malaysia, it becomes easier to expand your brand internationally.

How We Can Help You – Why Choose Boon IP

Navigating the complexities of trademark law can be daunting for business owners who already have so much on their plate. This is where a dedicated and experienced trademark agent from Boon IP, becomes your invaluable partner.

Expert Guidance: We will guide you through every step of the process, from initial search and filing to overcoming objections and handling oppositions.
Strategic Advice: We don't just fill out forms. We provide strategic advice on the registrability of your trademark, the appropriate classification of goods and services, and the best way to protect your brand in the long term.
Thorough Due Diligence: Before filing, we conduct trademark searches to assess the availability and distinctiveness of your proposed trademark, significantly reducing the risk of objections or oppositions.
Efficient Process Management: We ensure all deadlines are met, all paperwork is meticulously prepared, and communication with MyIPO is handled promptly and effectively.
Cost-Effective Solutions: By getting it right the first time, we help you avoid costly mistakes and delays that can arise from improperly filed applications.
Personalized Service: At Boon IP, you're not just another case number. We provide personalized attention and am always available to answer your questions and address your concerns.

Your brand is your business's identity and future. Don't leave it unprotected. Let's work together to secure your brand's legacy.

Ready to protect your brand? Contact Boon IP today for a consultation! ---

The Myth of the 'International Trademark': A Malaysian Business Owner's Guide to the Madrid Protocol

2025-09-24T17:19:00.001+08:00

As a trademark agent with 18 years of experience, one of the most exciting conversations I have with clients is about taking their brand global. Their business is thriving in Malaysia, and they have their sights set on markets like Singapore, China, the US, or Europe. Inevitably, the question arises: "How do I get an 'international trademark'?"

It's a question filled with ambition, but it's based on a fundamental misunderstanding. And today, I want to clarify it for every Malaysian business owner looking to expand.

The single most important thing to understand is this: There is no such thing as a single, worldwide trademark that protects you everywhere.

Trademark rights are, and always have been, territorial.

Think of it this way: your Malaysian company registration allows you to do business in Malaysia. It doesn't grant you the right to operate in Indonesia. Similarly, your trademark registration with the Intellectual Property Corporation of Malaysia (MyIPO) gives you exclusive rights to use that brand within the borders of Malaysia. It offers no protection in Thailand, Australia, or any other country.

To be protected in another country, you must register your trademark in that specific country, according to its national laws.

"So," my clients ask, "does that mean I have to hire lawyers in a dozen different countries and file a dozen different applications in different languages and currencies? That sounds like a nightmare."

Historically, yes. But today, there is a much more efficient solution: The Madrid Protocol.

What is the Madrid Protocol? A Centralised International Trademark Filing System, Not a Global Trademark

The Madrid Protocol is not a magic wand that grants you a global trademark. Instead, it is a highly efficient international filing procedure.

Administered by the World Intellectual Property Organization (WIPO) in Geneva, the Madrid Protocol is an international treaty that allows a trademark owner to seek protection in over 130 member countries by filing a single application through their home trademark office.

125 Years of Madrid System reached in 2016 (WIPO)

It's best to think of it as a central post office for trademarks. Instead of mailing separate application packages to every country yourself, you submit one package (your international application) to your local post office (MyIPO). You provide a list of addresses (the countries you want to be protected in), and the central post office (WIPO) ensures your application is dispatched to each of those national trademark offices.

To further deepen my understanding and expertise in this critical area, I undertook and successfully completed the WIPO course on the Madrid System for the International Registration of Marks, from May 4, 2021, to June 20, 2021. This certification reinforces my commitment to providing the most current and effective guidance on international trademark strategies.

Obtained Certificate in Madrid System in 2021

How it Works for a Malaysian Business

The process follows a clear path:

The Foundation: A Basic Mark in Malaysia. Before you can go international, you must have either filed an application or secured a registration for the same trademark with MyIPO. This is your "basic mark."
The International Application. You file a single international application through MyIPO, in one language (English), and pay one set of fees in one currency (Swiss Francs). In this application, you designate the specific Madrid Protocol member countries where you want to seek protection.
WIPO Formal Examination. MyIPO sends your application to WIPO. WIPO checks it to ensure it complies with all formal requirements and then records it in the International Register and publishes it. They then forward your application to the national IP offices of all the countries you designated.
The Crucial Step: National Examination. This is where the territorial nature of trademark law comes back into play. Each designated country's IP office will examine your application according to its own domestic laws and procedures.
- The United States Patent and Trademark Office (USPTO) will treat it as if it were a US application.
- The China National Intellectual Property Administration (CNIPA) will examine it under Chinese law.
- The European Union Intellectual Property Office (EUIPO) will examine it under EU law.

Each country has the full authority to grant or refuse protection. Approval in Malaysia does not guarantee approval elsewhere.

The Advantages are Clear, But So Are the Risks

Why use the Madrid Protocol?

Efficiency: One application, one language, one currency. It dramatically simplifies the initial filing process.
Cost-Effective: It is generally more affordable upfront than engaging separate lawyers in numerous countries simultaneously.
Centralised Management: Future management is easier. Renewals, or changes in ownership or address, can be recorded through a single, simple procedure with WIPO.

However, my 18 years of experience have taught me to advise clients on the potential pitfalls:

The "Central Attack" Risk: For the first five years, your entire international registration is dependent on your basic Malaysian application/registration. If your Malaysian mark is cancelled or limited for any reason during this period, your entire international registration will also be cancelled or limited.
It's Not a Substitute for Local Counsel: If a designated country (say, Japan) issues a refusal, you will still need to hire a local Japanese trademark attorney to handle the response. The Madrid Protocol gets your foot in the door; it doesn't fight the battles for you.
Not All Countries Are Members: While the list is extensive, some important commercial territories are not members. You will need to file directly in those places.

My Advice to You

The Madrid Protocol is a powerful and indispensable tool for international brand expansion. But it is a procedure, not a product.

Your international trademark strategy should not be about simply filing an application. It should be a considered business decision based on your goals for growth, your target markets, and your budget. Sometimes, filing directly in one or two key countries is a better first step. Other times, a broad Madrid application covering 20 countries is the right move.

Navigating this requires a strategic approach. Before you take the leap, let's have a conversation about where your brand is headed. Together, we can build a protection strategy that is robust, cost-effective, and right for your business.

Understanding Voluntary Copyright Notification in Malaysia

2025-09-23T18:07:00.001+08:00

We were privileged to assist Reams Technologies Sdn Bhd in securing a copyright certificate for their innovative "Reams Software." This crucial step provided Reams Technologies with the added legal certainty and proof of ownership they needed for their valuable software. The successful notification of their copyright through MyIPO has empowered Reams Technologies Sdn Bhd to confidently develop, market, and license their software, knowing their intellectual property is officially recognized and protected.Reams Software is an innovative tool designed to streamline and automate building maintenance schedules, with a particular focus on preventive maintenance strategies.

Picture of me and Yeoh Mun Foong, founder of Reams Technologies Sdn Bhd

Copyright is an essential legal protection for creators, safeguarding their original works from unauthorized use. In Malaysia, copyright protection is automatic upon the creation of an original work, meaning you don't have to register it to be protected. However, a voluntary copyright notification system exists through the Intellectual Property Corporation of Malaysia (MyIPO), offering significant advantages for creators.

What is Voluntary Copyright Notification?

Voluntary copyright notification is a process where creators can formally record details of their copyrighted work with MyIPO. While not mandatory for copyright protection, it serves as an official record and can be highly beneficial in proving ownership and deterring infringement.

Benefits of Copyright Notification

Opting for voluntary copyright notification offers several compelling benefits:

Prima Facie Evidence of Ownership: A copyright certificate issued by MyIPO acts as prima facie evidence in any legal proceedings. This means it is accepted as true unless proven otherwise, significantly strengthening your position in cases of infringement.
Deterrent to Infringement: The existence of an official copyright record can deter potential infringers. Knowing that the creator has formally documented their ownership makes it less likely for others to misuse the work.
Facilitates Licensing and Assignment: Having a clear, officially recognized record of ownership makes it easier to license your work to others or assign your copyright to another party. This provides greater certainty and security for all involved.
International Recognition: While Malaysian copyright is territorial, a local notification can be a useful document when seeking copyright protection or enforcing rights in other jurisdictions, often serving as a foundational piece of evidence.
Valuable Asset for Business: For businesses, copyrighted works like software, marketing materials, or design elements are valuable intellectual property assets. Notifying these works enhances their tangible value and can be crucial for mergers, acquisitions, or investment.

Works That Can Be Submitted for Notification

A wide range of original works can be submitted for voluntary copyright notification, including but not limited to:

Literary Works: Novels, poems, articles, scripts, textbooks, research papers, and literary compilations.
Artistic Works: Paintings, drawings, sculptures, photographs, and illustrations.
Musical Works: Compositions and arrangements.
Software: Source code, object code, and related documentation.

In conclusion, while copyright protection is automatic, voluntary copyright notification in Malaysia offers invaluable benefits that can significantly strengthen a creator's position. It provides a robust legal foundation, acts as a deterrent against infringement, and streamlines the management of your intellectual property. We encourage all creators to consider this important step in safeguarding their original works.

Mastering Intellectual Property Valuation: A Recent Course Recap

2025-07-07T11:19:00.000+08:00

I recently had the privilege of conducting the Kursus Penilaian Harta Intelek: Pendekatan & Strategi Penentuan Nilai Komersial (Intellectual Property Valuation Course: Approaches & Strategies for Commercial Value Determination). This two-day program, held on June 17-18, 2025, offered participants a deep dive into the critical aspects of valuing intellectual property (IP) assets.

The course, which took place from 8:30 AM to 5:00 PM at Aras 11, Menara MyIPO, PJ Sentral, was designed to equip attendees with the knowledge and practical skills needed to effectively assess the value of their organization's or business's IP assets. It was fantastic to see such an enthusiastic and engaged group of professionals eager to enhance their understanding in this vital area.

Why IP Valuation Matters

Intellectual property valuation is the process of determining the monetary worth of IP assets. It's not just an academic exercise; it's crucial for a wide range of business transactions. Whether you're looking at investments, mergers, acquisitions, or even navigating legal disputes, having a clear understanding of your IP's value is paramount. It allows businesses to make informed decisions, leverage their assets effectively, and protect their interests.

Key Approaches to IP Valuation

During the course, we explored the three primary approaches to IP valuation, each offering a unique perspective:

Cost Approach: This method estimates the value of IP based on the costs incurred to create or replace it. While straightforward, it doesn't always capture the full commercial potential of an IP asset.
Market Approach: This approach determines IP value by comparing it to similar IP assets that have been recently sold or licensed in the market. It relies on the availability of comparable transactions, which can sometimes be a challenge.
Income Approach: Often considered the most comprehensive, this method calculates the present value of the future economic benefits expected from the IP. This includes factors like projected revenues, cost savings, and royalty income.

We delved into the nuances of each approach, discussing their strengths, limitations, and the scenarios where each is most appropriate. Participants engaged in practical exercises, applying these methodologies to real-world examples, which helped solidify their understanding.

Looking Ahead

The course was limited to 30 participants, ensuring an interactive and personalized learning experience. The pre-registration deadline was May 30, 2025, and successful applicants were notified via email with payment instructions.

It was truly rewarding to facilitate this course and share insights into the dynamic world of IP valuation. I believe that a strong grasp of IP valuation is becoming increasingly essential for businesses in today's knowledge-driven economy.

8 Tips to Beat the Heat in Malaysia: Stay Cool and Comfortable

2025-03-03T18:59:00.001+08:00

Malaysia’s tropical climate is no joke, especially during Ramadan when the sun is blazing, and the humidity feels like a thick blanket. Fasting during the day can make the heat even more challenging, but with a few smart strategies, you can stay cool, comfortable, and energized throughout the holy month. Here are some practical tips to help you beat the heat and make the most of Ramadan.

1. Dress Smart: Choose Breathable Fabrics

What you wear plays a huge role in how you handle the heat. Opt for lightweight, breathable fabrics that allow air to circulate and sweat to evaporate.

Cotton: This natural fabric is a lifesaver in hot weather. It’s soft, breathable, and absorbs moisture, keeping you cool and dry.
Linen: Known for its lightweight and airy texture, linen is perfect for Malaysia’s climate. It dries quickly and doesn’t cling to your skin.
Avoid Polyester and Synthetics: These materials trap heat and moisture, making you feel sticky and uncomfortable. Save them for cooler days!

Pro Tip: Loose-fitting clothing in light colors (white, pastels, or beige) reflects sunlight and helps you stay cooler.

2. Stay Hydrated During Non-Fasting Hours

Dehydration can make the heat feel even worse. Make sure to drink plenty of water during sahur (pre-dawn meal) and iftar (breaking fast).

Water is Key: Aim for at least 8 glasses of water between iftar and sahur. Add a slice of lemon or cucumber for a refreshing twist.
Hydrating Foods: Include water-rich foods like watermelon, cucumber, and oranges in your meals. They help replenish fluids and keep you hydrated.
Avoid Caffeine and Sugary Drinks: These can dehydrate you, so limit your intake of coffee, tea, and sodas.

3. Plan Your Day Around the Heat

Malaysia’s sun is at its peak between 11 a.m. and 3 p.m. Try to schedule your activities to avoid being outdoors during these hours.

Indoor Activities: Use this time for prayers, reading, or light chores at home.
Shade and Fans: If you must go out, stay in shaded areas and carry a portable fan or umbrella.
Cool Showers: A quick cool shower during the day can help lower your body temperature and refresh you.

4. Eat Light and Nutritious Meals

Heavy, oily meals can make you feel sluggish and overheated. Focus on light, nutritious foods that provide sustained energy.

Sahur: Start your day with complex carbs (like oats or whole-grain bread), protein (eggs or yogurt), and fruits. Avoid salty foods that can make you thirsty.
Iftar: Break your fast with dates and water, followed by a balanced meal. Include grilled or steamed dishes instead of fried foods.
Cool Desserts: Treat yourself to refreshing desserts like cendol, ais kacang, or fruit salads to cool down after iftar.

5. Use Cooling Accessories

Sometimes, a little extra help is needed to stay cool. Here are some handy accessories to beat the heat:

Cooling Towels: Soak a small towel in cold water, wring it out, and place it on your neck or forehead for instant relief.
Portable Fans: Carry a handheld fan or use a battery-operated one to keep air circulating around you.
Misting Spray: A small spray bottle filled with water can be a quick way to cool down when you’re on the go.

6. Create a Cool Environment at Home

Your home should be a sanctuary from the heat. Here’s how to keep it cool:

Close Curtains and Blinds: Block out the sun during the hottest part of the day to keep your home cooler.
Use Fans or Air Conditioning: If you have air conditioning, set it to a comfortable temperature. If not, use fans to circulate air.
Cross-Ventilation: Open windows on opposite sides of your home to create a breeze and improve airflow.

7. Stay Mindful of Your Energy Levels

Fasting can make you feel more tired, especially in the heat. Listen to your body and take it easy when needed.

Rest When Necessary: Take short naps or rest breaks during the day to recharge.
Light Exercise: If you want to stay active, opt for light exercises like stretching or yoga in the early morning or evening.

8. Embrace Traditional Remedies

Malaysia has a wealth of traditional remedies to help you stay cool during Ramadan:

Honey and Lemon: Mix honey and lemon in water for a natural energy boost and cooling effect.
Herbal Teas: Try cooling herbal teas like chrysanthemum or mint after iftar.

Final Thoughts

Ramadan is a time of reflection, spirituality, and community, but the heat in Malaysia can make it challenging. By dressing in breathable fabrics like cotton and linen, staying hydrated, planning your day wisely, and creating a cool environment, you can beat the heat and fully embrace the blessings of the holy month.

Remember, it’s not just about staying physically cool—it’s also about maintaining a calm and positive mindset. May this Ramadan be a peaceful and fulfilling experience for you and your loved ones. Selamat Berpuasa!

Feel free to share this article with friends and family to help them stay cool during Ramadan! Let me know if you’d like to add more tips or customize this further. 😊

The Importance of Microorganism Deposits in Malaysia

2025-01-02T10:49:00.015+08:00

Patents can cover isolated bacteria, fungi, algae protozoa, plasmids and prions. One area that often requires special attention is the deposit of microorganisms, especially when it comes to patent applications involving biotechnological inventions. In Malaysia, the process of depositing microorganisms is essential for several reasons, and there are specific institutions where these deposits can be made.

Why Deposit Microorganisms?

Patent Requirements: When filing a patent application for an invention involving microorganisms, it is often necessary to deposit the microorganism in a recognized depository. This is because microorganisms cannot be adequately described in a written patent application. The deposit ensures that the microorganism is available for examination and reproduction, which is a requirement under the Budapest Treaty.
Preservation and Accessibility: Depositing microorganisms in a recognized depository ensures their long-term preservation and accessibility. This is crucial for scientific research and industrial applications, as it allows other researchers and companies to access the microorganism for further study and development.
Compliance with International Standards: The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure mandates that all member states recognize a deposit made in any one of the international depositary authorities (IDAs). This means that a single deposit is sufficient for patent procedures in multiple countries, streamlining the process and reducing costs.

What is the Budapest Treaty?

The Budapest Treaty, established in 1977, is an international agreement that simplifies the process of patenting biotechnological inventions involving microorganisms. Under this treaty, a single deposit of a microorganism with any recognized IDA is sufficient for patent purposes in all member countries. This eliminates the need for multiple deposits in different countries, making the patent process more efficient and cost-effective. The treaty also ensures that deposited microorganisms are preserved and made available for examination and reproduction, which is essential for the patenting process.

Where to Deposit Microorganisms

In Malaysia, the Universiti Putra Malaysia Microbial Culture Collection (UPM-MCC) (open exernal link) has been officially acknowledged as the first National Depository Authority (NDA) for microorganisms. UPM-MCC provides essential research support services and offers bacteria storage services under the Patent Deposit category, meeting a key requirement for filing patents related to microorganisms.

Additionally, microorganisms can be deposited in any IDA (open external link) recognized under the Budapest Treaty. This includes various institutions worldwide that meet the standards set by the treaty, ensuring that the deposited microorganisms are preserved and accessible for patent examination and other purposes.

When selecting a depository for microorganisms, several factors come into play:

Type of Microorganisms Accepted: Different depository accept various kinds of microorganisms. It's essential to verify whether the storage conditions of the depository can accomodate the specific type of microorganism you need to deposit.
Foreign Patent Applications: If you are planning to file a foreign patent application, you must choose an IDA. Currently, UPM is not recognised as an IDA.
Cost Considerations: The fees associated with depositing microorganisms can vary between depositories. Additionally, the logistics of transporting the microorganism can influence the overall costs.

WIPO Standard ST.26 for Sequence Listing

Patent applications that include nucleotide and/or amino acid sequence listings must include the sequence listing in WIPO Standard ST.26 file format. WIPO Sequence is a global software tool that enables patent applicants to prepare amino acid and nucleotide sequence listings compliant with WIPO standard ST. 26 as part of a national or international patent application. This tool helps ensure that sequence listings are standardised.

Conclusion

Depositing microorganisms is a crucial step in the patent application process for biotechnological inventions. It ensures compliance with international standards, preserves the microorganisms for future research, and makes them accessible for examination and reproduction. In Malaysia, UPM-MCC serves as a national depository, while IDA provide additional options for researchers and inventors seeking international protection. Patent applications that include sequence listings must be prepared according to WIPO Standard ST.26.

Musang King Durian: A Malaysian Delicacy Crowned with Geographical Indication

2024-10-10T16:38:00.001+08:00

Do you know how to identify Musang King durian?

In the lush landscapes of Malaysia, where the climate is as diverse as its culture, grows a fruit that has transcended its humble beginnings to become a global sensation. The Musang King durian, known locally as Raja Kunyit, is not just a fruit; it's a symbol of Malaysian pride and agricultural prowess. This blog post delves into the journey of Musang King from its origin to its recognition as a geographical indication in 2014, a testament to its unparalleled quality and unique provenance.

The Origins of Musang King Durian

The world of durians, often reverred as "King of Fruits," is rich with variety and history, none more fascinating than the tale of Musang King, a variety that has taken the fruit market by storm. At the heart of this durian dynasty is the Raja Kunyit which literally means turmeric king.

The durian was originally given the name "Kunyit" by Chung Chun Seng, the founder of this durian tree in the late 18th century, according to The Star. Before the tree died, Wee Chong Beng planted this durian in Tanah Merah, Kelantan. The Department of Agriculture registered the durian variety as D197 and acknowledge Wee Chong Beng as the breeder.

The durian gained popularity, and it is grown in Gua Musang. Tan Lai Fook brought a branch of Raja Kunyit tree from Gua Musang and grafted it to his durian tree in Raub, according to Wong Pui Yan, a researcher. Tan called it 'mao sheng wang' (毛生王).

Tina Chong: The Musang Queen

Tina Chong Yok Fong from Gua Musang, a formidable figure in the durian industry, played a pivotal role in popularizing the Musang King name, according to Berita Harian. The Chinese term 'mao shan wang' (猫山王) which literally means civet king is also promoted. Her dedication to the cultivation and promotion of this variety has earned her the moniker "Musang Queen." Tina's efforts in transitioning her orchard to predominantly Musang King trees have significantly contributed to the variety's fame and the high regard it holds today.

The Crowning Glory: Geographical Indication

In a move that solidified Musang King's status, the Malaysian government registered it as a geographical indication (GI) on March 13, 2014. This registration under GI2014-00001 recognizes the durian's specific geographical origin and the qualities that arise from it. The GI protects the name Musang King, ensuring that only durians grown in Malaysia that meet the stringent quality standards can bear this prestigious title.

The Musang King Experience

Musang King durians are celebrated for their buttery texture, robust flavor, and a hint of bitterness that durian aficionados cherish. The durian's husk is a dusky green with a distinctive star shape at the bottom, and its flesh—a deep, vibrant yellow—delivers a taste experience that is both complex and satisfying.

A Fruit with a Future

The Musang King durian's journey from a local delicacy to an internationally recognized brand is a narrative of Malaysian innovation and dedication. As the durian continues to captivate palates around the world, the geographical indication serves as a promise of quality and authenticity—a promise that Malaysia proudly upholds.

As we celebrate the Musang King, we also acknowledge the individuals like Wee Chong Beng, Tan Lai Fook and Tina Chong, whose passion and hard work have propelled this fruit to global acclaim. The Musang King durian is not just a fruit; it's a legacy that Malaysia will cherish and protect for years to come.

What Technology Managers Need to Know When Using Microsoft’s AI Tools - Assurances from Microsoft CEO

2024-05-10T11:13:00.010+08:00

In the rapidly evolving world of artificial intelligence (AI), technology managers are increasingly tasked with navigating a complex intellectual property (IP) landscape. As AI systems become more integral to business operations, understanding the nuances of software and copyright protection is paramount. In the recent keynote address of Microsoft CEO Satya Nadella in Malaysia on 2 May 2024, he gave several assurances that users can trust Microsoft AI tools.

Satya announcing USD2.2bil investment for cloud and AI in Malaysia

The first principle to consider is that “Your data is your data.” This tenet is foundational to the ethical development and deployment of AI technologies. It ensures that the data generated by an organization remains its property. This approach respects the proprietary nature of data and the competitive advantage it can confer.

Why Excluding User Data from AI Training is Important

The use of user data for training AI models has become a topic of significant ethical and legal debate. The crux of the issue lies in the balance between technological advancement and protection of data rights.

One of the primary concerns is the risk of data leak. AI systems, especially those employing large language models (LLMs), require vast amounts of data to learn and make predictions. If user data is used without consent, it could lead to unauthorized access to sensitive information, potentially resulting in identity theft, fraud, or other forms of cybercrime.

Satya provides assurances over Microsoft AI tools

Another critical aspect is indemnification against copyright litigation. As AI systems can generate content or perform tasks that may inadvertently infringe on existing copyrights, it is essential to have measures in place that protect users from legal repercussions.

Microsoft deploys a range of AI tools including Copilot, Azure and Dynamics 365. Copilot, which uses OpenAI's ChatGPT, is currently deployed in Bing, Windows, Office and GitHub ecosystem.

For technology managers, the intersection of AI and legal considerations presents both challenges and opportunities. By prioritizing data ownership, protection, indemnification, compliance, and ethics, managers can navigate the legal landscape effectively. As AI continues to shape the future of business, a proactive approach to these legal aspects will be a defining factor in the success and sustainability of AI initiatives.

In conclusion, the legal landscape of AI is intricate and dynamic. Technology managers must be vigilant and informed to ensure that their AI strategies are not only innovative but also legally sound and ethically responsible. By doing so, they can lead their organizations confidently into the future, leveraging the power of AI while upholding the highest legal and ethical standards.

Satya's full address in KL. He provides his assurances at 34:10

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This article serves as a guide for technology managers to understand and address the legal complexities of AI. It is not intended as legal advice. For specific legal concerns, consult with a qualified attorney.

Stop Fake Products From Draining Your Profits: Remove Counterfeits in Shopee & Lazada

2024-03-27T12:01:00.003+08:00

In today's booming e-commerce landscape, Shopee and Lazada are powerhouses for Malaysian businesses. But with this success comes a dark side – counterfeiting. Fake products not only damage your brand reputation but also steal your hard-earned profits. Here at Boon IP, we understand the frustration and can help you fight back.

The Problem of Counterfeits

Counterfeits hurt brand image, customer trust, and sales. Counterfeits are made with inferior materials and lack the quality control of genuine products. When customers receive an imitation, they associate that negative experience with your brand, even if they bought a fake.

Why Shopee & Lazada Removals?

Removing counterfeits on online platform is not just about protecting brands, it's about creating a trustworhy and positive experience for everyone involved. It benefits brands by ensuring a fair marketplace, protects customers from low-quality products and ultimately strengthens Shopee's & Lazada's reputation as a leading e-commerce platform.

Boon IP's Counterfeit Removal Service:

Our service involves identifying the seller and counterfeit products, crafting effective takedown notices, and handling communication with the platforms. Clients can focus on their business by saving time and effort.

Tel: 03-27262554 and visit website (boon.com.my).

Why Air Asia Wants to List Its Brand in Nasdaq

2024-03-03T15:07:00.002+08:00

Air Asia, the low-cost airline based in Malaysia, has announced its intention to list its brand in Nasdaq, the US stock exchange that hosts many technology companies. The move is part of the company's strategy to monetize its intellectual property (IP) assets and diversify its revenue streams.

According to Air Asia, its brand is valued at US$1.15 billion. The company has a separate entity, called Capital A International, that will own and manage the brand and other IP assets. Capital A International will then seek a listing in Nasdaq through SPAC merger, while the airline business will remain listed in Malaysia under the name of Capital A Berhad.

But why would Air Asia want to list its brand in Nasdaq? What are the benefits and challenges of such a move? Here are some possible reasons:

- To access a larger and more diverse pool of investors. Nasdaq is one of the largest and most liquid stock markets in the world, with a market capitalization of over US$20 trillion. By listing its brand in Nasdaq, Air Asia can tap into a wider and more sophisticated investor base that values innovation and growth. This could help the company raise more capital and increase its valuation.

- To unlock the value of its IP assets. By creating a separate entity for its IP assets and listing it in Nasdaq, Air Asia can unlock the value of its intangible assets and generate more revenue from licensing, franchising, and partnerships. This could also create a positive spillover effect for its airline business, as it can benefit from the increased brand awareness and reputation.

In conclusion, listing its brand in Nasdaq is a bold and ambitious move by Air Asia to monetize its IP assets. The move could bring many benefits for the company, such as access to more capital and investors, and unlocking of the value of its IP assets.

Dana IP 2.0 bagi 2024 telah Buka untuk Pemfailan Harta Intelek

2024-01-31T10:37:00.003+08:00

Dana IP 2.0 bagi 2024 telah buka untuk permohonan harta intelek. Dana IP 2.0 adalah inisiatif yang dilancarkan oleh Perbadanan Harta Intelek Malaysia (MyIPO) untuk membantu usahawan dan penemu dalam memfailkan permohonan harta intelek (IP) di Malaysia dan luar negara. Dana IP 2.0 menawarkan bantuan kewangan bagi setiap permohonan IP yang layak, termasuk cap dagangan, paten, reka bentuk perindustrian dan hak cipta. Tujuan dana ini adalah untuk menggalakkan inovasi dan kreativiti di kalangan rakyat Malaysia, serta meningkatkan kesedaran dan penghargaan terhadap nilai IP.

Dana IP 2.0 mempunyai beberapa syarat kelayakan yang perlu dipenuhi oleh pemohon, antara lain:

- Pemohon mestilah warganegara Malaysia atau syarikat SME yang berdaftar di Malaysia.

- Pemohon mestilah mempunyai idea atau produk yang baru, asli dan berpotensi komersial.

Pemohon yang berminat boleh mengemukakan permohonan secara dalam talian melalui portal MyIPO di https://www.myipo.gov.my/en/dana-pemfailan-harta-intelek-dana-ip-2-en/ atau menghubungi talian khidmat pelanggan MyIPO di 03-2299 8400 untuk maklumat lanjut.

Dana IP 2.0 adalah peluang yang baik untuk usahawan dan penemu yang ingin melindungi hak mereka terhadap idea atau produk mereka, serta meningkatkan daya saing dan kebolehjalan mereka di pasaran tempatan dan antarabangsa.

Boon IP merupakan sebuah syarikat yang menyediakan perkhidmatan pengurusan paten untuk pelbagai jenis projek inovasi. Syarikat ini telah berjaya membantu banyak pihak, termasuk institusi pendidikan, syarikat swasta dan individu, untuk mendapatkan pembiayaan dan perlindungan undang-undang bagi hasil kerja mereka. Antara contoh kejayaan Boon IP yang dapat kelulusan paten melalui Dana IP ialah:

- Paten MY187491A Kolej Vokasional Slim River 'Lock Reminder for Motorcycle Steering'

- Paten MY187619A Institut Kemahiran Belia Negara Kuala Perlis 'An Apparatus for Holding Impact Wrench'

- Paten MY197556A Institut Kemahiran Tinggi Belia Negara Temerloh 'Tool for Removal and Installation of Valve Pin'

- Paten MY185349A Noor Arjuna 'Device for Gripping and Storing Miswak Sticks'

Boon IP telah memberikan nasihat dan bantuan profesional dalam proses permohonan dan pendaftaran paten, tanpa mengenakan sebarang bayaran tambahan. Oleh itu, jangan lepaskan peluang ini dan mohon sekarang!

MyIPO Launches IPR Marketplace 2.0 Portal

2024-01-22T11:31:00.005+08:00

On January 18, 2024, the Intellectual Property Corporation of Malaysia (MyIPO) launched the IPR Marketplace 2.0 portal, a platform that connects intellectual property (IP) owners, buyers, investors and service providers. The portal aims to facilitate the commercialization and valuation of IP assets in Malaysia and beyond.

Screenshot of IPR Marketplace 2.0 Portal (iprmarketplace.myipo.gov.my)

MyIPO charman, Dr Mohd Zuhan hopes that this platform will encourage collaboration between local entrepreneurs and potential parties in the global market.

The IPR Marketplace 2.0 portal offers various features and benefits for its users, such as:

- A searchable database of IP assets for sale, licensing or investment opportunities

- A directory of IP valuers

- A dashboard that allows users to manage their IP portfolio and transactions

The portal also provides access to various resources and tools, such as:

- A guide on how to use the portal and its features

- A blog that shares news, updates and insights on IP-related topics

The IPR Marketplace 2.0 portal is open to anyone who is interested in IP, whether they are IP owners, buyers, investors or service providers. Users can register for free and start browsing, listing or contacting other users on the portal.

Screenshot of IP Valuer, Dennis Tan

As one of the IP valuers listed on the portal, I am excited to be part of this initiative and to offer my expertise and services to the IP community. I believe that the portal will help to create a vibrant and dynamic IP market in Malaysia and beyond, and to unlock the potential value of IP assets for the benefit of the economy and society.

If you are interested in learning more about the IPR Marketplace 2.0 portal or want to register as a user, please visit iprmarketplace.myipo.gov.my. You may also engage us by visiting www.boon.com.my.

How Malaysia Plans to Achieve High-Tech Industrialization by 2030

2023-09-04T21:44:00.005+08:00

Malaysia is a developing country that aims to become a high-tech industrialized nation by 2030. To achieve this goal, the government has launched the New Industrial Master Plan (NIMP) 2030, which outlines the strategies and actions to transform the country's industrial sector.

The NIMP 2030 is different from the previous industrial master plans, as it adopts a mission-based approach that focuses on four key areas: advancing economic complexity, teching up for a digitally vibrant nation, pushing for net zero, and safeguarding economic security and inclusivity.

Here are some of the highlights of the NIMP 2030 and what they mean for Malaysia's industrial development.

Enhancing Economic Complexity

Economic complexity refers to the diversity and sophistication of a country's productive capabilities and exports. A higher economic complexity indicates a higher level of knowledge, technology and innovation in the economy.

The NIMP 2030 aims to increase Malaysia's economic complexity index (ECI) from 1.07 in 2021 to 1.5 by 2030, to be on par with developed countries.

To do this, Malaysia has identified several potential clusters that can be developed, such as electrical and electronics, machinery and equipment, aerospace, medical devices, renewable energy, biotechnology, halal products, and creative industries.

Another key strategy is to increase the research expenditure to 3.5% of GDP by 2030, which would boost the innovation capacity and competitiveness of the industries. The plan also aims to strengthen the linkages between universities, industry and government to foster collaborative research and development.

One of the enablers for research and innovation is intellectual property (IP), which protects and rewards the creators of new knowledge and technology. The NIMP 2030 recognizes the importance of IP for industrial development and aims to improve the IP system in Malaysia.

Some of the initiatives include digitizing and accelerating IP applications; facilitating IP commercialization and monetization; and strengthening IP enforcement and protection.

Building SME's Capacity

Small and medium enterprises (SMEs) are the backbone of Malaysia's economy, accounting for 98.5% of business establishments, 38.9% of GDP, 48.4% of employment and 17.9% of exports in 2021.

The NIMP 2030 aims to enhance SMEs' capacity and resilience by helping them to upgrade their products, processes and business models; diversity their markets and customer segments; increase their productivity and efficiency; improve their quality and standards; adopt digitalization and automation; and integrate into regional and global value chains.

Some of the initiatives include providing technical assistance and advisory services; facilitating access to technology platforms and solutions; offering training and upskilling programs; and supporting branding and marketing activities.

Embracing ESG Principles

Environmental, social and governance (ESG) principles are a set of criteria that measure a company's performance on sustainability issues such as environmental protection, social responsibility, human rights, diversity, ethics and corporate governance.

The NIMP 2030 aims to embrace ESG principles as a core value of Malaysia's industrial development by promoting green growth, social inclusion and good governance across all sectors and industries.

Ministry of Investment, Trade and Industry

Some of the initiatives include implementing low-carbon policies and measures; encouraging renewable energy generation and consumption; reducing waste generation and increasing recycling rates; enhancing environmental management and compliance; ensuring fair labour practices and decent work conditions; supporting social enterprises and community development; improving corporate transparency and accountability; combating corruption and fraud; and strengthening stakeholder engagement and participation.

Conclusion

The NIMP 2030 is a comprehensive and ambitious plan that aims to transform Malaysia's industrial sector into a high-tech, high-value and high-impact engine of growth for the country. By enhancing economic complexity, creating supportive ecosystems, building SME's capacity and embracing ESG principles, the plan hopes to achieve Malaysia's vision of becoming a high-tech industrialized nation by 2030.

Klang Bak Kut Teh is Recognized as a Geographical Indication

2023-06-08T14:45:00.018+08:00

Klang bak kut teh is a soup-based dish that has been recognized as a geographical indication (GI) by Perbadanan Harta Intelek Malaysia (MyIPO), an agency under the Ministry of Domestic Trade and Costs of Living (KPDN). This means that Klang bak kut teh has a special connection to Klang city, where it originated and developed its distinctive flavour and reputation.

But what is geographical indication?

According to MyIPO, a geographical indication is a sign used on products that have a specific geographical origin and a reputation that are due to that origin. For example, Darjeeling tea is a geographical indication for tea grown in the Darjeeling region of India, which has a unique aroma and taste. Similarly, Yantai apple is a geographical indication for apples grown in the Yantai region of China, which are known for their crispness and sweetness. Other examples of geographical indications are Gruyere cheese from Switzerland, asam pedas Melaka and Sarawak pepper.

Klang bak kut teh is the first geographical indication that originates from Selangor to be recognized by MyIPO. This is a great achievement for the local bak kut teh industry and culture, as it showcases the rich heritage and diversity of Malaysian cuisine. The geographical indication was initiated by the Klang Chinese Chamber of Commerce and Industry (KCCCI).

Henry Golding said that his choice of Malaysia food for diplomacy is bak kut teh and he emphasized the Klang version. "Klang's has broth that's been brewing for generations [...] If it stops boiling, it'll grow this thickness of fur and bacteria. But, it's delicious!"

In Hokkien, bak kut teh means meat-bone tea. There are many bak kut teh sellers in the market. The original bak kut teh is served in a bowl without chilis, youtiao or vegetables. These are considered accompaniments in modern bak kut teh. Even soup refills are not provided by original bak kut teh sellers.

@dennisboonlengtan Klang bak kut teh recognized as a geographical indication. #klang #bakkutteh #geographicalindication ♬ Gong Xi Fa Cai - Lux-Inspira

Modern bak kut teh sellers are serving the dish with chilli padi, mushrooms and tofu pok. Specialty bak but teh sellers can be found in most Malaysia cities. Teluk Pulai, the introducer of claypot and soup refillls is probably the most common version available. Three bak kut teh sellers are recognized in the Michelin Guide.

Bak kut teh is recognized as a noun in Oxford English Dictionary. Other Malaysian English terms recognized are bak kwa, char kway teow, chicken rice, kopitiam, laksa, mamak, sotong and teh tarik.

Budapest Treaty on the Deposit of Microorganisms

2022-11-14T17:49:00.000+08:00

I attended the MyIPO webinar on Budapest Treaty on the Deposit of Microorganisms for the purposes of Patent Procedure on 8 November 2022. I would like to share eight points I learnt from the webinar.

1. Why Budapest Treaty?

Patents need to disclose how the invention works. There is some difficulty in explaining inventions involving microorganisms that are not publicly available. Hence, microorganisms deposited at international depositary authorities (IDAs) are recognized for fulfilling disclosure requirements.

2. What is the Budapest Treaty?

All states party to the Treaty are obliged to accept microorganisms deposited at any IDA as being valid for national patent procedure.

3. What is the benefit of the Budapest Treaty?

Deposit in one IDA is recognised by all states party to the Treaty. Applicants do not need to make a new deposit in each state in which patent protection is sought. Hence, it saves applicants money.

4. Who is IDA?

At the moment there are 48 recognised IDAs. The list of IDAs are available at WIPO. There are two in Australia, three in India, six in the UK and three in the USA. Each IDA provides a list of acceptable biological material and sets its own fee. No IDA is available in Malaysia or ASEAN.

5. Who can deposit at IDA?

Researchers on behalf of applicants can submit the deposit with IDA. An agent is not needed.

6. Any plan for NDA?

Any Malaysia organizations can apply to be a National Depositary Authority (NDA). The organization would need to fulfill several conditions such as storage requirement.

7. How to specify a deposit in a patent application?

After a deposit is made, the IDA and accession number is specified in the patent application. Hence, a patent application is prepared at the same time of the deposit.

8. Who can access deposited microorganisms?

The public would not be able to access the deposited microorganism. The public would need to appoint a competent and neutral person to access the deposited microorganism.

List of IPs in MySejahtera - What We Learn

2022-04-05T17:56:00.003+08:00

On 31 March 2022, Khairy Jamaluddin said that the Ministry of Health (MOH) owns the personal data, the app, the module, intellectual property, source code and trademark. "The data is secure, it's hosted on a server in Malaysia, and it's owned by MOH. Whatever happens in terms of (the) court dispute between two companies, that's nothing to do with us," reported Khairy. On 5 April 2022, the health minister stressed that MOH owns the data, the app's module and brand.

In the Apple Store and Google Play, MySejahtera is listed as an application developed by the Government of Malaysia to assist in managing Covid-19 outbreak in the country. There are 53 and 57 applications listed by the developer called the Government of Malaysia in the Apple Store and Google Play, respectively.

MySejahtera is owned by the Government of Malaysia in Google Play

As a MySejahtera user and an IP expert, allow me to share my insights on the IPs in MySejahtera as CSR.

MySejahtera is a computer program. It is written by programmers in source code. Instructions are written in source code on what the programmer intends the program to perform. Programs are usually in a computer language such as C or Java. The source code is then compiled into object code that acts as instructions to be carried out by the computer. Object code are computer codes in binary numbers - in a series of 1s and 0s.

Programmers usually hide source codes that are proprietary. The program that we download and execute are in object code. Microsoft software, Apple software and Adobe software are usually proprietary. Source code which are not proprietary are known as open source code. Unix software, Chrome software and Android software are open source. I'm not going to discuss further the difference of proprietary and open source code.

MySejahtera gathers and stores data. The personal data includes name, IC number, contact number, vaccination record, infection record and venue check in. There are 38 million registered users of MySejahtera.

Source code and object code are computer program in a computer language. Computer program are recognised as literary work in the Copyright Act 1987. The programmers that wrote the source code is considered as the author of MySejahtera. Authors have moral right over their literary work.

On the other hand, works which are eligible for copyright made under the direction of the Government shall vest in the Government. There is no dispute that MySejahera was developed under the direction of the Government.

List of Programs owned by the Government of Malaysia in App Store

Public data was entered by users under the instruction of the Government. Database is protected by copyright. Hence, I agree with Khairy that the Government owns the codes and database of MySejahtera.

I guess there are two questions that MOH need to address.

First, the use of the database. There is an ongoing concern that this information can be abused. Lowyat reported several incidences of personal data for sale. Personal data is a form of intangible data that can be easily replicated for a number of uses. Hence, it is extremely valuable. I suggest MOH to make it a crime over unauthorized use of MySejahtera database. Whistle blowers who report such abuse shall be rewarded and protected. This can ease public concern over the abuse of data.

Second, who shall maintain MySejahtera? I'm not sure that MOH knows how to handle the source codes. MOH would need a reliable vendor to maintain MySejahtera. The first choice would be the original programmers who have authored the source code, I personally recognise that IP should provide an advantage in public procurement. The government should recognize IP in order for the nation to generate more IP. The value of procurement is another matter that can be determined in fair valuation method. I believe that MOH and the vendor can agree over a common software as a service value.

These are my views based on news report which are not intended as legal advice. I wish MOH well in owning and managing MySejahtera. I would continue my daily use of MySejahtera for check ins.

Increasing Business Focus on Innovation Through Patent Portfolio

2022-01-19T13:25:00.001+08:00

Global organizations cite patent innovation as key to increasing competitive advantage amidst the pandemic

LONDON, Jan. 18, 2022 /PRNewswire/ -- Clarivate Plc (NYSE: CLVT), a global leader in providing trusted information and insights to accelerate the pace of innovation, today released a new report which highlights global insights into how organizations are using patents and patent data, challenges and opportunities, and the role of patents in driving the lifecycle of innovation.

As revealed in the Clarivate™ Patent Trend Report 2022, the organizations surveyed overwhelmingly view patents as a business driver, with the majority (75%) saying the primary purpose of their patent strategy is to enable further innovation. The results also show that the majority (69%) of patent portfolios have increased in the last 12 months, driven by increases in budget, greater C-suite buy-in and changes in business focus.

Key findings include:

Nearly half of respondents (45%) say their organizations have missed out on opportunities because the C-Suite was not engaged with their patent strategy.
More than half (57%) also say it has become harder to implement their patent strategy in the last 12 months with the top reasons being insufficient staff, data, budget and time.
Many are turning to outsourcing, with 45% already outsourcing between 26% to 50% of their patent activities.
Nearly half (44%) saying they will outsource more in the next 12 months.

There is positive change on the horizon, as these organizations say they think technology could provide better data analytics capabilities, better efficiency to enhance productivity and a real-time view of data. They also see AI adding the most value in patent analysis, search and licensing.

Gordon Samson, Chief Product Officer, Clarivate said: "The findings in this report reveal that patent protection and its role in the innovation lifecycle remain critical to businesses around the world. Despite the turbulent times faced over the course of the pandemic, organizations recognize the opportunities and value to be gained by usage of patent data. Clarivate is proud to be an experienced patent intelligence and lifecycle partner that can provide the insights to inform patent strategy – which could prove key to successfully navigating ongoing uncertainty and accelerating innovation in organizations around the world."

Methodology
Clarivate commissioned research into patent trends across key global regions, carried out by independent survey firm Vitreous World. The research sought the views of 275 IP and patent professionals, both in-house and external counsel, across seven countries/regions: the United States, United Kingdom, France, Germany, Mainland China, Japan and South Korea.

About Clarivate
Clarivate™ is a global leader in providing solutions to accelerate the lifecycle of innovation. Our bold Mission is to help customers solve some of the world's most complex problems by providing actionable information and insights that reduce the time from new ideas to life-changing inventions in the areas of science and intellectual property. We help customers discover, protect and commercialize their inventions using our trusted subscription and technology-based solutions coupled with deep domain expertise. For more information, please visit clarivate.com.

Media Contact
Rebecca Krahenbuhl, External Communications Manager
media.enquiries@clarivate.com

View original content to download multimedia:https://www.prnewswire.com/news-releases/clarivate-patent-trend-report-shows-increasing-business-focus-on-innovation-through-patent-portfolio-spend-301462632.html

SOURCE Clarivate Plc

Copyright (Amendment) Bill 2021 Approved - Works Distributed via Streaming and Related Offences

2022-01-07T18:47:00.012+08:00

Access to works for visually impaired under Marrakesh Treaty
Better Collective Management Organizations (CMO)
Works distributed via streaming technology and related offences - fine RM10,000 to 200,000, 20 years of prison or both

On 15 Dec 2021, Alexander Nanta Linggi, the Minister of Domestic Trade tabled a Bill to amend the Copyright Act 1987 in Dewan Rakyat, the lower house of the parliament. The first reading was made two days earlier.

Alexander Nanta Linggi

Parlimen Malaysia

We have compiled YouTube sessions of the tabling, debate and passing of the bill.

[4:11:07] Tabling of Copyright (Amendment) Bill 2021 for Second Reading. The text of the Bill in English and Malay.

[4:19:10] Debate by Members of Parliament: Debate by Members of Parliament: Choong Shiau Yoon (Tebrau), Wilfred Madius Tangau (Tuaran), Che Abdullah (Tumpat), Wong Hon Wai (Bukit Bendera), Sim Tze Tzin (Bayan Baru), Che Alias Hamid (Kemaman), and Cha Kee Chin (Rasah).

Alexander explained that the amendment is in line with Marrakesh Treaty to facilitate access for persons who are visually impaired to published works. He said the treaty provides exceptions in obtaining the approval of copyright owners to make and distribute reading materials in formats that are accessible to the visually impaired community.

Wilfred complained about low royalties received by Sabah musicians. He hoped the decentralization of Collective Management Organizations (CMO) can improve royalty collection. Alexander replied that MyIPO will issue guidelines for CMOs to ensure transparent royalty collection. CMOs are being set up for Sabah and Sarawak, respectively.

Kee Chin noted that a new part is added in relation to streaming technology. He asked if it would be an offence to buy an Android box to view legitimate content. Alexander replied that buying and using the Android box with legitimate service is not an offence. Parties involved in offering Android box that facilitates steaming of illicit content is an offence with a fine of RM10,000 to 200,000 or 20 years of prison, or both.

[5:17:38] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

There are 20 clauses in the Bill which was then tabled in Dewan Negara, the upper house of parliament by Rosol Wahid, the Deputy Minister of Domestic Trade on 22 Dec 2021.

Parlimen Malaysia

[1:41:38] Debate by members of the Senate: Kesavadas Achyuthan Nair, Mohd Apandi and Hajjah Wan Martina

[2:15:56] The second reading of the bill was agreed. The bill was tabled for third reading and passed.

** The Copyrights (Amendment) Act 2022 is in force since 18 Mar 2022 **

Patents (Amendment) Bill 2021 Approved - Patents Recognized as Personal Property

2021-12-18T14:45:00.041+08:00

Deposit of microorganism under Budapest Treaty
Patents recognized as personal property
Opposition procedure introduced

On 15 Dec 2021, Alexander Nanta Linggi, the Minister of Domestic Trade tabled a Bill to amend the Patents Act 1983 in Dewan Rakyat, the lower house of the parliament. The first reading was made two days earlier.

Alexander Nanta Linggi

Parlimen Malaysia

We have compiled YouTube sessions of the tabling, debate and passing of the bill.

[2:39:14] Tabling of Patents (Amendment) Bill 2021 for Second Reading. The text of the Bill in English and Malay.

[3:15:20] Debate by Members of Parliament: Choong Shiau Yoon (Tebrau), Shaharizukirnain (Setiu), Wong Hon Wai (Bukit Bendera), Mohamed Hanipa (Sepang), Nurul Izzah (Permatang Pauh), and Cha Kee Chin (Rasah).

Alexander stated that patents would be recognized as a personal property, hence, patents can be mortgaged at financial institutions. He also explained that IP Journal is chosen to publish granted patents instead of Government Gazette to speed up the registration of patents.

Alexander added that compulsory licensing allows the government to address public health issues involving medicine. On the other hand, Budapest Treaty is acknowledged to formalize an international mechanism to recognize inventions involving microorganisms. Applicants would need to deposit microorganisms once to enjoy patent recognition among members of the treaty.

He announced that an IP Fund of RM1 million annually is allocated to encourage IP filings among SMEs, polytechnic, students and youth.

Third party observation and opposition is introduced in the amendment to strengthen the quality of patents. In line with developed countries, third parties can participate in the patent application process.

The amendments took into consideration Malaysia's commitment in the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) relating to public health, Regional Comprehensive Economic Partnership (RCEP) and Progressive Agreement for Trans-Pacific Partnership (CPTPP).

[4:08:21] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

There are 69 clauses in the Bill which would need to be tabled in Dewan Negara, the upper house of parliament. We will provide our commentary on the amendment in the future. Stay tuned!

- 22 Dec 2021 update -

On 22 Dec 2021, Rosol Wahid, the Deputy Minister of Domestic Trade tabled the Bill to amend the Patents Act 1983 in Dewan Negara, the upper house of the parliament.

Parlimen Malaysia

[58:33] Tabling of Patents (Amendment) Bill 2021 for Second Reading.

[1:05:46] Debate by Members of the Senate: Razali Idris and Mohd Apandi.

[1:31:44] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

** The Patents (Amendment) Act 2022 is in force since 18 Mar 2022 **

Building value and growth for small businesses

2021-04-26T17:31:00.001+08:00

By Julian Crump, President of the International Federation of Intellectual Property Attorneys (FICPI)

There's a myth that protecting intellectual property (IP) is the preserve of larger firms and is unsuited to smaller and medium-sized enterprises (SMEs).

While large companies invest in IP for good reasons – to protect their products and services, discourage competition and create new revenue streams for themselves – IP undoubtedly benefits smaller businesses too.

SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.

In fact, the evidence is that SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.

A 2019 EPO/EUIPO study demonstrated that SMEs that have at least one IP right are 21 percent more likely to experience a growth period. Meanwhile, a 2021 update to the study found that fewer than 9 percent of SMEs owned at least one of the three main IP rights (a patent, trademark and design). By contrast, the figure is close to 60 percent for larger firms. This reveals a shocking disparity in the use of such a valuable business tool.

The value SMEs gain from protecting their IP assets comes in many forms

As well as serving as the current president of FICPI, I am a Chartered UK and European Patent Attorney, and a partner in the firm of Abel + Imray in London, Bath and Cardiff, UK and Spain. To look for examples of SMEs that use IP protection as a key element of their business success, my partners and I reviewed our list of clients. We did not have to look far.

Several years ago, aircraft seating designers Acumen Design Associates moved from a consultancy model (with revenue based on project fees), to also creating their own designs, which are then patented. Today, a major part of Acumen’s revenue comes from issuing licenses for the use of their protected designs. (Photo: Courtesy of Acumen Design Associates)

The results are instructive and hugely encouraging for other SMEs:

Growing license sales and royalty revenue - Several years ago, market-leading aircraft seating designers Acumen Design Associates, led by founder Ian Dryburgh, moved from a consultancy model, with revenue based on project fees, to also creating their own designs, which are then patented. Today, a major part of Acumen’s revenue comes from issuing licenses for the use of their protected designs - including a large deal in 2016 with United Airlines for business class seating.
Winning venture capital (VC) funding - XYZ Reality Ltd., has won numerous accolades for a highly accurate, “engineering grade” augmented reality (AR) solution which ensures building construction matches exactly the architects’ drawings. Their solution avoids problems with traditional site setting-out methods and penalties for errors. The patent application was complicated, involving multiple disciplines from advanced engineering to AR and physics. A positive opinion on the application from the European Patent Office (EPO) helped XYZ Reality secure venture capital (VC) funding.

Over and above the underlying product or service it protects, IP is a valuable asset in its own right. Indeed, it can become a company's most valuable asset.

Making SMEs more valuable for acquisition - Siltbuster Limited is recognized as the UK’s top provider of on-site water treatments and is a winner of the Queen’s Award for Enterprise. A big factor in its success has been the patenting of breakthroughs by the company’s founder, Dr Richard Coulton, who began with a vision of treating concrete wastewater at construction sites in a more environmentally friendly way. In 2018, the technology caught the eye of Workdry International, which ended up purchasing Siltbuster – and its IP.
From university research to university spin-out - A research project at University College London investigating how to transfect cells using siRNA morphed into a small company, NanoGenics Limited. A few years – and several research cycles – later, NanoGenics developed LipTide^® to target selected genes and better combat cancer. The company sold the associated IP rights for GBP 4.5 million (approx. USD 6.2 million), helping their cutting-edge medical development advance to commercialization.
Using trade secrets to stay under competitor radar - Today, Rheon Labs Ltd., which makes protective body wear for high-impact sports, is a strategic and sophisticated user of IP. Initially, they relied on trade secrets to protect selected aspects of their IP, staying under their competitors’ radars (rather than filing patent applications, which are automatically published after 18 months). However, once others started encroaching on their field, Rheon Labs pivoted to patenting. This put their technology into the public domain, but in return they gained 20 years of exclusivity and their competitors must now devise their own new and inventive products if they wish to secure their own patents.

Rheon Labs Ltd., who make protective body wear for high-impact sports, is a strategic and sophisticated user of IP. (Photo: Courtesy of Rheon Labs Ltd.)

Trademarks to underpin commercial partnerships - The Rheon Labs^® trademark was registered early, when pre-filing searches indicated there were few third-party rights that might prevent its use. As the company grew and moved into the realm of collaborations and commercial partnerships, water-tight non-disclosure agreements (NDAs) and design registrations were added to its IP estate. Rheon Labs^® now has strong brand recognition, and the company benefits from valuable goodwill in its name. Registration serves to lock in that value, provides a visible sign of ownership, and facilitates co-branding with partners like Xenith LLC, a top American football helmet manufacturer, whose products now carry the Rheon Labs^® trademark, and are recognized for reducing concussive impacts and associated brain injuries, alongside their own. Without registration and water-tight licensing arrangements, allowing a third party to apply your trademark to their goods would put you at risk of losing it. Registration typically protects a company’s marks for 10 years, but with the advantage that they can be renewed in perpetuity – as long as they don’t become generic terms.
Creating valuable IP assets to demonstrate market potential - Ceres Power is a company with patented "deep technology" that has a wide range of clean energy applications and has become a hugely valuable asset. However, had commercialization specialists, IP Group Plc, not stepped in at a critical moment, the company would likely have declared bankruptcy following the failure of initial field trials. IP Group works with early-stage companies that own IP originating from university research to get them to a point where they can demonstrate the real-world viability of their technology to attract co-investment from large corporates and ultimately acquisition. IP Group's Dr. Rob Trezona told me, "IP is a table stake. If our portfolio companies haven't secured their IP rights, they won't be able to raise finance. And typically, investors are looking for a number of patents rather than one or two." Key to IP Group’s successful turnaround of Ceres was the realization that its world-class IP position would allow it to generate more value as a technology provider that jointly develops and licenses technology than as a vertically integrated manufacturing business. The company has partnered successfully with Bosch, Doosan and Weichai Power to develop products for data centers, distributed generation and heavy road vehicles, and is able to generate value for itself through license fees and royalties.

NanoGenics Limited, an innovative, research-based gene therapy company, sold IP rights for its LipTide® therapy for GBP 4.5 million (approx. USD 6.2 million), helping their cutting-edge medical development advance to commercialization. (Photo: Courtesy of NanoGenics Ltd.)

These examples illustrate how, over and above the underlying product or service it protects, IP is a valuable asset in its own right. Indeed, it can become a company's most valuable asset. Without doubt, there will be countless other examples among the clients of other IP firms worldwide.

IP rights create a protective wrapper around an intangible asset – locking in value and making it tradeable, through licensing, pooling, securitization or acquisition. Without IPRs, investments made by companies in developing new products and processes, or even in simply devising new product ideas, are at risk. It's a bit like creating a beautiful garden without putting up a fence to keep the rabbits out!

Without the help of a specialist IP attorney, an SME is unlikely to be able to identify the important points of novelty or broad utility of their inventions, which are vital for a successful IP strategy, or may simply be defeated by the registration process.

Indeed, for SMEs, tackling IP protection can seem impossible. Seeking to obtain patent, trademark and design rights is complex. There are relatively few "self-filers", and of those few, the majority abandon their applications or are unsuccessful in gaining granted rights.

As a patent attorney, I obviously have a self-interest in pointing out the depth and sophistication of the services offered by independent IP professionals to SMEs.

IP rights create a protective wrapper around an intangible asset – locking in value and making it tradeable through licensing, pooling, securitization or acquisition.

However, given the stakes, the clear evidence that SMEs holding IP rights prosper relative to others that do not, and the all-too-frequent failure of SMEs to complete the application process on their own, the conclusion is clear.

SMEs should look to protect their IP assets to support and accelerate their growth by locking in the value of their IP and building intangible assets which can be used to underpin a wide variety of different business models, with innovation at their core.

Independent IP attorneys bring wide experience from advising a broad range of different clients. They can look beyond the immediate applications of an invention to focus on its points of novelty, giving the patents a longer useful life as the businesses they protect flex and adapt to new markets and are made more attractive to investors.

The investment an SME makes in partnering with an independent IP professional has a significant return, not only in terms of a successful application, but also for its future as the owner of IP rights.

XYZ Reality Ltd., has developed a highly accurate, “engineering grade” augmented reality (AR) solution which ensures building construction matches exactly the architects’ drawings. A positive opinion on the application from the European Patent Office (EPO) helped the company secure venture capital funding. (Photo: Courtesy of XYZ Reality Ltd.)

WIPO Magazine

Patents in 5G

2021-04-20T14:36:00.012+08:00

THE TECH OF TOMORROW - EPISODE 2 -

INNOVATIONS AND COMMERCIALISATION

As one of the top ten companies regarding the number of declared 5G patent families in 2020, Oppo has filed over 3,600 families of global patent applications, declared over 1,400 families of 5G standard patents to the ETSI, and submitted more than 3,000 5G standard-related proposals to 3GPP by the end of December in 2020.

So just how important are patents and intellectual property in the 5G world, and how might that affect consumers?

In the second episode of the Tech of Tomorrow, Richard Bradbury speaks with Henry Tang and Dennis Tan about innovation and commercialization.

The podcast is available here.