Friday, September 6, 2019

My Wish for Patents Bill Amendment

The Trademarks Bill 2019 was passed in parliament this year.

I have 16 years experience in preparing patent applications for Malaysia universities, agencies and SMEs. According to Patents Act, utility innovation provides protection for innovation that does not need to fulfill inventive step.

Utility innovation is known as utility model in Germany, Japan and China. China made use of utility model to introduce many innovations to the market. Utility model is cost effective - there is no mandatory substantive examination. Innovators can get a grant in 6-12 months and market their innovation.

Currently, Malaysia utility innovation needs substantive examination. It takes at least 4 years to get the grant. Malaysia innovators have trouble commercializing innovation without the grant.

I propose the following provisions for utility innovations:
1. Remove requirement for substantive examination for utility innovations
2. Introduce post grant substantive examination as requirement for enforcement. Currently, most defendant in patent litigation files invalidation proceeding.
3. Allow multiple claims. I don't understand why Malaysia limits utility innovation to single claim when other countries allow multiple claims. It would be difficult for the same innovation to be protected in other countries.

Benefits of proposed utility innovation:
1. Applicants can save substantive examination fees
2. Applicants can save fees in replying to patent examiner
3. Applicants can gain utility innovation in relatively quick time so that it can be marketed quickly
4. Applicants get same rights as patent rights to make, use, and sell innovation
5. Innovation has multiple claims to fall back if main claim is invalidated
6. Patent examiners to be relived burden of examining utility innovation

I believe these provisions will help innovators to launch innovation in market. We need innovation to boost entrepreneurship and SME.

Sunday, September 1, 2019

Who Wrote the Lyrics for Setia?

This year's National Day is celebrated with a Setia song by our Agong and Malaysia Cabinet. The Setia song which means loyalty is a song produced by RTM in 1987. The New Straits Times reported that the song was shown everyday that some regard the song as the second national anthem.

There are several parties that contributed in producing the patriotic song. Someone wrote the lyrics, someone wrote the melody, someone arranged the song, someone performed the song, someone recorded the song, and someone released the song.

Tan Sri Mohamed Rahmat, also known as Tok Mat, was appointed as the Information Minister in 1987. In an interview with Astro Awani, Habsah Hassan, a lyricist claimed that she was approached by Tok Mat to write a patriotic song. She submitted a sheet of lyrics to him.

Datuk Ahmad Dasillah, a former director of RTM Orchestra composed the music for Setia.

"After the song was prepared, I presented the song to (Tok Mat's) office. We sang the melody together," Ahmad said in an interview with Astro Awani.

Tok Mat was not satisfied with the lyrics and made several changes to the lyrics.

Francissca Peter was chosen as the singer for Setia. She was accompanied by a group of students. The song was recorded in a studio in Chow Kit and released.

Tok Mat considered the song a success that even non-Malays sing the song.

RTM credited Ahmad as the composer and Tok Mat as the lyricist. As the producer, RTM would be the copyright owner of Setia.

Habsah, in recent years found out that she was not credited as one of the co-author of Setia, even though she was the former Chairperson of Music Authors Copyright Protection (MACP).

Who wrote the lyrics for Setia? Tok Mat or Habsah?

Copyright protects expression of idea. Copyright protects the choice and arrangement of words used to express an idea. An analysis will need to be performed to separate ideas and expression of ideas in lyrics submitted by Habsah. A comparison of lyrics will then need to be performed if the expression of ideas remain in current Setia.

I have no intention to dispute the original lyrics of Setia. I don't have access to the development of lyrics.

I wish to point out problems faced by genuine talents in submitting ideas to the government. The government invites ideas and documents from the public. I am aware that the government reserves the right to accept and modify ideas submitted. I believe genuine talents would like their efforts to be acknowledged. Acknowledgement of talents is important to cultivate a healthy pool of genuine talents.

Selamat Hari Kebangsaan!
Dennis Tan

Thursday, July 25, 2019

Five things to note about GII2019

The Global Innovation Index 2019, which rank countries according to innovation investment and output was released on 24 Jul 2019. We present five things to note about GII:

1. Malaysia maintained rank 35th in GII and 2nd among upper middle income countries

Malaysia leads in high tech exports (34.1% of total trade) and creative goods exports (9.8% of total trade). Malaysia needs to improve PISA score (412.7); and patent (1.2 /bn PPP$ GDP), trademark (20.9 /bn PPP$ GDP) and industrial design (0.6 /bn PPP$ GDP) application by origin. Top patent applicants are government institutions instead of private companies. Only 1.2 patent applications are filed over 1 billion PPP$ GDP.

2. China improved three spots to 14th in GII and still 1st among upper middle income countries

China has good marks in high tech exports (27.9% of total trade), creative goods exports (11.9% of total trade); and patent (53.7 /bn PPP$ GDP), trademark (238.7 /bn PPP$ GDP) and industrial design (26.3 /bn PPP$ GDP) application by origin. China private companies recognize high investment and output in intangible assets. Top patent applicants are Huawei, ZTE and BOE.

3. Vietnam improved three spots to 42 in GII and higher output than Malaysia

Vietnam has been outperforming peers for the 9th consecutive year. Vietnam (37th) has higher innovation output rank compared to Malaysia (39th) even though Malaysia has higher investment in innovation. Vietnam has improvements in human capital and research, market sophistication and knowledge, expenditure on education, high tech imports and trademark (85.3 /bn PPP$ GDP) applications of origin.

4. Switzerland, Sweden and USA lead the GII

Global government expenditures in R&D (GERD) grew by 5% while business R&D expenditures grey by 6.7%. The world is investing in R&D and producing innovation. Private companies lead patent applications.

5. Medical technology is the most frequent patenting field - present in 19 clusters

According to GII, the convergence of digital and biological technologies is disrupting healthcare and increasing the importance of data integration and management across the healthcare ecosystem. Innovation in the field of health now massively evolves around big data, the internet of things and artificial intelligence, entailing huge power shifts within and away from the health sector.

Our analysis:
Malaysia rank no. 1 in high tech exports. We need government and private companies to recognize the importance of innovation investment and output. Malaysia has low intangible asset output over GDP. The government needs to ask why private companies are not proportionally reinvesting income in producing intangible assets. We have high number of graduates in science (rank 8th in GII). What can the government do to give confidence to private companies to invest in innovation? Can government linked companies lead the way? Can government appoint the right person to lead the way? Can Malaysia stay competitive in innovation?

Tuesday, July 16, 2019

The Most Valuable Artwork: Mona Lisa

According to Guinness World Records, the Mona Lisa has the highest insurance value ever for a painting in history. In 1962, the painting was assessed at U$100 million. If inflation and surge in art prices are taken into account, the painting is estimated to be worth $2.5 billion in 2014, according to France 24.

Mona Lisa, a masterwork of Renaissance was painted by Leonardo da Vinci in early 16th century. It is described as the best known, most visited, most written about, most sung about, and most parodied work of art in the world, according to The Independant.

Leonardo is the most celebrated man during the Renaissance as an artist, engineer and inventor.

"Leonardo is ranked among the most influential artists in history. He lived in the boom of the Renaissance, a golden age of social and cultural change, a period in history characterized by an enthusiastic fervor towards intellectual pursuits and creativity," says Eliana Salvi, cultural officer of the Embassy of Italy in Kuala Lumpur.

She notes that Leonardo saw the entire world as the great machine of the world, as he call it, a work of art that is to be studied through curious eyes, and paintings as a way to understand and record what he saw, the physical world as well as the contained emotions.

The Mona Lisa painting shows a half length portrait of Lisa Gherardini, which was commissioned by her Italian husband. In Italian language, Mona means madam. It was bought by King Francis I of France which become the property of France. It is displayed at the Louvre, Paris since 1797.

Why the Painting is Valuable?

In 1911, the painting was stolen from the Louvre. The incident created headlines and copies of print out around the world. The copyright for the painting would have long expired. The painting was recovered in 1914. The Louvre then invested heavily in security to prevent such theft from happening again. There are many copies made but there is only one original copy painted by Leonardo.

To commemorate the 500th year of Leonardo da Vinci's death in 1519, a life size digital exhibition of seventeen paintings of Leonardo da Vinci will be held at the National Art Gallery from 15 July to 15 August. Admission is free. The traveling exhibition called 'Leonardo da Vinci: Opera Omnia', which means the incredible exhibition of Leonardo da Vinci is conceived by the Italian public television subsidary RaiCom with the support of the Italian Ministry of Foreign Affairs and International Cooperation.

Monday, July 8, 2019

Notice on Deferral of Reply Period to Trademark Office

On 26 June 2019, the director general of MyIPO issued notice 4/2019.


SILA AMBIL MAKLUM bahawa Pendaftar telah bersetuju tarikh akhir mengemukakan maklumbalas atau bayaran terhadap surat pejabat yang telah keluarkan mulai dari 01 Oktober 2018 sehingga 30 Jun 2019 dianjakkan kepada 30 September 2019.
Notis ini tidak terpakai terhadap kes-kes bangkangan dan pembaharuan.
NOTIS INI berkuatkuasa dari 1 Julai 2019

Dato’ Mohd Roslan Mahayudin
Pendaftar Cap Dagangan
Perbadanan Harta Intelek Malaysia (MyIPO)
26 Jun 2019

My translation of notice 4/2019:

Notice on Deferral of Reply Period to Trademark Office

Please be informed that the Registrar has agreed to defer the due date to forward reply or payment with regards to office communication issued from 1 October 2018 - 30 June 2019, to due date of 30 September 2019. This notice is not applicable to cases involving opposition or renewal.
This notice carries effect from 1 July 2019.

Dato' Mohd Roslan Mahayuddin
Registrar of Trade Marks
26 June 2019

Thursday, July 4, 2019

Malaysians Can File International Trademark

YB Chong Chieng Jen, deputy minister of Domestic Trade introduced the long awaited Trademarks Bill 2019 in parliament on  9 April 2019. The Bill introduced several internationally practiced measures to improve trademark recognition in Malaysia. The bill was passed on 1 July 2019.

Malaysians can file a single international trademark application to designate 121 countries and territories which are members of Madrid Protocol. Before the introduction of Madrid Protocol, trademark owners need to spend time and money to file applications in multiple countries which incur translations and hiring or representative in each country.

Screenshot of Nestle spokesman (Source: WIPO)

"I encourage all companies to use the Madrid System as much as they can," exclaimed a Nestle spokesman.

"The most effective global trademark system for the borderless network era," remarked a Sony representative.

There are over 1.3 million trademarks registered in the Madrid System, according to World Intellectual Property Office (WIPO).

In 2018, US based applicants (8,825) filed the largest number of international trademark applications followed by  Germany (7,495), China (6,900), France (4,490) and Switzerland (3,364). Novartis AG (174) heads the list of top applicant, followed by L'Oreal (169), Daimler (129), Apple (87) and Henkel (86).

The most popular class of goods relate to computers and electronics (10.1%) followed by business services (8%), technological services (6.7%), education and leisure services (4.8%) and apparel (4.3%).

5 Things To Know About Trademarks Bill 2019

Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen. — Picture by Firdaus Latif

The Trademarks Bill 2019 was passed by Dewan Rakyat on 1 July 2019. It is intended to replace the current Trade Marks Act 1976. Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen said that expansion of trademark protection scope was necessary, according to Malay Mail/Bernama.

We present '5 Things To Know About Trademarks Bill 2019' after reading the bill.

1. Shape of goods, sound, scent, hologram, sequence of motion can be registered

The subject matter of trademark includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. The scope of trademark matter is expanded to be in line with international practice of trademark matters.

The shape of goods must be distinctive in that it is not a result of the nature of the goods, for example Toblerone chocolate. Example of distinctive sound marks include 20th Century Fox fanfare.

2. Trademark applications identical as unregistered well-known mark are refused

The scope of well-known trademark has been expanded to any trademark that is well-known in Malaysia whether or not that person carries on business, or has any goodwill in Malaysia. It means that the Registrar can cite an unregistered mark to refuse an identical trademark application.

To increase the chances of trademark registration, a local search shall now be expanded to an international trademark search. We have more than 10-years of experience conducting international patent search. We can adapt patent search strategy into international trademark search to reduce chances of international citations.

3. Trademark applications similar as unregistered well-known mark for similar goods or services could be refused

The Registrar could cite an unregistered mark to refuse a similar trademark application for similar goods or services. We foresee that the threshold of refusal could be increased after the implementation of Trademarks Bill. We were informed by a source that the Bill could be implemented in January 2020. Trademark applications submitted in 2020 will then be examined according to the Bill.

4. A bundle of foreign trademarks can be filed based on local registered mark

Malaysians can file a bundle of foreign trademarks in a convenient and cost effective manner. Malaysia will join Madrid Protocol, an international treaty to allow applicants to file trademark in multiple countries in a single application.

We have more than 10-years of experience in international patent application. We can adapt patent application strategy into international trademark application strategy.

5. Trademarks are recognized as security asset

The recognition of trademark as security asset will enhance the value of trademark as an asset. Trademark could be used as a security for flexible financing options.

The full text of the Trademarks Bill.