RCEP: No Term Extension for Patents and Copyright

 

 

 

 

On 15 Nov 2020, Malaysia signed the Regional Comprehensive Economic Partnership (RCEP) along with 9 ASEAN members, Japan, China, South Korea, Australia and New Zealand. It is the largest regional free trade agreement in the world which accounts for 30 percent of world population and economy.

It aims to reduce tariffs and cost for trade between countries. It also touches on intellectual property.

In 2018, Malaysia has signed the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP). According to CPTPP, members must provide patent term extension for delays in pharmaceutical approval. The copyright term for published works is 70 years minimum. Australia, Canada, Japan, Mexico, Singapore and New Zealand have ratified the CPTPP. Malaysia has not given any indication on when the CPTPP will be ratified.

I have participated in several CPTPP discussions. A few people have raised displeasure over the patent term extension. Malaysia produces a number of generic medicines.

In RCEP, there is no patent term extension for pharmaceutical delays. The copyright term for published works is 50 years minimum, in line with the Berne Convention.

Malaysia is centrally located in both RCEP and CPTPP. Shall Malaysia ratify CPTPP? It depends on whether Malaysia wants to be a nation that consumes IP or produces IP.

N95 is a Result of a University Research

Tsai (lower left) and his colleagues

Peter Tsai, a researcher from University of Tennessee, invented a method of corona electrostatic charging which resulted in the creation of N95 mask. The mask has a layer of filter that blocks and contain 95% of submicron particles. The technique involves an electric field to charge non-woven fibers.

The method is widely used in industries over three decades in products such as HVAC filters and medical face masks.  

"This respirator was designed for construction workers, and it was designed to be for one-time use," says Tsai in an interview with WYMT.

The mask attracted the attention of Centers for Disease Control and Prevention (CDC). It was found that the filter can capture viruses and bacteria. The filter is then recommended to be used for healthcare workers.

N95 mask from University of Tennessee

According to University of Tennessee, Tsai has 12 US patents and over 20 commercial license agreement, including four licensed to global companies.

"I'm bombarded with questions," says Tsai in an interview with SCMP.  "My customers are based around the world. I work around the clock". Demand for face masks has skyrocketed.

Tsai came out of retirement to find a way for the N95 masks to be reused. He provided a report which proposed ways to clean and reuse N95 masks without compromising the electrostatic charge required for particle filtration.

He found out that dry heat of 70 degrees Celcius can decontaminate N95 masks without diminishing particle filtration. The method was validated by National Institutes of Health. An oven can be used to decontaminate N95 masks.

Online Courses on Intellectual Property

There are several online courses on intellectual property. Some are free.

(Image from WIPO)

World Intellectual Property Organization (WIPO) is a leader in distance learning. General courses on intellectual property are offered throughout the year for free. Beginners can join IP Panaroma to have an overview of intellectual property. Intermediate course on specific intellectual property topics involves minimal fee. Some of the courses on demand include:

• IP Panorama (for beginners)
• General Course on Intellectual Property
• Introduction to the Patent Cooperation Treaty
• Patent Information Search
• Basics of Patent Drafting
• Intellectual Property Management

European Patent Office (EPO) provides specific training on patent matters. Courses relevant to European patents are offered.

• EPO Patent Information Tools
• Introduction to the European Patent System 
• Patentability in Information and Communications Technology
• Patentablility in Healthcare, Biotechnology and Chemistry
• Patenting Artificial Intelligence
• Patenting Blockchain

European Union Intellectual Property Office (EUIPO) is a separate entity from EPO that manages European trademarks and design. Webinars, learning area and courses offered including:

• European Union Trade Mark (EUTM) in a Nutshell
• International Classification of Goods and Services
• Registered Community Design (RCD) in a Nutshell

United States Patent and Trademark Office (USPTO) produces eLearning modules for components of intellectual property:

• Introduction to Patent Protection
• Copyright: Encouraging and Protecting Creativity
• Overview of Trademarks

Japan Patent Office (JPO) provides e-Learning for specific patent topics.

• Requirements for Claims
• Novelty
• Inventive Step

Korea Intellectual Property Office (KIPO) also has an e-learning centre. WIPO IP Panorama was jointly developed with KIPO. Some topic of interest:

• Patent Map
• International Application through the PCT System and its Strategies
• International Trademark Application through Madrid System and its Strategies
• Interpreting and Drafting Patent Documents in US, Japan, Korea, EPO and Australia, respectively

 Coursera and edX provides courses from several universities.

• Intellectual Property Law, University of Pennsylvania
• Protecting Business Innovations, The Hong Kong University of Science and Technology
• Patenting in Biotechnology, Copenhagen Business School
• Intellectual Property Law, Tsinghua University (in Chinese)

Extension of Deadlines to 1 April 2020

After Malaysia declared a Restricted Movement Order, public movement is restricted to essential services between 18 March 2020 to 31 March 2020. #MyIPO issued a notice that the office will be closed at the same period. Deadlines that fall within the period will be extended to 1 April 2020. Online applications and submissions will continue to operate. Boon IP will also continue to operate remotely. Do let us know if you have any questions.

The Impact of Trademarks Act 2019

Malaysia Trademarks Act 2019 is now in force since 27 Dec 2019 and Trade Marks Act 1976 is repealed. In Asia, the American spelling of trademarks is favoured over the British spelling of trade marks.  Several international trademark practices were adopted in the new Act. Here, we highlight several impact of Trademarks Act 2019.

1.       Scope of mark

The scope of qualifying mark is expanded to shape of goods, sound, scent, hologram, positioning, and sequence of motion. Shape of goods is also known as 3D mark. To qualify as a trademark, the shape must be distinctive in that it is not a result of the nature of the goods, eg. Toblerone chocolate. Example of distinctive sound marks include 20^th Century Fox fanfare.

Example of shape of goods - Toblerone chocolate (Image: Wikepedia)

2.       Qualifying mark

Trademark means any sign capable of distinguishing goods or services of one source from another source. The applicant must use or has intention to use the mark. Description of goods or services should accurately be described. Non-use of mark can be revoked.

3.       One step application process

The previous two step application process of filling and publication (after approval) is streamlined into a single step. The applicant has to pay the publication fee upon filling.

4.       Non-distinctive mark application to receive refusal (Absolute grounds of refusal)

A refusal is issued if the examiner finds that the mark describes kind, quality, quantity, intended purpose, value, geographical origin, characteristics of goods or services or time of production or rendering of services.

5.       Similar mark application to receive refusal (Relative grounds of refusal)

A refusal is issued if the examiner finds that the mark is similar with earlier trademark which comprises registered trademark, pending trademark or well-known trademark. Well-known trademark means any trademark that is well known in Malaysia.

6.       Registered trademarks as object of property

Registered owners can use the mark, authorize other person to use the mark, use the mark as a security interest and obtain relief for infringement.  

7.       One step international application process

After registering a trademark in Malaysia, the owner can file the trademark in multiple countries of Madrid Protocol in a single application. The owner can possibly save cost in filling the mark in multiple countries. The owner can also get double tax deduction for foreign trademark filling.

8.       Pending trademark applications

      Trademark applications filed before the implementation of Trademarks Act 2019 which are pending examination will be examined according to Trade Marks Act 1976.

Matta takes Mata to task for trademark infringement

The Malaysian Association of Tour and Travel Agents’ acronym Matta is a well-known catchphrase for Malaysians who keep a lookout for its annual travel fairs. Of late, however, Matta appears to have a rival with a similar sounding acronym Mata.

The acronym Mata used by the Malaysia Association Tour Agency (Persatuan Agensi Pelancong Malaysia) has certainly irked the well-established Matta, no thanks to the confusion the homophones have created in the marketplace.

Matta secretary-general Nigel Wong, in a statement today, said that Matta is taking legal action against the newly-registered Mata by issuing a letter of demand citing that the latter has infringed on its trademark, caused misrepresentation and has deliberately passed off Matta’s name and goodwill.

“We have demanded that Mata cease and desist using the infringing mark and infringing name and we also demanded a public apology to be published in leading national newspapers, failing which Matta will instruct it’s solicitors without any further delay to commence legal proceedings,” he said.

Meanwhile, Wong said Matta is currently seeking an explanation from the Registrar of Society (ROS) on the approval for Mata registration.

He said this was because ROS recorded that five of the founders and current office bearers of Mata were also the current office bearers of Persatuan Agensi Pelancongan Umrah dan Haji (PAPUH), and two from Malaysia Tourism Council.

“On September 11, 2014, Matta held an Extraordinary General Meeting which voted overwhelmingly to expel all five of the aforementioned office bearers for causing moral and material damage to Matta,” he added.

At present, the 45-year-old Matta has a membership of more than 3,600 comprising travel agencies and tour operators licensed under the Ministry of Tourism, Arts, and Culture. — Bernama

More Trademarks and IP expected

Domestic Trade Affairs and Consumerism Minister Datuk Seri Saifuddin Nasution said this was because the new act, which replaced the Trade Marks Act 1976, provided recognition to non-traditional trademarks. - NSTP/RAMDZAN MASIAM

The government is foreseeing an increase in trademark and intellectual property applications over the next few months.

This is on the heel of the new Trademarks Act 2019 coming to force next month and its subsequent enforcement.

Domestic Trade Affairs and Consumerism Minister Datuk Seri Saifuddin Nasution said this was because the new act, which replaced the Trade Marks Act 1976, provided recognition to non-traditional trademarks.

He said with the new act, Malaysian entrepreneurs could now trademark intangible materials such as shape of goods, packaging, sound, scent, colour, holograms, positioning and sequence of motions that could be graphically presented to distinguish goods and services from others.

“The new act will help businesses protect their trademark through a fast, efficient and effective registration system. This new legislation also allows for multi-class applications and will streamline the administrative paperwork needed for brands to protect marks across different classes,” he said after the National Seminar on Branding and The Madrid System for the International Registration of Mark at the Royale Chulan Hotel, here, today.

The event was attended by Intellectual Property Corporation of Malaysia (MyIPO) chairman Dr Rozhan Othman and International Bureau of World Intellectual Property Organisation (WIPO) Asean regional director Denis Croze.

Elaborating, Saifuddin said between 2016 and 2018, there were 151,323 applications for intellectual property registration, and of that number, 118,237 were successfully registered.

He said during the same time period, a total of 123,856 applications for trademark registration were received of which 100,597 were successfully registered.

“In 2018 alone, there was a total of 52,998 applications for intellectual property registration and 43,656 for trademark registration. With the new act, we can expect to see the number growing,” he said.

It was reported that the Trademarks Act 2019 followed the recently-adopted Madrid System or Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), adopted in Madrid on June 27, 1989. Malaysia is the 106th member of the Madrid System. Other Asean countries which have acceded to the protocol include Brunei, Cambodia, Indonesia, Laos, the Philippines, Singapore, Thailand and Vietnam.

The Madrid System enables them to protect their brands in 122 countries, including the United States, Australia, the United Kingdom and Brazil. Trademark owners will only need to fill a single application with MyIPO to register their local brands in countries participating in the protocol. The system is an international treaty administered by WIPO. The system allows trademark owners to seek protection in several countries simultaneously by filing one application with a single office, in one language and by paying one fee. Malaysian entrepreneurs will be able to register their brands starting Dec 27.

Saifuddin also urged Malaysian entrepreneurs to register their companies or brands under the act as soon as possible. He said businesses that does not protect their trademark by registering it risked having imitators from within the country taking over the name associated with their product.

“Malaysian companies need to be more cognizant of this development and start having a long-term brand strategy to protect and leverage on their trademark. This cannot happen if they do not file an application to protect their trademark with MyIPO,”he said.

It was reported that the new Trademarks Act 2019 also carries newer, more severe punishments for offenders. Those found committing fraudulent or trademark infringements can be fined up to RM1 million, jailed for a maximum of five years, or both. Previously, the punishment for trademark infringements included a fine of RM5,000 for the first offence, with subsequent fines possibly increasing to RM30,000 in addition to a three -year jail term, or both. - Balbin Kaur / NSTP