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

Budget 2020: Malaysia to Introduce Patent Box Regime

In Budget 2020, the government aims to increase innovation level and diversify the economy of the country.

Research & development expenditure receive an allocation of RM524 million to ministries and public agencies. A separate RM43 million is allocated for development of new plant varieties. This is good news to the research community.

An incentive caught the attention of IP community.

"IP-generated income based on the Modified Nexus Approach (MNA) derived from patents and software copyright will be given tax exemption (of 100%) for a period of up to 10 years," - Lim Guan Eng

What is Modified Nexus Approach

Patent is a form of movable asset. In 1973, Ireland introduced an incentive which provides total tax relief in respect of income from licenses patented in Ireland. Several firms moved their patents to Ireland to enjoy the tax incentive. This regime which provides a lower tax rate on income derived from patents is called a patent box.

Customised patent box regime was then introduced in France in 2000, Belgium in 2007, Netherlands in 2007, Luxembourg in 2008, Spain in 2008, China in 2008 and the UK in 2013. A European Commission paper in 2015 found that patent registration is responsive to lower tax rates provided through patent boxes.

The UK reduced the corporate tax of 20% to 10% for patent owners and exclusive licensees. When the UK introduced the patent box, patent applicants rose by 29% and GlaxoSmithKline built a new factory which would create 500 jobs. According to the UK treasury, the UK would have the lowest corporate tax in the G7 and the fourth lowest in the G20 assuming that other countries did not cut their rates.

Germany was concerned over misuse of patent box as a tool for profit shifting. In 2015, OECD countries agreed on a Modified Nexus Approach (MNA) for IP regimes.

MNA requires a link between R&D expenditures, IP assets and IP income. The tax benefit for income derived from IP should be proportional to IP owner's own R&D expenditures.

Effect of Modified Nexus Approach in UK and Ireland

On 1 July 2016, the UK tax relief was updated to consider R&D expenditures based on OECD MNA. To enjoy reduced tax rate of 10%, the patent owner or exclusive licensee shall derive income from patent granted by UKIPO, EPO, or selected European countries. Qualifying development expenditure was defined as (1) development of the patented invention and (2) development of a product incorporating the patented invention

In 2016, Ireland adapted the MNA and included software copyright into the tax incentive. Similar as UK, a granted patent is required to enjoy the incentive. Ireland provides a reduced rate of 6.25% rather than nominal corporate rate of 12.5%.

Singapore IP Development Incentive

Singapore introduced a patent box regime called IP Development Incentive (IDI) based on MNA in 2017. Reduced tax rate of 5% or 10% is provided for patent or patent application, and any copyright subsisting in software. The tax rate of 5% need investment of S$10 million and 20 new skilled jobs to be created. The tax rate of 10% applies if there is an investment of S$6 million and 15 new skilled jobs created. Singapore provides allowance to pending patent applications while stating clear investment requirement.

Malaysia Patent Box to be Administered by MIDA

According to Ministry of Finance, Malaysian Investment Development Authority (MIDA) would administer Malaysia patent box. Tax incentive for biotechnology industry, MSC Malaysia, pioneer status and principal hub would be repealed.

We await with breath MIDA's requirement for patent box. Would pending patents be included in the incentive? Is there an investment requirement? Stay tuned until MIDA's announcement.

Benefits of Patent Box

We anticipate that patent box would encourage patent activity in the country. Patent box would increase the valuation of patents and software in the long term. We don't see a short term increase in the value of patents or software as Malaysia is not seen as a preferred research hub. We believe that increase in research investment should precede the licensing value of patents and software to improve the confidence of investors over Malaysia research. Universities and research institutions should be prepared for increased commercialization activities.

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.