Patents, trademarks and copyright are integral parts of intellectual property that form intangible assets in our daily life. IP matters from Malaysia and the world are shared here.
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.
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.
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.
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 Tradeon 22 Dec 2021.
Parlimen Malaysia
[1:34:39] Tabling of Copyright (Amendment) Bill 2021 for Second Reading.
[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 **
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 **
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
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.
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