Sunday, July 21, 2013

MIPA Trademark Symposium

MIPA is organising a Trademark Symposium titled 'Malaysian Landscape for Trademark Evolution' on 25/07/2013.

This Symposium brings together industry experts from various backgrounds such as an IP owner, an IP and Trademark agent and the head of a Trademark section.

Aimed at Entrepreneurs, Investors, IP Agents, Legal Experts, Government Agencies and Corporates with IP Trademarks & Patents, this Symposium provides the perfect platform for IP owners and IP practitioners to discuss issues related to trademark branding.

Various topics will be discussed during this half-day Symposium including the dilemma of uniqueness for trademark and branding, acceptable and unacceptable trademarks and the challenges faced by brand owners. I am invited as one of the speaker.

For more information, follow this link

Thursday, July 18, 2013

Apple, Amazon end 'app store' lawsuit

Apple Inc and Inc have ended their lawsuit over who has the right to use the "app store" name, clearing the way for both companies to use it.

U.S. District Judge Phyllis Hamilton in Oakland, California, on Tuesday ordered that the case be dismissed at the companies' request, averting a trial that had been scheduled for August 19.

This came after Apple issued to Amazon a covenant not to sue over the online retailer's use of the term, eliminating the need for Amazon to pursue a counterclaim seeking permission.

Apple began selling applications for mobile devices via its App Store service in July 2008. Amazon launched Amazon Appstore for Android in March 2011. Apple began the lawsuit that month.

"We no longer see a need to pursue our case," Apple spokeswoman Kristin Huguet said. "With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favorite apps."

Martin Glick, a lawyer for Amazon, said in an interview, "This was a decision by Apple to unilaterally abandon the case, and leave Amazon free to use 'appstore.'"

"We're gratified that the court has conclusively dismissed this case," Amazon spokeswoman Mary Osako said. "We look forward to continuing our focus on delivering the best possible appstore experience to customers and developers."

In its lawsuit alleging trademark violations and false advertising, Apple accused Amazon of misusing the "app store" name in connection with the sales of apps for Android devices and the Kindle Fire, a tablet that competes with Apple's iPad.

Amazon countered that the term "app store" had become so generic that using it would not mislead customers.

It said in a court filing that even Apple Chief Executive Tim Cook had used the term generically, in discussing "the number of app stores out there," while his predecessor Steve Jobs had talked about the "four app stores on Android." - Reuters

Monday, July 8, 2013

Expedited Examination Experience

Since 2009, accelerated examination under the various programs has been requested for over 5,000 patent applications. The United States Patent and Trademark Office (USPTO) received the highest number of requests (3,533) followed by the UK Intellectual Property Office (UKIPO), with 776, and the Korean Intellectual Property Office (KIPO). USPTO stop receiving temporarily after 3500 applications were reached.

The evidence shows that fast-track procedures reduce the time from filing to grant by several years compared to ordinary examination. The time to grant is cut by between 42 percent and 75 percent across fast-track programs, with the shortest time to grant delivered by the UK.

For most programs, a very small share of eligible patent applications was submitted under the accelerated procedures: between one and two percent in Australia, Canada, Japan and the ROK. However, percentages were substantially higher in the UK (20%), Israel (13%) and the US (8%).

This low participation rate may seem surprising as a fast-track examination process offers several advantages, such as facilitating licensing and making it easier to raise private capital and enforce a granted right against infringers.

There are, however, some disadvantages in accelerating the granting of patents. To begin with, accelerated examination may increase costs for patent applicants, especially where they are required to conduct a search report on the prior art (for example, at the JPO) and submit comments that could have ramifications in litigation.

Another problem with fast-track programs is the wide variability in their rules — both in terms of eligibility and formal process requirements. Applicants seeking to participate in several of the programs must analyze a number of different rules, determine whether their invention meets each program’s eligibility requirements, and draft different claim sets and arguments for each program. As a result, deciding whether and how to use such programs can be costly and time-consuming.

Moreover, it is not always in the applicant’s best interest to have a patent published or granted as soon as possible. Although inventors may want to file a first (“priority”) application right away (because, until they do, they have nothing but secrecy to protect them from imitators), they may also have legitimate reasons for delaying the grant of a patent.

These disadvantages explain why only a small percentage of eligible patent applications are submitted to fast-track programs. Once a patent application is filed, infringers will be opposed on the basis of the application date and not the grant date. Most applicants therefore have an incentive to wait until the examination is conducted under the regular procedure. As a consequence, patent applicants would only have an interest in using fast-track programs under specific circumstances (such as suspicion of infringement, to raise capital or to secure commercial partnerships).

An important advantage of a long examination period is that it delays the costs associated with the grant of the patent. It also gives patent applicants time to determine whether the patent will be commercially viable before requesting the grant in the first place.

Another major benefit of delayed examination is that it allows applicants to adjust the patent application – in particular the list of claims – during the examination process. If granted too early, the claims of the patent might not perfectly match the final version of the invention, thus facilitating circumvention.

Since patent applications must be disclosed when the patent is granted, an early grant occurring before the end of the 18-month period after which patent applications are normally published could increase the risk of competitors being able to quickly design competing technology. Our interviews with patent attorneys revealed, however, that this is unlikely to be an issue in practice. Most requests for accelerated examination occur before this 18-month period – a further indication that early publication is not viewed as a serious issue by applicants. - WIPO

Friday, July 5, 2013

Industrial Design (Amendment​) Act and Regulations 2013

MyIPO has provided Notice No 1/2013 and Notice 2/2013 that the Industrial Design (Amendment) Act 2013 and Industrial Design (Amendment) Regulations 2013 will take effect on 1 July 2013. The Notices, Act and Regulations are available on

Note that the Regulations is available in Notice 1/2013; the link on the home page is broken, at this moment.