Building a Competitive Edge: Protecting Inventions by Utility Models and / or Patents : Case Studies By P. Kandiah KASS International Sdn.Bhd. KASS

To qualify for a patent, the invention must be: i) novel / new throughout the world ii) not obvious to a person skilled in that field of technology iii) industrially applicable -Generally, all countries require similar criteria. KASS

Utility Innovation (UI) in Malaysia - novel / new throughout the world UIs suitable for simple modifications to existing products, process of methods of manufacture KASS

Not all countries grant UIs. UIs, Petty Patents, Utility Models available in Germany, Japan

Fundamental Misconceptions on International Patent Rights Amongst Malaysian i. A UK granted patent enforceable in all Commonwealth countries ii.A US patent is enforceable worldwide iii.Patent granted in Malaysia is enforceable in other countries iv.A “PCT Patent” is enforceable in all countries v.A foreign granted patent can be registered in Malaysia KASS

Traditional International Patent Filing (1) (before ) Malaysia Overseas Filing

Traditional International Patent Filing (cont.) (post – Paris Convention) a) Malaysia 0 (months) 12 Overseas (only Paris Convention Countries) Non Paris Convention Countries b) Malaysia Taiwan

Paris Convention Filing Local patent application followed within 12 months by overseas applications claiming Paris Convention priority - multiple formality requirements - translation and national fees required at 12 months Some rationalization because of regional arrangements - ARIPO, EAPO, OAPI, EPO KASS

Paris Convention Filing (cont.) No independent opinion whether application meets patentability criteria - Decision of need to file overseas has to be made at 8-10 months after national filing - Too early to decide in which countries to file applications KASS

What are the PARIS Convention countries? (See list given) KASS

PCT System (in Malaysia from ) Full disclosure of application to world International publication File in File PCT International (Optional) (Optional) M’sia Appl. search report File demand International and written for International Preliminary opinion Preliminary Report on Examination Patentability Report on state of the art (prior art documents Request an The additional patentability and their relevance) + additional analysis designed to assist initial patentability opinion patentability in national phases analysis on basis decision making of amended application 30 Enter National/ regional phase

List of PCT countries as at today

Is there a need to obtain patents in all countries? - Global Patenting is costly Obtaining and Maintaining Patent on a Single Invention in the 50+ Major Countries costs more than US$500,000 over the 20 years life of the patent! KASS

Factors to consider in filing in foreign countries 1. Cost in each country 2. Ability to obtain and enforce Patent vs deterrent factor 3. Need for exclusivity 4.Return on Investment 5.Technological relevance of country KASS

Factors to consider in filing in foreign countries (cont) Need to factor in - Patents last 20 years from date of filing - As technology capabilities of countries develop patent rights may not be needed now but needed later - Enforcement procedures are continuously being improved in most countries under WTO - More people are using patent document information to legally obtain technology free of charge - Impact of data on internet KASS

Case Study A: Certificate for Utility Innovation for “Nylon-fiber glass rollers for and in dipped latex industries” KASS

Exclusive right in UI challenged by third party. Action taken against third party. Court decision in favour of patentee; kept other potential offenders out of the industry. Patentee used advantageous position to strengthen position by expanding production. Now spends more on R & D – patents being applied for. KASS

1st patent Patent on production machine / machine parts 2 nd patent on related products Patents on new products No. of Countries Time / Sales

The Company also concentrated on: -registration of industrial design where patents / UIs not available -registration of trademarks for their products KASS

Case Study B Company initially involved in protection of submerged structures against barnacle build-up KASS

-> Gave areas to oil and gas industries -> Developed new product for corrosion control of nut and bolt fittings in drilling platforms -> Obtained patent rights

Obtained exclusivity under: Vendor Development Program (VPP) of Petronas Bhd. -now grown into a reputable company with specialized knowledge in corrosion control of oil / gas pipelines -listed in MESDAQ Market KASS

Common thread in Case Study A and B obtain patent for their first product ↓ Strengthen their market position (Pricing of patented product) ↓ spent money on further R&D on new or related products to spread their “exclusivity” to whole “business” ↓ obtain more patents ↓ Consider globalization of their business KASS

Patent Rights assisted in growing into new areas:  by cross-licensing with other players in the industry -companies continue to build a broad and strong patent portfolio. -companies conduct technology minning to find new product / process to improve on KASS

Enforce your patents against infringement to gain respect for your patent portfolio. KASS

P. Kandiah Tel: Fax : KASS