Intellectual Property

A patent is a document issued by the government office which describes the invention and creates a legal situation in which the patented invention can normally only be exploited (made, used, sold, imported) by or with the authorization of the patentee.

WHAT INVENTIONS ARE PATENTABLE?

An invention is a novel idea which permits in practice the solution of a specific problem in the field of technology. Under most legislations concerning inventions, the idea, in order to be protected by law ("PATENTABLE"), must be new in the sense that it has not already been published or publicly used, it must be "non-obvious" in the sense that it would not have occurred to any specialist in the particular industrial fields, had such a specialist been asked to find a solution to the particular problem and it must be "applicable in industry" in the sense that it can be industrially manufactured or used.

WHAT THE PATENT ACT 1983 PROVIDES?

Malaysia provides adequate protection in the field of industrial property for local and foreign investors. Patent protection in Malaysia is governed by the Patents Act 1983 and the Patents Regulations 1986.

Under the Act and Regulations, an application for a patent can be made directly in Malaysia and registration is effective for the whole of Malaysia. Similar to the provisions in the legislations of other countries, an invention is patentable if it is new, involves an inventive step and is industrially applicable.

The Act provides that a patent shall expire 15 years after the date of its grant. The owner of a patent has the right to exploit the patented invention, to assign or transmit the patent, and to conclude licence contracts. Malaysia is a signatory of the Paris Convention thus providing further safeguards in the field of industrial property in the country. Malaysia's industrial property laws accord the same treatment for both nationals and foreigners.

The subject matter of copyright is usually described as 'literary and artistic works', that is, original creations in the fields of literature and arts. The form in which such works are expressed may be words, symbols, music, pictures, three-dimensional objects, or combnations thereof.

WHAT IS THE SYSTEM FOR REGISTRATION FOR COPYRIGHT IN MALAYSIA?

Copyright protection in Malaysia is governed by the Copyright Act 1987. In Malaysia, there is no system of registration for copyright. The Copyright Act 1987 provides for enforcement of the law by the Ministry of Domestic Trade and Consumer Affairs, specifically the Enforcement Division, apart from the Police. The Act also provides the necessary clout to the enforcement agencies to effectively carry out anti-piracy measures.

WHAT WORK IS ELIGIBLE FOR PROTECTION UNDER THE COPYRIGHT ACT 1987?

A work that is eligible is fulfillment of the following conditions:-

• Sufficient effort has been expended to make the work original in character.
• The work has been written down, recorded or reduced to material form.
• The author is a qualified person or the work is made in Malaysia or the work is first published in Malaysia.

Works eligible for protection are:-

• Literary works
• Musical works
• Artistic works
• Films
• Sound recording
• Broadcasts
• Derivative works
• Published editions

COPYRIGHT (AMENDMENT) ACT 1997

Information technology has challenged the traditional concept of copyright protection.

The Amendment Act, which amended the Copyright Act 1987, came into force on the 1st April 1999. This Act seeks to update the law on copyright. Amongst other things, the Amendment Act makes unauthorized transmission of copyright works over the Internet an infringement of copyright.

Trade mark is governed by Trade Marks Act 1976 and Regulations made thereunder. It provides exclusive rights for the user of the trade mark for the goods services which was applied for registration. The registration is an evidence to the owner or the registered proprietor of the trade mark to claim exclusive rights to the use of the trade mark in Malaysia. Trade mark registration is valid for 10 years from the date of the application. An application for renewal of registration may be made at the end of the ten years period and thereafter every ten years. If the trade mark is acquired by assignment, either during the pendency of the application or after registration has issued, a copy of the assignment must be filed with the Registry. An applicant may check to see if there are previously registered trade marks or trade marks that are pending before the Registry which are similar to the mark it seeks to register. This may be done at the Registry in Kuala Lumpur.

An industrial design is the ornamental aspect of useful article. This ornamental aspect may be constituted by elements which are three-dimensional (the shape of the article) or tow-dimensional (lines, designs, colors) but must not be solely dictated by the function for which the useful article is intended.

ELIGIBILITY FOR PROTECTION IN MALAYSIA

To be eligible for protection in a country, industry designs must be original or novel and must be registered in government office.

However, for industrial designs to be registered in Malaysia, they will need to be "new" and meet the definition of design which, in keeping with international standards, is stated as "features of shape, configuration, pattern or ornament applied to an article by an industrial process or means, being features which in the finished article appeal to and are judged by the eye".

THE INDUSTRIAL DESIGN ACT

Protection of an industrial design means that it may not be lawfully copied or imitated without the registered owner's authorization, and copies or imitations made without such authorization may not lawfully be sold or imported.

Industrial designs are protected by the United Kingdom Designs (Protection) Act 1949 (Revised 1978) for West Malaysia, the United Kingdom Designs (Protection) Ordinance Chapter 152 for Sabah and the Designs (United Kingdom) Ordinance Chapter 59 for Sarawak. Previously, by these legislations, the registered proprietor/owner of any design registered in the United Kingdom under The Registered Design Act, 1949 (United Kingdom) has the same rights and privileges as though the registration in the United Kingdom has been issued with an extension to Malaysia. Therefore, Malaysian residents and others who desire design protection in Malaysia must obtain a British registration before they can obtain protection in Malaysia.

However, the Government has taken the necessary steps to enable registration of industrial designs to be done in Malaysia. The Malaysian Designs Act 1996 has been enacted and on 1st September 1999 the Malaysian Industrial Designs Act comes into force.

This Act will repeal legislation that has provided for the protection of UK-registered designs in Malaysia. This means it will no longer be necessary to register designs in the UK for them to be protected in Malaysia.

It will be possible to maintain a registration in Malaysia for a maximum of 15 years.

Personal Data Protection Act 2010

The Personal Data Protection Act 2010 was introduced by the Government to regulate the processing of personal data in commercial transactions. The Act, which applies to all companies and firms that are established in Malaysia, requires us to inform you of your rights in respect of your personal data that is being processed or that is to be collected and further processed by us and the purposes for the data processing. The Act also requires us to obtain your consent to the processing of your personal data.

Confidential Information

A person cannot own information, in the same way that he or she can own the copyright in a work, or the patent rights in an invention. The unauthorized disclosure of confidential information may however give rise to civil liability on the part of the disclosing party, on the basis that where a person has promised not to divulge a secret, he or she ought to be held to his or her word. The protection of confidential information in Malaysia is therefore founded upon the relationship between a confider and his confidant. A breach of confidence is generally actionable in the Malaysian Courts if the following three (3) conditions are fulfilled:-

(a). Information must be confidential

The information disclosed must be confidential in nature. The information may be in respect of trade secrets (e.g. customer lists), technological secrets (e.g. knowhow relating to a manufacturing process), personal information or any other form of confidential information.

(b). Information must be disclosed in circumstances importing confidentiality

Information must have been imparted in circumstances which give rise to an obligation of confidentiality. The recipient of confidential information will only be bound if a reasonable man standing in the shoes of the recipient of the information would realize on reasonable grounds that the information was being given to him in confidence.

(c). Actual or anticipated unauthorized use or disclosure

There must be an actual or anticipated unauthorized use or disclosure of the information in question.

(d). Protecting confidential information

There is no system of registration for confidential information. Protection is available only by keeping the information secret, because once made public the information cannot subsequently be made secret again.

(e). Non-Disclosure Agreement (NDA)

It happens regularly in business that one company needs to disclose its confidential information to another. For example, a manufacturer may need to submit its new product to a test laboratory for technical assessment and approval prior to the product being launched on the market. It is often also necessary to share secrets when some form of cooperation is contemplated between two companies.

Franchise

The Franchise Act 1998 highly regulates the franchising industry as it not only controls the terms of any franchise agreement but also implements a systematic scheme of registration for the Franchisor, Franchisee and Franchise Brokers. Frachising fosters business opportunities for Malaysian franchisees, particularly small start-up companies (the "Franchisee") under the guidance and assistance of another company (the "Franchisor"), which has the requisite experience and knowledge of the market practice and industry. The Franchisee may leverage on the Franchisor's international and/or regional reputation and goodwill through its use of the Franchisor's trade marks and intellectual property rights as well as the Franchisor's tested technologies, trade secrets and business systems. There are two (2) types of franchise registration, namely:-

(a). Malaysian Franchisor

The Malaysian Franchisor is required to register its franchise before it may make an offer to sell its franchise to any person.

(b). Foreign Franchisor

It is interesting to note that the language of the Franchise Act indicates that a Foreign Franchisor must obtain the Registrar of Franchises' ("Registrar") approval before it intends to sell its franchise in Malaysia or to a Malaysian.