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
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Not all countries grant UIs.
UIs, Petty Patents, Utility Models
available in Germany, Japan
Fundamental Misconceptions on International
Patent Rights Amongst Malaysian
i.
ii.
iii.
iv.
v.
A UK granted patent enforceable in all
Commonwealth countries
A US patent is enforceable worldwide
Patent granted in Malaysia is enforceable in
other countries
A “PCT Patent” is enforceable in all countries
A foreign granted patent can be registered in
Malaysia
KASS
Traditional International Patent
Filing (1) (before 1.1.1989)
Malaysia
Overseas Filing
Traditional International Patent Filing
(cont.) (post 1.1.1989 – Paris Convention)
a)
Malaysia
0 (months) 12
b)
Malaysia
Overseas (only Paris Convention Countries)
Taiwan
Non Paris Convention Countries
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
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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 from16.8.2006)
Full disclosure of application
to world
International publication
0
12
File in File PCT
M’sia Appl.
16
International
search report
and written
opinion
Report on state of the
art (prior art documents
and their relevance) +
initial patentability opinion
18
22
(Optional)
File demand
for International
Preliminary
Examination
Request an
additional
patentability
analysis on basis
of amended
application
28
(Optional)
International
Preliminary
Report on
Patentability
30
The additional patentability
analysis designed to assist
in national phases
decision making
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
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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.
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Time / Sales
Patent on
production
machine /
machine parts
Patents on new
products
2nd patent on
related
products
1st patent
No. of
Countries
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
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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
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Enforce your patents against infringement to
gain respect for your patent portfolio.
KASS
P. Kandiah
Tel :
Fax
E-mail
03 2284 7872
: 03 2284 1125
: ipr@kass.com.my
KASS