Building a Competitive Edge: Protecting Inventions by Utility Models and / or Patents : Case Studies

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Building a Competitive EdgeProtecting
Inventions by Utility Models and / or Patents
Case Studies

• By P. Kandiah
• KASS International Sdn.Bhd.
• 
  KASS

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• 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

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Utility Innovation (UI) in Malaysia -
novel / new throughout the world UIs suitable
for simple modifications to existing products,
process of methods of manufacture
KASS
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• Not all countries grant UIs.
• UIs, Petty Patents, Utility Models available
  in Germany, Japan

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Fundamental Misconceptions on International
Patent Rights Amongst Malaysiani. A UK granted
patent enforceable in all Commonwealth
countriesii. A US patent is enforceable
worldwideiii. Patent granted in Malaysia is
enforceable in other countriesiv. A PCT
Patent is enforceable in all countries v. A
foreign granted patent can be registered in
Malaysia KASS
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Traditional International Patent Filing (1)
(before 1.1.1989) Malaysia
Overseas Filing

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Traditional International Patent Filing (cont.)
(post 1.1.1989 Paris Convention)

• a)
• Malaysia

Overseas (only Paris Convention Countries)
0
(months)
12
Taiwan
b)
Malaysia
Non Paris Convention Countries
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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 monthsSome rationalization
  because of regional arrangements - ARIPO, EAPO,
  OAPI, EPO
• KASS

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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

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What are the PARIS Convention countries?

• (See list given)
• KASS

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PCT System (in Malaysia from16.8.2006)
Full disclosure of application to
world International
publication 0
12 16 18
22 28 File in
File PCT International
(Optional) (Optional) Msia 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

Enter National/ regional phase
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12
List of PCT countries as at today
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Is there a need to obtain patents in all
countries?- Global Patenting is
costlyObtaining and Maintaining Patent on a
Single Invention in the 50 Major Countries costs
more than US500,000 over the 20 years life of
the patent! KASS
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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
• Technological relevance of country
• KASS

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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
  
  

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

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(No Transcript)
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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
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Patents on new products
No. of Countries
Time / Sales
2nd patent on related products
Patent on production machine / machine parts
1st patent
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The Company also concentrated on - registration
of industrial design where patents / UIs not
available - registration of trademarks for their
products KASS
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Case Study B Company initially involved in
protection of submerged structures against
barnacle build-up KASS
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(No Transcript)
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-gt Gave areas to oil and gas industries -gt
Developed new product for corrosion control
of nut and bolt fittings in drilling
platforms -gt Obtained patent rights
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(No Transcript)
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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
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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 RD on new or related products
to spread their exclusivity to whole
business
? obtain more patents
? Consider globalization of their
business KASS
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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
• KASS

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Enforce your patents against
infringement to gain respect for your patent
portfolio. KASS
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• P. Kandiah
• Tel [phone]
• Fax [phone]
• E-mail ipr_at_kass.com.my
• KASS

Thank You