Building a Competitive Edge: Protecting Inventions by Utility Models and / or Patents : Case Studies By P. Kandiah KASS International Sdn.Bhd. KASS.
Post on 18-Dec-2015
214 Views
Preview:
Transcript
Building a Competitive Edge:Protecting Inventions by Utility Models and / or Patents : Case Studies
By P. KandiahKASS International Sdn.Bhd. KASS
To qualify for a patent, the invention must be:
i) novel / new throughout the worldii) not obvious to a person skilled in that field of technologyiii) 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 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
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) 12Overseas (only Paris Convention Countries)
Non Paris Convention Countries
b)Malaysia
Taiwan
Paris Convention FilingLocal 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
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 16 18 22 28 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 EnterNational/regional phase
List of PCT countries as at today
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 US$500,000 over the 20 years life of the patent!
KASS
Factors to consider in filing in foreign countries
1. Cost in each country2. Ability to obtain and enforce Patent
vs deterrent factor 3. Need for exclusivity4. Return on Investment5. 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
2nd patent on related products
Patents on newproducts
No. ofCountries
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
barnaclebuild-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 : 03 2284 7872Fax : 03 2284 1125E-mail : ipr@kass.com.my
KASS
top related