NANOTECHNOLOGY AND INTELLECTUAL PROPERTY
Among the emerging technologies, nanotechnology is one of the most prominent examples and it raises high expectations in a wide range of areas affecting daily life. Nanotechnology is a science which operates at an extremely small scale, as it uses the size of a so-called nanoscale, which is approximately between 1 and 100 nanometres, or 1 to 100 billionths of a meter. There are two main ways of applying nanotechnology so far: one is the top-down approach, whereby structures are made smaller and smaller until they reach a nanometric scale. The other approach is the bottom-up approach, by which elements at the nanoscale are chosen and assembled to form some sort of matter or mechanism. This way of manipulating matter at the atomic level obviously bears the potential of enormous developments.
While commercialization of nanotechnology products so far has been relatively modest, recent and current research activities allow to forecast extraordinary results for the benefit of humankind in a foreseeable future.
While inventions in the field of nanotechnology would, as a general rule, appear to qualify for patent protection, subject to the fulfilment of the relevant conditions of patentability, there are a number of issues that may need further consideration, including the granted claims are overly broad, due at least in part to a lack of available prior art, which could allow patent holders to lock up huge areas of technology. In this context, there is also a perceived risk of overlapping patents.
What is Intellectual Property?
Intellectual Property is
a registrable or unregistrable intangible property
that refers to creation of the mind, which includes an
idea, information and knowledge. It can be divided into three categories :
circuit layout – designs.
copyright which covers literary works
unregistered intellectual properties
Intellectual property protection is
either automatic or granted upon application. Examples of automatic protected
intellectual property is copyright and through application is patents,
trademarks and industrial designs.
There can be multiple types of intellectual property rights to
protect an invention or a product. For example, a bottle of Coke, the
registered trademark protects the brand “Coca-Cola” from being used or monetise
by others without consent from its owner. The formula for the actual soda is a
trade secret, copyright protects the product packaging, while the design of the
bottle is protected under design patent.
Having the right type of intellectual property protection will
prohibit others from unauthorised use of the invention or product and its
intellectual properties, such as stealing or copying them for a party’s
commercial gain or benefit. The right type of protection enables the
owner or the creator to earn recognition and
gain financial benefit from their inventions or creations.
Owning intellectual property
A person (an individual or a corporation) owns an intellectual
property, if he or she creates an intellectual property and protects it under
the right type of protection (copyright, patent, design), or bought
intellectual property rights from the creator or previous owner.
There can be more than one owner of an intellectual property, i.e.
joint ownership by multiple owners. An intellectual property can also be sold
or assigned or transmitted to others.
What is a Patent?
patent is an invention or a product of which you have to apply at the Intellectual
Property Corporation of Malaysia (“MyIPO”) for protection. A patent application
takes around 3 to 4 years to be granted in Malaysia, if allowed. Under the
Patents Act 1983, the term for a patent is 20 years from the filing date, and
must be annually renewed with a fee to keep its enforceability. The protection
gives the owner the right to take legal action against anyone who reproduce,
use or sell an invention without the permission of the owner. The said
invention must be new, inventive and has industrial application for it to be
information relating to the invention must not be disclosed to the public or
any party before an application is made. The owner may not obtain a patent for
its invention if public disclosure of such information is made. If the owner
needs to discuss the invention with anyone, the information can be protected with
a non-disclosure agreement signed between the owner and the other party.
adopts a first to file rule, where the first person to file an application for
his or her invention has priority over others for the same invention.
What is a Utility Innovation?
An invention that does not meet the “inventive
step” requirement for a patent, may be applied to be protected under utility
Utility innovation is considered particularly
suited for protecting invention which creates a new
product or process, or any new improvement of a known product or process which
is capable of industrial application and includes an invention. Generally, an utility
innovation does not display a high degree of inventiveness in comparison to an
invention qualifying for a patent.
Utility innovation is protected for
10 years from the filing date of the application which can be renewed for 2
consecutive terms of 5 years each, subject to proof of use of the utility
innovation in Malaysia, or a satisfactory explanation of non-use with a payment
of a fee.
is the protection of literary and artistic works for a limited period of time
(usually 50 years after the death of the person who created the work). On the
other hand, the protection of any work published after the author’s death, will
be 50 years from the date of publication of the work.
registration is not mandatory in Malaysia to secure protection. However, the
creator or author or owner can register voluntarily in MyIPO and obtain
registered certificate as proof of ownership of the copyright as provided in
Section 26A of the Copyright Act 1987. Such certificate shall be considered a
prima facie evidence in Malaysian courts.
the author of a created work would also be the copyright owner. However, when
work is commissioned to a third party, or if the work is created in the course
of the author’s employment, in such instances, copyright ownership vests in the
commissioner or employer, subject to any agreement to the contrary between the
author and the owner.
A trade mark does not have to be a
word. It may be a device, a logo, a combination of letters and numerals, a
design, one or more colours, a slogan or combination of those elements such as
a label. In some jurisdictions it is even possible to protect certain sounds
and smells as a trade mark. Similar trade marks can be registered for similar
goods by different companies in different countries, and can be registered for
different classes of services or goods.
A trade mark must distinguish the
goods or services of one trader from those of another. The more distinctive and
original the mark, the easier it is to protect.
A registered proprietor of a trade
mark can allow any person to use his or her trade mark, by lawful contract on
all or any goods and services the trade mark is registered for. The said
registered proprietor must apply for the said user to be entered on the
register in MyIPO, as a registered user, with or without restrictions or
A trade mark application takes around 1 to 2 years to be granted
in Malaysia if allowed.
Registration rights last for 10
years with unlimited renewal period in every 10 years upon payment of a fee.
In Malaysia, a mark becomes the
property of the person first using it. An unregistered mark can be protected in
Malaysia under the tort of passing-off. The burden of proof on the first use of
the said mark is on the said person claiming first use of such mark. The
evidence of use of the mark is to prove reputation and goodwill of the business
in connection with the used mark. However, it is advisable to register the mark
as a trade mark, as registration always confers stronger rights than mere user
rights and it is generally easier and cheaper to take legal action against
imitators on the basis of registered rights than on the basis of user rights
In addition, a well-known mark can also
be protected in Malaysia without trademark registration, via passing off. The
owner of the well-known mark can restrain the unauthorised use of the mark
which is identical or an essential part of the mark is identical or nearly
resembles the well-known mark in respect of the same goods and services and the
use of such mark will likely deceive the public to be the well-known mark.
Some examples of trade marks :
In special typeface
Any confidential information which provides a corporation, a
competitive edge and has a commercial value by reason of the secrecy, may be
considered as a trade secret. A trade
secret consists of information that can include a formula, pattern,
compilation, program, device, method, technique or process. The unauthorised use of such information by persons other
than the holder is regarded as a violation of the trade secret.
Trade secret can be identified in 2 kinds, i.e. (i) an invention
that does not meet the patentability criteria (such as customers lists or
manufacturing process), or (ii) invention that would fulfil the patentability
criteria but the holder does not wish to disclose information of the invention
to the public.
A trade secret is more difficult to enforce than a patent. In
Malaysia there is no statute or regulation that governs the rights of a trade
secret. Although trade secret has the advantage of not being limited in time
and involve no registration costs, trade secret of an invention does not
provide the exclusive right to exclude others from making commercial use of the
said invention. Nevertheless, the holder may keep the information secret and
restrict its use through a non-disclosure agreement.
Like trade secret, in Malaysia there is no statute or regulation
that governs the rights of a know-how. Although a know-how is not protected by
any particular intellectual property right, it can be protected by signing a
confidentiality or non-disclosure agreement.