THE Malaysian Intellectual Property Association (Mipa) has been representing IP practitioners, owners and users for 30 years.
We would like to clarify some of the points raised in the letter “High cost of intellectual property” (The Star, Feb 10), which focuses on patents.A patent is a limited term monopoly on a new invention,
typically a product or a process, which gives the owner the right to sue an infringer, for example a third party, from making or importing the same product or using the same process.
The two main criteria for a
patent to be granted (and thus enforceable) are novelty (not publicly disclosed before the patent application is submitted) and inventive (not obvious compared to what is already known).
It is important to remember that patents are national rights and can only be enforced in the countries where they are granted.
It is not unusual for patents to take five years or more to be granted (which is why it is common to see “patent pending” on many products).
With regards to the Trans-Pacific Partnership Agreement (TPPA) and its proposed successor, CPTPP (Comprehensive and Progressive Agreement for Trans-Pacific Partnership), it should be noted that Malaysia is already compliant with many of the provisions.
For example, Malaysian law would already allow a new and inventive method of producing insulin to be patented although, of course, insulin per se would not be patentable as it would not meet the novelty requirements mentioned earlier.
The scope of a patent is a common source of confusion. Readers may recall the furore last year over a patent supposedly covering Tongkat Ali and threats to sue anyone using this traditional medicine. Of course, this was not the case, as the patent actually only covered a very specific extract from Tongkat Ali, and in any case it is a principle of patent law that you cannot stop someone from doing something they are already doing before a patent application is submitted.
What the biologic provisions of TPPA actually provide is market exclusivity for a substance (proteins produced by cells adapted for the purpose) for a period based on first marketing approval.
However, it is important to note that the term of a patent (20 years) is longer than said exclusivity (eight years), so these provisions are largely superseded by the patent (assuming it is maintained), and therefore of low concern.
“Evergreening” is something of a misnomer since it is not possible to renew a patent beyond its maximum term, and a new patent application covering a similar invention still has to meet the requirements of novelty and inventive step.
For example, in the context of pharmaceuticals, the original patent covering the product may have expired but a new, more efficient method of making the product could be patentable. But it is important to note that in such circumstances, a third party generic manufacturer would still be allowed to make the product using the original method without infringing the patents.
It is perhaps notable that the United States patent law is somewhat different from other countries, which is why certain issues such as patent trolls and thickets have become more prevalent there.
Fortunately, Malaysian patent law is predominantly based on UK patent law, which provides for ways to deal with such issues, including, as the letter writer says, the availability of compulsory licences.
In addition, Malaysia has a dedicated IP court and a relatively well developed system allowing first instance cases to be resolved within 18 months, which is on par with many developed nations.
Furthermore, costs of patent prosecution and litigation in Malaysia are a fraction of those in the US, and the scope of protection can be ascertained using free patent databases.
Awareness and understanding of patents is critical. In the UK, a TV programme called Dragons Den allows inventors to pitch their ideas to a panel of investors.
It is of particular note that if the investors are interested in a specific business, they nearly always ask the inventor how the investment would be protected; if there is no patent, more often than not they would lose interest.
Not every idea can be patented, but failing to protect a business-critical invention can cause irreparable damage. Therefore, advice should be sought from a registered patent agent at an early stage so that a reasoned decision can be made.
DR CHRIS HEMINGWAY
Chair of MIPA Patents Committee
Petaling Jaya
We would like to clarify some of the points raised in the letter “High cost of intellectual property” (The Star, Feb 10), which focuses on patents.A patent is a limited term monopoly on a new invention,
typically a product or a process, which gives the owner the right to sue an infringer, for example a third party, from making or importing the same product or using the same process.
The two main criteria for a
patent to be granted (and thus enforceable) are novelty (not publicly disclosed before the patent application is submitted) and inventive (not obvious compared to what is already known).
It is important to remember that patents are national rights and can only be enforced in the countries where they are granted.
It is not unusual for patents to take five years or more to be granted (which is why it is common to see “patent pending” on many products).
With regards to the Trans-Pacific Partnership Agreement (TPPA) and its proposed successor, CPTPP (Comprehensive and Progressive Agreement for Trans-Pacific Partnership), it should be noted that Malaysia is already compliant with many of the provisions.
For example, Malaysian law would already allow a new and inventive method of producing insulin to be patented although, of course, insulin per se would not be patentable as it would not meet the novelty requirements mentioned earlier.
The scope of a patent is a common source of confusion. Readers may recall the furore last year over a patent supposedly covering Tongkat Ali and threats to sue anyone using this traditional medicine. Of course, this was not the case, as the patent actually only covered a very specific extract from Tongkat Ali, and in any case it is a principle of patent law that you cannot stop someone from doing something they are already doing before a patent application is submitted.
What the biologic provisions of TPPA actually provide is market exclusivity for a substance (proteins produced by cells adapted for the purpose) for a period based on first marketing approval.
However, it is important to note that the term of a patent (20 years) is longer than said exclusivity (eight years), so these provisions are largely superseded by the patent (assuming it is maintained), and therefore of low concern.
“Evergreening” is something of a misnomer since it is not possible to renew a patent beyond its maximum term, and a new patent application covering a similar invention still has to meet the requirements of novelty and inventive step.
For example, in the context of pharmaceuticals, the original patent covering the product may have expired but a new, more efficient method of making the product could be patentable. But it is important to note that in such circumstances, a third party generic manufacturer would still be allowed to make the product using the original method without infringing the patents.
It is perhaps notable that the United States patent law is somewhat different from other countries, which is why certain issues such as patent trolls and thickets have become more prevalent there.
Fortunately, Malaysian patent law is predominantly based on UK patent law, which provides for ways to deal with such issues, including, as the letter writer says, the availability of compulsory licences.
In addition, Malaysia has a dedicated IP court and a relatively well developed system allowing first instance cases to be resolved within 18 months, which is on par with many developed nations.
Furthermore, costs of patent prosecution and litigation in Malaysia are a fraction of those in the US, and the scope of protection can be ascertained using free patent databases.
Awareness and understanding of patents is critical. In the UK, a TV programme called Dragons Den allows inventors to pitch their ideas to a panel of investors.
It is of particular note that if the investors are interested in a specific business, they nearly always ask the inventor how the investment would be protected; if there is no patent, more often than not they would lose interest.
Not every idea can be patented, but failing to protect a business-critical invention can cause irreparable damage. Therefore, advice should be sought from a registered patent agent at an early stage so that a reasoned decision can be made.
DR CHRIS HEMINGWAY
Chair of MIPA Patents Committee
Petaling Jaya
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