1. all applications filed from 1 December 1997 onwards without the requisite attachments at the time of filing were to be granted a 15 September 1998 deadline for the submission of the outstanding documents; and
2. any applications presented for filing on or after 15 September 1998 without the complete documentation would be immediately rejected at the filing counters.
   

COPYRIGHT :COPYRIGHT IN COMPUTER
                             SOFTWARE IN MALAYSIA
Part 1 - Copyright Protection
Computer Software protection in Malaysia is provided by the Copyright Act 1987 ("the 1987 Act") and to a limited, but significant, extent by the Trade Descriptions Act 1972. The remedies afforded by the latter will be detailed in the next publication of MY News, along with issues of infringement and criminal sanctions provided in the 1987 Act.

The 1987 Act will be amended in due course by the Copyright (Amendment) Acts of 1996 and 1997.

Dealing first with copyright protection, the definition of "literary work" in the 1987 Act includes "computer programs or compilations of computer programs". The words "or compilations of computer programs" will be deleted when the 1997 (Amendment) Act comes into force. "Computer program" according to the 1987 Act means "an expression, in any language, code or notation, of a set of instructions (whether with or without related information) intended to cause a device having an information processing capability to perform a particular function either directly or after either or both of the following:-
(a) conversion to another language, code or notation; (b) reproduction in a different material form.

Although there has been no substantial juridical consideration of the definition, the provisions of the Malaysian Act in relation to computer programs clearly follows those of the Australian Copyright Amendment Act 1984. As such, the decisions under the Australian Act will have precedential effect and will be followed by the Malaysian courts. This should particularly apply to Autodesk Inc V Dyason (1992) 66 ALJR 233 which made it clear that in Australia, the definition was wide enough to cover the initial program, the source code and the object code.

A recent Malaysian High Court decision illustrates that copyright protection for software programs can be extended to embody all manifestations of that set of instructions which can be read by a computer in whatever converted form, including even any copy protection device such as a "dongle" adopted by the owner as a security measure (see Creative Purpose Sdn. Bhd. V Integrated Trans Corp Sdn. Bhd. [1997] 2 M.L.J 429).

A literary work does not become eligible for copyright unless sufficient effort has been expended to make the work original in character and it has been written down, recorded or reduced to material form. 'Recorded' is not defined in the 1987 Act but "material form" is defined as including "any form (whether visible or not) of storage from which the work or derivative work, or a substantial part of the work or derivative work can be reproduced". From this definition it is clear that the work can be in the form of electrical impulses on tape, disk, ROM or EPROM and the work may be regarded as being "made" when it is first stored on disk and "reduced to material form" when stored in the computer. Of course, if a programmer literally writes out his program the literary work is made and reproduced in material form at the same time.


SINGAPORE

PATENTS : SINGAPORE PATENT APPLICATIONS
                        PLAY EXTRA TIME
Singapore has a unique patent system in which a patent will be granted even if the invention to be protected is demonstrably or arguably lacking in the novelty or inventiveness required for the patent to be valid. In Singapore, the patentee assumes the responsibility for ensuring the validity of the patent.

Every Singapore patent application, whether filed nationally or under the Patent Cooperation Treaty (PCT), is subject to an overall time limit of 42 months within which the application must be brought into order for grant. Within this period, apart from meeting certain formalities, the invention must be examined for patentability under Singapore law or evidence submitted of the result of an examination of the same invention in a recognized foreign country. This is, however, not necessary if the invention has already been examined under the PCT.

Requesting examination by an examiner engaged by Singapore's Registry of Patents is helpful in ensuring the validity of the patent. The examiner will present his or her professional opinion on the validity of the claims of the application. If that opinion is negative, the applicant is given an opportunity to respond by arguing that the objection is wrong or by amending the claims so as to exclude old (and therefore unpatentable) technology. In cases where such examination has been requested, the examiner's final report must be available to the Registrar by the end of the above-mentioned 42-month period.

The number of requests for examination filed in Singapore 1996 and 1997 far exceeded expectations. As a result, many examination requests have not been processed within the anticipated timeframe. The affected patent applications have been literally running out of time. This is a serious problem because the legal consequence of a failure to meet all the requirements in time is that the patent application is treated as abandoned.

Fortunately, the Registry of Patents has found a way around this problem by invoking one of the Patents Rules which allows certain time limits to be extended where an irregularity has occurred due to an error, default or omission on the part of the Registry. By applying this rule, the Registry is able, in most cases, to give applicants for patents more time to complete the legal process.

There are good reasons in favour of restricting the period over which a patent application can be kept pending. Prolonged uncertainty as to the final scope of a patent can be troublesome to industry. However, as demonstrated by the Singapore experience, legal complications can arise when the patenting process cannot be completed in the permitted time. Singapore's relatively new patent law has proven to be sufficiently flexible to cope with the unexpected.

NEWS & ANNOUNCEMENTS:
   MANAGING INTELLECTUAL PROPERTY AWARD
We are proud to report that Henry Goh & Co. has been rated as "the No.1 firm for patent work in Malaysia" in an emerging market survey conducted in March 1998 by Managing Intellectual Property amongst 3,000 senior practitioners of the profession worldwide. On May 12 1998, Euromoney Legal Publications Group hosted a presentation of award ceremony in Boston, U.S.A. which was also held during the 120th Anniversary International Trademark Conference. Mr Henry H.P.Goh, the President and Chief Executive Officer of our firm, was on hand to receive the award on our behalf.


WORLD'S LEADING TRADE MARK PRACTITIONERS
Three members of our firm, Mr.Henry Goh, Mr.Jerry Day and Ms.Mary Syble Louis, have been nominated and included in the 1998 Euromoney Legal Group Guide to the World's Leading Trade Mark Law Practitioners by our peers worldwide. This marks the first time that a Malaysian firm has had 3 such nominations in one year.

The information contained herein is based on data believed to be reliable and published in good faith to give a general overview of current intellectual property issues in Malaysia and Singapore.

Specific advice should be sought from Henry Goh & Co Sdn Bhd prior to relying on the contents of this newsletter.