KDN NO: PP 9889/7/97 OCTOBER 1997 ISSUE NO.1/97

It may not be well-known that Malaysia has a one year grace period for both patent and utility innovation applications in respect of disclosures occurring within one year before the date of the application in Malaysia, where such disclosure was by reason or in consequence of an act committed by the applicant or his predecessor in title.

Although this grace period was introduced into the Malaysian Patents Act primarily to benefit the Malaysian inventor, it is far more regularly used by foreign applicants who have had a patent application published and belatedly decide that they would like a Malaysian patent. Provided that a Malaysian application is filed within one year of the first publication or other disclosure of the invention whether that is by way of a patent application or in any other way, valid protection can be obtained.

A certificate of utility innovation is the Malaysian equivalent of a petty patent or utility model but the law pertaining to utility innovations is vastly different from the law of most countries.

Whereas in most countries a petty patent gives very rapid short term protection for minor inventions usually with only a formal examination and with validity being determined in the court, a Malaysian utility innovation application undergoes full substantive examination and hence can take five years or more for protection to be granted. The major difference between a Malaysian utility innovation and a patentable invention is that the utility innovation does not have to involve an inventive step but does have to have absolute novelty.

A utility innovation certificate can have only a single claim.

Malaysia has IP laws that basically conform to the requirements of the TRIPS agreement.

However, some amendment of existing laws and enactment of new laws is necessary. Areas in which action is necessary are:

1. Service marks

The registration of service marks will come into force on 1st December 1997. More details will be available in our next issue of MY NEWS.

2. Plant varieties

No decision has yet been taken on whether protection of plant varieties will be provided by an amendment to the existing Patents Act or through an enactment of a specific law.

3. Term of patent

Despite what at least one of the reference books on Intellectual Property indicates the term of a Malaysian patent is still 15 years from grant and the Patents Act will be amended in this regard.

4. Protection of performers

Legislation will be enacted probably by a further amendment to the Copyright Act.

5. Layout designs of integrated circuits

Legislation will be enacted to deal with this.

Malaysia has until 1st January 2000 to comply with the TRIPS requirements.

No decision has yet been taken on whether or when Malaysia will become a signatory to the PCT. Those few of our associates who regardless send us instructions to enter the national phase in Malaysia are, however, frequently saved by the grace period provisions.

The Designs Act 1996 still awaits its implementing regulations and there is no indication when it will come into force although it was widely expected on 1st July 1997.

The Act may come into force with very little notice which will be fine for those people who already have a UK design on file but not so good for those who have a priority period close to the date when the Act does come into force.

Accordingly, anyone who knows that he is going to want design protection in Malaysia and will need to retain a priority date is advised to get an application on file at the UK Design Registry as soon as possible.

Malaysian Designs will be subject to local novelty only but no grace period will apply.

Two Copyright (Amendment) Acts have passed through Parliament and are awaiting implementing regulations.

First, the Copyright (Amendment) Act 1996 introduces significant changes to the copyright law, particularly as it applies to three dimensional articles.

At present the law defines "artistic work" as including paintings, drawings, etc. "and any three dimensional work thereof" so an article produced from a drawing, provided it is original, enjoys copyright in its own right. In fact, the law operates in somewhat the same way as the old UK Design Copyright Act 1968 or the Design Right provisions which currently exist in the UK.

Under the amended Act, functional articles will be excluded from copyright protection and a distinction will be made between those designs which are protectable by copyright and those that are not.

In the amended Act the definition of "artistic work" has been totally redefined and now does not include three - dimensional works. The definition of "reproduction" has however been amended to include "the making of a copy in three dimensions of a two-dimensional work" and vice versa.

Section 7 of the Act "Works eligible for copyright" has been amended by the addition of two new sub-sections such that copyright and registered design protection shall not both exist:

a. for any design which is registered under any written law relating to industrial design or

b. for any design which is capable of being registered under any written law relating to industrial design but has not been registered, once any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or a licensee.

Secondly, the Copyright (Amendment) Act 1997 is intended to enhance copyright protection by taking into account advances in information technology.

The amended Act will provide adequate legal protection to educational works, entertainment products and protected information.

In the new Act various terms are redefined and the term "communication to the public" is introduced. "Communication to the public" will mean the transmission of a work through wire or wireless means to the public, including making the work available to the public in such a way that they can access it from a place and at a time they have chosen.

Parliament has also passed other legislation relating to IT (the so called "Cyber Law" Acts).

These are the Computer Crimes Act 1997, the Digital Signature Act 1997 and the Tele-Medicine Act 1997.

The Computer Crimes Act among other things outlaws hacking and introduces very hefty penalties, particularly where hacking is carried out with the intention of committing or facilitating a further offence, for example, fraud.

The Digital Signature Act establishes, in particular, that a Digital Signature is as legally binding as a hand-written signature or a thumb-print.

The Tele-Medicine Act provides for tele-medicine to be practised in a controlled and planned manner to safeguard the people's interest without jeopardising the country's medical and health services.

Further information on this new legislation will be given in our subsequent newsletters.

A number of amendments to the Singapore Patent Rules and Fees came into force on 1st April and 1st June, 1997. The amendments of the rules serve to remove a number of anomalies and resolve some particular difficulties which had arisen under the previous rules. The main changes are summarised below.

PRIORITY

1) An IPC symbol is no longer required to support a claim to priority. However, an IPC symbol continues to be required in respect of each corresponding application whose details are filed at 16 months in the prosecution procedure under Section 29(1)(c). Therefore, we would like to encourage clients and associates to provide us with an IPC symbol with their original filing instructions, whenever possible.

2) The term for filing the priority document is changed from 16 months to 22 months.

3) The term for filing a verified English translation of the priority document is changed from 21 to 22 months. For PCT national phase cases, the term remains 22 months for Chapter I and 32 months for Chapter II.

STATEMENT OF INVENTORSHIP AND RIGHT TO GRANT

For each direct Singapore application in which the applicant is not the inventor (or not the sole inventor), it is necessary to file a statement which identifies the inventors and explains how the applicant derives its right to the patent. The relevant form (Form 8) has been redesigned and now requests the following additional information in relation to each inventor:

1) country of permanent residence

2) citizenship

3) whether inventor was resident in Singapore at any time during the period of invention.

This information is intended to assist the Registry in its national security screening of all patent applications. For PCT national phase cases, the inventorship and derivation of right information usually does not need to be filed with the Registry.

REQUEST FOR GRANT

The relevant form (Form 1) has been redesigned and now additionally requests the residency of a personal applicant and the status of a corporate applicant. For a US corporate applicant, the Registry always asks for the state of incorporation. Since the answer to this question is often not the US state which appears in the address, we urge clients and associates to include this information in their original filing instructions.

FILING COPY OF FOREIGN SEARCH REPORT AND CITED DOCUMENTS

When requesting examination based on a corresponding foreign search report, the requirement to file a verified English translation of any non-English cited document has been abolished. This applies to direct Singapore applications, and to PCT Chapter I national phase cases (where a copy of the International Search Report is filed).

However, if the search report cites any non-English patent document, it must be accompanied by a list of patent family members for that document. A number of patent offices include such a list as an annex to their search reports. However, the new Singapore rule does not seem to require an official list, so that the result of an independent database search may be acceptable. The new rule does not specify that only English language equivalents must be listed. So, the list should be as comprehensive as possible, and should be submitted even if there is no equivalent English language patent document.

The Registrar also has a new power to call for a verified English translation of the whole or any part of such a cited document. Failure to supply the translation when requested, will result in the examination request being treated as abandoned.

CORRESPONDING APPLICATIONS ROUTE SECTION 29(1)(c) AND (4)

In the second stage of this procedure, i.e. at 22 months, the documents filed must be accompanied by the IPC symbol relevant to the corresponding foreign application being relied on. Such an IPC symbol will have already been filed in the first stage, i.e. at 16 months. However, it needs to be repeated or updated. If the foreign patent has been granted, the IPC symbol which has been officially allocated, will appear on the cover page under the INID code (51).

VOLUNTARY AMENDMENT

Rule 49, the rule relating to the filing of voluntary amendments, has been amended to permit the filing of amendments in situations where it was not possible at all under the original wording of this rule. Basically, a voluntary amendment may be filed at any time before payment of the grant fee, provided the application is not "under search" or "under examination"; that is, the amendment may not be filed between filing the search and/or examination request and receiving the search and/or examination report.

EXTENSION OF TIME

The extensions of one month which were available as of right under Rule 108(3) are now available for up to three months by filing an amended Form 45. However, the fee payable on that form now depends on the number of months (or part of a month) for which the extension is required. The terms which may be extended under this rule include the 16, 22 and 32 months for the various search and examination options and priority document/translation supply, and the 20 and 30 months for the PCT national phase entry.

RENEWAL FEES

Under Section 53 of the Singapore Patents Act, the owner of a Singapore patent may apply for an entry in the Register to the effect that licences under the patent are available to all interested persons. The terms of any such licence are to be agreed between the parties or, if agreement cannot be reached, will be settled by the Registrar. Patents which are so endorsed "licences of right" are subject to a 50 per cent reduction in the amount of each renewal fee. The reduced renewal fees are now formally included in the Patent Fees and a new form (Form 53) has been introduced for the payment of the reduced renewal fees.

RESTORATION

Until the Singapore Patents Act 1994 ("the new Act") came into force on 23rd February 1995, patent protection was available in Singapore only by way of re-registration of UK patents (including European patents effective in the UK).

The new Act introduced for the first time the requirement to pay renewal fees, not just on Singapore patents granted under the new Act but also on existing re-registration patents. The procedure for renewal of a re-registration patent is more complex than the usual fee and form requirements and is explained further in a separate note in this newsletter.

Because the Singapore Registry had no readily accessible record of an address for service for re-registration patents, the Rule made under the new Act concerning the Registry's obligation to send a reminder when a renewal was overdue included an exception for re-registration cases. However, many patent owners and their agents also did not previously keep tabs on Singapore re-registrations, since once the certificate was issued, no action was required to keep the Singapore patent in force. As a result, many Singapore re-registration patents have lapsed unintentionally, due to a failure to pay the first renewal fee that fell due on or after 23rd February 1995.

The new Act permits an application for restoration to be filed in the case that a patent has lapsed due to a failure to pay a renewal fee. In recognition that many re-registration patents have lapsed unintentionally in the first year that the new Act was in force, the relevant rule defining the period within which the restoration application must be filed has been amended to increase that period from 12 months to 30 months. This period is calculated from the due date of the missing renewal fee, i.e. the date on which the Singapore patent ceased to be in force.

Additionally, in the case of application for restoration of re-registration patents, the standard of care requirement for successful restoration has been somewhat relaxed. Instead of having to show that "reasonable care" was taken to pay the renewal fee in question, the Registrar may now allow the restoration if satisfied that the failure to pay the renewal fee was unintentional and the proprietor had good cause for failing to renew the patent in time.

If any clients or associates believe or know that they have Singapore re-registration patents which have not been renewed, they should contact Mr Jerry J. Day of our office immediately for further advice on restoration.

The process of renewal of Singapore re-registration patents often causes some confusion. It is set out here for the reader's reference. Renewal falls due on each anniversary of the filing date of the basic UK patent [or European (UK) patent], starting with the fourth such anniversary. However, no renewal fee is payable before the issue date of the certificate of registration. The due dates for the payment of the renewal fees coincide with those for the basic UK patent.

When a registration patent is renewed for the first time, the usual fee and form must be accompanied by a Statutory Declaration confirming that the basic UK patent remains in force and has not been revoked. We can prepare and execute the Statutory Declaration as agents for the owner. The Statutory Declaration must also be supported by evidence that the UK patent remains in force. This evidence is most suitably a Register Extract (uncertified) from the UK Patent Office, which indicates the renewal status and ends with the magic words, "PATENT IN FORCE".

It is useful to note here that, although preferable, it is not essential for the Register Extract to indicate payment of the UK renewal due on the same date. Provided the previous year's UK renewal was paid and the UK patent remains in force at the time the Singapore renewal is paid (which may be up to three months in advance of the due date), all will be in order. We are able to obtain the necessary UK Register Extract on behalf of the owner, if preferred.

For each year's renewal subsequent to the first year, an accompanying Statutory Declaration is still required, confirming that the basic UK patent remains in force and has not been revoked. However, there is no need for supporting evidence. Therefore, once the first year's renewal has been done, for each of the following years it is sufficient that any renewal instruction letter contain a confirmation of the status of the UK patent. If necessary, we can obtain this confirmation on behalf of our clients.

For direct (i.e. non-PCT) Singapore patent applications, there are three prosecution options. These are:

i) search followed by examination;

ii) combined search and examination; and

iii) what we call the corresponding applications route.

The third route makes use of the results of search and examination of corresponding applications filed in certain recognised countries. When this option is available, it is often possible to avoid payment of the official search fee and sometimes also the official examination fee. Therefore, considerable cost savings may be available.

The corresponding applications route has two stages. The first stage is completed at 16 months from the priority date and involves submitting the filing details, that is country/office, application number, filing date and allocated or relevant IPC symbol, of all qualifying corresponding applications.

The second stage is completed at 22 months from the priority date. It involves filing one of the following:

1) a copy of a patent granted on one of the previously identified corresponding applications (the copy is preferably certified by the granting patent office);

2) evidence of the final search and examination results of one of those corresponding applications (that is, search report, official letter of allowance and the allowed specification or claims); or

3) a copy of the search report on one of those corresponding applications together with the cited documents (see the note above on the amendment of the Patents Rules, concerning the filing of a foreign search report). The foreign search report must be accompanied by an examination request.

If none of these options is available, the applicant may revert to the second route listed above, i.e. filing a request for search and examination.

With regard to the first stage, a "corresponding application" is strictly defined in the Patents Act and Rules. There are three requirements.

Firstly, each foreign application must have been filed by the applicant with the Patent Office of Australia, Canada, the United Kingdom, New Zealand, the United States or the European Patent Office, or filed under the PCT (not designating Singapore). However, a European patent application which has French or German as the language of the proceedings does not qualify as a corresponding application.

Secondly, the foreign application must relate to the same or substantially the same invention.

Finally, the foreign application must be related to the Singapore application in terms of priority. This relationship implies one of the three possibilities, either the foreign application is the application whose priority is claimed for the Singapore application, or the foreign application and the Singapore application share the same priority claim, or the foreign application claims the priority of the Singapore application.

If these three requirements are not all met, the foreign application will not qualify for this procedure and its search and examination results cannot be relied on in the second stage. It can be noted straightaway that if the Singapore application does not claim priority or does not itself serve as the basis of a priority claim, the corresponding applications route is simply not available.

Clients and associates who wish to take advantage of the corresponding applications route, should consider carefully the above definition when sending us the details of their corresponding applications. Under Section 80(1)(f), a Singapore patent may be revoked on the ground that the applicant has failed to inform the Registrar about any relevant corresponding application. If in doubt, please seek our advice.

With regard to the second stage, on a number of occasions we have been presented with a granted United States patent for filing with the Singapore Registry. However, the United States patent has been granted not on the original US application whose filing details have been submitted in the first stage, but rather on a continuation or continuation-in-part application. So far, the Singapore Registry has not indicated to us, in these circumstances, whether the US patent will be accepted. On a strict intepretation of the Act and Rules, such a patent would not be acceptable. We shall inform you of any ruling on this matter in due course. For now, the advice can only be that, if a continuation or continuation-in-part application is filed in the US and its filing details are available at the 16-month time limit, those details should be submitted to the Registry. In view of the above revocation provision, the same comment applies to a divisional application filed early in the prosecution of any corresponding application.

The Registry has informed us that its general policy is only to process requests for refunds of official fees after the relevant application has been withdrawn, abandoned or granted.

We have prepared a revised schedule of charges for our Singapore patent work. The new schedule is effective 1st June 1997. Although there are a few small increases in the level of certain service and official fees, the major change is merely to introduce a more complete list of charges. Our original schedule was prepared at a time when the new Patents Act was in its infancy and prosecution of applications lay in the future. Additionally, the charges for direct applications and those which apply to PCT national phase cases are now listed separately for ease of reference. Estimated costs of any work are always available on request.

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 and updates.

Any interested party is advised to contact Henry Goh & Co Sdn Bhd for further details prior to relying on the contents of this newsletter.

HENRY GOH & CO. SDN. BHD. (332744 A)

REGISTERED PATENT AND TRADEMARK AGENTS