Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents - Case Studies

1. Building a Competitive Edge:Protecting Inventions by Utility Models and / or Patents : Case Studies By P. Kandiah KASS International Sdn.Bhd. KASS

2. To qualify for a patent, the invention must be: i) novel / new throughout the world ii) not obvious to a person skilled in that field of technology iii) industrially applicable - Generally, all countries require similar criteria. KASS

3. Utility Innovation (UI) in Malaysia - novel / new throughout the world UIs suitable for simple modifications to existing products, process of methods of manufacture KASS

4. Not all countries grant UIs. • UIs, Petty Patents, Utility Models available in Germany, Japan

5. Fundamental Misconceptions on International Patent Rights Amongst Malaysiani. A UK granted patent enforceable in all Commonwealth countriesii. 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 MalaysiaKASS

6. Traditional International Patent Filing (1) (before 1.1.1989)MalaysiaOverseas Filing

7. Traditional International Patent Filing (cont.) (post 1.1.1989 – Paris Convention) a) Malaysia Overseas (only Paris Convention Countries) (months) 0 12 Taiwan b) Malaysia Non Paris Convention Countries

8. Paris Convention Filing • Local 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

9. 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

10. What are the PARIS Convention countries? (See list given) KASS

11. 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 Enter National/ regional phase 30

12. List of PCT countries as at today

13. 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

14. Factors to consider in filing in foreign countries 1. Cost in each country 2. Ability to obtain and enforce Patent vs deterrent factor 3. Need for exclusivity 4. Return on Investment • Technological relevance of country KASS

15. 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

16. Case Study A: Certificate for Utility Innovation for “Nylon-fiber glass rollers for and in dipped latex industries” KASS

18. 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

19. Patents on new products No. of Countries Time / Sales 2nd patent on related products Patent on production machine / machine parts 1st patent

20. The Company also concentrated on: - registration of industrial design where patents / UIs not available - registration of trademarks for their products KASS

21. Case Study B Company initially involved in protection of submerged structures against barnacle build-up KASS

23. -> Gave areas to oil and gas industries -> Developed new product for corrosion control of nut and bolt fittings in drilling platforms -> Obtained patent rights

25. 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

26. 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

27. 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

28. Enforce your patents against infringement to gain respect for your patent portfolio. KASS

29. Thank You P. Kandiah Tel : 03 2284 7872 Fax : 03 2284 1125 E-mail :ipr@kass.com.my KASS