Legal Counsel in Malaysia – Role of Malaysian Patent Lawyer

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Job of a legal counsel in Malaysia includes being responsible for a range of legal and intellectual property (IP) related advice by providing intellectual property and legal services to local businesses. Such legal services include providing support for third party licensing of intellectual property rights, including, patents in Malaysia, trademarks in Malaysia, etc.

In addition, other responsibilities include formulating, drafting, and negotiating IP agreements, such as secrecy agreements, patent licensing agreements, technology licensing agreements, technology transfer agreements, service agreements, business partnership agreements, product development agreements, website development agreements, mobile app development agreements, website terms of use, user agreements, website terms and conditions, mobile app terms and conditions, mobile app privacy policy, outsourcing agreements, valuation of business, valuation of technology, intellectual property valuation, patent valuation, trademark valuation, brand valuation, etc.

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To protect and enforce intellectual property rights in Malaysia, lawyers, law firms, intellectual property firms, patent agents, trademark agents and other professionals are required to provide professional, timely, cost-effective and practical legal advice, including, IP advice and support to the local and global businesses interested in doing business in Malaysia.

Trademark filing and trademark registration procedure in Malaysia includes brand clearance search, Madrid protocol international trademark filing, brand protection, brand management, use, and licensing of trademarks, design rights, copyright materials, and domain names.

To protect brand name in Malaysia, it is crucial to focus on brand protection work, particularly enforcement of trademarks, coordinating with international trademark law firms for anti-counterfeiting, trademark watch, trademark opposition, trademark licensing, trademark valuation, and the like.

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Malaysia Patent Registration – Patent Searching, Drafting, Filing and Prosecution

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Patent Drafting in Malaysia

Patent drafting in Malaysia is generally done by patent attorneys registered and licensed to practice under the Patents Act,  as governed by the Malaysian Patent Office (MyIPO). As per MyIPO’s requirements, the patent specification to be filed in Malaysia should include a description that is clear and sufficient for a person having ordinary skill in the art to carry out the invention.

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The patent application drafted for filing patent in Malaysia should contain a detailed description of the invention beginning with a title of the invention, which must clearly and concisely indicate the subject matter of the innovation. In use, the title of invention as mentioned in description should be same as mentioned on the abstract and the patent request form.

The title of invention in patent application should be followed by the technical field of the new invention. In use, the field of the innovation of the claimed invention is a general broad statement that describes the art or technology field to which the invention relates.

Subsequently, while drafting patent application for Malaysia, next section of description of the invention should include discussion of prior art by way of background art. Patent attorneys and patent agents while drafting the background section of the patent specification shall describe the problems associated with the technology to which the invention relates along with disadvantages / problems pertaining to existing solutions.

After the background section, the patent drafting procedure involves writing a disclosure of the invention, wherein essential features and novel aspects of the claimed invention are included along with advantages of the invention over the existing prior art.

Thereafter, the patent application should include a specification example, whereby specific examples are discussed with reference to the description of the patent drawings or patent figures. In addition, this section should also include description of best mode of the invention as contemplated by the applicant for carrying out the invention. This section shall be supported by using examples to describe the invention along with corresponding reference to the patent drawings.

In order to complete all sections of the patent specification, after example and description of patent drawings, an explicit description of the industrial applicability of the invention shall be included. This shall describe how the invention can be utilised by the industry, which can be obvious or nonobvious depending upon patent classification that relates to the field of the invention.

Patent Claims

Patent claims for filing patent in Malaysia should define the scope of the invention clearly so that patent protection can be granted. The claims are required to be clear and concise to support the invention as disclosed in description and as illustrated in patent figures.

Patent claims are most crucial component of a patent specification and considering legal nature of claims, drafting patent claims is most challenging part of writing a patent application. Accordingly, defining scope of new innovation in patent claims is important to prevent competitors from infringing the patent rights associated with the patent specification. Too broad may be invalidated or too narrow claims may make it easy for the competitors to copy the claimed invention.

As per MyIPO guidelines, patent claims should begin from a fresh page and should be written as a single sentence. The patent office also instructs the patent applicants to include a “characterising” portion to highlight the novel and inventive features as compared to the background or prior art. Claims should further include all the novel and inventive features of the invention that are described in the description and illustrated in the patent drawings. In essence, all the patent claims of a patent application should relate to a single invention.

Patent Application – Abstract

To summarise the disclosure of patent specification, an abstract is included in the patent application to broadly describe the description of the patent claims. The purpose of the abstract is to provide an efficient instrument describing the technical field of the invention so that it can assist in searching relevant literature.

Patent Services – Malaysia

Patent agents in Malaysia provide a broad range of patent services, including, patent novelty search, patent and non-patent literature prior art search, patentability analysis, patent eligibility analysis, state of art patent search, drafting of patent specification, filing of patent application, registration of patents, maintenance of patent application, patent advisory and patent due diligence.

Patent attorneys with expertise in drafting patent applications for patent registration in Malaysia have technical, doctorate and post-doctoral qualifications and experience in respective technology fields for understanding innovative technical concepts and embodying the same into patent specifications.

The patent specification for filing patent in Malaysia is a techno legal document aimed at disclosing the subject matter of the invention and identifying the patent rights associated with the invention by way of patent claims.

The patent drafting process generally begins with the step of inventor interview, wherein the patent attorney or the patent agent gathers the information pertaining to subject matter of the invention. Subsequently, the invention information is analysed with reference to the state of the art and a prior art patent search is conducted to analyse the patentability (patent eligibility) of the invention as compared to the prior art.

Provisional patent application can be filed to begin the patent filing process whereby a preliminary broad patent is filed to secure a priority date and subsequently, a complete or non-provisional patent application is filed within 12 months of the priority date, or the date of filing provisional patent application.

Patent Registration in Malaysia

Patent registration in Malaysia is governed by the Malaysian Patent Office (MyIPO) whereby patent right is granted as an intangible property right for the monopoly of the patent for a limited amount of time. The first step of patent registration process in Malaysia involves conducting a thorough patent prior art search and performing a patentability analysis of the patent search results.

By definition, the patent protection in Malaysia indicates a product or a process or a combination thereof that provides novel ways of solving one or more problems. The patent is granted by the patent registry in Malaysia that gives an exclusive right to the patent applicant to stop others from infringing upon their patent rights.

Once a patent is granted in Malaysia, the patentee has several rights and benefits, including, right to exploit the patented invention, assign or license the patented invention, and stop others from copying, manufacturing, selling, infringing or importing the patented invention without patentee’s permission.

The term of patent in Malaysia is twenty (20) years while the term of a utility innovation in Malaysia is 10 years followed by an option to renew for additional 5 years twice from the date of filing.

About Tech Corp Group

Tech Corp Group is an international solutions provider of Patent, Technology & Intellectual Property (IP) Research Services in Asia. Originally started operations in India and Singapore, our strong and connected network of patent attorneys has expanded towards multiple locations in Asia Pacific (APAC). We work with clients worldwide and our practice areas include patent, technology and intellectual property consulting for technology companies and innovation based businesses. For legal needs of our clients, we assist them by connecting with attorneys, lawyers and law firms in desired jurisdictions. We aim to decode Patents, Technology and Intellectual Property (IP) in Asia – Japan, Korea, China, India, Singapore, Malaysia, Thailand, Indonesia, Philippines, Vietnam, Laos, Cambodia, Myanmar, Brunei.

Patent Search in India

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Patent Search in India

Indian patent office, governed by the Controller General of Patents, Designs and Trademarks, provides applicants with an advanced patent search system to search for pending patent applications and granted patents. Termed as InPASS (Indian Patent Advanced Search System), the Indian patent office database offers multiple tools to the users along with logic operations to use various combinations of patent search keywords.

InPASS provides users to use one or more patent search syntax, including a list of operators that are supported to facilitate advanced level patent search covering full text of published patent applications and granted patents. For example, Boolean operators allowed by the Indian patent office include AND, OR and NOT. In use, patent searches for two or more words in combination can be performed by using AND operator. Similarly, patent searches for either word of a combination of words can be performed by using OR operator. Additionally, NOT operator may be employed in a patent search combination to exclude one or more words from the patent search results.

In addition to the above, the Indian patent office database further provides provisions for using Wildcards including “?” and “*”. In use, the wildcard “?” can be used to search multiple keywords while performing a patent search. For example, using “Oxidi?e” will result in patent references using both “Oxidise” and “Oxidize”. Similarly, use of wildcard “*” will result in patent search results that contain various possible combinations. For example, using *Chem* will result in patent search results containing chemical, chemistry, chemotherapy etc.

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How to Search Patents

Conducting a patent search of published patent applications and granted patents on the Indian Patent Office website by using the InPASS tool requires users to plan for a patent search strategy. Patent searchers need to be aware of the relevant patent search keywords, patent search strings, patent search strings in combination with logical operators, patent classifications, and other factors that may play a crucial role in performing patent searches.

A basic patent search requires much less effort as compared to an advanced patent search. Generally, advanced patent searches are comprehensive and the patent searcher or the patent analyst should have strong technical understanding of the domain of the technology pertaining to the innovation or invention for which the patent search is required.

Patent Searching Steps

  1. As a first step, the invention should be described by way of one or more relevant keywords that can assist in narrowing down patent search results. The keywords should be aptly selected to improve the quality of the patent searches.
  2. After finalizing patent search keywords, relevant patent classifications can be searched that cover the filed of technology describing the invention.
  3. Subsequently, a broad level patent search can be performed by using the relevant patent classifications.
  4. The results of broad patent search performed at above-mentioned step can be further narrowed down by using relevant patent search keywords as decided in first step.
  5. Subsequent narrowed down patent search results can be reviewed in detail to find the most relevant results.
  6. The above-mentioned steps can be repeated for alternate keywords, including synonyms and other common words used to describe the invention for which patent search is required.
  7. Consequently, the above-mentioned steps can be repeated for both published patent applications and granted patents to cover the entire Indian patent database.

While performing patent searches in Indian patent office database, the patent searchers and patent analysts can further screen the patent search results by using keywords across different fields. Multiple fields are available to the users to narrow down the search results, including, Title, Abstract, Claims, Description, Patent Application Number, Granted Patent Number, Applicant Name, Inventor Name, Inventor Address, Filing Office, PCT Application Number, Field of Invention, etc. In use, the field of invention refers to the international patent classification.

Tech Corp Group is aimed at decoding Patents, Technology and Intellectual Property (IP) in Asia – Japan, Korea, China, India, Singapore, Malaysia, Thailand, Indonesia, Philippines, Vietnam, Laos, Cambodia, Myanmar and Brunei. We provide international solutions of Patent, Technology & Intellectual Property (IP) Research Services in Asia.

Get in touch with us to serve your needs and feel free to our newsletter below.

Patent Search in Asia

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Patent Search in Asia

Patent Offices across Asia handle millions of patent filings every year and performing a patent search covering multiple jurisdictions can get challenging sometimes. Specifically, conducting a patent search for a patent research project that requires knowledge of multiple Asian languages is a highly knowledgeable task aimed at providing in-depth patent research and analytics.

Among top patent filing countries, Japan, China and Korea lead the patent filers from Asia. One major issue with patents in China, Japan and Korea is that most of the patents are filed in East Asian languages, including Chinese, Japanese and Korean. Therefore, while conducting patent prior art searches, relevant patent search results may be overlooked.

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Patent Search – Challenges

The challenges faced by patent searchers and patent analysts while performing patent analysis based on patent search results from Asian patent offices include language barriers, lack of effective human translation and errors in machine translations. Accordingly, it requires high degree of research and language skills to search patent offices using East Asian languages.

Specifically, China patent office provides SIPO Patent Database, Japanese patent office provides IPDL of JPO, Korean patent office provides KIPRIS, and Taiwan patent office provides TIPO Patent Database. While conducting patent searches in these countries, the translations may not prove effective due to the stark differences from English language based on meanings or pronunciations. Also, languages including Chinese, Korean and Japanese have no alphabets and words are formed by combining two or more characters that may be used to represent a symbol.

Therefore, significant skills are required to formulate patent search strings with appropriate limitations so that the meaning of search strings is properly conveyed. In use, patent search strings using native languages are employed to ensure patent searches and comprehensive and efficient. The patent search results can further be narrowed down by using Assignee based strings that are formed after researching active companies which are filing patents in the jurisdiction of interest. Similarly, it is advisable to screen patent search results based on patent classifications, inventors, and the like.

Patent Search Process

With a view to ensure the quality of patent searches is maintained, it is advisable to engage patent translation professionals while performing patent searches. The paten translators can translate patent titles, bibliographic data, claims, abstracts and entire description of patent search results from languages like Chinese, Japanese and Korean.

By following above-mentioned strategies, patent searches can be conducted across Asia, including jurisdictions like Japan, Korea, China, Taiwan, and the like.

Tech Corp Group is aimed at decoding Patents, Technology and Intellectual Property (IP) in Asia – Japan, Korea, China, India, Singapore, Malaysia, Thailand, Indonesia, Philippines, Vietnam, Laos, Cambodia, Myanmar and Brunei. We provide international solutions of Patent, Technology & Intellectual Property (IP) Research Services in Asia.

Get in touch with us to serve your needs and feel free to subscribe to our newsletter below.

Tech Corp Group – About Us

Tech Corp Group
Decoding Patents, Technology and Intellectual Property (IP) in Asia – Japan, Korea, China, India, Singapore, Malaysia, Thailand, Indonesia, Philippines, Vietnam, Laos, Cambodia, Myanmar, Brunei

About
Tech Corp Group is an international solutions provider of Patent, Technology & Intellectual Property (IP) Research Services in Asia. Originally started operations in India and Singapore, our strong and connected network of patent attorneys has expanded towards multiple locations in Asia Pacific (APAC).
We work with clients worldwide and our practice areas include patent, technology and intellectual property consulting for technology companies and innovation based businesses. For legal needs of our clients, we assist them by connecting with attorneys, lawyers and law firms in desired jurisdictions.

Originally incorporated as an international business and management consulting company headquartered in Singapore, we have expanded across borders by assisting our clients through international law firm of Tech Corp Legal LLP (headquartered in New Delhi, India) in providing legal and technical advisory related to New Product Development, Patent Portfolio Creation & Management, Global Patent Strategy, Patent Filing & Prosecution Support, Patent Searches & Drafting Patent Applications, Business Documents (Contracts, Agreements Etc.) Review & Drafting, Market Entry Strategy, Offshore Companies Incorporation, Corporate Restructuring, Mergers, Acquisitions And Joint Ventures. We assist clients through team of experienced entrepreneurs having in-depth expertise and broad experience in solving problems faced by businesses in today’s competitive world.