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COUNTRY : MALAYSIA
CAPITAL : KUALA LUMPUR
LANGUAGE : BHASHA MALAYSIA & ENGLISH
MEMBER : WTO-TRIPS, PARIS CONVENTION
Patents & Design in Malaysia is granted by Intellectual Property Corporation of Malaysia (MyIPO)
APPLICANTS WHO MAY APPLY FOR INDUSTRIAL DESIGN PROTECTION:
Following can file Design Applications:
a). Author of the Design
b). Employer of the author if Design made during course of employment
c). Person contracting the author to make the design
d). Person to whom the author has assigned the design in writing.
e). A Company.
Two or more persons owning interests in the design must apply jointly.
REQUISITES FOR FILING INDUSTRIAL DESIGN APPLICATIONS:
- Copy of the drawings;( six views such as front, rear, left side, right side, top plan and bottom plan views. And additional drawings such as perspective and cross-sectional views also may be submitted) – photographs in jpg format
- The full name and address of each creator;
- The full name and address of each applicant;
- The name of article to which the design is applied;
- The filing date, application number and country of the priority application; and
- The priority document
- Statement of Novelty in respect of the articles to which industrial design is applied to. However, not required while registering wallpaper, lace or textile articles.
- Full payment of fees.
Statement of Novelty: Novelty refers to originality, something new or unusual. In this context, if the Patent Office so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.
Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design. However, in Malaysia, applicant can file the application within 06 months after disclosure which will still retain novelty under certain circumstances.
TYPES OF INDUSTRIAL DESIGN APPLICATIONS MALAYSIA:
An ordinary application does not claim priority.
Convention application calming priority .
Application clamming priority of an application filed previously in a convention country.
Deadline for claiming priority for a design application in Malaysia is 6 months from the filing date of the priority application
KINDS OF INDUSTRIAL DESIGNS REGISTRABLE:
To come under the scope of registration, a Design should:
i. Be new and / or original
ii. Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or where applicable, the priority date of the application for registration.
iii. Be significantly distinguishable from known designs or combination of known designs.
iv. Not contain scandalous or obscene matter, or be contrary to public order or morality.
v. Not be a mere mechanical contrivance.
vi. Be applicable to an article, should appeal to the eye.
Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.
Aspects of Designs registrable:
- Two Dimensional, Three Dimensional,
KINDS OF INDUSTRIAL DESIGNS NOT REGISTRABLE:
The following kinds of Designs are not registrable:
- A method of construction
- An idea
- The materials used in the construction of an article
- The function of an article
- Designs which are not new or original
- Designs which have been disclosed to the public anywhere in the world by publication in a tangible form or by use or in any other way prior to the filing date.
- Designs which are not significantly distinguishable from known designs or combination of known designs or
- Designs comprising or containing scandalous or obscene matter.
PartityPatents through it’s associate Law Firms in Malaysia, is at hand to help you with Industrial Design registration and prosecution.
STEPS TO INDUSTRIAL DESIGN REGISTRATION:
Steps to Registration:
i. Finding out whether such a design has been registered previously.
ii. Preparing a representation of the design
iii. Identifying the class of design.
iv. Providing a statement of novelty.
v. Including a disclaimer that the design has not been in the public domain at any point in time.
vi. Claiming a priority date if the design Is registered in other countries.
vii. Determining the fee to be paid.
viii. Ensuring all enclosures are attached.
ix. Complying with objections if any.
x. Providing full details pertaining to contacts and addresses.
Several designs may be combined in one multiple application as long as the products belong to the same class.
ParityPatent along with specialised Industrial Design Lawyers and attorneys in Malaysia can assist you comprehensively with registration and protection of new Industrial Design.
EXAMINATION PROCESS OF INDUSTRIAL DESIGNS:
Upon receipt of the application, it is numbered and dated. Formalities examination is carried out. If any defects are noticed during examination, the same are notified to the applicant for rectification within the stipulated time and if the defects are not removed accordingly, the application will be deemed abandoned.
PUBLICATION AND REGISTRATION OF INDUSTRIAL DESIGNS:
Post examination, Registrar satisfied about compliance of the requirements, shall:
- Register the industrial design by way of recordal of the particulars in the register
- Issue a certificate of registration to the applicant
- Publish in the Gazette notice regarding registration of the industrial design, name and address of the registered owner, such other matters as deemed necessary.
TERM OF INDUSTRIAL DESIGN PROTECTION:
The protection of the design is for 5 years calculated from the Filing Date and is extendable for another four consecutive terms of 5 years. (Total 25 Years)
Our attorneys will assist you with renewals and maintenance Industrial Design in Malaysia.
BENEFITS OF INDUSTRIAL DESIGN REGISTRATION:
WHY PROTECT DESIGNS IN MALAYSIA? Patent law deals in ‘behind the scenes’ aspects of a company or organization as it deals with inventions that are not easily accessible by the general public. Designs along with Trademarks on the other hand, are the ‘visual medium’ which aid in brand projection, recognition, association and retention by existing and potential customers. To prevent rivals from copying industrial designs, it is therefore an important and strategic aspect in the protection of intellectual property rights. Therefore, as with all IP, it is better to begin protection of designs at the earliest before disclosure with the general public.
BENEFITS OF INDUSTRIAL DESIGN REGISTRATION IN MALAYSIA: Certain countries that follow cumulative protection of Industrial Designs by Copyright as well as Design laws have the ‘Unity of Art’ principle that needs to be followed meaning, entitlement to copyright for applied and other art work shall be determined through the same criteria.
In today’s highly impulse driven and temperament market, industrial designs provide the requisite edge to push products into consumers’ psyche. Such is he craving for fashionable and well crafted products that looks can often be equally or more important that the products’ functionality itself. Registration of Industrial Design Rights becomes a valuable asset which gives the following benefits:
- A substantial return on interest (ROI) as the popularity of the product is directly proportional to its reproduction and counterfeiting thus enabling swift legal action in preventing copycats and frauds thereby ensuring that the design is not diluted.
- Infringement of designs can help owners obtain damages and recover costs for the same.
- Registration of designs can help owners work on bettering their designs through Research and Development (R&D) on bringing out superior industrial designs thus making it harder to knock off or scale up manufacturing by infringers in order to copy the original designs.
- Registered designs can be sold, licensed, franchised which can all earn royalty. The same can also be used as a collateral to secure loans.
- Industrial Designs complement even strengthen Trademarks hence making brand attention, brand association and retention, brand recall and usage much easier and interesting.