18 April, 2016
This is the first guest post (which should be the first of many!) by IP legal expert Esther Wee.
Good news! To all those out there who are looking for funding specifically to apply for Intellectual Property Rights (IPRs), your prayers and wishes have just come true!
As part of their ongoing efforts to increase IP awareness and registration in Malaysia, the Intellectual Property Corporation Malaysia (MyIPO) has recently set aside some funds to help and encourage the public to register their IPRs. For successful applicants, MyIPO will cover the set of official fees for the registration and as for patents, MyIPO will even cover the fees of the appointed patent agent.
If you are wondering whether you qualify to apply, the funds are open to the following categories of the public:
Malaysian Citizen between the age of 18 to 40 years who is either an entrepreneur or an inventor.
Students from primary and secondary school, colleges, universities recognised by the government.
Local community organisations or associations (applicable for Geographical Indications mark only).
Each Applicant is entitled to only one of the following IPR components:
| No. | IPRs eligible for funding | Simple lay man definition |
| 1. | Trademark | Your unique brand, logo, trade name that the public identifies you with.
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| 2. | Patents | A new invention or innovation that solves a technical problem.
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| 3. | Utility Innovation | A new invention or innovation that solves a technical problem, an alternative to patent protection, sometimes called a “petty patent”.
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| 4. | Industrial Design | Your product having a creative design.
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| 5. | Voluntary notification for copyrights | Rights to creator’s music, arts, writing or performance.
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| 6. | Geographical Indications | Product from a specific location that gives it the special quality or reputation or characteristic. |
As Applicants are only allowed one choice, be sure to pick the right IPR that is most important, valuable and cost-saving for your business.
The following are 5 pre-application steps that will help you make the most out of this funding opportunity. In fact these steps are also useful and applicable for all Applicants to go through before making any IP applications.
(1) Identify your IPR.
First things first, you must know what you have before you can prioritise what to file. The two most common IPR component that most types of businesses possess are trademarks and patents. Go through the list of the IPR components and identify what IPRs you might have.
It is akin to preparation before war — you would need to know what weapons you have and how many soldiers or manpower you have before you devise your attack/defence strategy to defeat your opponent.
(2) Pick the most relevant IPR to your business.
If you find out that you only have trademarks and no invention/innovation to qualify for patent protection, then you must next identify which are the most relevant classes or goods/services out of the 45 classes to register your mark in.
Identify the types of goods/services that your business is offering and match it to the relevant class.
If you find out that you have trademarks, patents and industrial design rights, you may want to focus your application on patents for two reasons:
Patent application costs are usually the highest amongst all other IPRs, so funding in this case should be used to cover these expenses.
Patents usually have a strict time limit period to be observed, and failure in meeting the time frame for certain actions may cause you to lose your rights to register your patent altogether.
(3) Determine the strength and availability of your IPR.
Once you have identified and prioritise which IPR you should invest in, the next thing to do is to determine whether your IPR can be registered. This concerns the areas of trademarks, patents, industrial designs, and of course geographical indications.
Take trademarks for example — it is important to determine the distinctiveness of your mark. In other words, you should seek advice from a trademark attorney whether your mark would be acceptable to be registered before applying. A two letter word mark for example “M.A.” may not be acceptable for registration as they are common letters, hence no one person should be allowed exclusive use of the two common letters. However, if you represent it in a logo format coupled with other unique devices, it may increase the strength and quality of your trademark rendering it more distinctive.
A search at MyIPO’s registry is also recommended to find out if there are other identical or similar marks already on the register.
This is to make sure that the mark is indeed available to be registered and enable you to make the necessary changes and modifications to your mark prior to applying in order to minimise the risk of an objection from the Registrar.
A prior art search for patents is a must to determine whether your proposed patent passes the test of novelty (whether it is new worldwide), has an inventive step and is industrially applicable. You would not want to waste this one time funding opportunity to apply only to find out that your product or process is not patentable later on.
If you are keen to learn about how to file a trademark yourself, MyIPO runs a “Trademark Do-It-Yourself (TMDIY)” Workshop occasionally, so be sure to check their website for when the next workshop is going to held.
However, apart from knowing the application procedures, it is also important to know and assess the strength of your mark and registration availability before applying. Hence, it is still recommended that you seek the advice of an IP consultant to assist you in this matter.
(4) Plan your finances.
It is always good to know the rough cost involved and the time limit estimation of when those costs would be incurred so that you can plan your finances and time when to file the application accordingly.
Different IP components are subject to different timelines and cost. Once you put in your application, there will be timelines to reply any office actions issued by the Registrar. Failure to reply within the deadline may cost you additional extension of time fees to keep the application alive, otherwise the application may be treated as abandoned and subsequently removed from the Register.
However do take note that some deadlines are non-extendable, for example the one year grace period to apply for any Patents that have been publicly disclosed.
You can check out the process for each type of application at MyIPO’s website under the sub header “Flowchart” for each component. Here is the link to the Patent flowchart as an example.
(5) Apply for funding.
Once you are done with these prior steps, you are now ready to apply funding for your desired IPR category.
Ensure you read through the application process and submit all the required documents. You don’t want your application to be
rejected because of a technical error. It is a simple and obvious step, yet it is often overlooked and taken for granted.
Here is the application link to apply which will give you more details regarding the process and requirements.
I hope these steps and prior preparations will help you save costs by minimising the possible risk of objections throughout the application process and increase your chances of a successful registration.
With that, all the best, keep calm and carry on applying.
