Malaysia is one of the few countries that has a ‘utility model’ system under its patent rights system. The Patent Act 1983 grants two types of right for invention – first is a patent right per se and the second is what is referred to as ‘Certificate for Utility Innovation’ (hereinafter referred to as “CUI”). Many owners of novel industrial products are not fully clear of what is the best way to protect the intellectual property rights for their products. This article will attempt to explain the unique features of the Malaysian CUI, to show the differences between a CUI and Industrial Design Rights and to give some practical advice on the best way to protect novel industrial products in Malaysia.
Like in other countries, patents for industrial products are granted when the claimed feature(s) of the product are (i) novel; (ii) involves an inventive step (that is it is not obvious to a person skilled in the art); and (iii) it is industrially applicable. To qualify for a patent,Malaysia demands absolute novelty – in that, the invention should not have been published anywhere in the world by way of oral disclosure, written documents or by way of use.
Certificate for Utility Innovation is provided for any improvement of a known product. As there is no legal requirement for inventiveness or lack of obviousness, then it can be argued that any improvement however slight would make that product qualify for CUI so long as it meets the novelty requirement. Subject matter for which a CUI can be granted is the same as that for the grant of patents. That is, nonpatentable subject matter, such as scientific discoveries, method of treatment of human or animal body by surgery or therapy, etc. applies equally to CUI. Other aspects, such as, manner of prosecution of application before the Patent Office is the same as that of prosecution of a patent application.
Registered Industrial Designs (IDR) is a propriety right granted under the Industrial Design Act 1996. “Industrial Design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include:
(a) a method or principle of construction(must fit principle); or (b) are dependant upon the appearance of another article of which the article is intended by the author of the design to form an integral part (“must match principle”). The term “article” means any article of manufacture or handicraft and includes any part of such article or handicraft if that part is made and sold separately. It does not include an integrated circuit or part of an integrated circuit (which are governed under the Layout-Designs of Integrated Circuit Act 2000). It does not also cover any mask used to make such an integrated circuit.
Further to qualify for IDR, the design must be new at time of registration (which is the date of filing of application or at date of priority). A design cannot be considered as new if the design or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade:
- was disclosed to the public anywhere in Malaysia (local novelty as opposed to absolute novelty in case of patent rights); or
- was the subject matter of another application for registration of industrial design filed in
Malaysia but having an earlier priority date made by a different applicant in so far as that
subject matter was included in a registration granted on the basis of that other application. A race period of six months is given in certain circumstances.
Where a new product or improvements to an existing product is made, it is possible to obtain an IDR if:
- the shape or configuration is new (local novelty is sufficient);
- the shape or configuration is not a requirement of the method or principle of construction requirement of functionality) or where the shape or configuration is not dependant upon the appearance of another article.
However an application for CUI should be considered where the article meets the above requirements and in addition:
- is functional;
- has been disclosed to the public by the applicant but within the 12 months the of intended filing ate of application; and
- itself is not the subject of any patent or CUI application in Malaysia.
There is no bar from obtaining IDR right and CUI (or patent) for the same article. Thus it is possible to obtain dual protection in certain circumstances or for certain articles. It is advisable to obtain both types f rights in certain situations for example where:-
- It is necessary to initiate infringement action earlier. In practice it takes about 4 to 5 years to obtain a CUI, where else it takes less than 12 months to obtain an IDR and the rights are backdated to date of registration (which is the date of filing of the application).
- Where part of an article is functional and another part of the same article is non-functional (i.e. s not dictated by method or principle of construction or is dependant upon the appearance of another part of the same article).
Take the example of a mobile phone which is attached to a cover as an illustration of an article to which both an ID and a CUI can be claimed. The shape of the mobile phone and the layout of the screen, the keys, the buttons and the design of the cover attached to the phone is subject of an ID registration. The manner of attaching the mobile phone cover to the mobile phone may not be an inventive step such that to qualify for a patent right but may be novel enough to be the subject of a CUI.
Another example to illustrate to point would be document feeder for an electronic copying machine. The general appearance of the feeder, if novel, would qualify for an industrial design registration. However the structure of each component element or the manner of attachment of each compound element, the manner in which component elements are made collapsible against one another, all being functional would not qualify for industrial design rights, but may however qualify for a CUI.
Thus in attempts to obtain strong Intellectual Property Rights protection for an article, one should first analyse the various features of the article, both aesthetic features and functional features. The aesthetic features of the articles can be protected by an industrial design registration, whilst the functional features of the article which may be novel but not inventive can be protected by CUI.
The unique features of the Malaysian Intellectual Property Legislation should be taken advantage by applicants who are involved in the design or manufacture of consumer products or industrial articles where appearance of the article or part of the article is a factor in the purchasing decision of the consumer. Malaysia being a member of the PARIS Convention, it is possible to enjoy priority of 6 months for IDR application and 12 months for CUI applications.