KASS | IP Experts

Intellectual Property

Exploiting the Novelty Grace Period

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By Jagannathan Arumugam 

In general, patents are territorial, as a patent is a set of exclusive rights by a Government body granted to an inventor over an invention for a limited time period in return for disclosing the invention to the public. Even though each country follows a different procedure for granting a patent, all of them have agreed to implement a common set of requirements for granting a patent, which is novelty, inventive step and industrial applicability.

Novelty has a peculiar quality when compared to inventive step and industrial applicability. In order to kill the inventive step of an invention, information disclosed in any part of the world by any person can be used. On the other hand, the novelty of an invention can be destroyed using the information disclosed by the inventor before filing a patent application for the invention. In layman’s words, an invention is considered to be ‘Novel’ or to satisfy the ‘Novelty’ requirement, if it has not been known to the public before a patent application is filed by the inventor at a patent office.

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Increase in Official fee$ in Indonesia

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The Indonesian Government is planning to increase their non-tax revenue (Penerimaan Negara Bukan Pajak). The non-tax revenue comprises of certain official tariffs, which includes the official fees or government charges for Intellectual Property prosecution.

Below are some of the notable changes:

1. Copyright and Industrial Design

  • Filing fees are not increasing (what a relief!), but the Government is planning to increase certain post-filing recordals such as recordal of change of name and/or address and the assignment of rights.

2. Patent, Integrated Circuit Layout, and Trade Secret

  • Similar to the above, patent filing fees are not affected. However, the government is planning to increase the post filing fees. We would like to highlight two things that previously did not incur cost but soon will incur costs i.e. the filing of the request of Patent Prosecution Highway (PPH) and request of extension of time for responding the examination result.

3. Trademark and Geographical Indication

  • Filing fees, again, are not affected.  However, certain post filing matters will see a significant increment.

Our detailed information with the specific increments will be sent to all of our colleagues, clients and associates as soon as the Indonesian Government authorizes the draft list of official fees and the official government regulation is thereafter amended. The Government plans to enforce the changes by the end of 2017.

Thailand joins the Madrid Protocol System

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We have great news for all local brand owners. The much awaited entry into Madrid Protocol by Thailand has taken place. On 7th August 2017, the Director General of World Intellectual Property Organization (WIPO) has officially announced the use of Madrid Protocol to register their trademarks in all 115 countries, starting 7th November 2017 onwards.

Not only that the Madrid System reduces the time taken to file a trademark, but it also simplifies the entire process with a single international application and one set of fees when registering products or services in Thailand, or worldwide. However, that the decision as to whether or not an applied mark is registrable in Thailand will still be based on the Thai Trademark Act, as amended since 28th July 2016.

What’s next?

KASS International is here to help with both local and foreign clients who are looking into expanding their businesses, services or products in Thailand via the Madrid Protocol System.

For more information, visit www.kass.com.my or drop us an e-mail to kass@kass.com.my.

Thailand becomes the 99th member of the Madrid system and the latest country in ASEAN to join. The six other ASEAN countries that already joined the Madrid Protocol are Brunei, Cambodia, Laos, the Philippines, Singapore, and Vietnam. Learn more about the Madrid Protocol here

Malaysia and Europe Fly Together

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By Ilangkumanan Kashaban

The Intellectual Property Corporation of Malaysia (MyIPO) has now joined forces with European Patent Office (EPO) in establishing the Patent Prosecution Highway (PPH) Pilot Program effective from 1st July 2017, for an initial three-year trial period.

The three-year trial period serves as duration for both the Malaysian and the European Patent Offices to assess if the initiated PPH program is actually a success and/or a failure between both parties, which subsequently may determine whether the PPH program should be sustained after the trial period.

Generally, the PPH program provides an expedited examination procedure for corresponding patent applications filed in the countries involved, so as to allow applicants such as both Malaysian and European companies to obtain corresponding patents sooner.

Simply, the PPH program allows a corresponding patent application – where the claims have been determined as patentable by a First Patent Office – to be used as a basis for expediting the patent application at a Second Patent Office.

The requirements for filing a request for PPH are as follows:

  • The Second Patent Office (SPO) patent application is in particular relationship with the First Patent Office (FPO) application, i.e., claims priority under Paris Convention and/or PCT national phase;
  • The FPO patent application has at least one claim that was determined by the FPO to be patentable/allowable;
  • All the claims in the SPO patent application sufficiently correspond to the allowable/patentable claims in FPO patent applications;
  • The examination has not begun in the SPO at the time for request for PPH;
  • A request for Substantive Examination must have been filed at SPO either at or prior to the time of the PPH request.

The following are the documents that need to be filed during the filing of the request for PPH:

  • Copies of all FPO Office Actions and its translation in either English or Bahasa Malaysia;
  • Copies of all claims determined to be patentable/allowable by the FPO and its translation in either English or Bahasa Malaysia;
  • Copies of references cited by the Examiner at the FP. If the references are patent document, it is not required to submit the references, unless explicitly requested by the Examiner; and
  • Claims Correspondence Table which identifies how all claims in the SPO sufficiently corresponds to the patentable/allowable claims in the FPO patent application.

The PPH expedites patent prosecution and enhances the search and examination results between the Patent Offices to improve the quality of examination worldwide.

For more information, visit www.kass.com.my or drop an e-mail to kass@kass.com.my if you need further information on the PPH procedures.

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