KASS | IP Experts

Intellectual Property

Ban On Stem Cell Patenting – Big Mistake In The Making?

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Malaysia, being one of the fast developing countries, has been showing keen interest in stem cell research and therapy. As the awareness in stem cell technology increases, issues like morals and ethics have been raised by various parties such as religious bodies and conservative organizations. These controversies do not only occur in Malaysia but also in other parts of the world where stem cell based work has long since been conducted.

On 10 March 2011, Yves Bot, one of the advocates general to the European Union’s Court of Justice (ECJ) in Luxembourg, recommended that the patenting of inventions which involve a use of embryonic stem cells should be prohibited.

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Exploring Local Biodiversity Resources

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It is often claimed that Malaysia is rich in biodiversity resources, that we have the world’s oldest rainforests, that our rainforest is pristine and virgin, untouched commercially by the human hand. But are we taking advantage of this biodiversity asset to serve the needs of the country or the global community? Do we have the technical know-how or the financial resources and incentives to do that?

The abundance of natural resources in Malaysia has yet to be fully exploited by researchers here. Many believe that possible cures for some of today’s life-threatening diseases can be found in the rainforests of countries rich in cultural and biological diversity, where so much has yet to be explored. With resources in some developed countries fast depleting, many corporations are looking at other countries in search of potentially valuable genetic material and biochemical compounds in nature.

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Are Trademark Searches Worthwhile?

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In this globalised world we live in today, finding a brand name that is apt for one’s product and services is a challenge each business faces.

With a borderless market provided by the ease of communication and transportation, businesses need to consider the availability of the mark not only in their local market, but also in jurisdictions that they intend to venture into in the near future. This is where the challenge lies as there are a zillion prior marks existing in each jurisdiction, with more marks being applied for each day, especially in the European Union, United States and China. Even in Malaysia trademark registration is becoming a challenge.

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Reasons You Should Avoid Using Descriptive And Generic Marks

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Owning a registered trademark gives the owner exclusive rights to do the following:

  • use the mark on its goods and services; and
  • exclude others from using the same or very similar mark on same or related goods and services.

However, this monopoly of rights is given – by Trademark Offices worldwide – only to owners who own trademarks which are distinctive (or unique) per se or marks which have become distinctive through use (where long use of the mark in the market has educated the market to view the non-distinctive mark as a trademark).

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Top 4 things to look out for when selecting an intellectual property (IP) service provider

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Intellectual Property (IP) Rights are gaining prominence in the international marketplace. Globalisation of trade, location of R&D activities, manufacturing, structure and location of IP asset holding companies, recent rapid growth of intellectual property patents and trademark protection service, etc, all are creating challenges to IP service providers.

It is important that an appropriate IP service provider is selected to meet the challenges. What should you look for in an appropriate IP service provider and how do you go about it? The following matters should be considered:

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Patents & DCA Approval

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If a pharmaceutical drug enjoys patent protection in Malaysia under the Patents Act 1983, can the Drug Control Authority (DCA) of the Ministry of Health grant marketing approval for another generic drug allegedly falling within the claims of the patent and applied for by a rival company? And if marketing approval is given, can the rival company market the generic drug without infringing the patent or without consent of the patentee? Pharmaceutical drug marketing companies often face this dilemma.

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This issue recently came up before the High Court in Kuala Lumpur in the case of Ranbaxy (M) Sdn Bhd and E.I. Du Pont De Nemours and Company (Suit No.: D5(IP)-22-16-2009). In the dispute between the two pharmaceutical giants, Ranbaxy argued that since it has obtained DCA approval for its COVANCE drug, it should be allowed to market the drug, notwithstanding the drug may have infringed Du Pont’s MY-110414-A patent still subsisting in Malaysia. The High Court, in its decision on 18th February 2011, held that obtaining DCA approval does not exempt the product from the exclusive rights granted to a patentee. Therefore Ranbaxy’s drug, on the facts of this case, was held to infringe Du Pont’s patent.

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Trademark Matters: A Case of Chocolate Chip Cookies

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Danone Biscuits Manufacturing (M) Sdn Bhd V. Hwa Tai Industries Bhd

FOOD manufacturers would stand to gain from paying close attention to a recent High Court decision on a case involving claims of trademark infringement and passing off. On 29 October 1990, Danone Biscuits Manufacturing (M) Sdn Bhd (“the Plaintiff”) applied to register their “ChipsMore” trademark in Malaysia, for, amongst others, chocolate chip cookies. The trademark was registered and renewed up to 20 October 2007. The Plaintiff has been manufacturing, distributing and selling these cookies in Malaysia since 1990, and has also exported the same to other countries in the region.

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Tough Times Ahead For The Pharmaceutical Industry?

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Things have been going very well for the pharmaceutical industry over the past decade or so. A series of “blockbuster” drugs has been bankrolling the industry players fortunate enough to own the rights to those drugs and at the same time financing their search for the “Next Big Drug”. Global spending on pharmaceutical drugs exceeded a record US$643 billion in 2006. In the US, the pharmaceutical industry has been the most profitable industry for many years running. Nascent pharmaceutical industries in countries such as China, South Korea, Mexico and Russia have been virtually guaranteed double digit annual growths.

However, all that may soon come to an end. The years 2011 and 2012 will usher in the patent expiries of a record number of blockbuster drugs. Pfizer’s cholesterol busting drug Lipitor, which has been their best seller with sales of US$12.4 billion in 2008 (making it the top-selling branded pharmaceutical drug in the world at that time) is due for patent expiration in the US in June 2011. Via a licensing arrangement with Indian generic drug company Ranbaxy, Pfizer has delayed this deadline a further five months. This means that a generic version of Lipitor will be available sometime in late 2011.

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What’s Happening In The Fight Against Counterfeiting In Malaysia?

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Illicit trade involving counterfeiting, naturally a very harmful form of encroachment, could easily injure the rightful ownership of an intellectual property; and in Malaysia, counterfeiting is not taken lightly. In the eyes of law, infringement of intellectual property is a serious offence, with possible civil or criminal prosecutions against an infringer. Basically, if you own an intellectual property right, you can demand any person that is infringing or likely to infringe it to stop the infringement, at least before embarking onto expensive court trials.

Drop in numbers

With the legal frameworks appropriately executed, eradication of counterfeit goods in Malaysia has been conducive to date, with statistics showing a decrease in numbers from year to year in the past decade. Last year saw the least number of cases to date, with 409 cases and seized goods worth RM3,570,857.51. Just six years ago, there were 3,914 cases with goods worth RM98,166,687.27. This is also a drastic drop when weighed against the 1,528 cases recorded in 2008. The market is less tainted with counterfeit products these days, and the enforcement activities have correspondingly dropped in numbers, according to Mohd. Roslan bin Mahayuddin, the Director General of the Enforcement Division at the Ministry of Domestic Trade Co-Operatives and Consumerism. This year however, barely within the first three months, there is already a record of 235 counterfeit seizure cases. Ranging from foods and medicines to clothing and leather products, this figure could be cause for concern. Clothing and leather products seem to lead the count, amounting to roughly 41% of the total cases. In contrast, the same range of goods collectively took up about 34% of the total number last year.

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