1 February 2012

The ASEAN team: promoting and protecting IP

Do you expect the ASEAN region to grow in importance for IP owners and professionals?

With a combined gross domestic product of $1.6 trillion and a total population estimated to be 600 million, I would expect the region to increase in importance for IP over the next few years. ASEAN, the Association of Southeast Asian Nations, has been identified as a region with tremendous economic growth and IP plays a very important role in achieving this goal.

What IP work does MyIPO carry out at the regional level and what does it gain from its involvement?

MyIPO, the Intellectual Property Corporation of Malaysia, is a member of the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC), which has served as a consultative body for ASEAN cooperation on IP since 1996.

The work of the group has been guided by documents such as the ASEAN IPR Strategic Plan (five-year plan). The group is mandated to develop, coordinate and implement all IP-related regional programmes and activities in the region.

“THE MALAYSIAN GOVERNMENT IS ALSO ENCOURAGING INVENTORS FROM UNIVERSITIES AND RESEARCH INSTITUTES TO PRODUCE MORE INNOVATIONS, BY PROVIDING INCENTIVES WHEN PATENTS APPLICATIONS ARE FILED AND GRANTED.”

By being a member of AWGIPC, MyIPO has gained several benefits, such as greater public awareness and capacity building. Numerous seminars and workshops, IP day celebrations, multi-media publications and publicity campaigns have been carried out regularly at national and regional levels. AWGIPC has obtained substantial support, both technical and financial, from numerous ASEAN dialogue partners and organisations.

Programmes and activities for capacity building in various IP areas were conducted with dialogue partners such as Australia, China, the European Patent Office, Japan, the World Intellectual Property Organization (WIPO) and the International Trademark Association. Other than that, MyIPO has the opportunity to exchange information with other ASEAN member states.

What is MyIPO doing to improve its cooperation with IP offices in the ASEAN region?

As a member of AWGIPC, MyIPO plays an active role by attending all the meetings and participating in all programmes and activities as outlined under the ASEAN IPR Strategic Plan. Under the current IPR Action Plan (2011-2015), Malaysia has been made the country champion for patent administration and promoting IP and innovation for small and medium-sized enterprises (SMEs).

The country champion has to work in close coordination with ASEAN member states and is responsible for monitoring the implementation of the project or activity. Malaysia is also the project proponent for capacity building for patent examiners and will be implementing training schemes for ASEAN member states with the cooperation of other developed IP offices.

How open are ASEAN member states to a regional patent office?

Establishing an ASEAN patent offi ce has yet to be considered by the member states. The obvious benefit of such an office would be that patent applicants could file an application that covers all of the ASEAN countries.

Processing patent applications would also be expedited as search and examination results would be shared. But an ASEAN regional office would have to deal with the multiple languages that are used in different ASEAN countries. Translation costs would have to be covered by patent applicants and this would increase filing fees.

However, the ASEAN Patent Examination Cooperation (ASPEC) programme has been underway since June 15, 2009. This is a cooperation programme between Singapore, Cambodia, Indonesia, Malaysia, the Philippines, Lao PDR, Thailand and Vietnam.

The purpose of the programme is to share search and examination results to allow applicants in participating countries to obtain corresponding patents faster and more efficiently. The project aims to reduce the duplication of search and examination work, which would save both time and effort. Additionally, search and examination work that is done on corresponding applications will serve as a useful reference for producing quality reports.

How popular has the Patent Cooperation Treaty (PCT) been since MyIPO signed up to it?

The reception of the PCT among patent owners has been good. This is reflected in the number of local applications submitted to MyIPO using the PCT system, which has significantly increased (from 224 in 2009 to 334 in 2010).

“WITH THE RECENT PROPOSED AMENDMENT TO THE TRADE MARKS ACT 1976, WHICH INCLUDES PROVISIONS ON INTERNATIONAL TRADEMARK REGISTRATIONS, WE HOPE TO ACCEDE TO THE MADRID PROTOCOL BY 2013.”

As far as the PCT is concerned, Brunei, Laos and Myanmar are the only countries from ASEAN that have not signed the treaty. As a country champion for patent administration, Malaysia can carry out analyses to determine training needs and then conduct training to help these countries’ IP offices better understand the PCT, with the assistance of WIPO.

What about closer to home? How are MyIPO and the Malaysian government helping Malaysian companies and inventors to become more innovative?

MyIPO carries out several initiatives on behalf of the Malaysian government to help companies and inventors become more innovative. To increase awareness of IP, MyIPO organises events to highlight the importance of IP protection as a means of wealth creation.

The government is also encouraging inventors from universities and research institutes to produce more innovations, by providing incentives when patents applications are filed and granted. SMEs are also given tax incentives to encourage them to file IP applications.

What is the quality of MyIPO’s patents, and what are you doing to improve this? What about patent pendency times?

The quality of MyIPO’s patents has been shown to be equal to those from developed IP offices. However, to improve on this quality, MyIPO patent examiners receive continuous training. Better search tools, such as EPOQUENET and the Global Patent Index (GPI), are also being used.

The Patents Regulations have also been amended to enhance patent granting procedures and to reduce pendency times. The average total pendency for normal applications is now 26 months from the filing date and 20 months for expedited examination.

What about trademarks?

MyIPO is currently amending the Trade Marks Act 1976, with a view to Malaysia becoming a member of the Madrid System. In the proposed review, we are also considering enhancing the scope of trademark protection to include nontraditional trademarks, revamping the office’s examination procedure, introducing an official IP journal, and expanding on the civil remedies, licensing and trademark securitisation provisions.

What are the benefits of signing up to the Madrid Protocol and what is MyIPO doing to prepare?

With the recent proposed amendment to the Trade Marks Act 1976, which includes provisions on international trademark registrations, we hope to have it tabled in parliament and accede to the Madrid Protocol by 2013.

It is hoped that by joining the Madrid Protocol, Malaysian home-grown brands will be able easily to access global markets. In addition to that, the Madrid System introduces a cost-effective registration system for trademark owners that want to file applications in multiple countries.

In order for Malaysia to be a party to this system, MyIPO has enhanced and upgraded its infrastructure, particularly its information technology system. The office has also increased its capacity by collaborating with WIPO and other national IP offices.

How involved is MyIPO in Malaysian anti-counterfeiting efforts?

To what extent would MyIPO like to increase its involvement? MyIPO plays an active role in combating counterfeiting by assisting enforcement agencies in Malaysia, namely the Enforcement Division of the Ministry of Domestic Trade, the Royal Customs, police, local authorities as well as IP rights owners.

MyIPO is also a member of the special task force for anti-counterfeiting and the anti-piracy committee at the ministry level, which meet regularly to discuss and formulate policies on the best ways to combat counterfeiting in the country.

We would also like to cooperate more with other foreign enforcement agencies as Malaysia is a signatory to Free Trade Agreements and other bilateral agreements.

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