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Patent is an invaluable intangible property granted to patent applicant(s) for the monopoly of the patent for a certain number of years. To find out more on how to draft a patent and the patent registration process, check out Patent Drafting and Patent Registration Steps. Below is a list of basic information all patent applications and inventors should know.
- What is Patent?
- What are the benefits of a Patent?
- What is the Validity Period of a Patent?
- Where can I enforce my Patent?
- Can a patent be applied jointly?
- What are the steps and procedures to obtain a Patent?
What is Patent?
Patent is product or a process that provides new way(s) of doing something which offers a new technical solution(s) to at least one problem. A patent which is granted by the Patent Registry gives an exclusive right to the applicant to stop others from infringing their patent rights.
The inventor must sufficiently disclose his invention in the specification to allow effective examination of its specification to allow effective examination of its suitability for a patent. If this has not happened and the patent is nonetheless granted, this can be a ground for subsequent revocation of the patent for insufficiency.
What are the Benefits of a Patent?
A patentee has the exclusive rights to exploit the invention, assign or transmit the patent, and conclude licence contracts. A granted patent gives the owner the right to stop others from copying, manufacturing, selling, and importing the owner’s invention without the his/her permission.
What is the Validity Period of a Patent?
The term of protection is relatively short which is only 20 years from the date of grant but the scope of protection is enormously broad. On the other hand, a utility innovation is protected for the first 10 years and renewable twice (5 years each) from the date of filing.
Where can I enforce my Patent?
Approved patents are granted a territorial effect only in countries for which protection was sought.
Can a patent be applied jointly?
Any person or company may make an application for a patent or for a utility innovation to be registered either alone or jointly. It is to be noted that, the inventor may allow another person to be the applicant. For example, an inventor may register his / her patent under his / her company’s name.
Not all inventions are patentable. There are several requirements that must be complied with. Pursuant to Section 11 of the Patents Act 1983, the invention must be new, it involves an inventive step; and it is industrially applicable; i.e. that it can be mass produced.
In order to determine whether or not an invention is patentable, it is far easier to look at the definitions of what is not patentable as listed under Section 13 of the Patents Act 1983. Any invention which falls under the following categories are not patentable under the said Act.
- Discoveries, scientific theories and mathematical methods;
- Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
- Schemes, rules or methods for doing business, performing purely mental acts or playing games;
- Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.
Patent – Steps and Procedures
An invention may be a product or a process to do something. Products which are new or even existing products modified in such a way that it allows to solve existing problem in the prior art may be registrable under the Patents Act. In many organisations and businesses, a patent registration is crucial to protect the interest of the inventors or assignees (if the patent has been assigned from the inventor to another person or legal entity). Since the patent requirement is very strict, starting early by putting your invention into words is necessary to ensure that your rights are protected.
#1: PRE-APPLICATION – Patent Search and Patent Drafting
Before applying for a patent in Malaysia, a patent search and patent drafting is necessary to investigate the current state of art. We have written a comprehensive guide on how to approach the patent search as well as patent drafting. Click on our guide on the following url: Guide to Patent Drafting.
#2: PATENT APPLICATION
Once you have identified the present state of art and drafted your patent, you may proceed to patent application. As patent is territorial in nature; i.e. a patent application in one country gives protection only in that particular country, you should list the list of countries you wish to protect your invention in. At this stage, it is advisable to consider all factors including the costs involve and whether protection in that particular country is necessary or not as a patent maintenance costs increases overtime.
There are (2) two options available to patent applicants:-
- Individual applications in each and every country/countries you wish to protect your patent; and
- An application at your home country; i.e. Malaysia coupled with a Patent Coorperation Treaty (PCT) application.
#3: PATENT EXAMINATIONS
The Registrar will examine the patent and thereafter issues a report.
#4: PATENT GRANT
If the Registrar is satisfied that the patent is registrable under the Patents Act, the Registrar will grant the patent by issuing a patent certificate. It is important to note that the whole patent registration process may take up to three to five years or more from the date of application.
#5: PATENT YEARLY ANNUITY PAYMENT AND MAINTENANCE
A yearly patent annuity fee is payable every year after grant. The payment of the yearly annuity fees keeps the patent alive and it’s costs increases every year. It is to be noted that any non-payment of the yearly patent annuity may cause the patent to lapse.
How do I draft my patent?
This is a challenging question for many inventors. There are many ways to draft and how to clearly word each sentence in order to cover your invention as broadly as possible. In actual fact, there is no one absolute right way to draft a patent, but here, we share some of the information necessary for drafting a patent which we hope is helpful to kick start your work.
Before we go deeper on how to draft a patent, it is necessary to first identify what your invention is all about. Is it a product or a process? Does it relate to a machine? Does it relate to new method of producing drugs? Once you have identified the field of the invention you wishes to protect, the next step is to determine the existing state of art.
The term “present state of art” refers to the level of development of a device, procedure, process, technique, or science reached at the present time. This term is a concept used in the process of assessing and asserting novelty and inventive step – the two main requirements for an invention to be patentable. Patent search tool such as the Google patent search allows users to search for existing prior arts which covers patents filed in the United States of America. It is important to note that, a search in one country alone is insufficient as unlike trademarks or industrial designs, an invention is only valid if the invention is new in the world. Therefore, we would strongly recommend you to engage a qualified and experienced patent agent to conduct the search for prior arts.
Inventions are usually invented in order to solve problems existing in the state of art. A list of problems and the solution introduced in the invention is helpful to show the inventiveness of an invention. Once all of the above are identified, you may proceed to draft a brief introduction of your invention and the claims of your invention which may or may not be accompanied with detailed drawings. Once you have identified and prepared all of the above, it is advisable for you to seek a qualified registered patent agent to draft the patent before proceeding to the next stage; i.e. patent application.
Below is a summary of the steps involve in patent drafting:-
- Identify the Field of the Invention.
- Determine the existing State of Art by conducting a Patent Search. It is advisable to seek an experienced Patent Agent to conduct the patent search.
- List the Problems in the present State of Art and the Solutions introduced in your invention.
- Draft a brief introduction of your invention, claims and drawings (if any).
- Seek a qualified and registered Patent Agent to draft your patent.
- Proceed to patent application in Malaysia and/or overseas by contacting our patent agents here.
Patent Claims defines the boundaries of a patent protection. They form a protective boundary around your patent in order to allow others to know when they are infringing on your rights. The extent of your patent protection is defined by the words of your claims.
A poor or incorrect drafting may cause your claim(s) to be invalidated because they are drafted too broadly resulting in a lack of inventive step as required under the Patents Act. On the other hand, claims may also be drafted too narrowly thus making it easy for competitors to benefit from your invention without infringing the proprietor’s claim.
As the claims are the legal basis for your patent protection, you may wish to seek professional help to ensure that they are properly drafted to receive complete protection. At TGKC IntelPro, we provide patent drafting services by our in-house Qualified Patent Drafter and Patent Attorney. Email us now.