Articles

Patent FAQs

What is ‘patent prosecution’?

Who may apply for patent protection?

If my employee or contractor invents or develops something, do I have the patent to his invention?

If two or more persons work together to make an invention, who is entitled to the patent?

What is a priority date?

Why is priority date important?

What happens to my invention after my patent expires?

When should patenting be considered?

Is there any alternative protection to patenting?

How long is the protection given?

What is the royalty rate for the use of a patented product?

What should I consider before filing an application for a patent?

What do I need to file an application for a patent?

How do I conduct a patent search?

Who are the online information providers?

What is the difference between a patent attorney and a patent agent?

Will my patent granted in a country protect my invention throughout the world?

Can I file just one international application?

If I am granted a patent, can the right be subsequently challenged?



What is ‘patent prosecution’?

Patent prosecution means the preparation and filing of a patent application with the local Patent Registry or Office.

 

Who may apply for patent protection?

Either alone or jointly, any person may make an application to patent an invention. However, unless the inventor has assigned the rights to the invention to the applicant, or the applicant derives title to the invention from the inventor, the rights shall belong solely to the inventor or inventors.


If my employee or contractor invents or develops something, do I have the patent to his invention?

Yes, if the invention was made in the performance of such contract of employment or in the execution of such work, and there is no agreement to say otherwise.


If two or more persons work together to make an invention, who is entitled to thepatent?

This depends on each party's role in the making of the invention.  If each party has contributed ideas to the invention, the law recognises that they are joint inventors, and the patent will be granted to them jointly.  If, on the other hand, only one party provided all of the ideas to the invention, and the other merely executed the former's instructions to make it, then the person who contributed the ideas is the sole inventor and the patent will be granted to him alone.


What is a priority date?

Unless priority is claimed from an earlier application, a priority date normally refers to the filing date of the application. In other words, a priority date is the date of the first application for the patenting of the invention.


Why is priority date important?

Establishing the priority date is important for the following reasons: 

  1. The technical information contained in the application can be published only after the priority date.
  2. Novelty and inventive steps are judged in comparison to information already in the public domain at the priority date.
  3. Foreign applications can be filed within 12 months following the priority date, which means that the foreign application will be backdated to the date of filing of the first application.


What happens to my invention after my patent expires?

Once your patent expires, the protection ends, and your invention enters public domain. This means you will no longer hold exclusive rights to your invention, and it becomes available to commercial exploitation by others.


When should patenting be considered? 

Patents should be filed as soon as possible, but no later than 12 months after disclosure.  Disclosure causes the information about the invention to become public and fall into the realm of prior art which defeats the purpose of a patent application.


Is there any alternative protection to patenting?

The following are alternative protections to patenting:

  1. Protection under the laws of confidentiality
  2. Protection under the laws of trade mark
  3. Protection under the laws of design


How long is the protection given?

Generally, the life of a patent is 20 years from the date the application was first filed. In the case of Malaysia, the life of a patent is 15 years from the date of its grant for applications filed on or before 1 August 2001. For applications filed in Malaysia after 1 August 2001, the life of the patent is 20 years from the date of filing of the applications. To keep the patent in force, payment of maintenance fees throughout its life is required.


What is the royalty rate for the use of a patented product?

There is no standard or average royalty rate, and there are no definite rules about how to determine it. The royalty rate depends very much on the market forces for the patented product, as well as the negotiation skills of the owner of the patent, as well as the licensee.


What should I consider before filing an application for a patent?

Upon developing a new product or process, the following considerations should be observed before filing an application for patent right protection:

  1. A search of previously published patents and patent applications, printed publications and websites to determine whether a ‘prior art’ exists.
  2. Whether there is a market for your invention - It would be futile to spend time and money to patent an invention if there is little opportunity for exploitation. 

Once you have determined these two points, the issue of patenting should be considered as an integral part of your overall business strategy, alongside factors such as profit potential, finance, production, and marketing.


What do I need to file an application for a patent?

A patent application must include

  1. an application form,
  2. a description of the invention,
  3. an abstract of the invention,
  4. a claim or claim(s) of its uses,
  5. any drawing referred to in the description, and  
  6. the requisite filing fee.


How do I conduct a patent search?

There are different categories of searches:

  1. Novelty search – to determine whether a concept is novel or new, which means the product or process must not be known anywhere in the world.
  2. Assignee search – to discover the rightful owner of the patented product or process.
  3. Infringement search – to uncover any patents that might be infringed by the proposed device or conduct in question.

Searches may be conducted manually, which entails searching at the register of the local Patent Registry or Office (also known as the ‘traditional search’). They may also be conducted online, which means logging in with the online information providers. Either way, these searches will help you avoid costly duplication of R&D.


Who are the online information providers?

  1. One site to consider is the IBM patent searching site, which contains over 26 years of US Patent & Trademark Office (USPTO) patent descriptions, as well as images dating back to 1980. The first entries date back to 5 January 1971. You can search, retrieve and study over two million patents.
  2. The World Intellectual Property Organization also provides free searching of PCT patent applications, from 1998 until the present.
  3. The European Patent Office provides databases consisting of European (EP) patents, PCT (WO) patents, worldwide patents, and Japanese patents. 
  4. Another resource is a search site provided by the US Patent and Trademark Office. This site offers two databases - one database containing full-page images, and a second database providing bibliographic content (title, inventor, dates, abstract, citations) which may help with some types of searches.
  5. Others include CompuServe, Lexis, dialog information services, and Derwent.


What is the difference between a patent attorney and a patent agent?

In the United States, a patent attorney is defined as someone who is

  1. Admitted to practice before the courts of at least one state in the US, and  
  2. Admitted to practice before the US Patent Office. 

A patent agent in the United States, on the other hand, is someone who is admitted to practice before the US Patent Office, but has not provided any proof to the US Patent Office that he or she is admitted to practice before at least one court in the United States. 

In Malaysia, only a registered patent agent may represent a client in a proceeding before the Intellectual Property Corporation of Malaysia. In order to be registered with the Patent Registration Office, this person shall have to satisfy three criteria:

  1. He is domiciled in or is a permanent resident of Malaysia.
  2. He is an Advocate and Solicitor of the High Court of Malaya, or has a relevant degree or its equivalent in an appropriate branch of engineering or science from an approved institution of higher learning, or has qualifications entitling him to graduate and have a membership of an approved professional engineering or scientific institution.
  3. He has passed the examination set by the Board of Examiners established under the Patent Regulations 1986.


Will my patent granted in a country protect my invention throughout the world?

Each country has its own patent system, which makes patent right protection territorial.  Thus you would have to apply for and obtain patent protection in each country where patent protection is sought. 


Can I file just one international application?

Yes, if you are a national or resident of a Member State of the Patent Cooperation Treaty, which simplifies and reduces the cost of obtaining international patent protection; otherwise you will need to file separate applications in each required country.


If I am granted a patent, can the right be subsequently challenged?

A search by an examiner will be made of previously published technical literature. These are available in patents documents in the local Registry or Office and other major overseas Registries or Offices such as the US Patent and Trademark Office, United Kingdom Patent Office, the Patent Cooperation Treaty and European Patent Offices. Subsequently, if ‘a prior art’ is discovered following the grant of the patent, the patent in question may be invalidated. A Court can declare a patent invalid upon a successful challenge by a third party.