The History and Evolution of Business Method Patents Business methods is a rapidly evolving topic in patent law. Business methods originally could not be patented at all, but they are now considere…
The above video briefly explained the types of Intellectual Property (IP). There is limited information on Utility Innovation. Thus, today I will explain about Utility Innovation in IP.
Do you know what is Utility Innovation (UI)? Some people may not aware that UI is one of the IP elements. Terms such as ‘petty patent’, ‘innovation patent’, ‘minor patent’, and ‘small patent’ may also be considered to fall within the definition of UI.
Utility Innovation is another type of intellectual property that is very similar to patent. It is an exclusive rights conferred to an innovator that manages to come up with an incremental improvement to an existing product or process. With the exclusive right, the innovator can work the incremental invention by preventing others from exploiting the same without prior consent.
This exclusive right is available in a number of national jurisdictions, which include Malaysia. The protection is territorial. In Malaysia, UI is governed by Patents Act 1983. The term of protection for a utility innovation is 10 years and subject to renewal for two consecutive 5 years. In the event that a particular inventor renew the invention twice, the duration of protection is equivalent to patent i.e. 20 years. However, an application for extension must be accompanied by an affidavit of the owner of the certificate for the utility innovation showing that the utility innovation is in commercial or industrial use in Malaysia explaining satisfactorily its non-use.
So, what is the difference between UI and patent?
UI and patent seem to have overlaps. How?
- Firstly, it is possible to apply for both patent and utility innovations in respect of one invention. However, only one can be granted for the same invention.
- Secondly, it is also possible for the application for a patent to be converted into a certificate of utility innovations and vice versa. To do this, certain formalities would have to be complied with.
Since UI is considered as incremental invention, the requirement for obtaining protection also less stringent. To qualify protection for UI, the requirement of inventive step is omitted. The diagram below might help you in understanding what I mean.
The threshold of novelty for utility innovations is also lower than a normal patent. Only local newness is required, i.e. that it must not be known or disclosed in Malaysia.
- no requirement for worldwide disclosure as disclosure outside Malaysia is disregarded for the purpose of determining prior art.
Based on section 14(1) of Second Schedule of Patent Act 1983, a utility innovation is new to Malaysia if it is not anticipated by prior art.
The procedure of registration of UI is similar to patents. Each application will go through the formality and substantive examination. All rules pertaining to acquisition, exercise and termination of right of patents would be applicable to UI.
In a nutshell, patent and UI can be concluded as table below:
Now, lets see the application statistic of UI and patent in Malaysia. Based on the explanation above, it seems to be easier to get protection under UI rather than patent. Nevertheless, the statistics of application in MyIPO for UI is minimal compared to patent.
Data as at year 2011. The statisics showed that the application for UI is marginal as compared to patent application (regardless local or foreign applicants).
So, why we should apply for UI if we have an invention that might no be granted a patent? There are some advantages of UI, as follows:
- One of the main advantages is that filing a UI is much cheaper than obtaining and maintaining a patent
- UI is normally granted faster than a patent due to lower threshold than patent
- UI may encourage local innovation so that local industries produce more goods
- UI can protect valuable inventions/innovations which would otherwise not be protected under the standard patent law or other intellectual property laws
- UI can provide revenue to governments in the form application fees etc.
- Registered UI rights can act as a source of valuable information via published specifications
- The existence of a UI may reduce incentives for industry to lobby for the inclusion of minor inventions
Many of Malaysians are actually creative and innovative in nature. Perhaps without they realized, the tweak on any instrument they use in their daily life can be registered as UI. Based on my very own experience in my hometown, there are many new instruments that villagers invent to solve their daily problem. Some of them are really have a good prospect! However, lack of information about IP and particularly UI may lead to small number of UI’s registration. Therefore, MyIPO’s continuously put an effort in giving awareness to Malaysian about IP. Perhaps we can see the number of application in UI increase!
Okay, I think enough for now. Till we meet again.
Zuherryna dimyati – I am not an IP Guru, but I wrote based on what I’ve learnt in my MIP classes.
The PCT is open to countries that are member states of the Paris Convention, which concluded in Washington in 1970 and thereafter administered by WIPO. There are 148 contracting states until October 2013, Malaysia joined PCT on 16 May 2006 and came into force on 16 August 2006. It is an agreement for international cooperation in the filing, searching and examination of patent applications.
The Patent Cooperation Treaty (PCT) provides a savvy route for patent applicants to seek after patent protection at the same time in a different jurisdiction countries. The PCT route is represented by the extent to which they have adopted the PCT application for the international protection (select countries during application).
At the point when a PCT application is filed, it is then subjected to an international search, which carried out by ISA. The International Search Report (ISR) contains information of published documents that affect the patentability of the invention claimed, the patentability opinion also prepared by ISA. The applicant may choose to withdraw his application if opinion report is unfavorable. In case the international application is not withdrawn, the application will be published with the ISR by the International Bureau of WIPO.
figure (from MyIPO)
- the applicant has more time (up to 18 months) than Paris Convention application to decide which foreign countries to apply the patent application.
- let patent applicant to delay strategies decision.
- provides preliminary feedback regarding the patentability of said invention.
Applicant can evaluate the chances of his invention after ISR has been delivered.
- allow patent applicant to present argument for patentability and amend claim prior to filing with national phase offices.
- delay prosecution cost of filing application in multiple countries
to prepare the translations (if required) and to pay the national fees of application.
- the formal ground of examination of processing the application cannot be rejected by the designated office if his international application is in the form prescribed by the PCT.
The PCT system enables the applicant to make a single application in Malaysia (the international application) and then designate as many other countries that are involved in the PCT. Bear in mind that the PCT system is a patent filing system, not patent granting system, there is no way by paying one-time fee of PCT application that can covered international application.
Blog ini diwujudkan bagi menggalakkan penulisan berkaitan harta intelek oleh pelajar Sarjana Harta Intelek Universiti Kebangsaan Malaysia dan memenuhi keperluan Aktiviti 1 bagi subjek UK5282, MIP 2015-2016 dan MIP2016-2017.
Pelajar boleh mengulas berdasarkan input dari subjek-subjek yang telah dipelajari merujuk kepada laporan dari blog/akhbar/fb dan juga kes-kes harta intelek yang menarik.
Gambar di atas menunjukkan paparan “screen shot” fb saudara afdlin shauki berkenaan isu aktiviti-aktiviti yang mendukacitakan dirinya sebagai pengusaha produk seluar bercawat labuh dikenali dengan jenama BOB pelikat pants miliknya.
Semoga pembaca mendapat manfaat dari sumber-sumber tulisan dan ulasan yang dibuat oleh penulis.