THE Malaysian Intellectual Property Association (MIPA) has been representing IP practitioners, owners and users for 30 years. We would like to clarify some points raised in “Intellectual property raises costs of living” (Speak Up, Feb 14).
A patent is a limited term monopoly on a new invention, typically a product or a process, which gives the owner the right to sue an infringer, eg third party making or importing the same product or using the same process. A fundamental feature of the patent system is that in exchange for the monopoly, details of how to create the invention are published. Thus after the monopoly expires, third parties can build on the earlier knowledge to progress innovation and contribute to economic development. There is plenty of evidence which confirms that the provision of strong IP rights is associated with economic growth (as for example summarised in Ohlhausen (2016) Harvard Journal of Law & Technology v.30 No. 1).
The two main criteria for a patent to be granted (and thus enforceable) are novelty (not publicly disclosed before the patent application is submitted) and inventive (not obvious compared to what is already known). It is important to remember that patents are national rights, and can only be enforced in the countries they are granted. It is not unusual for patents to take five years or more to be granted (which is why it is common to see “patent pending” on many products).
With regard to the Trans-Pacific Partnership Agreement (TPPA) and its proposed successor (CPTPP), it should be noted that Malaysia is already compliant with many of the provisions. For example Malaysian law would already allow a new and inventive method of producing insulin to be patented, although of course insulin per se would not be patentable as it would not meet the novelty requirements stated above.
What the biologic provisions of TPPA actually provide is market exclusivity for a protein (produced by cells adapted for the purpose) for a period based on first marketing approval. However, it is important to note that not only is this very specific, the term of a patent (20 years) is longer than said exclusivity (eight years), so these provisions are largely superseded by the patent (assuming it is maintained), and therefore of low concern.
The scope of a patent is a common source of confusion. Readers may recall a furore last year concerning a patent supposedly covering Tongkat Ali and threats to sue anyone using this traditional medicine. Of course this was not the case, as the patent actually only covered a very specific extract from Tongkat Ali, and in any case it is a principle of patent law that you cannot stop someone doing something they are already doing before a patent application is submitted.
“Evergreening” is something of a misnomer as it is not possible to renew a patent beyond its maximum term, and a new patent application covering a similar invention still has to meet the requirements of novelty and inventive step as described above. For example in the context of pharmaceuticals the original patent covering the product may have expired, but a new, more efficient, method of making the product could be patentable. However, it is important to note that in such circumstances a third party generic manufacturer would still be allowed to make the product using the original method without infringing the patents.
It is notable that US patent law is somewhat different to other countries, which is why certain issues such as “price gouging”, “patent trolls” (also known as non-practising entities or NPEs) and “patent thickets” have become more prevalent there. For example in the US it is relatively cheap and easy to initiate litigation with little risk, whereas it can be expensive to defend against such action.
Fortunately, Malaysian patent law is predominantly based on UK patent law which provides for ways of dealing with such issues, including, as the authors state, the availability of compulsory licences. And like the UK, courts in Malaysia follow the “loser pays” practice, which is a strong disincentive to nuisance litigation.
Indeed, Malaysia has a dedicated IP court and a relatively well developed system allowing first instance cases to be resolved within 18 months, which is on par with many developed nations. Furthermore costs of patent prosecution and litigation in Malaysia are a fraction of those in the US, and free online patent databases allow the scope of protection to be ascertained.
As Malaysia transitions to becoming a developed nation with a knowledge based economy, strong IP rights will become increasingly important.
Consider for example how China, a country where there was little interest in filing patents 30 years ago, has transitioned exponentially to become the number one patent filer in the world, overtaking the US a few years ago, accompanied by corresponding economic growth. It seems to surprise many Malaysians that Malaysia is not far down the table, positioned at around number 23 out of the 162 countries listed by World Intellectual Property Organisation.
Of course there is still room for improvement, and for example increasing the number of patent examiners and improving training would help increase efficiency and reduce patent pendency.
In recent years Singapore has brought in a large number of patent examiners, and other countries such as Vietnam and Thailand are starting to catch up. Malaysia has an opportunity to address these issues before she is overtaken.
Awareness and understanding of patents is critical.
In the UK a TV programme called Dragons Den allows inventors to pitch their ideas to a panel of investors. It is of particular note that if the investors are seriously considering putting their money into a particular business, they nearly always ask the inventor how the investment will be protected – if there is no patent, more often than not they lose interest.
However, a side effect of the programme was that viewers started asking more questions about intellectual property, as it improved awareness of the subject among the public.
Not every idea can be patented. But failing to protect a business-critical invention can cause irreparable damage. Therefore advice should be sought from a registered patent agent at an early stage.
Dr Chris Hemingway
Chair of MIPA Patents Committee
