In the 5th of our Pekama Supplier Interviews we talk to Geetha Kandiah of KASS International Sdn Bhd, Malaysia
Hi Geetha, how many IP professionals work in your firm?
Our entire group has 40 staff, 6 of which are Patent Executives and 7 Trademark Executives.
How long have you been practicing IP?
12 years, from 2005
What is the focus of your practice?
Trademarks, Designs and Copyright – extensive experience in handling all aspects of trademarks, designs, copyright, including agreements related to licensing, co-existence agreements, franchising and so on.
Tell us a bit more about yourself?
I am chatty, friendly, and love to work hard and play hard. I am passionate about helping people grow their businesses and love being surrounded by dynamic and ambitious individuals.
I have 3 small children who keep me very busy! I studied law at Bristol University, UK and did the Bar Vocational Course in UWE, Bristol. In 2007, I was given the opportunity to work in a French IP Firm for a month. It was an interesting experience and I learned a lot about the culture of a European IP firm and how advisory work related to Trademarks, Designs and Copyright are delivered to their local and foreign clients.
What do you like to do in your spare time?
Everything and anything adventurous and outdoors; hiking, trekking, camping and running. I have completed 6 half marathons so far. The full marathons scares me but it is on my bucket list.
What do you see as the biggest challenges to the IP industry?
Globally, it will be commoditization of patent and trademark searches and prosecution. In South East Asia, it is lack of awareness among local businesses.
If you don’t mind sharing, what is your firm’s most competitive advantage?
We are a well-established firm with substantial reputation and goodwill. In Malaysia, it is rare for a Firm to have a large Patent Team, as the team needs to be trained for a few years before they can deliver good quality search reports and patent drafts. However, we invest a lot of time, effort and resources in training our Patent Team and that makes us stand out. We are known for our knack of providing strategic IP advice, from the business perspective.
So much so that we have received a number of third party accolades about our services, some of which are shown below:
“One of the leading Intellectual Property (IP) firms in Malaysia” – based on surveys conducted by Managing Intellectual Property magazine, a Euromoney Publication, UK
“One of the jurisdiction’s few genuine patent drafters… progressive in terms of management” – Managing IP handbook, 2009
“One of Asia’s top IP advisors” – as acknowledged by Asialaw Leading Lawyers survey
“One of the top IP firms in Malaysia” – Chambers & Partners, UK
What are the biggest changes you have seen within the IP Industry, since you started?
Awareness has improved over the years in the South East Asian countries, and most South East Asian countries have amended their IP Laws to be more harmonized with the rest of the world’s IP Laws.
How do you see yourself making a difference to the IP Industry?
Taking part in policy making through committee efforts. In fact, INTA introduced a new Committee in 2016 – Brands & Innovation Committee. This Committee explores how brands and innovation influence / impact each other. The findings have been interesting and the committee has published articles on this issue. If anyone is interested they can email me or find me on Linked In to find out. I also see myself being a role model to younger IP practitioners, and exploring new ventures in IP (such as conducting Training to Local Companies on “How to Be Innovative” etc).
How do you see your future involvement in the Pekama Community?
Being collaborative, actively receiving and giving back work through the PEKAMA’s portal and supplying updated information/guidance on the IP scene in South East Asia to PEKAMA’s members.
Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
Is your jurisdiction a member of the Paris convention and PCT?
Yes, Malaysia is a member of the Paris Convention and PCT.
What is the typical time from filing to grant in your jurisdiction?
Usually, it will take three to five years to a patent application to be granted.
Is your jurisdiction a member of any PPH agreements?
Yes, the Japan Patent Office (JPO) and the Intellectual Property Corporation of Malaysia (MyIPO) initiated the PPH pilot program on 1 October 2014. The PPH allows for accelerated examination of the patent application in Malaysia through the submission of documents that were issued by JPO for corresponding patent in Japan. The PPH pilot program will run for three (3) years. The program may be extended after a joint MyIPO-JPO review and assessment.
Is there a green track for environmentally-friendly inventions?
There is no green track for environmentally-friendly inventions but examinations of inventions of such nature meet the requirements for expedited examination (see below).
Are there other acceleration processes?
Yes, there four ways/approaches to accelerate the process:
Patent Expedited Examination
An applicant who requests or has requested for substantive examination of his application, may request for expedited examination once his application has been made available for public inspection.
In order to be eligible for the expedited examination, the applicant must justify its grounds for requesting the expedited examination, and such grounds include:
The invention is of national or public interest
There are infringement proceedings taking place or there are evidence showing potential infringement with regards to the said patent.
The applicant has commercialized or plan to commercialize the invention within two years from the date of filing for the expedited examination request.
The applicant requires a grant of the patent in order to receive monetary benefits from the government or registered institutions with the Registrar.
The invention relates to green technology that will benefit the environment or conserve energy resources.
Modified Substantive Examination
A request for Modified Substantive Examination can be filed if there any corresponding patent granted in any one of the prescribed countries such as United States, the United Kingdom, Australia, Japan, South Korea or the European Patent Office. This process will expedited the examination process.
Under Patent Prosecution Highway (PPH), an applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with the MyIPO and satisfies the requirements under the MyIPO-JPO Patent PPH program based on JPO application.
ASEAN Patent Examination Co-operation (ASPEC)
The ASEAN Patent Examination Co-operation (ASPEC) is the first regional patent cooperation project. It is a programme for IP Offices from participating ASEAN member states (“AMS”) to utilise the search and examination (“S&E”) results from another participating AMS IP Office as reference in its own S&E work. There are 9 participating AMS IP Offices and they are from Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Viet Nam.
Can you elaborate on opposition processes – how do they work, what do they typically cost and how long do they take?
Patent applications in Malaysia do not include an opposition period, but an aggrieved person who is affected by the presence of a patent may initiate proceedings to have the patent invalidated after the patent has been granted.
Are there any waivers from examinations and if yes, in which terms?
Under section 30(7) of the Malaysian Patents Act, the Registrar may waive the requirements for substantive examination, but must notify in the patent Gazette the intention to waive the requirement for substantive examination and allow any person who may be aggrieved by such decision to be heard.
What’s the approach of your jurisdiction to software / business method patents?
While business methods are excluded from patentability in Malaysia, software-related inventions can be patentable so long as the claimed subject matter contributes to prior art, produces a technical effect and is novel, inventive, and industrially applicable.
Are there limitations to protection of healthcare-related inventions?
Methods of treatment are excluded from patentability. However, products or compositions used in these methods are not excluded from patentability, and so are methods, use, products and other healthcare-related inventions.
Do you have utility models / innovation patents?
Yes, in Malaysia they are known as Utility Innovations.
If yes – is there substantive examination?
Yes-there is substantive examination to assess if the application fulfils novelty and industrial applicability requirements.
Is your jurisdiction a member of the Madrid protocol?
No, currently Malaysia is not a member of the Madrid Protocol. Malaysia is scheduled to accede to the Madrid Protocol in near future. However, the relevant authorities have yet to set a concrete date on this matter.
Are there multi-class applications in your jurisdiction?
No, multiple class applications are not accepted in Malaysia.
What are the minimum filing requirements?
It is required for the applicant to provide the Registry with the representation of the trademark(s), list of goods or services and a notarized Statutory Declaration. If the application claims priority of a foreign application, then a certified Priority Document (and its English translation) is required as well.
Is a certified priority document required?
Yes, Malaysian Trademark Registry requires the certified copy of the Priority documents as filed at the Convention country. Please note that priority claims can only be made within 6 months from the date of filing the application in the Convention country.
What is the opposition period?
The opposition period in Malaysia is two (2) months from the publication date, if no opposition is filed by a third party against your mark the mark would proceed to registration.
What is the use requirement and when do marks become vulnerable for cancellation?
It is not a compulsory requirement to prove use in order to obtain registration for a trademark in Malaysia. However, if the trademark has not been used for 3 years, it will be vulnerable to cancellation.
For how long are trademarks valid in your jurisdiction?
Registration is valid for 10 years from the date of application and the application is renewable for additional periods of 10 years.
What is the approach to 3D trademarks?
Please note that 3-dimensional marks are considered as “unconventional marks” in Malaysia, and to date, are not accepted in Malaysia. However, some of our clients register the mark as a two-dimensional representation of a 3-dimensional mark. Please however note that this will only offer protection to the mark in such a representation, and not the 3-dimensional version per se. Alternatively, the applicant may consider registering the 3-dimensional marks as industrial designs. Please note that in order for a design to be registrable in Malaysia, the design need only be novel or new in Malaysia. However, in the event of infringement, please note that the registration may be found invalid, if the infringer can find evidence of sale or advertisement of the product on internet prior to the application date (which destroys novelty as any product displayed on internet is in the public domain and accessible to Malaysians).
Do you know other foreign associates that would like to brand themselves as an expert in their jurisdiction?
Marcia Silva from MdME (Macau)
Scott Moran From Duncan Cotterill (New Zealand)