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Monday, 14 December 2015

Since user data now drives innovation...

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What is big data? Many people (that I know) would say, big data is the analysis of aggregated personal data of users, especially users of websites and other electronically generated information.

So, what is big data consisted of? In short, it is the user's personal data.

Users' information may appear to be quite harmless. After all, it consists of readily available information such as names, addresses, email addresses, age, gender, affiliation, and the like. (Actually, those basics could be quite useful for a serial killer or a stalker.)

The issue runs deeper than that. A website user today provides the website's operators with rich data about his browsing habits, things that he is interested in, stuff he ignores, and information about what he is doing. (That was how the American government were able to set up a fake bank and launder money for criminals and get intimate information about criminal activity.)

When data is collected on a large scale, millions of users can be analyzed in the aggregate and useful information can be derived. Insights and trends not ordinarily available to market researchers can be obtained through statistical analysis. Those with the tools get a first look at what is going on in the world. Sight beyond sight. Foretelling the future becomes a possibility. Innovation becomes possible and profitable because of the leads that the big data is generating.

Compare the market researcher who conducts interviews and questionnaires. Information is largely self-reported and may be skewed to satisfy the researcher's requirements. With electronically generated information, you cannot self-report. There is little chance of bias. The data is generated electronically, automatically, in real time. No bias, no misleading information, and certainly no researcher-caused misinformation.

But what is the problem with that? Aren't users habits personally unidentifiable? Nobody can identify me on my habits! After all, when website owners and (in the future) devices collect my data, they promise that the information is anonymous. I will not be identifiable.

But you are mistaken. What you are doing in the app or the website is very valuable to the website operator. Not only the website operator, but also other business owners who interface with the website. Advertisers who put up online advertisements will use your cookie information in order to generate programmatically the right type of advertisements to entice you. Television and radio will also be able to identify you and give you personalized offerings and entice you further.

This means that you will be more and more vulnerable to this kind of attacks - the attack of temptation and desire!

Statistics, once the domain of the bookish, geeky and nerdish, is becoming the key to identifying trends within large sets of data. Statistics applied to large sets of data is called data mining. Through data mining, it becomes possible to anticipate new trends and emerging demands. It has become the secret weapon of choice amongst cutting edge business managers who crave innovation. Because data generated in real time can be more timely than data generated through traditional market research.

Laws regarding personal data protection will not generally protect you from business owners and operators who plan to use your data to analyze and identify new business trends. This is because many of the laws only prohibit transmission of your data to third parties. It does not prohibit the analysis of your data by companies. However if the information is sensitive and falls into the wrong hands, it could be quite devastating. Data has now become a highly prized possession which companies tend to hoard because they believe that there is monetary value in it.

The weakness is that there is no law requiring companies to delete information sitting on their websites. This is information which can be used to do time series analysis. All that is present is, at least for Europe, the right to be forgotten and the right to have your information removed from search engine results. It does not mean that the search engine company must delete the information from their database.
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Tuesday, 13 October 2015

What are Industrial Designs?

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Introduction

Today I had the opportunity to meet with a young lady who wanted to ask me about industrial design. She had painstakingly created lovely designs by hand, works that would take hours hunched over her handiwork. I can't tell you what it was, but the final work was lovely. It was a modification of an existing product, modified so that it shone and gleamed like a diamond. To this end, she thought of commercializing it and asked me whether it could be registered as an industrial design.

Our modern-day consumer lives in a society where almost all industrially produced items have gone through some form of design. The design begins with the design of the solution, where designers normally take apart user experiences to generate enough design cues that would make a "delightful" product that addresses a "pain point" of the consumer. Then there is the question of aesthetics, the kind of design that makes things look unique and pleasing, never mind the fact that they perform the same function as other competing items in their category.

Here is an example of an industrial design:

This is from Australian application no. 199103270 (registration no. AU116029S). Thanks to IP Australia for the searchable database.

Definition

This is the definition of "industrial design" in the context of Malaysian law:

features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include:-
(a) a method or principle of construction; or
(b) features of shape or configuration of an article which:-
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

That definition comes from section 3 of the Industrial Designs Act 1996.

The most important ingredient of the definition appears to be that it must be applied by an "industrial process or means". That immediately rules out any handiwork, no matter how beautiful it may be. An "industrial process" seems to imply some machines being involved in the production of the article.

The second important element of the definition is that it must be related to "shape, configuration, pattern or ornament" which "appeal to and are judged by the eye". This means that the shape, configuration, pattern or ornament is meant to be pleasing to the eye. In short, it is design, by designers, for industrial production, understood in the proper sense of "industrial design".

Exclusions

The definition also excludes certain things.

The first exclusion is simple enough. A "method or principle of construction" is by necessity, excluded. If it is the only method by which an article can be produced, how can it be considered an industrial design? A more proper way of protecting that method of construction may be by patent. Section 13(2) of the Patents Act 1983 says, "An invention may be or may relate to a product or a process".

The second exclusion is a feature of shape or configuration of an article which is "dictated solely by the function which the article has to perform". That means that the article should not be shaped based solely on its intended function.

The third is a feature of shape or configuration of an article which depends on the shape of another article, and the article is intended to be a part of that other article.

This point was recently considered in the Kuala Lumpur High Court case of Veresdale Ltd v Doerwyn Ltd [2015] 7 MLJ 836. Four automobile parts had been registered under the Malaysian Industrial Designs Act: a hood, a front bumper, a rear bumper, and a grille. The parties agreed that the parts are "integral parts of the automobile" and the parts have "an impact on the general shape and appearance of the whole automobile". Based on the exclusion stated above, the Plaintiff sought to declare that the four automobile parts are not industrial designs within the meaning of section 3(1) Industrial Designs Act 1996.

The learned judge referred to another case: Ford Motor Company Limited and another, re [1993] RPC 399. A similarly worded provision, section 1(1)(b)(ii) of the English Copyright Designs and Patents Act 1988, was being considered. The judge, calling it the "must match" provision, decided that a certain door panel was intended to match a car. Since the door panel was meant to be part of a completed car, the court (in the English case) decided that the door panel could not fall within the definition of an "industrial design". The recent Malaysian case of Veresdale v Doerwyn was similarly decided.

Singaporean Exclusion

The Singaporean definition of an industrial design, simply called a "design", is quite similar to the Malaysian definition. However, an additional exclusion is found in the Singaporean definition, i.e. "features of shape or configuration of an article which ... enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function".

(Please refer to section 2 of the Registered Designs Act, from Singapore).

The Singaporean definition means that those elements of design that enable a product to be connected to another article may be excluded from registration as a design under the Registered Designs Act. But there is no such exclusion here in Malaysia. Perhaps some Singaporean designers, eyeing the larger market in Malaysia, might consider registering their designs in Malaysia, especially those that fall within the last exclusion under the Singaporean Registered Designs Act.

According to the WIPO (World Intellectual Property Organization) website, the following are also excluded from industrial design protection:

  • designs that do not meet the requirements of novelty, originality and/or individual character;
  • designs incorporating protected official symbols or emblems (such as the national flag);
  • designs which are considered to be contrary to public order or morality.

Conclusion

This is just a simple article about industrial designs. I hope that I can revise this article in the future to include some examples of good industrial designs.

Interestingly, I read the following from the WIPO article I referred to earlier in this article:
Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is “an article of manufacture” or that it can be replicated by “industrial means”.
That implies that since only "some countries" exclude, there are also "some countries" which do not exclude? I'd be very interested to find out which countries do not exclude handicrafts from industrial design protection!

References:

  1. WIPO, About Industrial Designs. URL: http://www.wipo.int/designs/en/about_id.html
  2. Singapore Statutes Online, Registered Designs Act (Chapter 26). URL: http://statutes.agc.gov.sg/aol/search/display/view.w3p;page=0;query=DocId%3A%22f8e05363-47a4-4070-a3c5-9ebf9139f4b2%22%20Status%3Ainforce%20Depth%3A0;rec=0
  3. IP Australia, AU Designs Data Searching - Introduction. URL: http://pericles.ipaustralia.gov.au/adds2/adds.adds_start.intro
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Saturday, 12 September 2015

Some things I learned from 3 days of talks on startups

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Today was day #3 of the 4-day long MaGIC Academy 2015 (also known as #MA2015). The MaGIC building looks like a college block¸ Google-inspired, surrounded by leafy trees. Next door, is a school called Kirkby College, and DELL is just across the road. For three days, I was among hundreds of entrepreneurs, mentors, wannabes, and busybodies who descended upon the MaGIC grounds to enthuse and muse about the world of tech startups. I met a good number of them, young and old, clued-in and clueless, fresh grads and balding "uncles", and pretty young women who looked like beauty pageant contestants. Smiling volunteers, interns and staff in MaGIC hoodie jackets sat at registration counters, waiting our arrival each day. Young Malay men and women wore black t-shirts with the words "Fat Boy" and ensured that the food queues were orderly.

It was yesterday afternoon that Ms. Cheryl Yeoh, MaGIC's CEO, gave a talk about "Startup Metrics", a talk that would puzzle many traditional MBA's. Where traditional MBA classes emphasize strategy, marketing, logistics, ROI, etc. the new world of tech startups looks like it will emphasize open rates and click through rates, number of website visitors and number of email signups, and purchases made through the startup's website. These numbers, Ms Yeoh said, would show how the startup was gathering "traction" and convince -- or turn off -- an investor. Website visitors, which sign up for email newsletters, would show "engagement", thus validating the ideas behind a startup. Nevermind that there may be no "product" in sight as yet. This, apparently, is what the venture capitalists want. This is what the accelerators want. And this is what the country wants. (Luckily, the CEO is young and pretty, only 32. I guess most of us would not mind sitting through her lecture.)

They all subscribe to the "Lean Startup" methodology (popularized by Eric Ries and Steve Blank). Failing fast, failing forward, and reiterating based on failure, is the preferred way of moving forward. The new entrepreneur must discover his customer's needs to ensure product-market fit. No need to pour precious time and money in development until the right direction (product-market fit) is identified. Product-market fit means customers. And thus, begins the startup entrepreneur's journey of discovery. He asks friends and family whether they are interested in a certain "solution" to a certain "problem". He asks them whether they would be interested to buy his fictional product. If so, the product has been validated -- at least, at the friends and family level. Then, begins the exciting journey of the new entrepreneur. It begins with mocking up and wireframing the app. Then, there should be a sequence of flows within the app, reflective of how they think the user should expect to use the app and interact with the app. (Oh, did I forget to mention that the new tech entrepreneurship is all about apps?) Once these are mocked up to satisfaction, software developers (employed by the entrepreneur) will get cracking on the app, converting the wireframe into something tangible -- an app.

But the journey doesn't end there. The app having been created, thus begins the arduous process of iterating and reiterating. If, at this stage, the entrepreneur has some money of his own, he funds the startup out of his his own pocket. That's called "bootstrapping". If he needs money, for whatever reasons necessary for the advancement of the product (i.e. the app) or marketing, he has then got to prepare a "pitch deck" for the potential investor. Money, it seems, is required, and it will be required in large amounts. But why? Aren't startups billion dollar companies like Facebook? The answer is that the company probably hasn't made any money, or too little money. It needs to get feedback and improve based on the feedback. Version 1.0 needs to get to version 1.1, 1.2, 1.3 and so on until 2.0. A part of the money goes to paying for the developers' salaries. Another part, perhaps, for "user acquisition" through Facebook advertisements, Google Adwords, and other avenues.

The idea of a startup is that startups should, ideally, become the next Facebook. It should attract a large enough crowd to generate profit in some way -- subscription, sale of premium products, advertisements, and others. When that happens, investors will "exit" the startup by selling off their shares to convert to cash. At the same time, the startup founders also increase in their net worth. They all do well, in the best case scenario. But what about the worst case scenario? Well, the worst case scenario is failure, and it is now being worn as a badge of pride in the startup community. "I failed my startup", they would say, proudly, like old soldiers telling war stories around a dinner table. After all, failure is always one of the possible outcomes of entrepreneurial activity. It's all right to fail. It's not all right to glorify it, though. Learn from it. Move on.

I was nonplussed why the word "patent" wasn't mentioned during the whole three days that I had attended the event. Isn't a patent a barrier against competition? But these guys, these young upstarts, don't need patents. They need startup inspiration. And they want to sweat startup perspiration. Somehow, I know that it's the right aspiration. You'll know it too, when you see the valuation.
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Monday, 10 August 2015

Disposing of IP Wisely: How to Extract Value

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When I met my friend recently, I was surprised to hear him mention casually that he had closed down his company and that he was now working for someone else. I was surprised, because he had spent years trying to build up his start up. He had spent time trying to build the brand, the suppliers, and brand loyalty. Surely, he realised that his company, floundering though it had been, was the owner of a valuable brand? Did he manage to sell off the company and the IP (intellectual property) of the company, and get some money back?

"No, I wasn't thinking about that," he said. "I was just too tired. And the new job looked good. I just wanted to start work in the new place."

Incredulous, I looked at him. "And you couldn't have considered selling your company to me for a cheap price...?"

"No, sorry." He chuckled. He was in a good place now.

Then I gave him a short piece of my mind. Didn't he know, that his company had goodwill among customers? That, among a certain segment of society, his company had become, in their minds at least, a credible company? Didn't he know that brands could be grown to become very, very valuable assets?

No, he shook his head. He did not know.

Alas.

So, dear reader, in case you feel like shutting down your company and moving on to something else, consider my thoughts. Your company can be valued, and a price placed on every asset of the company. Stocks are worth money. Assets, like buildings and furniture, are worth money. Goodwill -- intangible stakeholder loyalty -- is also worth money. And then comes our portion of interest: intellectual property. Does the company own any trademarks? Special designs? Patents? These, too, are worth money.

Naturally, an accountant is usually called to put a value to the company's assets. In most things, an accountant is the right guy for the job. Straight line depreciation shows how much assets have lost value. Market prices show how much fixed assets are worth. Monies in the bank account need no mention, as the monies already describe their own worth. But goodwill is elusive. Aswath Damodaran said that goodwill is what people want to pay, or are willing pay, for shares in a company ---  but cannot justify it with tangible assets. Thus, goodwill. The intangible assets that a company gains throughout its lifetime, through interactions with stakeholders -- principally customers, but also suppliers, and employees, and community.

But when intellectual property is at stake, who is best called to value it? The Malaysian Intellectual Property Corporation, otherwise known as MyIPO, is pushing the industry along to give birth to IP valuers. But the going is slow, with seminars here and a talk or two there.

A few weeks ago, I had the opportunity to go to an IP Valuation Masterclass organized by MyIPO at Doubletree Hilton Hotel. My professor, a valuer of IP himself, had graciously invited me. During the class, I was fortunate to be able to follow some of the calculations that the expert (an Australian, I remember) was working out on the screen. The whole thing had been a walkthrough of various valuation methods, and then came the number crunching. If I were to summarize my feelings about the masterclass: The lawyers in the room struggled to make sense of the number crunching. They weren't cut out to be Excel Ninjas. But the good thing about lawyers is that, give them enough time, they'll sharpen up enough to surprise you with their newfound fluency in the subject.

Generally, there are three approaches to valuing IP. The first among these is the cost method: What would someone need to spend, in order to recreate the IP? The second is the income method: What is the income generated by the IP? The third is the market method: What is the market willing to pay for a comparable IP? I won't pretend that I know much about the art of valuation. I am still learning about it, and I've started on the journey towards becoming a valuer of IP. (That is, I've bought a couple of Wiley books on patent valuation and brand valuation....) In the meantime, if anyone is looking for someone to help place a price tag on their IP -- copyright, trademarks, patents, designs, et al -- you can contact me. I'll work with my professor to help you out, and I know that my professor is a real pro at valuation.

Value your IP before you dispose of your company, and you'll have a better deal. Even if you were only disposing your IP to raise funds for your company, it still makes sense.
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Wednesday, 10 June 2015

A Funny Video on Patent Trolls

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Here is a cool video on Patent Trolls that I stumbled across through Twitter. And here is the Source
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Sunday, 24 May 2015

License For Modified GPL Code

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Today I saw that there is a good article about GPL licence on Distrowatch. As someone who uses Linux for almost 10 years now (I like Ubuntu, Mint Linux and OpenSUSE) I think that the GPL is very important. The #1 thing I like about Linux is: No viruses --  at least, not the type that gets the Windows PC's down. The #1 thing I don't like about Linux is: Unable to use certain printers, scanners, and other USB stuff. The #2 thing I don't like about Linux is lack of compatible software for certain popular Windows programs (but that is constantly changing -- free software tries to catch up, while Windows-only programs continue to evolve).

GNU Logo.
Source: http://www.gnu.org/graphics/gerwinski-gnu-head.png

One of the common beliefs about the GPL (General Public License) is that those who make use of code released under the GPL must subsequently release their modified code under the GPL license -- and it must be free. Jesse Smith, in the article about GPL on Distrowatch, states that that code released under GPL can be modified and released with requirement of payment. A person can take GPL code and modify it, and charge someone for it. But an interesting question is, how much of the final product is the property of that person? Let's say the person takes code, changes one line, and charges for the software. Let's say the code is 1000 lines long. We know that the GPL allows for the person to charge for the modified code. But what is the extent of the copyright owned on the new code?

It is natural to believe that the person who modifies the code owns it, only to the extent of effort that he has put into it. That means, only the lines that he has changed. The original code remains free and available to the public under the GPL. It seems unfair that by changing just one line, the person would be able to claim the copyright ownership for the whole of the modified code. Yet this needs to be balanced against another scenario. Some enterprising programmers may release code under the GPL for free. At a later stage, after the software has become well-developed, thanks in part to the efforts of passionate programmers (gotcha!), the project lead or project owner may decide that later versions are to be released under a premium, non-free model, and withhold the source code. Does the project owner own the modified code for the premium version? Most would say yes. How about if the premium version was derived from the GPL version, with only one line changed? Does the project owner own the code for the premium version? Unquestionably, for his business model to work (selling the premium version of a discontinued GPL product), the project owner has to be assured that he owns the copyright for the new premium version -- 100%. Otherwise, somewhere down the road, someone may challenge him, stating that 70% of his product is GPL -- therefore compensation for infringement of his software should be 30% of a software which is 100% proprietary and built-from-scratch.

It's an interesting topic. It seems that under GPL version 2 (there's also version 3), as one writer put it: "If you have modified the software, you have already agreed to release the changes you make under the GPL v2, if they are released at all." (Source)

From the GNU website's page on the GPL version 3, it says in section 8, works licensed under GPL v3 may only be modified as laid out by the license.  (Source)

In section 3, it says "You may convey covered works to others for the sole purpose of having them make modifications exclusively for you ... provided that you comply with the terms of this License in conveying all material for which you do not control copyright." That means we can take GPL v3 licensed code and hand it to others, and ask them to modify it for us. But whenever we do not own the copyright (because the code is GPL) it must be given to that person in whole (verbatim) as stated in section 4.

It's not really clear from GPL v3 whether you can release a modified version of GPL software under another license. Section 4 allows unmodified, wholesale transmission (they call it "conveying") of GPL code -- the resulting copy is also GPL. Section 5 allows propagation of "work based on the Program, or the modifications to produce it from the Program, in the form of source code" under section 4 -- that means, the resulting copy is released under GPL as well. Section 6 allows transmission of source code in "object code" (i.e. compiled code) under section 4 and 5, -- the resulting copy is also released under GPL.

Then comes section 7 of GPL v3 -- the "additional terms" section. There are two things covered here, "additional permissions" and "additional conditions".

"You may place additional permissions on material, added by you to a covered work, for which you have or can give appropriate copyright permission."

Following that, a number of terms that can be added "for material you add to a covered work" -- but nothing allowing it to be released other than under GPL.

Then this paragraph:

"All other non-permissive additional terms are considered “further restrictions” within the meaning of section 10. If the Program as you received it, or any part of it, contains a notice stating that it is governed by this License along with a term that is a further restriction, you may remove that term. If a license document contains a further restriction but permits relicensing or conveying under this License, you may add to a covered work material governed by the terms of that license document, provided that the further restriction does not survive such relicensing or conveying."

That whole paragraph just means that any other terms that restrict the GPL license may be removed. Relicensing is mentioned, but does not specifically refer to the GPL. It says instead, "If a license document contains a further restriction but permits relicensing…."

And finally, section 8 says, "You may not propagate or modify a covered work except as expressly provided under this License. Any attempt otherwise to propagate or modify it is void..."

It appears, modifications to GPL-licensed source code must be released under GPL. But if it is the case, then the project owner who first releases software under GPL and attracts people to help develop the GPL project, must then continue to live with the GPL license. Then it would appear that the same GPL software cannot be used as the basis for a proprietary software. The GPL license does not restrict charging users for code (source code or compiled), but this does not seem to stop the recipient of the code from making extra copies for free. And so, it seems that in the future, software writers may have to consider releasing their software under the GPL-but-please-pay-for-it model, and anticipate that the purchasers of their software may say, "Hey it's GPL, so we're going to make a copy of it."

In closing, let's look at some explanations from the FAQ pages of the GNU (about the GPL).

In answering whether there is copyright to modified GPL code:

  • "Whether you claim a copyright on your changes or not, either way you must release the modified version, as a whole, under the GPL (if you release your modified version at all)." 

In answering whether GPL software can be incorporated into a proprietary system:
  • "You cannot incorporate GPL-covered software in a proprietary system."

In answering whether modified GPL software can be sold commercially:
  • "You are allowed to sell copies of the modified program commercially, but only under the terms of the GNU GPL. Thus, for instance, you must make the source code available to the users of the program as described in the GPL, and they must be allowed to redistribute and modify it as described in the GPL."


In answering "Can I release a modified version of a GPL-covered program in binary form only?"

  • "No. The whole point of the GPL is that all modified versions must be free software—which means, in particular, that the source code of the modified version is available to the users."


In answering whether private use of a modified GPL software requires release of the source code to the public:

  • "The GPL permits anyone to make a modified version and use it without ever distributing it to others."


With reference to the last explanation, it seems that there is still hope for people who want to sell modified software commercially. If a client approaches a software consultant for a solution, the consultant may modify GPL software for the private usage of the client. The resulting modified GPL software, used privately, is GPL. But it will become the source of "competitive advantage" and thus, the client is not likely to share the software with others. This is because, when such specialized software is required, it is likely that most other people will not have a need for it; and those who do find it useful are likely to be competitors. Thus, the consultant will be able to approach competitors of his own client and sell substantially the same thing (with a few adaptations for the need of his new client), without infringing the GPL. It could even be more profitable than making the software available off-the-shelf, because the modified software would not be widely available to the public.

References.

  1. Smith J (2015) Myths and Misunderstandings: GPL. DistroWatch Weekly, Issue 610, 18 May 2015. URL: http://distrowatch.com/weekly.php?issue=20150518#myth
  2. Wilson R (2005) The GNU General Public License V2 - An Overview. OSS Watch, University of Oxford. 10th November 2005, updated 14th May 2012. URL: http://oss-watch.ac.uk/resources/gpl
  3. Free Software Foundation Inc (2007). GNU General Public License Version 3, 29th June 2007. URL: https://www.gnu.org/licenses/gpl.html
  4. Free Software Foundation Inc (undated) Frequently Asked Questions about the GNU Licenses. URL: https://www.gnu.org/licenses/gpl-faq.en.html
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Friday, 27 March 2015

Stamp Duty for Transfer or Assignment of Intellectual Property

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I was just looking through the Stamp Act 1949 (Act 378), which you can download by clicking here.

Under section 35, "The instruments appearing under the heading of "General Exemptions" in the First Schedule shall not be chargeable with duty." This looks promising and I had a look.

Unfortunately, the words "intellectual property" never appear under the General Exemptions.

Then I kept reading. Under Item 32, which is related to "Conveyance, Assignment, Transfer or Absolute Bill of Sale", there appears under the Exemptions:

"(d) Transfer or assignment on sale of any copyright, trade mark, patent or any similar right."

That means that transfers, and assignments (pursuant to sale) of copyrights, trade marks, patents and "other similar rights", which are generally known as "intellectual property rights (IPR)" would be exempted from stamp duty. At least, that's how it looks like to me.

Incidentally, our Intellectual Property Corporation is pushing (and has established) a marketplace for various intellectual property. To visit the marketplace (called IPR Marketplace) please click the following link:


It stands to reason that if you, being an interested buyer or seller of intellectual property rights, happen to sell and transfer or assign your copyrights, trade marks, patents, and such other IPR's, you'll save on stamp duty.

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Wednesday, 11 March 2015

Drafting Your Own Patent?

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Recently, one of my clients told me that they had a totally brilliant idea for a mobile cafe. It would be fantastical and incorporate all sorts of technological wizardry. Parts would move, and eyes would be dazzled. A bystander looking at their invention in action would think instantly of the movie "Transformers" where cars and jetplanes transform into humanoid robots, who then go on shooting rampages. (Minus, perhaps, the shooting scenes.)

My client understood that it is a new invention, and a patent would protect their interests. Without a patent, anyone can disassemble a new invention and start manufacturing cheap copies or knock-offs. Worse yet, when the cheap imitations are not exact copies of the invention, but appear to be different, in a different form, the intellectual rights of the inventor may be infringed without him realising it.

Thus, getting a patent done would seem to be good sense. My client thought of that, too, and so he took a trip to the patent office. Seeing a few friendly looking officers there, he took a seat and asked how to about drafting his own patent. One of the officers tending to him kindly gave him a sample of a patent and told him to try and follow the format.

Unfortunately, it was at this point that my client realised that he needed help. The words used were technical -- they have to be, as legal language has to be exact in its description. The formatting rules seemed strict -- and again, they have to be, as patent examiners examine hundreds of patent applications. The formatting requirements are enforces so that the content is more easily grasped by the poor patent examiners. But perhaps the part which helped my client understand that he needed help was the technicality involved in describing the patent.

Photo from Wikipedia. "Drafter at work" by bls.gov - Drafters Occupational Outlook Handbook, 2008-09 Edition. Licensed under Public Domain via Wikimedia Commons - http://commons.wikimedia.org/wiki/File:Drafter_at_work.jpg#mediaviewer/File:Drafter_at_work.jpg

A patent, if drafted according to the guidelines, would have a start, a middle, and an end. However, some poor patent drafters make it a start, a muddle, and an end. The start begins with an abstract of the invention -- what is it? Then comes the description of the prior art, which is interspersed with descriptions of the invention. Then comes the drawings, and with it the description of the embodiment of the invention. Finally, there is the list of claims that outlines the territory that the inventor is claiming. "This is what is mine," says the inventor in his claims, "the extent of the breadth, width and depth of my invention."

Sometimes, inventions can get technical, especially when they involve some scientific knowledge. The patent agent who is not technically skilled in the art can still draft the patent, but only with the assistance of the inventor. Things that involve chemistry, geology, physics, and the like, are likely to be beyond the scope of the typical patent agent (or perhaps, to be more correct, patent attorney -- as I refer now to lawyers). The patent agent who is technically skilled in the area of the invention is able to grasp the invention quickly and get to drafting it. The patent agent who is not skilled in the area of the invention requires lots of reading, lots of conferring with the client, and lots of time.

Coming to this latter scenario, perhaps a patent agent who is not so technically skilled can still draft the patent, but only with the committed involvement of the inventor. The inventor who says, "I did this, I did that, I plugged this in, and voila!" -- that guy will need to calm down and sit down with the patent agent. The inventor who is willing to sit down and explain what the invention is, "This is new because of this-and-this" -- that guy is likely to be a great help to his patent agent.

At the end of the day, engaging a patent agent will help the inventor in some ways. The patent agent knows the formatting requirements. The patent agent can help the inventor in conducting the search for prior art -- those things which have already been invented in the past. The patent agent can help prepare the various portions of the patent, and draft them like they ought to be drafted. But the bits about the invention -- what it is, how is it new, and what makes it work -- all these have to be gleaned from the inventor. After all, it is the inventor who gives birth to the invention, and the patent agent is the midwife that helps bring the invention into the world.

However, I'm not saying that an inventor must absolutely get a patent agent to draft the patent for him. An inventor is better acquainted with the invention than the patent agent. He knows it inside and out. He could draft it up, a rough draft, and bring that draft to a patent agent to look at, and improve. "Here is what I invented, now help me get it right so that I can register it." That might save the patent agent some time, because the patent agent would be able to focus on the nitty gritty bits of it -- and see the big picture as the inventor sees it.
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Wednesday, 4 March 2015

What does a patent agent do?

1 comment:
The coolest patent agent that I know of is Calvin's dad, from the "Calvin and Hobbes" comic strip. Bespectacled, good-intentioned, and hardworking, he always tells his son to put up with unpleasant things because they will "build character". In one comic he got annoyed with Calvin for calling him at work. Calvin wanted a story, and Calvin's dad responded:


Pretty cool, right. Can you imagine Calvin's Dad saying, "And they all lived happily ever after"? Probably not.

So just what does a patent agent do? If you want the short answer, a patent agent is someone who takes your invention and helps you to file an application for it. He's like the gynaecologist (or midwife) who helps mummies bring their babies into the world -- only, in this case, you're the mummy and your invention is the baby.

In Malaysia, which is governed by the Patents Act, a patent agent is someone who has passed the patent agent examination, and is registered with the Malaysian patent office (MyIPO, or Malaysian Intellectual Property Office) as a patent agent. Registration must be renewed every year, so the patent agent who wants to continue drafting and registering patents must pay subscription every year to MyIPO.

Perhaps it would be more suitable to talk about the "functions" of a patent agent. When I went to study my Masters in Management, I learned that managers have four functions: planning, leading, organizing, and controlling. You could say that patent agents have similar functions. Here, I will name them as: clarifying, crystallizing, drafting, and prosecuting.

A. Clarifying

A patent agent must clarify with the inventor what the inventor has invented. For example, some of the questions that a patent agent should clarify are as follows:

  • What is the invention? -- perhaps as brief a description as possible.
  • What is the invention not about? -- list down all that it isn't.
  • What are the capabilities of the invention? 
  • What problem is the invention supposed to solve?
  • How does the invention solve these problems?
  • What prior art has been created that precede this invention?
  • What prior art solves the same problems?
  • What are the shortcomings of the prior art?
  • In what way is the invention new?
  • Is the invention obvious to someone who is in that art or profession?
  • If a competitor would want to "work around" the patent, what is the best way?
  • How could we draft the patent to prevent competitors from "working around" the patent?
  • Is it possible that the invention be presented in another form?
  • Is the form presented by the inventor (e.g. the prototype or drawing) the only possible form for the invention?

And so on and so forth. All the questions and answers will lead to the next function, which is:

B. Crystallizing

The patent agent must find the right words to use for the invention. All the results of the prior art must be arranged in such a way that they show a natural progression (if the prior art is referred to, at all). The patent agent must describe the invention in such a way that captures the "main essence" of the invention. Naturally, this means trying to describe it in total, and comparing every description with the prior art. At the same time, there is an on-going process, iterative in nature, where the patent agent continually refers with the client (i.e. the inventor) to confirm -- "Is this your intention? Is this acceptable?"

Basically, in this stage, a patent agent is trying to move from an understanding to putting it into words. It's like moving from understanding your emotions to trying to put what you wish to say into the words that you should use.

C. Drafting

Now, comes the fun bit! The patent agent is engaged for the drafting of a patent application. All that clarifying and crystallizing is now turned into a proper format, which is bound strictly by the regulations (found in the Patent Act). Believe me, a patent examiner, working in the stuffy rooms of the patent office, would be happy to reject a patent application that doesn't comply to the rules. Line spacing, font size, numbered lines, etc. -- all of these look petty, but they do count. Think of first time authors who have submitted their first manuscript to an editor, and you'd understand. The editor would reject any manuscript which even appears to be bad -- nevermind that the manuscript may be good.

In the drafting bit, two important parts come into play. The first part is the description of the invention, which basically goes in this order:

  • Abstract
  • Prior art
  • Description of invention
  • Description of drawings
Then comes the second part of the invention -- the claims -- which is the most important of all. The claims basically represents the "fence around the house". It has to be wide enough to cover the bases of the invention, but it can't be too wide so that it covers things that it is not supposed to. For that reason, some patent agents tend to make a rather generic independent claim (e.g. "Claim 1"), and follow that up with more detailed dependent claims (e.g. "Claim 2") which extend and apply to the independent claims ("The invention as mentioned in claim 1 with ..... and .........")

The main thing to remember is that more claims = more cost. For the client, i.e. you, these may seem to be heavy and unworthy of your time, but do remember that if your patent is contested and made the subject of an invalidation suit, you will be thankful for wider scope.

D. Prosecuting

Finally, a patent agent's function includes prosecuting patents. This means, filing the patent at the patent office, seeking for examination of the patent, filing division of the application if necessary, etc. Patent prosecution may also include when the patent is being pushed by a foreign patent agent under the PCT treaty. Basically, whenever a patent application has been filed, from that second onward and until the day the patent application is granted (or rejected...) everything that the patent agent does can be called "patent prosecution".

Bear in mind that the patent office might raise objections on technical grounds (font size, row height, etc.) or otherwise, and the patent agent must make corrections. All that, no matter how petty it may seem, are crucial points in the life of a patent application. Failure to respond could mean certain death for your patent application -- beware! Responding and correcting the complaint doesn't mean that the patent application will be granted for sure -- again, beware!

The flowchart for the patent application process is attached below -- please click it to view in bigger size. Everything in that chart -- from filing, up to grant -- is part of what is called "patent prosecution."



Conclusion

In conclusion, a patent agent has four functions: clarifying, crystallizing, drafting, and prosecuting. And a patent agent will help you file an application for your invention at the patents office. I hope that you have enjoyed reading this piece. 

Thank you.

Kevin Koo
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