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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?

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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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