Date: 16-18 February 2012 (Thursday- Saturday)

Time : 10.00am – 6.00pm

Venue : PWTC, KL

We are glad to invite YB Wong Hon Wai, Penang State Executive Councillor Town & Country Planning, Housing for the opening speech in the seminar.

Date: 12 February 2012 (Sunday)
Time : 1 – 5pm
Venue : PSDC, 1 Jalan Sultan Azlan Shah,
Bandar Bayan Baru, Bayan Lepas,
11900 Penang.

* The seminar is FOC and presented in Mandarin.

Our speakers listed below:
1. Yang Berhormat Tuan Koay Teng Hai, investPenang
2. Mr Lok Choon Hong, Pintas Ip Group Director
3. Mr Chan Kee Siak, Exabytes CEO
4. Dr Chun Hwa See, BCI Chemical Corporation Director
5. Mr Loke Mun Leong, Staff Manufacturing Technologist, Intel

Organizer: Association of Intellectual Property (AIPO)
Co-Organizer: Asia Success Inc Branding Magazine, Small Medium
Enterprises Market Advisory Resource and Training Centre
Strategic Partners: Pintas IP Group, Exabytes Networks
Event Manager: Intellectual Property Technology (IPTech)
Support by: Penang Importers & Exporters Association, Small and
Medium Enterprises Association (SAMENTA)

Photo by Sin Chew Newspaper

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Photo by Nanyang Newspaper

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Photo by Kwong Wah Newspaper

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Pitfall No.7:Deadlines; The Ticking Time Bomb.
Can’t imagine being late for your first date. You could do worse by missing a deadline for your IP application. Almost every IP application/ registration/proceeding has deadlines, however, different IP Offices will allocate different time period for you to take the necessary actions. These periods range from 2 weeks to 2 years. Therefore, keeping track of those deadlines is crucial to the survival of your IP Rights. While certain IP Regulations are more lenient towards the late comers with grace periods of certain lengths (although often with a handsome penalty fee); other IP Regulations are more draconian in that missing a deadline means your IP is “as dead as a Dodo”.
Solution: Write down the deadlines in your diary, stick yellow notepads everywhere. However it is advisable to have a professional IP firm take care of your IP. This way you can sleep easier at night without having to worry about your deadlines.

Pitfall No.8: Early Disclosure of Your IP Rights Without Protection=Charity
Would you buy a car and give away the key to anyone? Not unless you are Oprah Winfrey. Disclosing your IP before you protect it is one of the most charitable acts known to men. By unveiling your invention to the public before you file for patent protection you may jeopardize your chances of getting a patent registration. It would also be a good opportunity for copycats to copy your technology while you have no locus standi (legal standing) to take any legal action. The same applies to trade mark as well.
Solution: Register your IP as soon as they are created and preferably before you show it to the public, unless you are feeling particularly charitable.

Pitfall No.9: The International IP Systems That You Could and Should Be Using
If you are planning to expand your business into several countries, then instead of filing yout IP in each individual country, it may be advisable to make use of several International IP Systems/Mechanisms available to simultaneously apply/register your IP in various countries. International filing systems like the Madrid Protocol (84 countries) for trade marks, and PCT (144 countries) for patents should simplify your IP application process. Other systems like OHIM’s European Community Trade Mark (27 Countries) and the EPO’s European Patent will grant trade mark or patent registration.
Solution: Seek advice from an IP firm on which systems to use. This because the international systems can only be used to file your IPs in the countries which are members to the systems. And systems like the Madrid Protocol, may not make economic sense if you have less than 5 countries to apply to, due to the high basic fee that you will have to pay and the high exchange rate between the Swiss Franc and Ringgit.

Pitfall No.10: The Perils of Licensing/Assignment
One of the ways to exploit your IP rights is by licensing your IPs to another party. Licensing is akin to putting your IPs up for rent. However, such licensing will not be possible if your IPs are not filed/registered. Therefore if you are planning to set up or introduce your franchise in another country, you will have to register your trade mark before you can license the use of your trade mark to your franchisee. The same is true with Patent. You can also buy or sell IPs by assignments. In essence an assignment is a change of ownership, like selling a property. Certain countries will allow you to assign your IP rights after filing while other countries require your rights to be registered. In most countries, both licensing and assignments must be registered with the IP office in order for them to take effect. Many businesses have been caught out by forgetting to register their assignments/licenses, thus they end up paying good money for nothing.
Solution: Hire an IP firm to represent you in preparing the licensing/assignment agreement and also to register them with the IP office. In a merger or acquisition, take care to include a provision in your contract to deal specifically with the IP rights of the companies.

While the Nice Classification underwent substantial overhauling, in actual fact the most substantial changes have been made to the classification of dietary and nutritional supplements and food additives (primarily in classes 5, 29, 30, 31), video gaming apparatus (in classes 9 and 28), electrically powered goods (primarily in classes 7, 8, 9 and 21) and babies nappies/diapers (in classes 5, 16 and 25). Kindly refer to the following link for a comprehensive list detailing all the changes that have been made.

Another noteworthy change is pertaining to the frequency at which the Nice Classification will be updated. Starting from 1 January 2013 the Classification will be updated annually, with minor changes like addition of items and other minor tweaks.

Due to the major changes made to the classification, trade mark owners are likely to be affected. Certain countries will allow the owners to convert their trademark from the previous edition to the 10th edition, while in other countries, trademark owners may have to re-register their trademark in an additional class. For further details kindly contact our trade mark team for further clarification. Please direct your queries to Ms Sumathy at sumath@pintas-ip.com or Mr Teh at international@pintas-ip.com, alternatively you can call us at +603-2185050.

Pitfall No.2: Conflict of Laws
Different countries may have different IP laws or regulations. This is invariably a problem to traders which operate in more than one country. For example, the Trademark regime in China includes registration of a trademark in specific sub-classes, where other countries merely follow the Nice Classification system. This means that many businesses (including big shots like Apple Inc. and even G2000) register their trademarks in China only to find later that their trademarks have been registered by another company (usually a rogue seeking to free ride on the brands’ success) in another sub-classes which they did not register. Often this means expensive cancellation suits to oust the rogue registration or have the tables turn on you when you are handsomely fined for infringing the rogue’s trademark.
Solution: Research on the IP laws and regulations of the country that you plan to enter into. Alternatively, hire a professional with extensive local knowledge to handle your IPs in that country.

Pitfall No.3: Language and Cultural Barrier
Lost in translation is a very real risk in the IP business. Patent claims may lose vital details after translation and in the worst case the translation may not reflect the invention at all. These minor errors in translation may severely undermine your IP protection. In Trademark, a badly selected mark may spell doom for a business. While the trademark “FCUK” may have been chosen for its shock value, other words may have less desirable connotation in certain cultures. For example, the word “FATT” means “prosperity” to Chinese reader, but to non Chinese reader it may be taken to mean “obesity”. A trademark should be culture sensitive as well, for example, a mark with an image of a pig (however cute) may not be suitable in countries where the population is predominantly Muslim/Jewish.
Solution: Again, seek help from professionals with a good grasp of both English and the local languages. They should also have a deep understanding of the local culture.

Pitfall No.4: IP Ownership; Who gets Custody?
When you are thinking of cooperating with a foreign person (be it in a joint venture, co-authorship, or co-inventorship capacity), you should always be clear about who should own the IP rights. Far too often, companies enter into a contract with a foreign company without having specific provisions for the ownership of the IP rights. This has become a highly litigious area, because when the cooperation ceases, both parties are likely to claim exclusive ownership over the IP rights.
Solution: Make sure the ownership of IP rights is specifically provided in your contracts, stating clearly who should be the rights’ owner. In the case of a joint venture, it is preferable to retain your own IP rights and simply license the rights to the JV. This way, you will retain your rights after the dissolution of the JV, instead of participating in a legal tug-of-war over the rights with your former partner.

Pitfall No.5: Parallel Imports; Exhaustion of IP Rights
A parallel import is a non-counterfeit product imported from another country without the permission of the intellectual property owner. So if you sell your products in China, you cannot prevent others from bringing the products into Malaysia on the ground of IP infringement. This is known as the doctrine of “First-sale” or “Exhaustion of Rights”, whereby your IP rights is said to be exhausted when you expose your product for sale in another country. Because businesses often sell their products for different prices in different countries, this means that someone can buy your products in a country where the price is cheaper and import the products into a country where the product can be sold for a higher price.
Solution: Different countries may have different stance on parallel import. The European Union for instance do not allow parallel import from countries outside of the union. Be sure to read up on the local laws regarding parallel imports and wherever possible, and without running afoul of local licensing or antitrust laws, prohibitions on resale should be included in licensing and distribution agreements, in order to provide an action for breach of contract against the suppliers of the parallel imports.

Date: 8-11 December 2011 (Thursday- Sunday)

Time : 10.00am – 6.00pm

Venue : PWTC, KL

Date: 22-24 November 2011 (Tuesday – Thursday)

Time : 10.00am – 6.00pm

Venue : Matrade, Jalan Duta

Date: 17-20 November 2011 (Thursday – Sunday)

Time : 10am – 6pm

Venue : PISA, Penang