i

NEW ISSUES TOWARDS A HARMONIZED INTELLECTUAL PROPERTY OFFICE

BY

KULJIT SINGH S/O OJAGAR SINGH INTELLECTUAL PROPERTY

CORPORATION of MALAYSIA (MyIPO)

MINISTRY OF DOMESTIC TRADE AND CONSUMER AFFAIRS

MALAYSIA

Supervised by

Prof. YOSHITOSHI TANAKA GRADUATE SCHOOL OF INNOVATION

MANAGEMENT TOKYO INSTITUTE of TECHNOLOGY

WIPO -- JAPAN-FUND-IN TRUST LONG TERM

RESEARCH FELLOWSHIP PROGRAM 2006.

FINAL REPORT

TOKYO JAPAN, September 13, 2006

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ABSTRACT

The research aimed at deriving on this particular theme is because my research is hereby

to establish a concept of industry expectation towards Intellectual Property Office (IPO).

The question here is whether Intellectual Property Corporation of Malaysia (MyIPO)

have equipped itself towards fulfilling the expectation of the industry, compared to Japan

Patent Office (JPO) on Japan’s on going efforts towards fulfilling these expectations. In

Malaysia due to lack of studies on the needs and expectation of the Industry, Small and

Medium Enterprises (SMEs), Universities and Research and Development (R&D)

organizations towards Intellectual Property Rights (IPR) and there is still room to

improve its duties and functions towards their obligations to fulfill these expectations.

My research will be conducted through views by external IPR users through

questionnaires. Internal research will be done by giving a set of questionnaire to the

internal staff of IPR office from all divisions in Malaysia meanwhile, to get the views of

JPO, my research will be done through an interview with the relevant Divisions.

Meanwhile the external survey will be done by sending another set of questionnaire to the

Industry, Universities, SMEs in Malaysia and Japan as well. The industry and other

Intellectual Property (IP) players outside need more benefit and want IPR to be a very

important and resourceful office by assisting them to diversify and becoming a business

resource and advisory office. This research will give an overview on current problems

face by the industry, the weakness of current MyIPO office, new issues or problems to be

solved .This research will be useful for MyIPO office in their organization vision,

mission and amending legislation towards an improved Intellectual Property Office. As a

result of this research done, MyIPO can be reorganized and be more pro-active to the

issues to be solved and cater towards the expectations of the IPR users.

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ACKNOWLEDGEMENTS

This research work has been a wonderful learning experience for the author. The research

has taken four months and a half from the time the author arrived Tokyo seemed to be

very long, but towards the end of this research study, it was not that long and has many

area of research that the author wish that he still want to accomplish in his fellowship

program. However, this opportunity gave the author an invaluable and memorable

experience and knowledge both at and off work. The author hereby sincerely likes to

thank to all who has made this research possible and success in the time frame given. The

author would also like to express his sincere gratitude to all the supporters and friends.

In the course of conducting this research paper the author have depended heavily on the

superb assistance of ASIA-PACIFIC Industrial Property Center (APIC) of Japan Institute

of Invention and Innovation (JIII) for facilitating the author to conduct his research

smoothly. The author wish to thank Mr. Shin-Ichiro Suzuki; Director General, Mr. Tetsuo

Niwa; Director, and greatly appreciate and thankful to the author’s dependable

coordinator Mr. Toshiyasu Matsutani. The author would also like to thank the APIC staff

for being very kind and helpful during the author’s research project. The author would

like to thank the Japanese firms Denso Corporation, Honda, Nippon Kaiheiki Ind. Co.

Ltd., for allowing the author to interview to assist the author for his further investigations.

The author would also like to convey his sincere thanks to Malaysian Branding

Association, Malaysian Retail Chain Associations, Universities, Industries, Research and

development organization, Small and Medium Enterprises for making his research a

successful one.

Further the author would also like to thank JPO and NCIPI for assisting the author to gain

information pertaining to his research theme. The author would also take this opportunity

to thank all the MyIPO staff that have given feedbacks and answered the interview

questions as well. The author hereby would like to convey his gratitude and appreciation

to the Head of Divisions of MyIPO who has been very cooperative pertaining to giving

feedbacks and updated the author on the matters in MyIPO.

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The author would like to express his sincere thanks to Professor Yoshitoshi Tanaka,

Graduate School of Innovation Management, Tokyo Institute of Technology (TIT). The

author owed him for his most valued guidance and support for the author’s research study,

as well for his kind friendship. This research work would not be possible without

Professor Tanaka’s guidance and knowledge sharing. The author would also like to

extend his thanks to the other students who are been supervised by Prof. Tanaka, and also

value the classes attended by the author in TIT in Tamachi Campus.

The author would also like to thank Mr. Shinji Kuroda, Miss Yoshie Noguchi and Miss

Emi Taguchi for guiding the author and assisting him from the beginning of the research

to the final day of his stay in Japan.

The author would like to thank the Head of department of MyIPO, for allowing him to be

away from his routine work and attend the fellowship program in Tokyo, Japan.

Last but not least, the author would like to thank his family at home for giving him the

moral support and love to him to continue and complete his research. The author would

also like to thanks all his friends in Japan who helped the author to enjoy his stay in Japan

and get accustomed to the Japanese culture and environment.

Kuljit Singh s/o Ojagar Singh

The Author

September 2006

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CONTENTS Front Cover i Abstract ii Acknowledgement iii Contents v Exhibits vi Tables vi Charts vii Diagram vii Chapter 1: Introduction 1 1.1 Back Ground of Research 1 1.2 Malaysia 1 1.3 Japan 3 1.4 Organization and Structure of Intellectual Property Office (IPO) 6 1.5 New Issues (Challenges) 6 References 10 Chapter 2: Methodology Used in Research 11 2.1 Preliminary Analysis 11 2.2 Consult Secondary Sources 24 2.3 Evaluate Research 31 2.4 Locate Primary Authority 31 2.5 Reevaluate Research and Update Research 32 References 33 EXHIBIT 2.2 35 EXHIBIT 2.2 (A) 36 EXHIBIT 2.3 (A) 41 EXHIBIT 2.4 (A) 45 Chapter 3: Analysis Methodology 47 3.1 Malaysia 47 3.2 Japan 53 3.3 Intellectual Property Corporation of Malaysia (MyIPO) 57 Chapter 4: Results 65 4.1 MyIPO (Malaysia) 67 4.2 JPO (Japan) 77 References 83 Chapter 5: Consideration 84 5.1 MyIPO (Malaysia) 87 5.2 JPO (Japan) 94 References 98

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Chapter 6: Recommendations and Conclusion 99 References 108 Recommended Reading 109

EXHIBITS

Exhibit 2.2: Interview Questions for the Industry/SMEs/University 35 Exhibit 2.2(A): Questionnaire for the Industry/SMI/SME/ Intellectual Property Rights Owner (IPR)/ Universities 36 Exhibit 2.3(A): Questionnaire for Intellectual Property Corporation Of Malaysia (MyIPO) 41 Exhibit 2.4(A): Interview Questions for Japan Patent Office (JPO) 45

TABLES Table 3.1: Response from Malaysia Big Companies; SMEs; Universities and Research and Development Organization 48 Table 3.2: Response for Question 2.1 to Question 2.2: Malaysian Big Companies; SMEs; Universities and R&D 51 Table 3.4: Response from Japan Big Companies; SMEs; Universities And TLO’s 53 Table 3.5: Response for Question 2.1 to Question 2.2: Japan Big Companies; SMEs; Universities and TLO’s 55 Table 3.7: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part One: Human Resource Development 57 Table 3.9: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Two: How to Speed Up Processing and Granting Registration 59 Table 3.11: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Three: Quality / Standard on Decision Making 61

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Table 3.13: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Four: How to Improve the Intellectual Property Office 62

CHARTS Chart 3.3: Overall Results from Malaysia Based on their Answers According to Scale and Based on percentage of Feedback Received 52 Chart 3.6: Overall Results from Japan Companies; SMEs; and UNI / TLO’s Based on Their Answers according to Scale and Based on Percentage of Feedback Received 56 Chart 3.8: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part One: Human Resource Development 57 Chart 3.10: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Two: How to Speed Up Processing and Granting Registration 59 Chart 3.12: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Three: Quality / Standard on Decision Making 62 Chart 3.14: Feedback received from Intellectual Property Corporation Of Malaysia (MyIPO) based on Questionnaires: Part Four: How to Improve the Intellectual Property Office 63 Chart 5.1: THREATS OPPORTUNITIES WEAKNESSES Strengths (TOWS) MATRIX 86

DIAGRAM

Diagram 4.1: SWOT ANALYSIS METHOD 66

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CHAPTER 1 : INTRODUCTION

1.1 Background of my Research Theme

The reason I have chosen this particular theme is because my research is hereby to establish a concept of industry expectation towards Intellectual Property Office (IPO). The question here is whether Intellectual Property Corporation of Malaysia (MyIPO) have equipped itself towards fulfilling the expectation of the industry, compared to Japan Patent Office (JPO) on Japan’s on going efforts towards fulfilling these expectations. In Malaysia due to lack of studies on the needs and expectation of the Industry and Small and Medium Enterprises (SME’s), Universities and R&D organizations towards Intellectual Property Rights (IPR) and there is still room to improve its duties and functions towards their obligations to fulfill these expectations. My research will be conducted through views by external IPR users through questionnaires. Internal research will be done by giving a set of questionnaire to the internal staff of IPR office from all divisions in Malaysia meanwhile, to get the views of JPO, my research will be done through an interview with the relevant Divisions. Meanwhile the external survey will be done by sending another set of questionnaire to the Industry, Universities, SME’s in Malaysia and Japan as well . The industry and other Intellectual Property (IP) players outside need more benefit and want IPR to be a very important and resourceful office by assisting them to diversify and becoming a business resource and advisory office. This research will give an overview on current problems face by the industry, the weakness of current MyIPO IPR office, new issues or problems to be solved .This research will be useful for MyIPO IPR office in their organization vision, mission and amending legislation towards an improved Intellectual Property Office. As a result of this research done, MyIPO can be reorganized and be more pro-active to the issues to be solved and cater towards the expectations of the IPR users.

1.2 MALAYSIA(1)

In Malaysia, the administration of the Intellectual property Rights (IPR) began even before 1962, administrated by the Trade Marks Registration Office (the Office). With the enforcement of Trade Marks Act 1976 and Patents act 1983, the Office changed its name to the Trade Marks and Patents Registration Office in 1983 under the jurisdiction of the Ministry of International Trade and Industry (MITI). Later, on October 27, 1990 it was changed and governs under the jurisdiction of the Ministry of Domestic Trade and

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Consumer Affairs (MTDCA). On the following year, the Intellectual Property Division (IPD) was established to administer the IPR which hereby include Copyright and Industrial Design Protection. The importance of IP in the economic growth and social development has raised the need for more effective, efficient and self-governing administration on the IPR protection. In the interest of the domestic and global IP industry, the Intellectual Property Department (IPD) was enacted as a corporate body following the enforcement of Intellectual Property Corporation of Malaysia Act 2002 (Act 617) on March 3, 2003 and come known as Intellectual Property Corporation of Malaysia (IPCM). The main purpose for the establishment of the IPCM was to ensure that the intellectual protection system is efficient, wide and in line with its status as a body with autonomy in finance and administration. Since its establishment, IPCM continues to administer and implement Six (6) Acts related to IPR which are Trade Marks Act 1976; Patents Act 1983; Copyright Act 1987; Industrial design Act 1996; Layout Design of Integrated Circuits Act 2000; and Geographical Indication act 2000. The Vision on IPCM is: ‘ To generate the economic growth , and social progress by encouraging creativity and expanding the knowledge of Intellectual Property Rights to every echelon of the society in Malaysia and to take up the challenge of intellectual property evolution with positive implications domestically, regionally and globally’. IPCM main and important mission are: To provide a system of protection to safeguard intellectual property in promoting creative intellectual activities, investment and commercialization; To establish an administrative system on the intellectual property that is easy and effective; To ensure that the intellectual property laws are just and constant to inventors and consumers; To provide comprehensive information with easy access; and To increase public awareness on the importance of intellectual property. The objectives of IPCM are To establish a more efficient machinery; To assume a

bigger role in the international arena; To propagate a wider role in the nation’s intellectual property development; and To enhance the employment for more experts and professionals.

The function of IPCM as a corporate body with autonomy in finance and staffing, IPCM is authorized to perform its functions provided by the Act 617. Generally, the function of IPCM includes Administering Acts relating to IP; Providing IP protection

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services through registration; Disseminating information on matters regarding IP; Encouraging the co-operative relationship on IP at national and international levels; Promoting public awareness on importance of IP; Advising the Minister on policy matters related to IP; and Safeguarding the national interest at international level.

The Duties and Responsibility of IPCM is more in Registration for Trade marks, Patents, Industrial Design and Geographical Indications; Providing information that is easily accessible for public reference; and Creating and enhancing public awareness on the importance of intellectual property.

TABLE 1.2(a) :Period of examination (First Action Period)

2005

Patents and Utility Models

(substantive examination) 48 months

(modified substantive examination) 42 months

Industrial Design 7-8 months

Trade Marks and Service Marks 10-12 months

(Note) The period of first actions refers to the period from the date of application or request for examination to the

date when the first notice of an examination result (mainly a decision or notification of acceptance, or a notification

of reason of objection) is sent by the examiner to the applicant. Source: MyIPO From the table 1.2(a) shows that MyIPO is improving its processing and time frame form the previous years and on its effort to shorten its processing period for IP applications.

1.3 JAPAN (2)

THE ROLE OF JAPAN PATENT OFFICE

The aim of industrial property (IP) system (general term of patent, utility model, design, and trademark systems) is to contribute to the nation’s industrial development through

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adequate protection and effective utilization of inventions and other forms of intellectual creations. To help promote science and technology, the IP system is expected to play an increasingly important role in Japan in the 21st century. The Japan Patent Office (JPO) consists of the General Affairs Department, Examination Department, the Appeals Department, and other sections and departments. The main functions of these departments include; 1) granting adequate rights for patents, etc., 2) drafting plans for IP policies, 3) international exchange and cooperation, 4) review of the IP system, and 5) dissemination of information on IP. These functions provide for the positive advancement of industrial development.

1. Granting Exclusive Rights for Patents, Etc.

When the JPO receives an application from anywhere in the world, its examiners from the appropriate technical department must first conduct a strict examination of the filed documents from the viewpoint of technological and legal standards in orderto determine whether exclusive patent or other rights can or cannot be granted. If there is an objection to the result of this examination, the Appeals Department is authorized to act as the court of first Instance for a local court in strict accordance with the Civil Procedure Code. 2. Drafting Plans for Industria l Property Policies In order to realize a “Nation Built on Intellectual Property” for the future, IP policies must be drafted and implemented to promote; 1) prompt examination of the patents, 2) support in the use of IP by regions as well as a small and mid-sized enterprises, 3) establishment of a “Japan brand”’ 4) anti-counterfeit programs, and 5) create and environment which encourages the “Intellectual Creation Cycle” (the cycle of creation, protection, And exploitation). 3. International Exchange and Cooperat ion To establish an IP environment aimed at an international harmonization, the JPO has been actively working on international activities. Specifically, it has been making collaborative efforts with the USPTO and EPO, extending assistance to developing nations in such areas as office development, and implementing tougher anti-counterfeiting measures.

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4. Review of the Industrial Property System The JPO continues to review and revise related laws and examination standards based on plans drafted for IP policies, and on the results of international negotiations. 5. Dissemination of Information on Industrial Property To satisfy diversified user needs, the JPO has been expanding IP information services. For example, improvements have been added to the Industrial Property Digital Library (IPDL) services to be provided over the Internet. We also started publishing DVD-ROM version official gazettes.

TABLE 1.3 (a) : Period of Examination and Appeal /Trial Examination

2004

Patents and Utility Models 26 months

Design 8 months

Trademarks 7 months

(Note) The period of first action refers to the period from the date of application or request for examination to the date when the first notice of an

examination result (mainly a decision to grant a patent, a decision of registration, or a notification of reason for refusal) is sent by the examiner to

the applicant. Source: Japan Patent Office Annual Report 2005 page 92.

Table 1.2 (a) have shown a tremendous improvement in JPO efforts to shorten the period of processing and adopting a faster registration and first office action to assist the industry towards a better usage of IP Rights. Even though, JPO have shown efficiency in its processing but continues efforts are still been carried on, for the future to further shorten the processing time period of applications to accommodate the expectations of the industry. JPO effort to upgrade its` continues support for the industry to exploit their IP Rights in order to underpin their business activities in the global market is well received by the industry. It is shown by the increase in the number of applications filed by the industry. Japan is aware of the IP importance to support the growth of its economy and also to penetrate the global market.

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1.4 ORGANIZATION AND STRUCTURE OF INTELLECTUAL

PROPERTY OFFICES (IPOs) (3)

Japan is aware of the IP importance to support the growth of its economy and also to penetrate the global market. The Organization and structure of IPOs varies significantly, and almost every country is an example unto itself. The differentoffices may also vary as to other tasks performed; some officesmay requested to keep the business registry (as in France); some may deal with issues relating to the defense of competition (as in Peru); some may have responsibility for the entire IP system (as In Indonesia), or may be limited to administering patents.A trend is emerging towards some measure of institutional and financial independence for IPOs within the state. This trend is support by the fact that IP offices receive direct payment for their products and services and are viable to act as independent, self-financing bodies or agencies. This is the case in a number of countries, including Japan, Malaysia, Mexico, Peru, Switzerland, the United States of America and the United Kingdom. However, even with financially self-supporting arrangements, these offices still have governmental policy coordination. Financial independence can allow the IP office to develop a morecomprehensive, flexible and focused approach to the various issues that it faces. It also enables IPOs to use revenues obtained from patent, trademark, industrial design, and other applications to invest in improving the quality of services offered, including outreach activities, e-filing, examination reports, and IP databases. It will be a good motivation for an IPO to continue improving customer satisfactory and also promote IP asset development. IPOs may be more motivated to promote SME activities and generally making the system more user-friendly.The IPOs would have more incentive to respond faster and morecomprehensively to the needs and demands of the business community and, as a result of successful efforts in this regard, to reduce their fees as the system become more efficient. The IPOs would respond with agility to policy practical challenges. Such advantages in terms of flexibility and agility must be Weighed against the need for IPOs to function in coordination With national IP policy and goals. Each country will have to consider the issues and adjust for the proper mix of financial independence and policy coordination.

1.5 NEW ISSUES (CHALLENGES)

In an era of rapid technological change and short product cycles, IPOs are increasingly under the pressure to speed up their procedures for granting patents, registering

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trademarks and industrial designs. In the fields of information and communication technologies, in particular, where innovations are taking place at a startling pace, lengthy and time-consuming procedures for granting patents pose the risk of underminingthe potential of the IP system for promoting technological innovation and creativity. It is crucial that, while maintaining itsefficiency and thoroughness, the IP system must also become asexpeditious and responsive as possible, to enhance its role in the promotion on innovative work, and to enable the business community to make more and better use of it. Many patent offices make considerable progress by setting targets for achieving more expeditious granting, strengthening their staff,computerizing applications and examination procedures, and enhancing international cooperation. Many countries are fast moving towards the knowledge economyunderpinned by innovation and enterprise. Intellectual capital which comprises both human capital and intellectual assets, a eco-system include IP creators, owners, managers, financiers and traders. An effective policy requires the activeparticipation and continuous engagement of all these stakeholdersto subset of which includes intellectual property, will be the lifeblood in the New Economy. IP is the downstream product of innovation and its ultimate values lies in its commercial exploitation. To sustain economic growth in the new millennium,it is crucial for each country to expand substantially its capacityto create, commercialize and manage IP. The IP industry should be positioned as a key business infrastructure to lubricate the knowledge economy by facilitating the efficient creation, exploitation, valuation, protection, trading and management of intellectual capital in the conduct of business. IP is more thanjust laws and a protection regime. It is the fuel to the new knowledge economy.A sophisticated IP management service industry is essential to the efficient and effective functioning of the innovation-drivenknowledge economy. The development of this key support industry is as vital as the need to have a sophisticated financial services industry to support the present economy. It should be the aim of the IP office, functions and duties to stimulate and promote intellectual property among the business community aswell as the public. To create a community that values the upstream side of IP, this is innovation and the downstreamactivities involving IP protection, management and exploitation. The IP office should help in creating an IP eco-system whichcuts across industry and government sectors including public research institutions, Research and Development (R&D) companies, institutions of higher learning, governmentdepartments and private companies. Other than governmentthat provides the protection regime, the stakeholders in the IP

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help achieve these larger strategic goals towards creating an IP eco-system. The New Issues or Challenges can be seen firstly, as the Role of IP office itself known as internal challenges towards achieving and overcoming the Challenges within its administration and policy. Secondly, the role of the external challenges whereby, the Industry or the IP owners need as an incentive towards theircommercialization of their IP rights. This can also be known as the Role over affect from IPR office actions and policies in that particular country. The internal challenges can be categorized into Need for Speed; Need for Expertise; More Filings; Amendment to the Law, Legislation, Policies; ExaminationProcedures and Registration Procedures. The external challenges can be viewed as High Quality of Decisions; Licensing and Franchising; and How to Create Incentive for the industry. An illustrated Chart 1.1 below will show regarding the Growing Demands On Intellectual Property Offices.

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HART 1.1 GROWING DEMANDS ON INTELLECTUAL PROPERTY OFFICES

One may question whether regional cooperation or multilateral cooperation among

several countries could be extended in the foreseeable future to cover the 170 countries in the world to catch up with the pace the current global economic activity. As information-sharing is increasingly facilitated by advance information technology (IT)

IP OFFICE

MORE FILINGS An Increase Number of Applications

NEED FOR SPEED Growing need for expeditious decision making, as technical changes and product life cycle speed up and have short

NEED FOR UPGRADING OF ACTS, LAWS AND POLICIES To facilitate the growing needs of the Global Laws and Policies and Changes on Global Trends on IP NEED FOR EXPERTISE Need more personal or knowledge base experts in IP to standardize the decision making and to support the industry

Licensing or Franchising Towards commercialization and new markets

High Quality of Decisions Consistency of decisions with international harmonized standards

Incentive and Awareness Towards R&D, Tax Incentive on IP based know-how and Technology transfer.

EXTERNAL

EXTERNAL

INTERNAL

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and telecommunications, the digital revolution is enabling countries to enhance cooperation and share data and information in a rapid, paperless, and inexpensive manner. Because of the effects of globalization, technological advancements, and the

convergence of both technologies and enterprise, there is a clearly perceived need for enhanced regional cooperation through harmonization of IP legislation, policies and of coordinated and/or more efficient practices with respect to the administration of IPRs. Those solutions encompass sharing of resources, leveraging of cost, the possible creation of common IPOs and courts, sharing of examination databases, recognition of patent, trademark examination with regional organizations, and even supranational IPRs. As business becomes more global, greater harmonization of the IP system can be seen

as one of the key goals ahead. Harmonization includes creating more uniformity at the national and regional levels, and that occurs through international consensus as reflected in the international instruments created, adopted, and embraced by the maximum number of Member States of World Intellectual Property Organization (WIPO). This is where the external elements in CHART 1.1 plays an important role in going global through the IPR ownership and participating in the International Market Trends and setting up Intellectual Property Assets Managements from Intellectual Property .This will be underpinning on commercialization success on exploitation and protection which will reduce competitive pressure, help to control supply chain. Generate licensing income and improve productivity.

References:

1. Ministry of Domestic Trade and Consumer Affairs Annual Report 2004, MyIPO, Government of Malaysia, 2004 2. Japan Patent Office Annual Report 2005, Japan Patent Office, Government of Japan, 2005 3. Intellectual Property: A Power Tool for Economic Growth; Chapter 8: Acquisition and Maintenance of Intellectual Property Rights. 2005, WIPO. Page 269 4. Intellectual Property: A Power Tool for Growth; Chapter 8: Acquisition and Maintenance of Intellectual Property Rights. 2005 WIPO. Page 270- 271

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CHAPTER 2: METHODOLOGY USED IN MY RESEARCH 2.1 PRELIMINARY ANALYSIS Chapter 1 has point out the challenges and issues that should be addressed by Intellectual

Property Offices (IPO’s) which have been divided them into two (2) type of issues:

Internal Issues and External Issues. Hereby, through this particular chapter the problems

and issues are to be supported by previous research, papers and also documents that

verify the issues faced by IPO’s regionally and also internationally in this 21st Century.

The Utilitarian/Economic Incentive Perspective 1

Intellectual property in the United States is fundamentally about incentives to invent and

create. Although we have considered a number of economic theories, none of them

explain copyright and patent law…….As the Supreme Court explained in the landmark

case of Mazer v. Stein, 347 U.S 201 (1954):

………….The economic philosophy behind the clause empowering Congress to grant

patents and copyrights is the conviction that is the best way to advance public welfare

through the talents of authors and inventions in the “science and useful Arts”. Sacrificial

days devoted to such creative activities deserve rewards commensurate with the service

rendered.

To understand how the Framers through exclusive rights in inventions and creations

would promote the public welfare, consider what would happen absent any sort of

intellectual property protection. Invention and creation require the investment of

resources – the time of an author or inventor, and often expenditures of facilities,

prototype, supplies,….In a private market economy, individuals will not invest in

inventions or creations unless the expected return from doing so exceeds the cost of

doing so – that is, unless they can reasonably expect to make profit from the

endeavor. To profit from a new idea or work of authorship, the creator must be able

either to sell to others for a price or to put it to some use that provides them with a

comparative advantages in a market. It also emphasized a faster protection period

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to enable the inventor or author to commercialize their inventions or products as

well.

Moving towards harmonized IPOs has been the discussion of the ASEAN member

countries. The Harmonization of Intellectual Property Rights in ASEAN 2 ……there have

been a few turning points in the harmonization of the intellectual property rights in the

ASEAN member countries, notably , the setting up of the World Trade Organization

(WTO), the implementation of the Agreement on the Trade Related Aspects of

Intellectual Property Rights (TRIPs), the signing of the ASEAN framework Agreement

on Intellectual Property Cooperation(AFAIPC), and the Hanoi Plan of Action of the

ASEAN Summit in 1998. These have directly forged the harmonization of intellectual

property rights in the ASEAN member countries, drawing strength and inspiration in no

small way from cooperation with international and regional organization as well as other

national IP offices such as the World Intellectual Property Organization (WIPO), the

WTO, the European Patent Office (EPO), the Office of Harmonization of the Internal

Market (OHIM), the European Union(EU), the Japan Patent Office (JPO), the French

National Office of Industrial Property (INPI), the German Patent and Trademark Office

(GPTO), and IP Australia. The harmonization efforts have also benefited from the

cooperation with renowned non-governmental organizations. The APEC Osaka Summit

has started cooperating on IP with the action plan similar to the one adopted by ASEAN,

but with a stronger push on improving the administration and enforcement of intellectual

property rights. This willingness to make intellectual property cooperation included

enhancing intellectual property enforcement and protection, strengthening

intellectual property administration and legislation, promoting human resource

development, public awareness, cooperating with the private sector, information

exchange, and setting up the ASEAN Intellectual Property Association (AIPA). The ad

hoc group was well aware that ASEAN could not afford to be static in a world of fast

technological changes. As a result ASEAN senior economic officials set up the ASEAN

Working Group on Intellectual Property Cooperation (WGIPC). Referring to Article 1.4

of the ASEAN Framework Agreement on Intellectual Property Cooperation (AFAIPC):

“Member States shall explore the possibility of setting up an ASEAN patent system,

including the ASEAN Patent Office, if feasible to promote the region-wide protection of

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patents, bearing in mind developments on regional and international protection of

patents”.

Referring to Article 1.5 of (AFAIPC): “Member States shall explore the possibility of

setting up an ASEAN trademark system, including an ASEAN Trademark Office, if

feasible to promote the region-wide protection of trademarks bearing in mind

developments on region and international protection of trademarks”

A few years have passed since, and ASEAN still has not achieved its stated goal of

having the trademark and patent regional filling system.

Commercialization of Patented Inventions3, whereby the patent system must be

understood as a policy instrument which encourages developing indigenous technological

capabilities by providing an incentive to local inventors, research and development

organizations and industry, rather than a policy instrument which, if adopted, will

immediately effect a transformation in the level of technological sophistication in the

relevant country. In fact, it represents a strong shield for the development of innovative

domestic industry however small it may be at the moment. Without a good practice of a

patent system by IPO’s or without any patent system, local inventors, entrepreneurs

and companies would have no effective protection against the imitation of their

inventions, and less incentive to invest in the development and strengthening of their

technological capacities. The modern patent system contributes to the commercialization,

marketing and transfer of technology in several ways. A good information system must

be adopted in terms of supporting the effective searching of patent documentation

which can indicate the state-of-the-art which exists in relation to any particular field

of technology. Awareness of the state-of-the-art in a particular technical field can

avoid duplication in research work by indications that the desired technology

already exists. It also provides ideas for further improvements; it can give an insight

into the technological activities of competitors and, by reference to the countries in

which patents have been taken out, the marketing strategies of competitors. A state-

of-the-art search can also identify newly developing areas of technology in which future

R&D activity should be monitored.

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Building critical mass in IP Management4, whereby it is known that the main barrier

to the development of Technology Transfer Offices (TTOs) is access to experienced

technology transfer professionals and it’s important to create knowledge and know

how regarding this area. Not only are the skills sets of such professionals in short

supply but sometimes government employment rules and pay-scales prevent public

institutions from being able to provide competitive salaries to such professionals.

National Patent offices should also get involved in reaching out to universities to provide

training in intellectual property. Governments should spur the development of

Technology Transfer Offices (TTO’s) clustered around certain regions or sectors such as

biotechnology. The National IP office should regulate and amend its acts pertaining to

transfer of technology by universities and Public Research Organizations to the industry.

Intellectual Capital has been described as the currency of the emerging innovation-driven

new economy.5 The Intellectual Property (IP) eco-system cuts across industry and

government sectors including public research institutions, R&D companies, institutions

of higher learning, government departments and private companies. Other than the

government that provides the protection regime, the stakeholders in the IP eco-system

include IP creators, owners, managers, financiers and traders. Strategic trusts of the

Malaysia IP office is meet the yearly increase in the number of applications, meet the

needs of the clients, and provide simple application procedures and speedy registration

and also have an efficient information dissemination system. There is apperception in

industry today that the IP registration system in Malaysia is too slow and inefficient

compared with other countries.

As for new challenges for IPO’s 6 in an era of rapid technological change and short

product cycles, IPO’s are increasingly under pressure to speed up their procedures

for granting patents and registering marks. In the fields of information and

communication technologies, in particular, where innovations are taking place at startling

pace, lengthy and time-consuming procedures for granting patents pose the risk of

undermining the potential of the IP system for promoting technological innovation and

creativity. It is crucial that, while maintaining its efficiency and thoroughness, the IP

system must also become as expeditious and responsive as possible, to enhance its role in

the promotion of innovative works, and to enable the business community to make more

15

and better use of it. Many patent offices are making considerable progress by setting

targets for achieving more expeditious granting, strengthening their staff, computerizing

applications and examination procedures,( as an example: The time frame for patent examination in the

Republic of Korea was reduced from 28 months in 1998 to 24 months in 1999. The result was achieved by: a) sharply

increasing the number of examination personnel, b) continuously entrusting prior art search to an outside prior art searching

agency, c) introducing a quick registration system for utility models, and d) increasing the subjects qualifying for preferential

examination system. It is believed that more expeditious granting of patents and utility models will increase the use of the

system and its value for the business community, and make it more effective) and enhancing international

cooperation. The economic and social cost of establishing and maintaining an IPO has

recently come under special attention, as users of the IP system have requested a

reduction in the fees for filing an application, as well as obtaining and maintaining

intellectual property rights (IPR). Users have become aware of the cost, as many wish to

expand their IPR protection to other countries in response to the globalization of markets

and trade, as well as the advent of e-commerce. However, cost reduction is difficult for

many IPO’s that have an increasing workload with limited resources. As business

becomes more global, greater harmonization of the IP system should be emphasized as

one of the key goals ahead. It has been quite visible in the Patent Corporation Treaty

(PCT), with its expanding number of contracting states as it moves towards electronic

filing, and the efforts underway to transform the PCT into a more advanced and flexible

international patent system. On the marks side, the expanding number of Member States

which are party to the Madrid system is favoring a mush easier acquisition and

maintenance of global trademark rights at a fraction of the cost, in multiple countries.

Worldwide Trade Secret Law 7 in its title International Enforcement and introduction of

Trade Secret Rights, as stated that the WTO/GATT Agreement, which was concluded on

April 15,1994, brought to closure the long running Uruguay Round of discussion and

established the World Trade Organization (WTO). Annex to the WTO/GATT Agreement

is Trade-Related Aspects of Intellectual Property Rights (TRIPs). The purpose of the

TRIPs Agreement is to improve and harmonize the protection afforded to intellectual

property, including trade secrets, in and among the WTO’s member states. However,

despite the ongoing implementation of the provisions of the TRIPs Agreement related

to trade secret protection (e.g., trade secret law has recently been promulgated in, inter-

16

alia, Korea, Thailand, Indonesia and Taiwan), trade secret internationally remains

inconsistent. This is due, in part, to the fact that the transition provision of the

WTO/GATT Agreement (Article 65) permits varying compliance periods ranging from 5

to 10 years from the Agreement’s effective date, depending on the level of a country’s

economic development.

Section 7 Protection of Undisclosed Information Article 39 8 TRIPs Agreement (1994)

In the course of ensuring effective protection against unfair competition as provided in

Article 10 bis of the Paris Convention (1967), Members shall protect undisclosed

information in accordance with paragraph 2 and data submitted to governments to

governmental agencies in accordance with paragraph 3.

Natural and legal person shall have the possibility of preventing information lawfully

within their control from being disclosed to, acquired by, or used by Malaysia. The only

statute which protects “secrets” in Malaysia is the Official Secret Act, 1972 (Act67)

(O.S.A). Section 2 defines “official secrets” as “any document specified in the Schedule

and any information and material relating thereto and includes any other official

document, information and material as may be classified as ‘Top Secret’, ‘Secret’,

‘Confidential’ or ‘Restricted’, as the case may be, by Minister, the Menteri Besar or

Chief Minister of a State or such public officer appointed under Section 2(b). Therefore,

it may be seen that what the O.S.A. protects are secrets pertaining strictly to State affairs

which are noncommercial in nature. There is no precise judicial definition of what is

others without their consent in a manner contrary to honest commercial practices9 so long

as such information :

is secret in the sense that it is not, as a body or in the precise configuration and assembly

of its components, generally known among or readily accessible to persons within the

circles that normally deal with the kind of information in question;

has commercial value because it is secret; and

Has been subject to reasonable steps under the circumstances, by the person lawfully in

control of the information, to keep it secret.

17

According to Worldwide Trade Secrets Law Volume 3, published by Thomson West and

Terrence F. MacLaren (Editor), the law relating to trade secrets 9 is not codified in meant

by “trade secret” in Malaysia. However, the Malaysian courts have interpreted the words

“trade” and “secret” separately. There are two cases in Malaysia which may be of some

relevance here. The case deciding the word “trade” is TCS v. Director General of Inland

Revenue, [1977] 1 MLJ 34. Whereby the case deciding the word “secret” can be seen in

Public Prosecutor v. Lim Kit Siang, [1979] 2 MLJ 37, 39.The meaning assigned to the

words “trade” and “secret” in the above cases illustrate that the Malaysian court will

apply the ordinary meaning of a particular word or words found in the English language.

Trade secrets being confidential information of a commercial character are to that extent

a subset of the broad category of the law of confidence, which besides trade secrets

covers other secrets such as personal confidences.

Members, when requiring , as condition of approving the marketing of pharmaceutical or

of agricultural chemical products which utilize new chemical entities, the submission of

undisclosed test or data, the origination of which involves a considerable effort, shall

protect such data against unfair commercial use. In addition, Members shall protect such

data against disclosure, except when necessary to protect the public or unless steps are

taken to ensure that the data are protected against unfair commercial use.

To enhance the IPO’s effort to establish and assist in implementing strategies to help the

Australian Industrial Property Organization (AIPO)10 to identify its clients needs and

expectations, enables it to align its services to these needs and improves the

effectiveness of the IP system. There is a need to allocate staff development to the core

business activities which will implement measures to monitor client satisfaction while

also maintaining and enhancing a more effective communication network, including

regular consultation on issues such as the developing of IP policies and their legislative

impact. These steps taken by AIPO are vital to help improve the effectiveness of the IP

system and hence its benefits to Australian industry needs and expectations. The

stakeholders needs have to be communicated through the IP organization to ensure they

18

are acted upon in the planning and legislative process. AIPO also needs to maintain and

develop the industrial property legislative framework to encourage Australian innovation

and business growth. AIPO has identified the needs and expectation of the Creators and

Users (Stakeholders) to provide them with a clear understanding of the industrial property

system, fostering their confidence during the effective period of registrations and

standardization and also assisting them to obtain effective protection. The stakeholders

need an effective industrial property system which should provide them with a high

quality patent, design and trade mark rights on time and at a competitive price. To obtain

a better use of patent information for investigation and implementation of a wide range of

fields, accessible and comprehensive search services are needed.

Further more, through Paris Convention 1994, Article 10bis and 10ter the Member

States should provide Unfair Competition Protection. In Malaysia, the law of Unfair

Competition Protection is not been enact yet. The affected party can still find protection

under Trade Description Act 1972, under false description of goods and also some

protection under Passing-off under Common Law. To enhance further development and

to underpin foreign investment coming in, Malaysia has to enact Unfair Competition

Protection Law as soon as possible.

Here the author has established that IP is the core of business related success since

globalization world has become borderless and interconnected with the advance of

Information Technology , where the importance of intellectual property rights should be

protected locally first and than be exploited globally. To do so the IPO’s should be more

pro active to the needs and changes as well as overcome the challenges of the 21st century.

As an IP regulator and policy advisor the IPO’s should build a strong and dynamic IP

regime for the protection and exploitation of IP.

Challenges to Intellectual Property in Cyberspace11

Maureen D'Orso

Networks & Society

December 9, 1996

19

The impetus for the development of intellectual property law, at its inception, was to

ensure that sufficient incentives exist to lead to innovation and the creation of new

and original works and products. The physical world has been relatively successful at

erecting barriers to prevent acts that would limit this innovation, in the form of copyright,

trademark and patent regulations. Some suggest that the advent of the Internet, however,

has created new intellectual property issues with which traditional laws simply cannot

cope. The nature and scope of the Internet, they argue, present a situation that the current

system does not anticipate, with a series of new issues prevalent in Cyberspace that do

not have a counterpart in the real world. If these questions are not resolved, then the

possibility arises that the vast new information sharing opportunities the Internet provides

will go unused by authors and others, who fear for the integrity of their work and their

ability to collect compensation. As individuals and companies turn to the Internet for

commercial ventures, it has become clear that electronic commerce will not be able to

flourish to its full potential unless intellectual property rights can be guaranteed.

Intellectual Property: Improvements Needed to Better Manage

Patent Office Automation and Address Workforce Challenges

(08-SEP-05, GAO-05-1008T).12

The United States Patent and Trademark Office (USPTO) is responsible for issuing

patents that protect new ideas and investments in innovation and creativity. However, the

volume and complexity of patent applications to the agency have increased significantly

in recent years, lengthening the time needed to process patents and raising concerns about

the validity of the patents that are issued. Annual applications have grown from about

185,000 to over 350,000 in the last 10 years and are projected to exceed 450,000 by 2009.

Coupled with this growth is a backlog of about 750,000 applications. Further

complicating matters, the agency has faced difficulty in attracting and retaining qualified

staff to process patent applications. USPTO has long recognized the need to automate its

patent processing and, over the past two decades, has been engaged in various automation

projects. More recently, in its strategic plan, the agency articulated its approach for

accelerating the use of automation and improving workforce quality. In two reports

20

issued in June 2005, GAO discussed progress and problems that the agency faces as it

develops its electronic patent process, its actions to attain a highly qualified patent

examination workforce, and the progress of the agency's strategic plan initiatives.

New IPO chief promises agency revamp 13

The new Director General of the Intellectual Property Office (IPO), trade undersecretary

Adrian Cristobal has seen some of the problems faced by the office and plans major

changes. He has been informed about complaints from patent and trademark applicants

about the IPO’s sluggish adjudication process and lack of judges capable of handling

intellectual property cases, Cristobal said.

“There will be many changes in the agency. I hope to strengthen, improve, and

streamline the IPO’s operations by restructuring the organization,” Cristobal explained.

What he did say is that he would streamline patent and trademark application for local

artists and scientists, as well as reduce application backlogs by as much as 60 percent.

Approving patent applications to global standards takes 18 months at present, Cristobal

said; he plans to cut that down to 12 months. He also mentioned that “I’m getting the big

picture about the state of IP violation in the Philippines and its strengthened my belief

that foreign investments are affected by piracy”.

Protecting Intellectual Property in a Global Economy 14

The global growth of the Internet presents new challenges to efforts to safeguard the

rights of intellectual property producers. While the issuance of patents may be facilitated

by the new global economic networks, trademark protections need to be extended to

the Internet, and there are serious issues involving the protection of copyrighted

printed and visual materials, says Bruce Lehman, an assistant secretary of the U.S.

Department of Commerce and the head of its Patent and Trademark Office. Copyright

protections are threatened by the ease of digital reproduction and worldwide distribution

as well as by the argument that copyright laws should not apply in cyberspace. The rise

of globe-spanning communications networks--along with the rapid growth of electronic

commerce that has accompanied it--require us to reflect and plan for new ways to protect

intellectual property rights if we are to avoid major problems in the 21st century.

21

Significantly, these are issues that cannot be solved without international cooperation.

Our analog world has gone digital. Digital technology and the Internet are being

welcomed into our lives as enthusiastically as typewriters and photocopiers once were.

Yet we need to update copyright laws in order to protect original literary and artistic

works distributed over the Internet from unauthorized copying. Similarly, we must align

laws governing the Internet with trademark laws so that registered marks are protected

from unauthorized use of domain names. We should also build upon our already strong

patent laws to promote technological advancement.

Harmonization15 of the Intellectual Property Rights system has many different forms of

protection, which are independent of each other and governed by separate laws. The

foundation of IPR harmonization was laid with the Paris Convention for Protection of

Industrial Property in 1883. Multilateralism and globalization are co-producers of each

other. The synergy between the two is so intense that one is today witnessing the

development of a new world order. In a borderless economy the competition has become

severe, and companies, corporations and R&D institutions must search for new solutions

to beat problems that may have an adverse and immediate impact on their

competitiveness and a long term impact on their survival. Companies from developing

countries have to learn the rules of the new game as they do not have the necessary

experience of handling global trade and commerce. It is clear the new environment has

become very dynamic and complex. One of the major challenges faced by them is

developing understanding of the laws of different countries and also using them

correctly to their own advantage. The success of a multilateral system depends heavily

on formulation and practicing of common rules. Intellectual Property Rights have started

occupying the centre stage in the global trade and commerce and new issues of IPR are

being thrown up due to new technologies and heavy investment made in developing such

technologies. The term harmonization could be interpreted by different people to a

different meaning.

The EU-Japan Centre for Industrial Cooperation was established jointly by the European

Commission of the EU (Directorate General for Enterprise) and METI. The EU-Japan

Business Dialogue Round Table (EJBDRT) is an industrial initiative backed by the EU

Commission and the Japanese government. It is co-chaired by the former vice-President

22

of the EU Commission Viscount Etienne Davignon and the Chairman Emeritus of NEC

Corporation Tadahiro Sekimoto. EJBDRT has an annual meeting, participated by chief

executives from 44 EU and Japanese enterprises, to review the factors affecting trade

and industry and to make policy recommendations to the EU and the Japanese

government. In this annual forum, members develop recommendations to public

authorities on industrial policy issues of common interest between the EU and Japanese

organizations. EJBDRT recognizes the desire to harmonize intellectual property rights, in

particular the “first-to-file” and “first-to-invent”. Although the EJBDRT favors the

“first-to-file” principle, no action is taken.16

COPYRIGHT LAW REFORM/OPTICAL DISC LAW17

Copyright in Malaysia is governed under the Copyright Act, 1987, as amended through

2003. The Copyright (Amendment) Act 2003, Act A1195 (effective August 14, 2003)

Strengthened criminal penalties and generally gives enforcement authorities more ability to carry

out enforcement against copyright piracy, e.g., Section 50A gives Ministry of Domestic Trade

and Consumer Affairs (MDTCA) officials the ability to carry out arrests for copyright piracy.

These changes address in part the issue raised by IIPA in past filings about the need to deem

piracy a “public crime,” and while the amendments do not go quite that far, they do in a practical

sense address the need for MDTCA to be able to carry out its duties ex officio, so in that regard,

we view them as a positive development.

The amendments do not otherwise address issues raised by IIPA in past filings, e.g.

They do not impose mandatory minimum jail sentences for piracy; they do not address

deficiencies with respect to presumptions in the law as to copyright ownership or subsistence of

copyright; they do not permit disclosure by enforcement authorities to copyright owners of

evidence; and in civil cases they do not deem infringing the “possession and control” of

infringing copies for the purpose of sale or other transfer. Malaysia should require full

implementation of the Copyright Law reforms that have become part of emerging global

consensus minimum standards. Many of these standards are already embodied in international

treaty instruments, most recently in the World Intellectual Property Organization (WIPO)

Copyright Treaty (WCT) and the WIPO Performance and Phonograms Treaty (WPPT).18

23

E-Learning concepts and development19 is a complex field involving institutional,

individual, technical, and social components. The e-learning ecosystem refers to the

environment and the stakeholders involved in e-learning. So hereby IPO’s should identify

the correct method to disseminate the information to the target group or individual. The

question here is whether the dissemination of information by IPO’s having fulfilled

the need and expectations of the industry, SMEs or research institute. Within the e-

learning ecosystem, there are infrastructures and platforms to support stakeholders in

performing their roles required for teaching and learning such as administrator, learner,

instructor, course designer, and content developer. There are learners and trainees who

are the primary consumers. The state of the e-learning ecosystem is changing

dynamically. The associated technologies are evolving rapidly. The demand for quality

training and learning is increasing globally both in commercial and education sectors.

From a technological perspective, the main issues affecting effectiveness are reusability

and interoperability of various components in different e-learning platforms. From the

learners’ and educators’ perspective, effective e-learning actually depends on how to

achieve the desired learning goals.

According to Malaysian Business20, whereby under the title of “Not Enough Protection

For IP” the statement which has taken into consideration for the needs to further develop

the IPO’s functions and duties can be reviewed as follow: Is Malaysia doing enough to

protect intellectual property? Some don’t think so while others think the problem lies not

in the legislation but in enforcement. In meantime, Malaysia retains its reputation as the

largest producer of pirated VCDs in the world! By Ooi Sue Hwei

Government efforts towards the realization of a nation built on intellectual property in

Japan has taken a new turn into looking IP as the main factor underpinning the economic

growth. This has been statute by Prime Minister Koizumi on February4, 2002 at the 154th

Diet Session. Current status surrounding patent examinations, where by cases waiting for

examination are on the increase due to higher number of request for examination than

case being examined. Cases waiting for examination exceed 600,000, extending the wait

period for examination to no less than 26 months. Japan’s numerous patent applications

are made only domestically, where by Japan’s global application rate (21%) is low in

comparison with those of the US (44%) and Europe (60%: outside of EPC member

24

countries is 47%). Japan is creating ways and strategies to increase this number in global

applications and also ways to shorten its patent examination period.21

2.2 Consult Secondary Sources

The Author has carried out this survey via a set of 82 Questionnaires which have been

posted or emailed to Big Companies, SMEs and Universities in Japan. Furthermore, the

author has prepared a follow up interview questions marked as “EXHIBIT 2.2” for the

Japanese industries. The break down of the questionnaires posted can be viewed as

follow:

Big Companies 20 questionnaires which consist of:

Automobile industry 5 companies,

Food processing industry 5 companies,

Pharmaceutical Industry 5 companies,

Electronic Industry 5 companies

SMEs Companies 52 questionnaires

Universities (TLO) which have IP base activities 10 questionnaires.

The Author via email has sent about 100 questionnaires to Malaysia which consists of

Big Companies, SMEs and Universities. The breakdown of the questionnaires can be

view as below:

Big Companies 10 questionnaires which consists of:

Telecommunication 2,

Automobile Industry 2,

Chemical and Fertilizer 3,

Cosmetic 2,

Oil and Gas 1,

SMEs Companies 79 questionnaires which consists of:

Malaysian Branding Associations members 40 companies,

25

Malaysian Retailers Chain Association 11 companies,

Herbal Base Industry 3 companies,

Cosmetic Base Company 2 companies,

Fertilizers base Company 2 companies,

Food base Company 7 companies,

Beverage base company 5 companies

Clothing and Textile 5 companies

Furniture Industry 2 companies

Agro base industry 2 companies

Universities and R&D Organization 11 questionnaires

Universities 9

SIRIM 1

FRIM 1

The questionnaire is market as “EXHIBIT 2.2 (A)”. Which is been developed through

using the “Likert Scale” concept. This survey method is being used by the author because

it uses a very minimal time frame for the industry to answer. For the Japanese industry

the Questionnaires were translated into Japanese Language for the better understanding

of the contents of the authors’ questions. This is to get the best accurate answer from the

respondents pertaining to their needs and expectations from the IPO in Japan (JPO) from

the industry perspective. Whereby the questionnaires for Malaysia industry was sent in

English and email was the main communication media used to obtain the response. The

questionnaires were sent in electronic soft copy and were returned via email as well.

This survey through questionnaires was very important for the author to establish the

problems faced by the industry pertaining to obtain the IP rights and also methods to

commercialize it. The answers or feedbacks obtained from the industry were very crucial

in terms of the author to evaluate his research and claims that he has mentioned earlier in

chapter one and chapter two (2.1).

26

There have been many suggestions and opinions from the industry in Japan and also

Malaysia, pertaining to their expectations and needs from the IPO functions and duties to

serve them better enabling the industry to commercialize their products or technology

further. This is because the life cycle and the changes in technological aspects are

growing rapidly. To overcome this dilemma the IPO must act fast to assist the industry to

not to loose out in the development and rapid changes globally. The author has divided

the opinions and view from the industry (big companies), SMEs and University

according to countries. First, the author will look into the needs and expectations from the

Japanese entity and followed by the needs and expectation by Malaysian entity.

From the feedback received by the author, the Japanese industry has outlined that they

are looking for a faster examination period, especially for their patent applications. This

is because the industry that files for patents are not merely filing for registration or grants

purpose only, but also to assist them in using that particular patent application to

commercialize or even for taking legal action towards the infringement of their related

patents. The current JPO accelerate system is emphasizing priority for the SMEs patents

in order to enhance the IPR in the SMEs, but have delayed into the examinations of

patents filed by the big companies. These big companies also would like to request JPO

to provide them with the similar preference on urgent paten grant required, in order for

them to compete in the global market that whereby the technology changes at a very fast

pace. The industry also would prefer JPO to provide not only the public data of electronic

application, but also past public data and documentary data with marginal cost, accelerate

applications and prior research before the request for examination aiming to proceed

towards an efficient examination. The industry view regarding the experience of the

patent examiners can also been seen through their comment on this matter. The industries

suggest that JPO will let its examiner obtain further experience by letting them to work in

private companies. Their rational for suggesting so is that the examiners who only have

working experience in JPO may only compare applications with prior patents, but it will

be hard to reach a judgment based on the technical novelty at this day. Outsourcing of

prior art search is also been suggested by the industries in order to quicken the

examination and reexamination process in JPO. As for the training aspects, SMEs are

more interested in their benefit or advantages in their quest to penetrate global markets;

27

they suggest that JPO and NICPI should promote the patent licensing aspects more in

order to strengthen their knowledge in the patent field and business. SMEs have also

suggested that they need more emphasis regarding patent IP strategies and also how to

nurture their knowledge in Patent Mapping, and the important points toward achieving

these requirements. The SMEs have indicated that they are not aware of the foreign

application filing procedures. So they suggested that JPO or NCIPI should come out with

a guidebook which will support and enhance their knowledge and know how on foreign

application filling procedures. As for the Universities aspect of expectations and needs

from JPO are pertaining to Section 73 of Japan current Patent Law, which can further

been improvised in term of the provision for joint application with regard to research

institutes. Universities in Japan also would like JPO and NCIPI to enhance overall

education and training for human resources engaged in technology transfer. Education

could include organizing a variety of courses, which should be tailored and satisfy the

level and needs of an individual, and holding training based on specific field training

courses such as in biotechnology and materials.

From the feedback received from the Industry, SMEs and Universities in Malaysia, the

needs and expectations can be viewed in term of MyIPO policy, Acts, Regulations,

Intellectual Property Training Center (IPTC), Technology Transfer, Multi-class

application in Trademarks, Malaysian involvement in world organization treaties,

dissemination of information, Time frame for processing and granting applications,

The companies would like MyIPO to establish a research data base for all, such as for the

Enterprises, Universities, R&D base organizations, and to create an effective on-line

application and registration system which will assist the industry to understand the filing

procedures better. The industries also need MyIPO to implement a faster processing

period because the current processing period is too long. Industries also want MyIPO to

reduce the filling fees for more than one (1) application filled, in other words they are

requesting for a multiple class application system to be implemented to improve the time

frame and also to ease the burden of higher fees paid during the application stage.

Whereby the Universities and R&D Organizations want MyIPO to establish a research

database for easier reference via the internet with a free search options to enhance more

28

research activities to be carried out effectively and avoid possibility of infringement

activities or duplication of research. They also would like MyIPO to come up with a

guideline on roles of patent attorneys especially pertaining to Transfer of Licensing

Offices (TLOs). MyIPO should also play an important role in promoting IP importance

towards the development of the technological research development society. MyIPO

should also set up an Office for Industry Liaison to facilitate the problems faced by the

industry pertaining to IPR and also pertaining to commercialization into global market.

University and R&D organization also prefer that MyIPO would enact an act similar to

Bay Dole Act in Malaysia to encourage the research activities to be carried out more

effectively and also well protected.

The majority of the Industries would like MyIPO to implement firstly the On Line Search

system and make it available for free to encourage more information sharing and also to

encourage that searches will facilitate more research activities be carried out, leading to

more quality filling of applications.

The main concerns of the IT based industries are about the Digital protection Act and for

Malaysia to amend the Act for better protections for copyright owners as well as widen

the enforcement of boarder measures with a better cooperation with the Malaysian

Customs to curb the illegal importation of registered goods or products to enter Malaysia

at the border itself. Malaysia must implement copyright law reforms that have become

part of emerging global consensus minimum standards, including but not limited to those

already embodied in the WIPO Copyright Treaty (WCT) and the WIPO Performances

and Phonograms Treaty (WPPT).

Furthermore, the industry is mainly disturbed with the non standard of decision making in

MyIPO and one has a big question about what are the standard and procedures followed

by the examiners are. Every time, when the industry questions the examiner regarding

their standards and procedures on decision making the answer given is prototype that the

decision is based on its own merit and differs from one application to another. So the

main question is, what is the standard applied by the examiners in MyIPO when deciding

approval or refusal of an application filled. The IP users would like to know the

procedures and also the standards of decision making manual used by MyIPO examiners,

29

so they can follow the rules and also the standards to minimize their problem when

applying for a trade mark, patent or design. All this information should be made public

via the MyIPO website to facilitate the understanding of the IP user or clients.

The industry also would like MyIPO to update their search data information for the

applications filed, as this will really be a great help to enable them to make effective and

efficient searches to make the right decision of whether to proceed or not with an

application, so no further rejection or waste of time and money will be incurred in future.

This is because the industry would be spending a lot of money to put the product or

technology in the market and finally will not obtain the IPR for it. This will be a big loss

and also time consuming effort that will be incurred by the industry because of the

incompetence of the data obtained at the searching process that has not given a right

picture or situation at that time, which would be done 12 months earlier, prior to the

decision outcome by the examiners of MyIPO.

The industry would also like Malaysia to have a Licensing Body that will oversee the

progress and activities pertaining to licensing. This body will function as a liaison office

that will assist the licensor or licensee on procedures and also advise on types of licensing

and acts and regulations supporting these activities. This Licensing Body will also assist

to displaying information on available products or technology for licensing or displaying

the types or forms of open licensing available for IP users to obtain and could support

enhancing their products or technology to a further advance level. This Licensing Body

should be monitored by the Ministry to make sure that it really plays an important role in

serving the needs and also expectations of the users or clients.

Furthermore, the industry is really disappointed that MyIPO have posed rather high

charges for them to utilize the on line search system. Whereby, in most of the other

countries this service is available free, in order to encourage more usage of the system

and also to generate more filling activities. The industry would request MyIPO to look at

and revised their term on usage of their On Line search system, which will benefit the

country as well as encourage the transformation to a knowledge based society.

The industry would like Malaysia to accede to the world’s IP law and treaties that will

encourage global penetration of Malaysian products and technology, which will help to

30

reduce cost and also time frame of filling in the international arena. It is important to

bring Malaysia as one of the key players in the global economy and also to enhance better

transfer of technology. This will encourage the development of knowledge and know-

how for technology to move to a better stage that will contribute to the GDP growth of

Malaysia. Through this, more foreign investment and transfer of technology with

Malaysia can take place with developed or developing countries.

The industry also had raised the concern regarding the training programs that have been

conducted by MyIPO. The training programs are always aimed to the same crowd and

also are on the same topics most of the time. The industry would like MyIPO to have a

dialogue with them to propose the type of topics that are to be focused on in order to

increase the knowledge and know-how of the industry and to enhance their IP activities.

Regarding the MyIPO website, the industries have commented on its information and

also the clarity of message understood by the industry. They have given feedback that the

Acts and also regulations should be divided into related topics which can be viewed just

by clicking on the relevant topic. This will save time and also enhance the usage of the

system of information mining. The website should also let the users know and understand

what the current trends and cases on IP are. What are the new areas of IP that the

international community is moving towards? What are the latest developments and also

the results of court cases decision, opposition cases and the outcome? Furthermore,

relating to the MyIPO website, the comment from the users are that the information is

somewhat hidden. For example, if they click on patent, it only brings up a page with the

one (1) sentence definition of a patent. If they want to see the related documents, fees,

etc…then they have to find the “Patent” link again at the top of the page and use the roll

out menus. The front page is rather confusing, and the areas of the page aren’t organized.

One can’t navigate to other areas of the site easily from any page. The MyIPO website

also does not allow searching through PDF manuals with search on the site. Basically the

industry is commenting that it is not a very user friendly website.

From this feedbacks obtained from the industry, the author now has confirmed and

verified by the IP users the issues relating to the industry and expectations from the

Intellectual Property Office relating to their functions and duties in serving the industry

31

better by exploiting their intellectual property rights. The findings through the

questionnaires from this subchapter will be elaborated in further details via charts and

tables and analytical analysis by the author in subchapter 3.3 Statistical analysis method.

Please refer to this chapter for further explanations of the findings by the author.

2.3 Evaluate Research

From this point on, the author has verified the expectations of the industry towards IPO

which has assisted the author to generate related questionnaires for the IPO in Malaysia

and has established further the claims of the industry and the steps taken by MyIPO to

overcome these needs. Through this survey via questionnaires to the Malaysia IPO

examiners and staff, the author’s mission is to find out how much MyIPO has tackled the

problems faced by the industry pertaining to obtaining intellectual property rights. This is

been done via questionnaires which are formulated based on the earlier findings through

the questionnaires carried out for the industry. This questionnaire is being marked as

“EXHIBIT 2.3 (A)”. The questionnaires have been sent by the author to the MyIPO

examiners and staff via email and then the author received feedback from the MyIPO

examiners and staff related to Human Resource Development, Time Frame taken to

process and granting or registration of an application, Quality of Decision Making by the

Examiners, and their view on how to improve the IP Office. This question has been

arranged in this manner to find out how MyIPO currently responds to the needs of the

industry. Has MyIPO fulfilled the requirements and expectations from the industry? This

is vital for the author to get response and feedback from MyIPO personnel to reevaluate

the actual issues and challenges which are still to be solved and how to overcome these

issues. The author has sent questionnaires to all the staff of MyIPO via email and has

obtained their feedback. This will be further been shown in subchapter 3.1 through

SWOT Analysis Strategy to divide the findings into strengths, weakness, opportunities

and threats.

2.4 Locate Primary Authority

The author has established the needs and expectations of the industry towards the duties

and functions of IPOs. In order to obtain the view from the IPO itself, the author has sent

questionnaires to MyIPO via email and received their response pertaining to the claims of

32

the industry. The answers given by MyIPO are being used by the author to establish the

steps taken and also to identify the actual problems. Furthermore, the author also

followed with a set of interview questions to the MyIPO head of division through email.

As for the case of JPO, the author has sent a set of interview questions regarding the

needs and expectations of the industry to the examiners and also to NCIPI to evaluate the

steps taken and how the IPO has organized their planning to accommodate the needs of

the industry. The interview questions for JPO can be seen as attachment “EXHIBIT 2.4

(A)”.

As for the MyIPO examiners and staff, the questionnaires are divided into a few fields of

research or fact finding. These fields are divided into Human resource development, How

to speed up Processing and Granting of Registration, Quality and Standard of Decision

Making, How to improve the function and duties of Intellectual Property Office. The

questionnaire also has questions with written answers, to get the views of MyIPO

examiners and staff regarding the needs and expectations of the industry.

As for JPO, the author has conducted an interview with the relevant head of division

pertaining to examinations and also the planning unit as well as the training division to

establish the steps taken by JPO to fulfill the demands and needs of the industry. This

will be shown in Chapter Four, whereby the author will discuss in depth on the current

situation and also the future plans. In order to do so the author has to conduct the analysis

on the subject matter in concern. This will further be analyzed in Chapter Three first and

only then the actual issues be identified.

2.5 REEVALUATE RESEARCH and UPDATE RESEARCH

This research method is being used by the author to establish and reevaluate the previous

findings and to rectify the actual problems which are actually faced by the IPOs and the

industry, separating the problems faced by the industry or IP users with those that have

already been solved by the IPO. This will be revealed in Chapter Four (4) in results.

Whereby, in Chapter Four, the author will address the main issues to be discussed in his

research, bearing in mind the internal and external factors that are within the control of

the IPOs. The author will give the audience the steps taken by IPO and also the issues or

needs by the industry which will be critically analyzed in Chapter Three (3). Please refer

33

to both these chapters to understand the actual issues involved and are in question for

further investigation by the author. This in turn will lead to consideration and further

steps or planning by IPOs to establish a more efficient and effective IP office and serve

the industry better and while assisting them to penetrating international markets.

References：

(Bibliography)

Textbooks, Articles, Papers, Legislation and Websites．

１．Merges, Menell, Lemley, ”Intellectual Property in the New Technology Age (Third Edition)”, Aspen Roughes, pp 10-11.

2. Christoph Antone, Michael Blakeney, Christopher Heath (Editors), “Intellectual Property Harmonisation within ASEAN and APEC”, Kluwer Law, pp 205-212.

3. WIPO/IFIP/KUL/96/1, “WIPO-IFIA International Symposium on the Commercialization of Patented Inventions, Kuala Lumpur (August 18-22, 1996), pp 9 and pp 11.

4.Mario Cervantes,OECD, “Academic Patenting: How Universities and Public Research Organization are using their Intellectual Property to Boost Research and Spur Innovative Starts-Up”, http//www.wipo.int/sme/en/documents/academic_patenting.htm

5. Paper by MDTCA (Draft: Unpublished), “National Intellectual Property Policy: An Intellectual Property master Plan for the Knowledge Economy”, (2003), Malaysia.

6. WIPO, “Intellectual Property: A Power Tool for Economic Growth; Chapter 8: Acquisition and Maintenance of Intellectual Property Rights” pp 269-297.

7. Terrence F. Mac Laren, “Worldwide Trade Secret Law (Volume 1)” Thomas West xxix.

8. Provision of Trade-Related Aspects of Intellectual property Rights (TRIPs Agreement)(1994), WIPO Publication, No.223(E), pp 38-39.

9. [TRIPs Agreement Note], For the purpose of this provision, “a manner contrary to honest commercial practices” shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in fairly to know, that such practices were involved in the acquisition.

34

10. “AIPO Strategic Directions 1995-1999 and Business Plan 1995-1999”, Published in Canberra, August 1995.

11. Maureen D’Orso, “Challenges to intellectual Property in Cyberspace”, http//www.cs.georgetown.edu/～denning/cosc450/papers/dorso.html

12. http//www.washingtonwatchdog.org/documents/gao/o5/GAO-05-1000T.html

13. http//www.news.inq7.net/infotech/index.php?index=1&story_id=28858

14. http//www.usembassy.it/pdf/ej/ijee0598.pdf#search

15. http//www.tifac.org.in/do/pfc

16. http//www.commercialdiplomacy.org/ma-projects/kinoshita5.htm

17. http//www.iipa.com/rbc/2004

18. http//www.iipa.com/pdf/IIPA

19. Mehdi Khosrow-Pour Volume 1 (A-J), Encyclopedia of E-Commerce, E-Government and Mobile Commerce, “E-Learning Concepts and Development by Fung Fai Ng. The University of Hong Kong, Hong Kong, Idea Group Reference, pp 391-392.

20. Magazine Malaysian Business, May 16, 2006, “Probe (This Column Investigate Current Issues and Topics)”, By Ooi Sue Hwei, pp 36.

21. Wataru Matsuda, Japan Patent Office, (June 28, 2006), “ The Present Status of Japanese Industrial Property Administration and Its Future Direction- A paper presented for JPO/IPR Training Course for Lawyers “.the JPO and APIC-JIII, Tokyo.

35

“EXHIBIT 2.2”

INTERVIEW QUESTIONS FOR THE INDUSTRY/SMEs/UNIVERSITY

(July6, 2006)

Q.1 Is your organization aware of the importance of the Intellectual Property Rights.

Which area of the Intellectual Property Rights does your organization feel should be

emphasized more? (Example: Patent, Trademarks, Industrial Design). Why?

Q.2 Does your organization have an Intellectual Property Strategy or Management

system to help in Decision Making towards the priority of your product/products or

services? If yes could you name a few?

Q.3 Is your organization aware of the current efforts put in by the Intellectual Property

Office through its training centre in promoting and enhancing the importance of

Intellectual Property in the Industry?

Q.4 Would your organization prefer to be visited by the Intellectual Property Office

specialist to give you advice and to improve your organization knowledge on Intellectual

property protection and importance? Which area of Intellectual Property does your

organization need to be updated on? (Example: Patent, Trademarks, Utility Models,

Industrial Design, Licensing)

Q.5 What is your most basic priority needs from the Intellectual Property Office

functions and duties, which will benefit your organization?

Q.6 Is the current application and processing time period in the Intellectual Property

Office is efficient and fulfills your expectations?

Q.7 Would you kindly suggest and recommend on how to improve the Intellectual

Property Office functions and duties based on your organization perspective.

36

“EXHIBIT 2.2(A)”

QUESTIONNAIRE QUESTIONNAIRE FOR THE INDUSTRY / SMI / SME / INTELLECTUAL

PROPERTY RIGHTS OWNER (IPR) / UNIVERSITIES

Purpose of this Questionnaire is to do a Research Study on New Issues Towards a

Harmonized Intellectual Property Office under the fellowship program on Research

program under WIPO- Japan Fund-In-Trust with cooperation of JPO, APIC-JIII. The

information given will be treated confidentially and only used for the purpose of this

research only. Please fill in the blank space and circle the appropriate answer.

Organization Name : Department name : Job Title : Years in present position : Instructions: Please circle your response to the items. Please rate your answers to the questions on a

scale of 1 to 5. 5 equals “strongly agree” and 1 equals to “strongly disagree”.

1 represents the lowest and most negative impression on the scale, 3 represents an

adequate impression, and 5 represents the highest and most positive impression.

Choose N/A if the items are not appropriate and not applicable to you. Your feedback is

sincerely appreciated. Thank you

N/A = Not Applicable 1 =Strongly Disagree 2 = Disagree 3 = Neither Agree / Nor Disagree 4 = Agree 5 = Strongly Agree

37

1. What would you expect or what are your expectation from the intellectual property office functions and duty in serving you better

1.1 To create a database for Patent Mining for research

towards a better knowledge on improving the existing

Technology or Scientific Information N/A 1 2 3 4 5

1.2 To have a database on Patent and IPR owners and

licensing availability form IPR Office N/A 1 2 3 4 5

1.3 To have more often dialogues sessions between IPR

Office and the Industry on solving their problems on

IPR issues N/A 1 2 3 4 5

1.4 To assist and consult regarding adding value on IPR

and how to do foreign filling N/A 1 2 3 4 5

1.5 To have a proactive awareness campaign targeted to

the specific industry on current global trends N/A 1 2 3 4 5

1.6 To have a better and faster registration period than

the existing time frame now N/A 1 2 3 4 5

1.7 To have a more effective standards on Decision

Making from the IPR Office regarding an

application filled and examined N/A 1 2 3 4 5

1.8 To have more knowledge base personal or

examiners in the IPR Office N/A 1 2 3 4 5

1.9 To have a consultant or advisory body for

preliminary advice on how to do proper filling

of application N/A 1 2 3 4 5

1.10To have a direct electronic up dating via

Information technology regarding the current

IP issues N/A 1 2 3 4 5

1.11To speed up the cases at appeal court at a shorter

period N/A 1 2 3 4 5

1.12To reduce the fees of filling an application N/A 1 2 3 4 5

38

1.13To be a business resource and reference center

through a proper data base information N/A 1 2 3 4 5

1.14 Is there any licensing body in your country,

that advise you on licensing know how N/A 1 2 3 4 5

1.15 Do your organization need more frequent visit

by the experts from IP office to enhance your

knowledge on IPR related matters N/A 1 2 3 4 5

1.16 Did the Patent Licensing Advisor fulfill your

organization needs in obtaining the knowledge

and know-how in Licensing matters N/A 1 2 3 4 5

1.17 Did the Patent Map Analysis overcome your

Patent Strategy objectives N/A 1 2 3 4 5

1.18 Did the Information Management Seminar

Training fulfill the problems face by your

organization N/A 1 2 3 4 5

1.19 Have the International Patent Licensing Seminar

assist your organization into understanding the

foreign markets needs and laws in IPR matters N/A 1 2 3 4 5

1.20 Did the examination support system help to solve

your organization problems towards applications

filed N/A 1 2 3 4 5

1.21 Have the Training Centre achieve its goals in

educating your organization on IPR importance N/A 1 2 3 4 5

1.22 What is your degree of acceptance towards the

programs or seminar been organized by the

training centre N/A 1 2 3 4 5

1.23 How will you evaluate the effectiveness of the

Digital Library promotional efforts to enhance

IPR through internet N/A 1 2 3 4 5

39

2. Relating Intellectual Property (IP) importance in your organization Please circle (O) your answer in the YES or NO column which is applicable to your

organization regarding Intellectual Property knowledge and know-how.

2.1 Do your organization have an Intellectual Property

Department YES NO

2.2 Do your organization have your own R&D Department YES NO

2.3 Do your organization have your own IP Management

Strategy YES NO

2.4 Do your organization outsource IP matters to the IP and

Patent Attorneys YES NO

2.5 DO the current waiting time for IP registration procedures

from the IP Office is too long YES NO

2.6 Do your organization give priority to the importance of

IP YES NO

2.7 Is your organization aware of the Governments’

promotion towards enhancing IP know-how and

knowledge YES NO

2.8 Is your organization aware regarding the Governments’

efforts to assist your type or organizations to obtain IP

registrations and grants YES NO

3. Please give suggestion and recommendation on how to improve the Intellectual

Property Office based on the Industry perspective ……………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………

40

4. What are the programs, that would you suggest will improve your knowledge and know-how of IPR that should also be included in the training centre programs.(Apart from the current programs and seminar being held by the training centre)

………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………. All information and answers given will be treated on a very confidential basis. The

answer given here is for the purpose of this research only and will not be used in any

other manner. I hereby thank you and your organization in participating in this survey

towards a better Harmonized Intellectual Property Office.

Thank you.

41

“EXHIBIT 2.3 (A)”

QUESTIONNAIRE FOR INTELLECTUAL PROPERTRY CORPORATION of MALAYSIA (MyIPO)

Purpose of this questionnaire is to do a research study on New Issues Towards a

Harmonized Intellectual Property Office under the fellowship program on Research

Program under WIPO-JAPAN Funds in-trust with cooperation of JPO, APIC-JIII. The

information given will be treated confidentially and only used for the purpose of this

research only. Please fill in the blank space and Circle the Appropriate Answer

Department Name : Unit : Trademark / Patent / Copyright / Industrial Design /

Layout design of Integrated Circuit / Geographical Indication /Human Resource/ International Affairs / Information technology

Job Title : Instructions: Please circle your response to the items. Rate your answers to the questions on a 1 to 5 scale.

1 equal to 'strongly disagree' and 5 equals to 'strongly agree'.

1 represents the lowest and most negative impression on the scale, 3 represents an adequate

impression and 5 represents the highest and most positive impression.

Choose N/A if the items is not appropriate or not applicable to you. Your feedback is sincerely

appreciated.

Thank you

N/A=Not Applicable 1= Strongly Disagree 2= Disagree 3= Neither Agree / Nor Disagree 4= Agree 5= Strongly Agree

42

1. HUMAN RESOURCE DEVELOPMENT 1.1 Training is needed before being engaged to the

current examiner post N/A 1 2 3 4 5

1.2. Examination on subject matter is important N/A 1 2 3 4 5

1.3 On the job training is very important N/A 1 2 3 4 5

1.4. Evaluation of knowledge on subject matter is important N/A 1 2 3 4 5

1.5. Overseas training is necessary for every examiner N/A 1 2 3 4 5

1.6. Overseas training should be a reward/incentive for

those examiner that have perform well N/A 1 2 3 4 5

1.7. Every examiners should be mobilized or change position

of work at least 2 to 3 years once N/A 1 2 3 4 5

1.8. Every examiner should go through an examination before

being promoted. N/A 1 2 3 4 5

1.9 Every examiner should be interviewed by higher

Authority based on knowledge before being promoted N/A 1 2 3 4 5

2. HOW TO SPEED UP PROCESSING AND GRANTING REGISTRATION

2.1 Should amend the Act / Legal aspect to shorten processing

stage and reduce the time of processing N/A 1 2 3 4 5

2.1 To give priority to local (national) applications N/A 1 2 3 4 5

2.2 To have a consultation and advising service for the

national applicants before filling their applications N/A 1 2 3 4 5

2.3 To employ more examiners N/A 1 2 3 4 5

2.4 To give rewards to examiners who produce more

productivity in processing the applications N/A 1 2 3 4 5

2.5 To have the same examiner to process the application

file from first to the granting of certificate stage N/A 1 2 3 4 5

2.6 To have examiner to do examination on a applications base

on different stage by different examiners (specialized) N/A 1 2 3 4 5

2.7 To set a time limit or period on each stage of processing N/A 1 2 3 4 5

2.8 To set targets of processing for each examiner (quota) N/A 1 2 3 4 5

43

3. QUALITY / STANDARD ON DECISION MAKING

3.1 Examination should be done by examiner himself N/A 1 2 3 4 5

3.2 Decision will be done by committee or a board at the

final level before approval or refusal is given N/A 1 2 3 4 5

3.3 Should have a quality control stage at the publication

unit before it been published N/A 1 2 3 4 5

3.4 Decision made at every level should be checked at

the next stage or level of examination N/A 1 2 3 4 5

3.5 Decision should be based on a standard procedure

manual or reference N/A 1 2 3 4 5

3.6 Should employ examiners with only suitable

qualifications with their job functions N/A 1 2 3 4 5

3.7 Should set a precedent for each type of case handled N/A 1 2 3 4 5

4. HOW TO IMPROVE THE INTELLECTUAL PROPERTY OFFICE

4.1 Using Information Technology as a filling tool N/A 1 2 3 4 5

4.2 By being a search portal for industry and IP users N/A 1 2 3 4 5

4.3 By creating a search for information for the Industry

and other IP users N/A 1 2 3 4 5

4.4 By being a centre of assistance for further research

and development activities N/A 1 2 3 4 5

4.5 By being a more proactive training centre for current

development in technology and scientific information N/A 1 2 3 4 5

4.6 Having an awareness campaign via information

technology and electronic media N/A 1 2 3 4 5

4.7 By being more efficient and effective in faster filling

and registration process N/A 1 2 3 4 5

4.8 By setting up a special unit for advisory and

consultation on filling and know-how N/A 1 2 3 4 5

44

5. What is your suggestion and recommendation towards a better and improved Intellectual Property Office? ……………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………… 6. How and what would you suggest to have a speedier result orientated and also to enhance more fillings from the Industry and IP users ……………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………… 7. What would you recommend towards a better knowledge and in terms of decision making to improve the function of Intellectual Property Office? …………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………..………………………………………………………………………………………………………………………………………………………………………………………………………………………………… I hereby would like to thank you for your cooperation in answering the questions and for

your contribution towards a better and more advanced Intellectual Property office. Thank

you for your contribution and suggestion inputs in doing this survey. All information

given will be treated confidentially and used only for the purpose of doing this research

only.

Thank you

45

“EX2HIBIT 2.4 (A)” INTERVIEW QUESTIONS FOR JPO

(Mr. Kuljit Singh)

1. Trademark Division

1.1 Madrid Protocol and Agreement – advantages for industry,

SME’s and R&D Organization

1.2 Single Class application to Multiple Class Application –

Advantages

2. NCIPI (Training Centre)

2.1 What are their targets in achieving regarding their programs that are been

developed for the internal IPO’s examiners?

2.2 What are their targets in achieving for the programs been developed for the

the industry, SMEs and R&D?

2.3 What are the other programs that you feel should be implemented to

further enhance the knowledge and standards of decision making of the

examiners?

2.4 Have the training center design training programs for the Industry, SMEs,

IP attorneys and individual IP users on commercialization aspects of IP

through Licensing and Brand Positioning?

2.5 Have the training center coordinated any training programs with the

private sector to enhance the IP knowledge and know-how and its

importance to the business point of view?

2.6 How does the Industrial Property Digital Library (IPDL) contribute to the

effectiveness of IPR management in the private sector?

46

3. International Affairs Division

3.1 The vital role played by International Affairs Division

3.2 What are the steps taken by this division towards taking the

IP office to a better level in achieving the global trends and changes in the

world?

47

CHAPTER 3: STATISTIC ANALYSIS METHOD 3.1 MALAYSIA Chapter Two have discussed on matter on how the analysis tools were to be used by the

author. In chapter three the author has received feedback from the Industry, SMEs and

Universities (the respondents) responding to the questionnaires given. The total number

of questionnaires that were sent out to the Malaysian Big Companies, SMEs and

Universities were 100 questionnaires. The breaks down of the questionnaires sent hereby

are Big Companies total of 10 questionnaires were sent. SMEs total of 79 questionnaires

were sent. Furthermore, for the Universities and R&D Organization a total of 11

questionnaires were sent. The total feedbacks received from the Malaysian Big

Companies were 8 companies, SMEs 34, Universities 5 and R&D Organization 1. Total

was 48 which comprise of 48 % of the total questionnaires have been responded. The

breakdown according to the Big Companies feedback is 80%, SMEs 34%, Universities

50% and R&D 50%. The calculation is based on the total number of questionnaires sent

to the Malaysian business, enterprises and universities that are involve in using

Intellectual Property rights as a tool in their business activities.

In this research, the author will do a detail analytical data study base on questions that

were specified in his questionnaires to explain his findings regarding the level of

acceptance by the Big Companies, SMEs, Universities, R&D and TLO’s from Malaysia

and also Japan. The author has separated the findings into Tables and Charts according to

his field of research to verify and also to establish the actual problems that need to be

solved by IPOs in order to improve its’ duties and functions. Through this the author will

identify the level of acceptance and the area which IPOs should increase their function as

well their duties.

48

TABLE 3.1: RESPONSE FROM MALAYSIAN BIG COMPANIES; SMEs; UNIVERSITIES AND RESEARCH AND

DEVELOPMENT ORGANIZATION.

(QUESTION 1.1 TO QUESTION 1.23 AS SHOWN IN EXHIBIT 2.2 (A)) Q BIG COMPANY SME UNI / R&D N/A 1 2 3 4 5 N/A 1 2 3 4 5 N/A 1 2 3 4 5 Q1.1 1 0 0 2 1 4 2 1 0 7 17 7 1 0 0 0 0 5 Q1.2 0 0 0 0 1 7 0 1 0 1 16 16 0 0 0 0 1 5 Q1.3 0 0 0 0 6 2 0 1 0 5 13 15 0 0 0 1 2 3 Q1.4 1 0 0 0 3 4 0 1 0 1 13 19 0 0 0 0 5 1 Q1.5 0 0 0 0 3 5 0 0 0 3 19 12 0 0 0 1 2 3 Q1.6 0 0 0 0 1 7 0 1 0 0 2 31 0 0 0 0 1 5 Q1.7 0 0 0 0 2 6 0 1 0 0 9 24 0 0 0 0 2 4 Q1.8 0 1 0 0 4 3 0 1 0 3 12 18 0 0 0 1 4 1 Q1.9 0 0 0 0 1 7 0 1 0 0 11 22 1 0 0 0 1 4 Q1.10 0 0 0 0 2 6 1 1 0 1 14 17 0 0 0 0 3 3 Q1.11 0 1 0 2 1 4 0 1 1 6 14 12 0 0 0 1 3 2 Q1.12 0 0 0 1 3 4 0 1 0 7 16 10 1 0 0 0 0 5 Q1.13 0 0 0 0 2 6 0 4 1 3 13 13 0 0 0 0 1 5 Q1.14 5 0 1 1 0 1 18 2 1 8 5 0 5 1 0 0 0 0 Q1.15 1 0 1 3 1 2 5 2 2 11 13 1 0 0 0 1 2 3 Q1.16 6 0 0 2 0 0 17 2 3 8 4 0 4 1 0 1 0 0 Q1.17 6 1 0 1 0 0 24 1 0 8 1 0 4 1 0 0 0 1 Q1.18 6 1 0 1 0 0 23 1 1 7 1 1 2 2 2 0 0 0 Q1.19 5 2 0 1 0 0 24 1 0 5 4 0 3 2 1 0 0 0 Q1.20 6 1 0 1 0 0 27 1 1 3 2 0 3 2 1 0 0 0 Q1.21 1 1 2 2 1 1 20 1 5 6 1 1 0 1 4 0 1 0 Q1.22 1 1 1 3 1 1 16 1 1 13 1 2 0 0 1 2 2 1 Q1.23 5 0 0 1 0 2 22 0 0 6 4 2 3 0 0 0 1 2 TOTAL 44 9 5 21 33 72 199 27 16 112 205 223 27 10 9 8 31 53 % 24 5 3 11 18 39 25 4 2 14 26 29 20 7 6 5 22 39

From table 3.1 it clearly shows that most of the respondents want MyIPO to create a

database for Patent Mining for research towards a better knowledge as assistance for

them

to improve their existing technology and scientific information. At this moment MyIPO

does not emphasize this to the users. Further to my Q1.2, the respondents again have

voted

49

very high as they need this service to be implemented by MyIPO in order for them to

access

and obtain information on licensing availability, this will encourage their efforts to

implement and utilize IP more efficiently and effectively.

Q1.3 the respondents shows that the present situation and dialogue between MyIPO,

MDTCA which is being held annually is not impressive enough for them to view their

problems that are related to IP, cause IP trends and issues changes very fast. The

respondents want more frequent dialogues to present their views and problems so

necessary steps or solutions can be taken from time to time by MyIPO to resolve

according to the current trend and development in the IP environment.

Q1.4 pertaining for MyIPO to create a division to assist and consult the IPR users on

adding value on IPR and also to assist them in foreign filling, the respondents need this

service to be available, this is shown by the respondents response by agreeing and also

strongly agreeing for this factor to be taken into consideration by MyIPO.

Q1.5 have indicated that the respondents have not obtain the full benefit with the current

awareness campaign, cause they need a macro level of IPR issues to be added into the

awareness campaign. This will assist them to maximize and enhance their knowledge and

know how pertaining to the importance of their IP assets and how to exploit it to

penetrate the global business markets.

Q1.6 is very critical for the respondents pertaining for them to secure their IPR and for

them to exploit it, this is because the life cycle of products and technology changes

rapidly and they need a faster registration system to support their quest to penetrate

global markets. The respondents have opted to have a better effective and efficient

registration system, which will underpin their IP rights and also encourage

commercialization.

Q1.7 responds shows that the industry is seeking for a better standard in the decision

making of examiners in MyIPO. This is because the decision given from one applicant to

another applicant does not follow the same standard decision. This is confusing the

50

respondents regarding what are the standards or procedures used by the MyIPO

examiners.

Q1.8 Majority of the respondents would like MyIPO to employ or train the examiners

towards a better knowledge in terms of IP knowledge. This will benefit MyIPO as well as

the industry when they want to seek any advice pertaining to IP matters.

Q1.9 Majority of the respondents would like MyIPO to set up an advisory division

relating to rendering advice to them. This is to facilitate the respondents to have a better

knowledge and to adopt better chances of obtaining an IP right. This will also shorten the

processing period due to compliance by the applicants.

Q1.10 Majority of the respondents wants MyIPO to increase its function by facilitating

and enhancing their knowledge through communications efforts via IT. This will enrich

and create a more knowledgeable IP society, which in return that will contribute to a

better understanding of the trends and changes in IP aspects through out world.

Q1.11 the respondents also prefer that the cases in High court in Malaysia are treated as

important as other cases. This is because at current situation the cases in the Court might

take a long time to be given a decision. This is considering being negative affect to the

foreign investors in IP to channel their right to Malaysian IP users to be commercialized.

Q1.12 the respondents would like MyIPO to consider seriously to implement an

application system which will benefit the users of IP registration, that are filling more

than one application at any one time. The fees structure at this current moment do not

encourage the respondents to file in many applications, because the cost is consider high

for SMEs ands also individual.

Q1.13 shows that the respondents would like MyIPO to be more than just a mere

registration office only. They would like MyIPO to play a more pro active role by being a

referral center of business and strategy management. This can be done by providing more

training based on business modals and Patent strategies to the industry.

Q1.15 from the responds received, shows that MyIPO do not have this type of services at

the moment. It is a need of the industry in this 21st century to create knowledgeable IP

51

users and be a competitive as other players in the global market. MyIPO must consider of

this unit to be set up in terms of creating a more competitive IP society.

Q1.14, Q1.15 to Q1.20 shows that Malaysia have not yet set up facilities for the industry

to gain more knowledge and help to enrich their ability to use IP rights and using IP as a

tool to grow and create a better products and technology. The industry is lack in the

knowledge on how to take full advantages of their IP rights and how to create a value or

asset from their rights. IP is not only merely a form of registration, but also a bargaining

tool to penetrate other markets as well and create a form of monopoly for the owners.

In term of the on going training programs that are been conducted by MyIPO through its’

training center (Intellectual Property Training Center)which is indicated by questions

Q1.21 and Q1.22, have shown that it has not achieve its goal fully , that is to benefit the

IPR users and enhance their IP knowledge and know how. This is shown through the

response given by the respondents, whereby their answer to this questions are all below

the Numeral 3 which is strongly disagree or disagree.

TABLE 3.2: RESPONSE FOR QUESTION 2.1 TO QUESTION 2.2 AS SHOWN IN EXHIBIT 2.2 (A). MALAYSIAN BIG

COMPANIES; SMEs; UNIVERSITIES AND R&D. QUESTION BIG

COMPANY

SME UNI/R&D

YES NO YES NO YES NO Q2.1 5 3 7 27 5 1 Q2.2 8 0 16 18 6 0 Q2.3 6 2 17 17 4 2 Q2.4 8 0 25 9 5 1 Q2.5 7 1 34 0 6 0 Q2.6 7 1 32 2 3 3 Q2.7 8 0 17 17 5 1 Q2.8 1 7 8 26 3 3 TOTAL 50 14 156 116 37 11 % 78.1 21.9 57.4 42.6 77.1 22.9 As shown in Table 3.2 which refer to section 2 (two), issues relating to the Intellectual

property importance in the respondents companies, most of the SMEs do not have their

own in house IP department, this is not the same for big companies, whereby majority do

have their own IP department and also R&D department. The importance of IP within the

52

respondents companies is still low compare to those of the develop countries. This is also

a factor that have contributed to a slow increase of technological development and also

products that could penetrate the global markets. This is also factors that have contributed

towards a lower filling of applications as well. Here MyIPO have to create an awareness

campaign on the importance of having an in-house IP department and also R&D

department in the industry or stake holders own organizations. This in return will

encourage the development of new technology and also creating better products that will

be at par with the competitor’s products and technology. Creating better opportunities in

transfer of technology and adding value to the IP assets in these particular organizations.

CHART 3.3: OVERALL RESULTS FROM MALAYSIA BASED ON THEIR ANSWERS ACCORDING TO SCALE AND

BASED ON PERCENTAGE OF FEEDBACK RECEIVED.

0

20

40

60

80

BIG COMPANYSMEUNI/R&D

BIG COMPANY 24 5 3 11 18 39 78 22SME 25 4 2 14 26 29 57 43UNI/R&D 20 7 6 5 22 39 77 23

N/A 1 2 3 4 5 YE NO

Chart 3.3 have shown an unbalance ratio of whereby the respondents are still not aware

of the opportunity and advantages of IP rights that can largely contribute to their profit

accounts through trade. Furthermore, MyIPO have to improve its current efforts and

awareness campaigns as well as training to encourage knowledgeable IP base society.

From here the author have establish the advantages and disadvantages of the current IP

practice in Malaysia and will further analyze this factors in Chapter Four.

53

3.2 JAPAN The author has sent 82 questionnaires to Japanese Big Companies, Smes and Universities.

The author received feedback from 45 respondents. The outcome of his feedback can be

viewed as below.

TABLE 3.4: RESPONSE FROM JAPAN BIG COMPANIES; SMEs; UNIVERSITIES AND TLO’S

(QUESTION 1.1 TO QUESTION 1.24 AS SHOWN IN EXHIBIT 2.2 (A)

QUES. BIG COMPANY SME UNI/TLO

N/A 1 2 3 4 5 N/A 1 2 3 4 5 N/A 1 2 3 4 5

Q1.1 0 0 0 1 8 3 0 0 0 3 13 10 0 0 0 1 2 5 Q1.2 0 0 2 7 2 1 0 0 1 6 14 5 0 0 0 2 1 5 Q1.3 0 0 1 0 9 2 0 0 1 5 19 1 0 0 0 0 3 5 Q1.4 0 0 1 2 9 0 0 0 0 5 13 8 0 0 0 0 4 4 Q1.5 0 0 1 4 7 0 0 0 0 4 13 9 1 0 0 0 3 4 Q1.6 0 0 1 4 7 0 1 0 0 9 11 5 0 0 0 0 4 4 Q1.7 0 0 2 2 4 4 0 0 1 3 8 14 0 1 0 1 3 3 Q1.8 0 0 2 1 9 0 1 0 0 2 13 10 0 0 0 2 3 3

Q1.9

0 0 0 1 8 3 1 0 1 3 12 9 0 0 0 2 4 2

Q1.10 0 0 1 4 7 0 1 0 0 6 16 3 0 0 0 2 4 2 Q1.11 0 1 2 6 3 0 1 0 0 9 12 4 0 0 0 4 2 2 Q1.12 0 0 1 2 7 2 1 0 0 5 12 8 0 1 0 1 1 5 Q1.13 0 1 1 6 3 1 0 0 3 5 12 6 0 0 0 5 2 1 Q1.14 0 0 1 5 5 1 1 1 0 4 16 4 0 0 1 3 3 1 Q1.15 0 1 3 4 4 0 1 0 0 8 14 3 0 0 0 1 4 3 Q1.16 0 1 3 7 1 0 2 0 1 16 7 0 0 0 2 2 3 1 Q1.17 8 0 0 4 0 0 15 0 0 9 1 1 0 0 1 3 3 1 Q1.18 2 0 4 5 1 0 8 0 3 14 1 0 0 0 1 7 0 0 Q1.19 2 0 1 4 5 0 4 0 1 7 11 3 0 0 0 4 2 2 Q1.20 2 0 0 7 3 0 8 0 0 8 9 1 0 0 1 4 1 2 Q1.21 3 0 2 5 2 0 8 0 1 11 6 0 0 0 0 4 2 2 Q1.22 1 0 0 4 6 1 3 0 4 6 10 3 0 0 0 2 6 0 Q1.23 - - - - - - - - - - - - - - - - - - Q1.24 0 0 0 1 6 5 0 0 0 1 11 14 0 0 0 0 2 6 TOTAL 18 4 29 86 116 23 56 1 17 149 254 121 1 2 6 50 62 63

% 7 1 11 31 42 8 9 0.2 2.8 25 43 20 0.5 1.1 3.4 27 34 34

Table 3.4 shows that the Japanese big companies, SMEs and also Universities with

TLO’s (the respondents) have a similar situations and expectations relating their needs

54

for better duties and functions played by JPO. There is a different opinion and needs from

the big companies compare to the needs and expectation from the SMEs and Universities

on certain area and issues or functions that need to be played by JPO. Their response to

Q1.1, from Q1.3 to Q1.10 is more or less the same .They strongly agree or only agree for

JPO to further enhance its current role and functions for a better contribution of

knowledge and know how to the IP users. Further to their response to Q1.11, bog

companies seems to be satisfied with the current time frame, but the SMEs and

Universities are still pushing for a faster time frame than what is been done at present

situation.

Q1.13 to Q1.16, the big companies have a different preferential, this must be because

judging from their long existing and experience. Most of these big companies have

already have their own data base and information’s on IP related matters to assist them to

make further decisions on commercialization and also to create awareness on their

knowledge of competitors products and technology. They do not rely a lot on JPO’s

assistance pertaining to this matter critically. Whereby the SMEs and Universities have

just newly establish their IP information center within their own organization, still depend

on JPO assistance pertaining to gaining information on IP.

Q1.17 the respondents towards the Patent Map analysis to overcome their Patent Strategy

objectives have still not been fulfill. They need further assistance and also training base

on these matters from JPO and NCIPI to enhance their knowledge and know how. This

especially been shown by the feedback obtain from the big companies and also SMEs.

This is differently been viewed by the Universities, because they have rated the effort by

NCIPI and JPO is still within their acceptable level.

Q1.18 to Q1.22 and Q1.24 also shows a different feedback from big companies compare

to the feedback given by SMEs and also Universities. The big companies have urge for

more training pertaining to Information Management Seminar and Workshops,

International Patent Licensing seminar, and to further enhance the examination support

system to faster the time frame for examinations by JPO examiners and also training by

NCIPI relating to matters concerning big companies. Whereby, the SMEs and also

55

Universities are satisfied with the current practice and training that has been provided to

them by JPO and NCIPI.

For Q1.23, it is an open question to know how many times the respondents have attended

the training courses that have been conducted by NCIPI and JPO. The answer to this

question is more than 4 times a year by all the respondents.

TABLE 3.5: RESPONSE FOR QUESTION 2.1 TO QUESTION 2.2 AS SHOWN IN EXHIBIT 2.2 (A). JAPAN BIG

COMPANIES; SMEs; UNIVERSITIES AND TLO’S QUESTION BIG COMPANY SME UNI/TLO YES NO YES NO YES NO Q2.1 11 1 19 7 7 1 Q2.2 12 0 25 1 5 3 Q2.3 12 0 15 11 8 0 Q2.4 12 0 24 2 8 0 Q2.5 10 2 23 3 6 2 Q2.6 12 0 23 3 8 0 Q2.7 11 1 20 6 7 1 Q2.8 9 3 22 4 8 0 TOTAL 89 7 171 37 57 7 % 92.7 7.3 82.2 17.8 89.1 10.9 From Table 3.5, the author manages to establish that the degree of IP importance in

Japanese industry is high and very important to the industry. This is shown by the

feedback he received, whereby have establish his point on this matter. More than 85% of

the respondents have reply positively to the establishment of the importance of IP

departments within their organization as underpinning support that contributed to their

success. The author also mange to obtain feedback that, even though JPO have always

given priority to reduce the time frame to process an application filed (as in Q2.5), but the

respondents needs further improvement in this matter. There is more than 90% of the

respondents have pointed out that the current waiting time for IP registration procedures

from JPO is still considered too long.

56

CHART 3.6: OVERALL RESULTS FROM JAPAN COMPANIES, SMES AND UNI/TLO’S BASED ON THEIR ANSWERS

ACCORDING TO SCALE AND BASED ON PERCENTAGE OF FEEDBACK RECEIVED.

0

50

100

BIG COMPANYSMEUNI/TLO

BIG COMPANY 7 1 11 31 42 8 93 7.3SME 9 0.2 2.8 25 43 20 82 18UNI/TLO 0.5 1.1 3.4 27 34 34 89 11

N/A 1 2 3 4 5 YES NO

Chart 3.6 have shown a significant finding that the author is impress with the knowledge

and degree of important of IP base on the feedback. The chart itself shows that the IP

users in Japan are well aware of the importance of IP to underpin their business and

developing new technology. This is shown that majority of Japan industry have their own

in house IP department and also R&D department, which work as a team to establish a

better improved product or technology to compete in the present market situation. The

protection of their IP rights are been greatly implemented. This is shown by their efforts

to utilize the government promotion towards enhancing IP know how and also knowledge.

This is viewed by Q1.23 (only for Japanese firms only; can be vied in the Japanese

translated questionnaires), which is to know how many times these respondents have

participated in training programs on IP awareness, almost all of them have answered

more than 4 times in a year.

This shows that JPO have a great role to play in order to increase and enhance better

products production and also emerging of better cutting edge technology in Japan

industry. It is important to enhance further its role and function as to support these

improvements and to enhance a better competitive IP base society.

57

3.3 INTELLECTUAL PROPERTY CORPORATION of MALAYSIA (MyIPO) Base on these feedbacks received pertaining to his questionnaires (shown as “EXHIBIT

2.2 (A)” in Chapter 2) from the Industry, SMEs and Universities; the author has created a

set of questionnaires for the Malaysia IP office examiners. The author have separated this

questionnaires into four aspects that is been shown as “EXHIBIT 2.3 (A)” in Chapter 2.

The author have divided his questionnaires into Human resource development; How to

speed up processing and granting registration; Quality/Standard on decision making; and

How to improve the IPO itself. This is to establish the view of the MyIPO examiners and

staff from all the division and also to get their view pertaining to current situation on IP

practice in MyIPO.

TABLE 3.7: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES SHOWN AS EXHIBIT 2.3 (A).PART ONE: HUMAN RESOURCE DEVELOPMENT QUESTION PART ONE

RESPONSE BY MyIPO EXAMINERS

N/A 1 2 3 4 5 Q1.1 1 0 1 0 11 37 Q1.2 0 0 0 1 21 28 Q1.3 0 0 0 1 12 37 Q1.4 0 0 0 4 26 20 Q1.5 0 1 2 9 19 19 Q1.6 0 1 5 8 18 18 Q1.7 0 4 6 19 16 5 Q1.8 0 3 2 20 20 5 Q1.9 0 3 4 17 23 3 TOTAL 1 12 20 79 166 172 % 0.2 3 4 18 36.8 38 CHART 3.8: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES IN TERMS OF PERCENTAGE (%). PART ONE: HUMAN RESOURCE

DEVELOPMENT

QUESTION PART 1

0%3% 4%18%

37%

38% N/A

1

2

3

4

5

58

Referring to Table 3.7 and Chart 3.8 shows that the internal examiners, agrees with most

of the questions that were been asked. As for question 1.1 to 1.5, that training is needed

before being engaged to the relevant examiner post and also knowledge on subject matter

is important for the examiners to perform their duties. The examiners also majority are

agreeable that there should be more intensive training by locating them to various over

seas IP office to enhance their knowledge and ability to perform better in their

examinations. Regarding the aspects of acquiring knowledge and also sitting for

examinations pertaining to the subject matter on IP as well is been strongly agreeable.

This is to ensure that a standard and level of decision making can be maintain within the

MyIPO examiners and will reduce the level of unsatisfactory form the IPR users. As a

whole the aspects of developing a competent human resource of IP knowledge base

examiners are vital for a better function and performance by the IPO to the IP users. It

could retain the standard, up grade the knowledge and at the same time be more effective

and efficient in its function and duties.

Through his question 1.7, the author receives different opinions from the internal

examiners. Whether every examiners should be mobilized or change of position of work

at least every 2to 3 years. This is because if this is been implemented, than there will not

be a continuity on specialty that is much needed to perform the examination task more

efficiently and effectively.

Referring to promotional aspects in upgrading the post of the examiners, they prefer to

have an open interview by higher authority. This is to establish a better well deserve and

knowledge base personnel to be appointed for a more higher and challenging position, to

play an important role in the IP and to establish a better IP office duties and functions.

59

TABLE 3.9: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES SHOWN AS EXHIBIT 2.3 (A).PART TWO: HOW TO SPEED UP PROCESSING AND

GRANTING REGISTRATION QUESTION

PART TWO

RESPONSE BY MyIPO EXAMINERS

N/A 1 2 3 4 5 Q2.1 1 3 0 11 26 9 Q2.2 1 2 4 12 19 12 Q2.3 1 0 1 7 22 19 Q2.4 0 3 4 16 18 9 Q2.5 0 0 2 8 22 18 Q2.6 0 2 7 12 12 17 Q2.7 0 1 6 9 16 18 Q2.8 0 2 5 7 31 5 Q2.9 0 1 0 2 35 12 TOTAL 3 14 29 84 201 119 % 0.6 3 6.4 19 45 26 CHART 3.10: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES IN TERMS OF PERCENTAGE (%). PART TWO: HOW TO SPEED UP PROCESSING

AND GRANTING REGISTRATION

QUESTION PART 2

1%3% 6%

19%

45%

26% N/A12345

60

Moving to the second part of his fact finding research to create a better and harmonized

IP office, the author have inquire the opinion of the internal examiners on how to speed

up processing and granting registration. This is a vital need and expectation of the

industry, SMEs and University from MyIPO. This is shown through Table 3.9 and Chart

3.10. Majority of the respondents would like MyIPO to amend the present Act, laws and

regulations to better and updated following the changes in the current situation to

underpin the trade activities and also to further facilitate the transfer or technology

activities. This is very vital aspect that will help the industries to have a better situation

and support through a better IP Acts and Laws as well as regulations.

The examiners also would like MyIPO to play an important role in order to assist the

industry especially to encourage IP activities in the local or national sector to grow by

having special services that will support the development of IP among the Malaysian IP

owners.

In order to speed up registration, the examiners polls shows that MyIPO should consider

to employ more examiners in terms to shorten the processing period to examine an

application filed. MyIPO should also adopt a special award or incentive system to

encourage in term of processing applications. This should been given a serious taught by

MyIPO if there is a need to increase the quality and quantity on processing on a higher

scale. The examiners do not agree nor disagree, with the suggestion of to having

examiner to do examination on an application base on different stage by different

examiners (specialized). On the other hand, there are some examiners would like this

practice to be continued in order to have a balance or to avoid any special preferences by

an individual examiner. They support the suggestion to have a specialized examination

stages by different examiners. This will in order maintain the quality of examinations that

are being done. The examiners would like the management to set a quota or target and

time frame to complete examination of each file. This will than have the examiners

working harder to achieve these targets within the time frame. This will encourage and

create seriousness in working environment.

61

TABLE 3.11: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES SHOWN AS EXHIBIT 2.3 (A).PART THREE: QUALITY / STANDARD ON DECISION

MAKING QUESTION

PART THREE

RESPONSE BY MyIPO EXAMINERS

N/A 1 2 3 4 5 Q3.1 0 1 1 6 21 21 Q3.2 1 3 6 10 23 7 Q3.3 1 1 0 8 25 15 Q3.4 0 2 7 20 17 4 Q3.5 0 0 0 2 31 17 Q3.6 0 0 2 9 26 13 Q3.7 0 0 0 5 35 10 TOTAL 2 7 16 60 178 87 % 0.4 2 4.6 17 51 25 As for part three (3) pertaining to Quality or Standard on Decision making as shown in

Table 3.11 the examiners hereby agrees with the questions that the author have asked.

This is regarding the examiners should do the examinations of the applications by

themselves, should have a quality control at the publication stage for the quality and to

secure a standard in decision making. Thereby MyIPO should equip very examiners with

a set of standard procedures or reference; set of precedent on decision made for each type

of case that is filed, field of application filed for and also should employ examiners with

only suitable qualifications with their job functions. Therefore, the examiners would like

a better situation of setting up standards and also quality management system, which will

underpin the decision making that, is acceptable by the IP users or applicants.

62

CHART 3.12: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES IN TERMS OF PERCENTAGE (%). PART THREE: QUALITY / STANDARD ON

DECISION MAKING Chart 3.12 shows or have indicated that majority of the examiners would still prefer for

further improvement to be done and updated in MyIPO management and also regarding

the procedures and setting a standard of quality control to underpin the decision making.

This practice should be implemented on an urgent basis to enable MyIPO to have a better

duties and functions to support the growth of Malaysian economy through IP.

TABLE 3.13: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES SHOWN AS EXHIBIT 2.3 (A).PART FOUR: HOW TO IMPROVE THE INTELLECTUAL

PROPERTY OFFICE

QUESTION

PART FOUR

RESPONSE BY MyIPO EXAMINERS

N/A 1 2 3 4 5 Q4.1 0 0 0 0 27 23 Q4.2 0 0 1 6 23 20 Q4.3 0 0 2 3 25 20 Q4.4 0 0 1 7 25 17 Q4.5 0 0 1 1 26 22 Q4.6 0 0 0 1 25 24 Q4.7 0 1 0 2 21 26 Q4.8 0 2 0 5 25 18 TOTAL 0 3 5 25 197 170 % 0 0.75 1.25 6.25 49.25 42.5

QUESTION PART 3

0%2% 5%17%

51%

25% N/A12345

63

CHART 3.14: FEEDBACK RECEIVED FROM INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO)

BASED ON QUESTIONNAIRES IN TERMS OF PERCENTAGE (%). PART FOUR: HOW TO IMPROVE THE

INTELLECTUAL PROPERTY OFFICE

Table 3.13 and Chart 3.14 is regarding what are the view or percentage of the examiners

in MyIPO towards improving of the Malaysia Intellectual Office. This refers to the

questions that were asked in Part Four (4) in the author’s questionnaire. As we can see in

the table and also the chart majority of the examiners do agree with the degree of choices

in the range of 4 and 5. The questions in Part Four have answered the wants of the

examiners in MyIPO to see further changes to be made to the present or current practice

in order to be a more harmonized office. MYIPO should have more training for the

internal examiners as well the external IP society and also establish a good dissemination

IP information system for the benefit of its stake holders. This will in return, encourage a

better role played by MyIPO to increase the level of understanding internally as well

externally.

From the analysis of these issues the author have establish the wants and also the needs

from the internal staff of MyIPO and also the needs that have not been implemented. The

author has also understand what are the needs by IP users such as Companies, R&D

organizations, Universities, SMEs that still have to be establish. This will be viewed by

the author in Chapter Four (4) in Results. Here the author will use the SWOT Analysis

method to analyze the strength, weakness, opportunity and treat. Which the author will

QUESTION PART 4

0%1%1% 6%

49%

43%

N/A

1

2

3

45

64

categorize all the needs and also the current practice by MyIPO in order to resolve the

current situation for MyIPO to become a better and harmonized IP office.

65

CHAPTER 4: RESULTS

Chapter 2 and chapter3 have established the authors’ main question on the research

matter. Hereby, in Chapter 4 the author will further analyze the actual problems that

emerge through SWOT analysis strategy. This method is use to provide information that

is gathered which is helpful in matching the organization’s resources and capabilities to

the competitive environment in which it operates. The author will divide the issues into

two factors that is internal factors which are within the organization control and external

factors which are consider as outside factors that influence the duties and functions of the

organization. Normally the internal factors are considered the Strength (S) and Weakness

(W), meanwhile the external factors are known as Opportunities (O) and Threats (T). To

define these terms further, the author would like to explain the terminology in each

category. Strength can be viewed as the strengths within the organization and its

resources and capabilities than can be used as a basis for developing Competitive

Advantages. Whereby, Weakness is considered as any absence of certain strength within

the organizations duties and functions. Meanwhile, referring to external factors

Opportunities can be considered that issues that reveal certain new opportunities for

better profit and growth. As for Threats is consider as any changes in the external

environmental may present as a source of threat and need to be addressed before it

become impossible to be solved.

An organization should not necessarily pursue to the more lucrative opportunity, but

should rather choose to create a competitive advantage by synergizing the organization’s

strengths and upcoming opportunities, as well try to overcome its weakness and also seek

solutions for the threats to create a better competitive advantage towards equipping itself

for a better role and functions towards fulfilling its clients needs.

To illustrate this point, the author has created a simple diagram on how to deal with the

issues pertaining to the duties and functions of the IPOs..

66

Diagram 4.1 SWOT ANALYSIS METHOD1

The author will arrange the data he has obtained through his questionnaires pertaining the

open questions and also through interview questions to the IPOs and also the Industry,

SMEs and Universities into the designated sections dividing the to internal and external

factors. The author expects to create an actual scenario of the current duties and functions

of the IPOs and also the needs and expectations from the Industry, SMEs and

Universities.

Firstly as for internal analysis, pertaining to the Strengths and Weakness of the IPOs, the

author will be looking into MyIPO and followed by JPO. The second stage is where the

author will be identifying through external analysis regarding Opportunities and Threats

raised by the Malaysian and Japanese Industries, SMEs and Universities.

The author here by would like to state the current strengths that can be seen in MyIPO

which will underpin to his further research activities in Chapter 5 (Considerations).

ENVIRONMENTAL SCAN

INTERNAL ANALYSIS (WITHIN IPOs)

EXTERNAL ANALYSIS (INDUSTRY, SMEs, UNIVERSITY)

STRENGTHS WEAKNESS OPPORTUNITIES THREATS

SWOT MATRIX

67

4.1 MyIPO (MALAYSIA)

Strengths

The government recognition in the importance of IP which is administered under

Intellectual Property Corporation of Malaysia (MyIPO) which is under the jurisdiction of

the Ministry of Domestic Trade and Consumer Affairs (MDTCA). MyIPO have outlined

its primary responsibilities that are to establish an efficient body for prosecution and

maintenance of Intellectual Property rights in Malaysia, to play a large role in IP

development internationally, to play a wider role in the local development of IP and to

create a large base of IP professionals and experts in the country.

In their implementations to achieve these primary responsibilities, MyIPO have amended

better Acts and Regulations related to IP to facilitate the IPR users. For normal or clear

cut cases, the processing time for Trademark is 15 months; Patents is 4.5 years and

Industrial Design 8 months. MyIPO have also have revised its client charter for patents,

trademark and also industrial design. The author has seen a good future change in the

client charter to show the commitment of MyIPO to improve its duties and services to the

IPR users. Pertaining to speed up the applications MyIPOs’ patent division have promise

to issues Certificate of Filing within 3 days from the date of receive of applications. Also,

to issues the Substantive examination report within 4 years from the date of filing of

application. Furthermore, to issue the Certificate of Patent and Utility Innovation within

14 days from the date of receive of payments. Patent division also have pledge to issue

Notice of Renewal for Patent and Utility Innovation 5 days from the date of receive of

payments. As for Trademark Division it have promise to do Search and Examination

report as to the registrability of the mark will be issued after 7 months from the date of

application. Registrar’s certificate will be issued within 14 days from the date of

applications and Renewal Certificate will be issued within 14 days from the date of

application receive. As for Industrial Design Division, it promises to issue Certificate of

industrial design within 8 months from the date of filing of complete application.

Furthermore, as for Certificate of Extension period of registration of Industrial Design,

will be issued in 14 days after the date of application receive. As for Issuing of notice of

change of name or address or assignment on transmission it will be done in 7 days from

68

the date of application receive and Issuing a Certificate of Registration of Industrial

Design agents within 14 days from the date of application received. This have shown a

good change if compared to the previous time or period to process an application.

As for amendment of Act and Regulation pertaining to global participation of Malaysia

can be seen through the amendment of the Patent Law and Regulation, whereby Malaysia

have accede into PCT member countries as of May 16, 2006.Myipo is also considering

and studying their participation in Madrid System in near future. Malaysia also plans to

accede into WPPT and WCT by the year 2007. At present MyIPO through its Copyright

Division is in the process of drafting the amendments and provisions in order acceding

into WCT and WPPT.

The government of Malaysia has also set up a National IP Steering Committee which is,

now in its process of developing an action plan for boosting the creation and development

of IP.

Furthermore, the government has already finished drafting it National IP policy which

will be launched by the year 2007. This will be underpinning the activities, incentives,

creations and innovations and also looking into the benefit of the IP stake holders in order

to support the IP industry to further advance.

Malaysia have also introduce many types of incentives through grants to support the

development of IP activities especially branding, research and development activates,

innovations and development of new technologies through its varies government

ministries such as Malaysian External Trade Development Corporation, Small and

Medium Industries Development Corporation, Malaysia Technology Development

Corporation, Ministry of Science, technology and Innovation.

MyIPO have also through its training center, known as Intellectual Property Training

Center (IPTC) holds a lot of training seminars, workshops and international link seminars

been held in Malaysia to enhance the knowledge of IP stake holders. It has been an

ongoing effort and been held on e regular basis in every state in Malaysia.

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MyIPO also initiate frequent dialogues session with IP owners and IP agents to look into

the problems plaguing operational and examination issues, this is to smoothen the process

and also to evaluate its current practice.

Malaysia is also in midst of setting up its Intellectual Property High Court which is to be

established by the 2007 as well. These will a further improve the function and duties of

MyIPO as well.

MyIPO also have implemented its readiness toward achieving its ISO certification, which

will support the effectiveness and efficiency of its output and underpin its duties and

functions well. This will take effect by October 2006.

Furthermore until August 17, 2006 a total number of 3000 approved trademark

application have been sent to the Government printer for publication or advertisement.

MyIPO is taking adequate measure to amend the Act and Regulations relating to Patent,

Trademarks, Copyright and Industrial Design in order to facilitate the role and functions

of Intellectual Property High Court that is to be set up by the year 2007. This matter are

given priority by MyIPO as to support the Intellectual Property High Court and IP Policy,

in order to have a more efficient and effective IP system.

MyIPO have also implemented Balance Score Card system.

(http://en.wikipedia.org/wiki/Balance Score Card) Kaplan and Norton found that

companies are using the scorecard to clarify and update strategy, communicate strategy

throughout the company, align unit and individual goals with strategy, link strategic

objectives to long term targets and annual budgets, identify and align strategic initiatives

and conduct periodic performance reviews to learn about and improve strategy. It is a

strategic management system that forces managers to focus on the important performance

metrics that drive success. It balances a financial perspective with customer, internal

process, and learning and growth perspectives. The system consist of four process that is

translating the vision into operational goals; communicate the vision and link it to

individual performance; business planning; and feedback and learning and adjusting the

strategy accordingly.

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Weakness

The author has seen that there are still more rooms to improve whereby, certain details

are not included into MyIPO client charter. Trademark client charter did not mention on

time frame for appeal or submission cases. This also applies for assignment and

publication or gazette for approved cases. This are the area where the most time is been

incurred by the applicants. Furthermore, the author finds that there are no similarities of

the client charter by each division. This is because the items in Patent, Trademark and

Industrial design do not have its time frame mentioned for each process of work done by

the respective division which is vital for the IP users to know the exact time frame

required to obtain results from MyIPO. This is as what is the time frame for processing

amendments, enquiries, agent renewal, and registered users applications received

Furthermore, the author finds out that the time frame to process appeal application is

uncertain and may sometimes take a very long time.

There are no facilities as for e-learning for the internal examiners to enhance their

knowledge on the subject matter. The examiners have not been exposed to global IP

trends and practice, as to gain knowledge and expertise to accommodate globalization.

MyIPO have conducted language for being able to read and understand English as an on

going process. There is more than just conducting an English language class, because the

examiners must also be sufficiently proficient in forming a document for PCT application

in English.

MyIPO have to establish training in acquiring knowledge and expertise to accommodate

globalization, to create the examiners to have the international sensibility to be able to

accommodate international communication and information gathering, as well as having

awareness of the globalization of economic activities. Examiners’ duties are carried out

in highly qualified organizations, where each individual has responsibility for and

authority over their job. As their duties are carried out in collaboration with searches,

examiners must more than ever develop the knowledge and expertise for organizational

management, such as staff training, leadership, coordination and negotiation skills,

organizational response skills and communication skills.

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MyIPO have not implemented the Industrial Property Digital Library (IPDL). This will

really be very useful for MyIPO in order to disseminate information and also being a

source of reference by the IPR users.

MyIPo have got a basic website, but still lack in information that are vital for the IP users

such as global current IP issues and also the system at present is not user friendly.

MyIPO have not got an Act to support and encourage the transfer of technology activities

from the Universities, R&D organizations to the industry. This is needed in order to

encourage the development of new technologies and also to spur the IP base activities to

reach a better level of business environment.

Relating to the organizational chart of MyIPO functions it can further been improved. It

still can improve on setting up International Affairs Division, Resource and Capability

Development Division, Enterprise Development Division and Advisory Division for the

IP applicants.

MyIPO and MDTCA should also look into the enactment of Unfair Competition Law

which will encourage the transfer of technology and IP related matters. This will

underpin foreign investment into Malaysia. The author believes whenever there is

competition, there is likelihood of unfair competition. Violation of the “rules of the

game” is the essence of unfair competition, and it is the nature of the competition that

determines those rules.

Malaysia should also enact Trade Secret Law to further protect the interest in the know-

how, this will nurture increase in the technological development and also matter

pertaining to patent. This will assist the courts to calculate the amount of damage in

determining principle connected with trade secrets. The controversial distinction between

patents and trade secret protection is the perpetual protection available to trade owners

who make reasonable attempts to maintain secrecy of their information, compared with

the limited protection to patentees and the obligation to publish as a condition of

protection under patent law resulting in an incentive to keep useful information locked

away.

MyIPO still practice single class application for its trademark application, whereby

majority of WIPO member states have implemented multi-class application. The related

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Law and Regulation pertaining to this matter should be further upgraded to encourage

multi class application if Malaysia is to accede into Madrid system.

Furthermore, pertaining to the opposition proceedings there should be a cut off procedure.

Presently if the opponent looses the opposition he can appeal to the court against that

decision so do the applicant. This is wastage of time and money, and a repeated

procedure all going again for the same matter. So the appeal benefits should only be

given to the applicant and the opponent should proceed with invalidation procedure in

court and not to appeal for the decision of the registrar. This will shorten the time frame

for registration as well.

The author hereby would like to list out the external factors which are known as

Opportunities and Threats. These are known as the external aspects that are out of the

organization control. Normally these are the factors which are required by the Industries,

SMEs, Universities and R&D organizations. The author has divided the needs and

expectation from the industry or IP users into Opportunities and Threat.

Multilaterism and globalization are co-products of each other. The synergy between the

two is so intense that one is today witnessing the development of a new world order. In a

borderless economy the competition has become severe and companies, corporations and

R&D institutions must search for new solutions to beat problems that may have an

adverse and immediate impact on their competitiveness and a long term impact on their

survival. Intellectual property rights have started occupying the centre stage in the global

trade and commerce and new issues of IPR are being thrown up due to new technologies

and heavy investments made in developing such technologies.

Opportunities

The Big Companies and SMEs would like MyIPO to further shorten its processing period

in order for them to commercialize their products or services. This is because the life

cycle of products and technologies are short and the trend changes in a very fast pace.

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They also would like MyIPO to set up an advisory body and create a data research center

which is more reliable and efficient in providing them these services. Currently even

MyIPO do have this but it has not been publicized widely to the IP users. Most of them

are not familiar with the application and registration system and do not know the correct

way of doing a normal search or more comprehensive type of search. This will enable

them to cut short their time, investment and also to investigate the competitors’ product

or technology and avoid of infringing them.

They also would like MyIPO to accede into Madrid system as soon as possible as well

into MCT and WPPT. This is to open a simple registration system and process which is

consider much cheaper and easier. This will create more opportunities for them to

penetrate the global markets through IP protection.

They also would like MyIPO to have a better awareness campaign which should be done

through IT and also to create an e-learning system for them to leverage upon to nurture

their knowledge and know-how pertaining to IP trends, laws and regulations.

They would like MyIPO to reconstruct its website to a user friendly version whereby they

do not have to go through the whole contains to find for certain information that are

needed for. They suggested that MyIPO should separate the information according to

contains, to topics of interest such as when they want to look into licensing aspects, they

just type licensing and the relevant information will appear.

They also would like MyIPO through its training center IPTC to enhance further on

training pertaining to Patent Mapping, Business models, Licensing information and also

the current trends of IP in the global scenario. Furthermore, they also would like MyIPO

to have continues training to enrich their knowledge, which sometimes IPTC conduct

very basic training that need to be supported by series of more advance training

pertaining to the subject matter in question. Such as PCT training conducted, were there

are different levels of participants, so they need further more advance training to get

better understanding and to assist them in executing the PCT application more effectively.

They would like MyIPO to invite their association to discuss further on the type of

training needed so it can give better impact to their members in understanding and

gaining knowledge on IP advantages and how to use it as an important tool to penetrate

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global markets. They have also suggested that MyIPO should start its education programs

to youth starting with kindergarten, primary schools and higher institutes and making IP

as a curriculum in the schools to have a better effect in creating an IP base knowledge

base society in the future generation. They also would like MyIPO to further train the

examiners keeping in mind the importance of the usage of IP to the industry and to

nurture their knowledge on global IP practice and trends, which will help these examiners

in correctly judging and making better decisions pertaining to applications. This is

because IP changes very fast and so the need for continuing education on the latest IP

issues is very vital to keep Malaysia on track with the current practice.

Regarding to leverage on the IT facilities, they would like MyIPO to create a free on line

search system, this will contribute to the increase of filings because more people will be

using this system to do research. Furthermore, they would like MyIPO to implement an

online publication using internet; this will shorten the timeframe for publication, whereby

at the present there is limitation to the period and times to publication in a month and also

limited trademark application that can be gazette at any one time. This will also cut the

cost incurred by MyIPO in doing so.

They also suggested that MyIPO should upgrade the status of Agents to Attorney. To

qualify as an Attorney, the candidates have to go for a specific period on courses and also

examinations to enable them to be more effective and efficient. This should be

implemented for Trade mark, Industrial design and Patents. This will also create a more

knowledgeable Attorneys to represent them once the Intellectual Property High Court is

been established. This is applicable for cases involving civil and administrative cases

only.

MyIPO is also been suggested by the industry to create division for Office of Industry

Liaison that will serve the users on know-how and also advising them on the methods of

doing business leveraging on IP.

They also suggested that it is time for MyIPO to move forward to create Industrial

Property Digital Library (IPDL) to the advantage. Whereby, MyIPO should use it as a

media to reach the IP community and create better IP awareness information through this.

To create a data that will be used by the industry and also latest IP development news and

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trends. MyIPO should also publish the patent, industrial design and trademark

examination results, decision of hearing, objections and opposition. This will create

transparency to the general IP users and also help them to keep track on their applications.

Universities and R&D organization would like MyIPO to enact Act and regulation to

encourage research and development to grow more efficiently. They would like MyIPO

to enact a similar laws as United States known as “Bay-Dole Act” which will give the

universities much more control over their IP, a key issue is the scarcity of appropriate

personnel able to effectively bridge the gap between universities’ R&D and industry’s

“needs”. One way to achieve this is through the establishment of Transfer of Technology

Offices “TTO” in the universities. Their mission is to create value, using three main

channels: patent-based licensing income, collaboration projects under contract research,

and more arduous spinning out start-up companies.

They would further like the Laws and Regulations pertaining to transfer of technology to

be further amended and have better impact to protect the owners or inventors to enhance

a better research and technological society.

They would like more training to be held on Patent Drafting with better qualified trainers

and not just anybody to fill in the gap for the course. This is really very important in

creating more technological base society that will spurn the economical development in

Malaysia and encourage more technology transfer activities to take place.

They also would like MyIPO to create more knowledgeable and know-how experts in

MyIPO to footer technical industry experts to help universities to mange its Patent

portfolios in order to utilize research outputs.

They would also want MyIPO to create file wrappers for its patents; this is to enable them

to study the history of the application and the changes of the technology to enhance better

and improved new technology and better products. This will put Malaysia into the hub as

a technological developing country. Create more licensing activities that is healthy for the

improvement of the country revenue and also accede to a develop nation status.

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Threats

The author is aware that in order to create new technologies the tendency of increase in

“Sleeping Patent” application will come to an alarm stage. This is Patents that are of no

use for their inventors, neither can they license these patents to others. This scenario have

been increasing in the develop countries, until the government have to interfere and make

the policy to educate the companies to only file for important useful patents only.

The dangerous of this kind of sleeping patents are, it will not encourage further

development to that technology because the inventor or patent owner does not approve

this patented invention to be used by others.

The author has identified the emerging of unhealthy activities known as “Patent Troll”

which have been affecting the telecommunication and IT industries as well as Electronic

industries. This is where sometimes a patent covers a single component of a multi-

component system but that single component patent owner has the potential to enjoin you

from selling your multi-component product. This might even affect other technological

fields as well in near future.

There are already many situations in which the developing countries find themselves

disadvantaged. Such situations may become very serious if common laws are to be

followed which have been designed from the perspective of few developed countries.

This can be view such as in difference in interpretation of the same invention by different

patent offices and different in understanding of language and problem of translation.

MyIPO and MDTCA should tackle Interne-Based Piracy, which is in the form of P2P

file-sharing and Internet cafes facilitating online infringement, which is on the rise.

Piracy at internet cafes continues to be problematic.

Stop illegal Photocopying; this is the principal problems book publishers’ face that is

massive illegal photocopying in and around university campuses. MDTCA has been

cooperative, but officers lack training needed to effectively handle raids, decide on

seizures, track and act against underground operations, and protect right holders.

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4.2 JPO (JAPAN)

Strengths

Role played by Japan Patent Office (JPO) 2 is to properly granting patent rights, etc,

planning of industrial property measures, international cooperation or negotiations,

reviewing the industrial property system and dissemination of information on industrial

property.

Japan government efforts towards the realization of a nation built on Intellectual property

have shown tremendous efforts by JPO and other related government agencies to

underpin Japan economic growth base on IP. March, 20th 2002 Japan has established

foundation of the Intellectual Property Strategy Council. As on July, 3rd 2002 Japan came

up with decision on an outline of the Intellectual Property Strategy. Further on December,

4th 2002, Japan has started the promulgation of IP Basic Law which enforcement was on

March, 1st 2003. On March, 1st 2003, Japan has set up the Intellectual Property Policy

Headquarter, whereby Chief of this headquarters is the Prime Minister. On July, 8th 2003

Japan made the decision on promotion program on the Creation, Protection and

Exploitation of Intellectual Property. From May, 27th 2004 onwards Japan has started to

outline and give priority to the Intellectual Property Promotion program 2004 and

continued since than for each coming years.

JPO have since invested heavily into the development of a better IP office this can be

seen through its budget of the patent office in year 2006. Expenditure budget for

Financial Year 2006 which is amounting to 118.6 billion yen (US$ 1,078 million). This

has been divided into Computerization project 25%, Personal Expenses 27%,

Examination and Appeal Decision 19%and other 29%. (Source from Japan Patent Office

2006)

Japan has taken measures to support the Prime Ministers vision to implement the concept

of “Realization of a Nation Built on Intellectual property”. JPO have played an important

role by strengthening anti-counterfeit measures by strengthening regulations on personal

imports and early conclusion of anti-counterfeit or pirating treaty. It is known that in the

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world the damages that were caused by counterfeiting is amounted to 65 trillion YEN and

on July 2006 Prime Minister Kouzumi has pledge war against counterfeit.

Promoting innovations has been supported by improving in patent and also literature on

information search system. JPO also have implemented reduction of patent fees for SMEs

and for post doctoral and students research activities as well.

JPO has been aware to be a vital organization to support the Prime Minister vision by

initiating and implementing also reforming of application structure towards realizing of

global patents in mind to assist the IP stake holders to their seek of international markets.

JPO has been continuously made efforts to promote overseas applications and speeding

up of rights acquisition through cooperation of Japan (JPO), United States (USPTO) and

European countries (EPO) through Trilateral Co-operation.

JPO has started programs that are important to encourage in creating a strong know-how

to small and medium sized and venture enterprises by assisting and advising these SMEs

on IP and also by creating regional IP strategies. This has shown an impact by the SMEs

to leverage on IP as a business tool and also to penetrate international markets.

Japan through JPO have created a culture of creative nation by becoming a “world’s

contents superpower” and also making full efforts to encourage Japanese brands in the

global market.

JPO has adopt new laws and also amended patent law, revise design law enhance law for

expediting patent examinations and also amended trademark law in order to be in line

with the “Intellectual property Promotion Programs”. May 16, 2003 JPO have amended

the Patent Law and review of fees system related to patent application. This is a special

law to accelerate the expedition of patent applications, and also review the patent fee

system which was enforced on April1, 2004. This is related to a price hike for

examination request fees but also reduce in the application fees and patent annual fees,

which overall shows a price reduction for eventual patents. JPO also introduce a partial

return system of fees for examination request, this where half of the fees is returned if the

patent application is cancelled during the waiting time for examination. As well as, JPO

also assist the SMEs by expending the category for corporation eligible for tax reduction

relating to examination request fee.

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JPO also introduce of granting of an incentive for prior technology search report by the

applicant. This is a reduction that will be given on the examination request fee in

exchange for submission of a prior technology search report prepared by a registered

search organization. JPO as of April1, 2005, implemented attractiveness enhancement of

a utility model system which is also known as non-examination registration system. This

give the applicant an extension of terms of the right from six (6) years to ten (10) years,

also freedom to change the application from a utility model right to a patent within three

(3) years period.

JPO also implemented further extension steps towards improving and strengthening of

the basis requirement for the acceleration of patenting that is by flexible development by

work transfer to National Center for Industrial Property Information and Training in

October 2004. This is to strengthen the functions of external training, human resource

education and also to further strengthen the external information service function.

In order to take firm steps against counterfeiting goods JPO have revised its Design Law

on June 7, 2006 which is to strengthen its anti-counterfeit measures.

In May 28, 2004, JPO have taken initiative regarding the Law for Expediting Patent

Examinations which improves the acceleration of examination processes, established

proper applications and actions to request examination and also strengthen the exterior

training and human resources education functions, and exterior information services

functions. JPO also reviewed its regulation pertaining to employee regulations to enhance

fair benefits and protection for the inventors and also their employers as well.

Japan also amended its Trademark Law on June 15, 2005 to enhance further for the

protection of regional brands which is protection of well-known trademarks that consists

of locality names and product names.

Through Ministry of Economy, Trade and Industry (METI) On May 16, 2003 and June

29, 2005 there were amendment been made to the Unfair Competition Prevention Law

relating to strengthening of the protection of trade secret and also introduction of severe

punishment for overseas use and disclosure and also punishment for retired employees.

Whereby through Ministry of Education, Culture, Sport, Science and Technology

(MEXT), Japan have strengthen its protection of film contents, expansion of non-

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authorized use of educational contents by amending the Copyright Law on June12, 2003.

Furthermore in June 3, 2004, Japan again amended the Copyright Law by introducing of

preventive measures of reflux for music CDs, granting of rights to lend books,

strengthening of punishment for copyright violations.

Through Ministry of Finance, Japan have amended its Custom Tariff Law on March 28,

2003 in their quest to enhance and expand of the import injunctions claim system to

patent rights and design rights. Further on March 31, 2004 Japan amended its Copyright

Law pertaining to disclosure to the right holders of information on importers of

counterfeits. In March 30, 2005 Custom tariff law were further improved by adding to

import contrabands products, which will cause confusion about well-known labels or

brands.

June 11, 2004 Japan has established Law for establishing an Intellectual Property High

Court by Judicial Reform Promotion Headquarters. Which in return have shown a

tremendous progress form a stage of average time of almost two (2) years to Thirteen and

a Half (13.5) months in the year 2005. IP appeal cases are now heard in an average of less

than ten (10) months, down from more than fifteen (15) months ten (10) years ago.

Weakness

The Japanese Patent Abstract (PAJ) which is been used for prior art search purpose is not

very clear when it is been translated into English version. This is because the translation

is being done automatically using software, the wording do not convey the actual content

of the terms and terminology involved. This will give a wrong message to a person who

is fully relying on English translation without knowing the Japanese language or writings.

Majority of the examiners have experiences of only working in JPO, whereby for them to

compare applications with prior patents, will be hard in judging the technical novelty, it is

preferable to attach these examiners to have experience of working with IP department in

large companies to sharpen their analytical ability, so better decision could be made.

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Japan should further pressure US to be more flexible to accept and recognize “First-to

File” Patent, this will in return encourage more companies to penetrate and benefit from

this action.

As for acceleration of examination process, JPO has been encouraging SMEs by

implementing this, but patents applied by the big companies are still consider rarely

slowly been processed. This is because the patent applications by big companies are not

just for filing purpose but to commercialize as well. So JPO should also give priority to

big companies applications as well addressing to the needs to promote SMEs inventions.

Time is very critical issue for big companies, if this is not been done the technology

development by big companies will be infringed. This will in return results slower

technological research to take place.

Opportunities

To start better negotiation process in order to benefit the Japanese firms to venture into

Europe and US markets. This is to create a better route to this region to create more

advantages for the Japanese firms which otherwise result in losing millions of dollars in

law suits in US. This is because US is still uplifting its “First-to-Invent” system to protect

US applications and also to benefit the US patents. It is the only country in the world that

is still implementing this system after Philippines have shift their patent system from

“First-to-Invent” to “First-to-File” as all other countries do. In its quest to do so, Japan

should promote further on “Super Highway” plan for the mutual patent examination

system among Japan-U.S.A-Europe.

JPO should not only provide the public data of electronic applications, but also past

public data and documentary data’s with marginal cost, accelerate applications and prior

research before the request for examination is done to underpin for a more efficient

examinations.

To make the awareness program more successful, JPO and NCIPI should have an easier

understandable guidebook which will give a better understanding and support more

foreign activities applications. It should contain on how to do research on foreign patents

and also vital points to focus when a foreign application is being made.

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In order to materialize “Making of an IP Nation” it requires the indispensable

collaboration between universities and industries. To date, however, academia-industry

collaboration has not always worked successfully in relation to IP strategy and measures.

JPO and the government should play a role in coordinating regular dialogues between the

Japan Intellectual Property Association (JIPA), representing industries, and Japan

Association for University Intellectual Property and Technology Management

(JAUIPTM). Such duties should not be scaled down pertaining to patent circulation

advisory, Coordinating S&T, which has been very effective to a certain extent in

discovering unexploited IP.

Threats

The existence of “Non Intelligent Patents” or “Sleeping Patents” which constitute of 70%

of the total patent application in Japan, this is reaching an alarm stage and should be

remedied as soon as possible. To be a nation productive and innovative Japan should

take some measures to overcome this problem. This is also being a hurdle for new

inventions to take place whereby, this might an obstacle for new inventions that will be

using a part of this “Sleeping Patent” to form new technology or product.

The other issue that is on alarm is the increasing number of “Patent Trolls”. This has been

a treat to the electronic, telecommunications and IT business activities. The chances of

this “Patent Troll” to penetrate into other field of technology development and research is

very likely to happen, this is because they have been winning law suits for their Patents

that are been protected legally but has not been used for commercialization.

Information technology has been advancing by the speed of light and better system and

more advanced software are being developed in present days and also in the future as

well. The digital era could not be predictable by anyone, it might pose treat in future,

such as whether the Copyright Laws prepare to arrest the possible matters that will be a

problem for the inventors and also the end users. This is regarding the email system

which is fast growing and has been very popular among the users to communicate in this

21st century. If there is an email been sent by the original person and has been forwarded

by the recipient to others, is this considered as copyright violation under the present

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Copyright law or is it to be treated under doctrine of fair use. This question has to be laid

open to the IP office to look into before it becomes a major problem.

The author has outlined the Strengths, Weakness, Opportunities and Threats by using the

SWOT Analytical method. Further in Chapter Five (5), the author will be using the

TOWS Matrix to conclude his considerations to the needs and expectation from the

Industry, SMEs , Universities and R&D organizations to establish the duties and

functions by IPOs in solving this requirements. The author will do an analytical studies

pertaining to pursue opportunity that are a good fit to the organization strengths.

(Strengths – Opportunities). Overcome weakness to pursue opportunity. (Weakness –

Opportunities). Identify ways that the organization can use its strengths to reduce its

vulnerability to external threats. (Strengths – Threats). Establish defensive plans to

prevent the organization weakness from making it highly susceptible to external threats.

(Weakness – Threats).

References:

1. http://www.quicmba.com/strategy/swot

2. Current Status and Future Direction of Industrial Property Administration, Japan

Patent Office, Japan 2006

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CHAPTER 5: CONSIDERATION In this chapter the author will utilize TOWS Matrix for strategic planning 1 and to

establish strategies. Strategies are not something to nail together in slap-dash fashion by

sitting around a conference table. Many companies unfortunately still formulate strategies

this way, relying heavily on emotion, politics, opinion, subjectivity, and intuition, rather

than conducting some research, collecting some facts and information, and performing

some analyses. The penalty for pursuing the wrong strategies can severely cripple an

organization, so research and analysis is needed to formulate strategies effectively. Use

information gathered in the external and internal assessment. Strategies are derived from

an organization’s underlying mission, external opportunities or threats, internal strengths

or weaknesses, and objectives. An organization needs to use its strengths to capitalize on

opportunities and improve upon weaknesses and avoid threats. The author is only using

the Threat Opportunities Weaknesses Strengths (TOWS) Matrix for the purose of his

analysis, it is because the time frame for this research is not long enough for tphe author

to proceed with the Internal-External (IE) Matrix and the Quantitative Strategic Planning

(QPSM) Matrix that should be utilize together in constructing in formulating strategies.

TOWS and IE matrix are deemed most important to be utilized in identifying the external

and internal factors. The QPSM is used to determine the relative attractiveness of

strategies generated.

The Threats-Opportunities-Weaknesses-Strength (TOWS) Matrix is the most widely used

strategic planning matrix among companies and organizations. In order to develop a

TOWS Matrix, the author have already list down the strength, weaknesses, opportunities,

and threat in Chapter Four (4). These are the vital factors that should be earlier

determined and considered the most important in the external and internal audits. Then

the author will use these facts in four strategy quadrants labeled Strength- Opportunity

(SO), Strength-Threats (ST), which is also known as Strength Capitalization Strategies,

and Weaknesses- Opportunity (WO), Weaknesses-Threats (WT), which is known as

Weakness Mitigation Strategies.(Shown in Chart 5.1) 2. This will lead the author to come

up with strategies that would benefit the organization in light of those underlying factors.

SO is use to determine whether the organization should expand globally, or double the

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number of staff or examiners, or double its dissemination of information efforts, or

develop a better laws and regulations or upgrade its functions and organizational

divisions. WT will be used to identify what is the area of job, functions and duties that

should be liquidated, or divest, or retrench, or restructure, or downsize. The requirements

from the organization will vary from these depending on their key external and internal

factors.

This will lead the author to identify the type of strategies3 best for the organization. The

author will than be able to rate the organization based on the internal and external factors

as well come up with the appropriate strategy for the organizations. If the findings shows

that the organization is excellent both internally and externally, than it should adopt Grow

and Build strategy, which is to expand aggressively; seek control over current situation

and also adopt better policies than other country organization ( also known as vertical

integration while capitalize on strengths and acquire others modals and improve it as

well). If the finding shows that the organization as average both internally and externally,

so the organization should pursue Hold and Maintain strategy. That it is time for the

organization to start to expand, but not aggressively, and at the same time penetrate better

IP global trends and development, develop new area of services that will benefit the

entire society and upgrade the existing duties and functions. Furthermore, if the finding

shows that the organization is weak both internally and externally, than it should pursue

the Harvest and Divest strategy. This is meant that the organization should stop to expand,

restructure, divest, retrench, diversify and improve its current weaknesses or form a joint

venture company or outsource some of the task.

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CHART 5.1: THREATS OPPORTUNITIES WEAKNESSES STRENGTHS (TOWS) MATRIX

Terminology of the TOWS Matrix is shown as below:

S – O Pursue opportunity those are good fit to the organizations strengths

W – O Overcome weaknesses to pursue opportunity

S – T Identify ways that the organization can use its strengths to reduce its

vulnerability to external threats

W – T Establish a defensive plan to prevent the organization weaknesses from

making it highly susceptible to external treats

The author will use the TOWS Matrix analysis method to identify what is the actual

situation that is faced by MyIPO and to assist the author to identify what is the best

strategy that should be adopted by MyIPO in order to be more effective and efficient in

S – O STRATEGIES W – O STRATEGIES

S – T STRATEGIES W – T STRATEGIES

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its duties and functions. The author will define the Strengths and Weaknesses of MyIPO

based on his finding through SWOT analysis method in Chapter Four (4) and further put

it together into S-O Strategy, W-O Strategy, S-T Strategy, and W-T Strategy. This will be

very useful for the author to come up with the type or level of organization MyIPO is at

this present moment. This will also identify whether MyIPO should use Grow and Build

Strategy, Hold and Maintain Strategy or Harvest and Divest Strategy.

5.1 MyIPO (Malaysia)

Strength points of MyIPO could be seen in a number of areas. MyIPO has got a very

strong vision statement which is been used as a guide line to establish its short and long

term planning pertaining to IP and in fulfilling the needs and expectation of the industries,

universities and Smes. Its vision is to establish an efficient body for prosecution and

maintenance; to play a large role in IP development internationally; to play a wider role

in the local development of IP; and to create a large base of IP professionals and experts

in the country.

MyIPO has got a good client charter to act as pillars and guidance in processing and

granting registrations received from the applicants. This is a policy or pledge by MyIPO

to serve the IP community and stake holders better and with faster results.

MyIPO has accede to PCT in 2006, this will facilitate and underpin the exploitation

pertaining to technological development to penetrate further into global markets and

reduce the cost, time frame and also show increase in filling for patent applications as

well.

MyIPO in its quest to fulfill the demand and needs of the industry is also changing its

Laws and Regulations pertaining to Patents, Trademarks, Copyright to prepare its

participation into WCT and WPPT as well into Madrid System. Furthermore, giving

priority to amend the Laws and Regulation related to the establishment of Intellectual

Property High Court that is to be implemented by the year 2007.

MyIPO and MDTCA have finished the drafting of National IP policy which will be

materializing by the year 2007. This will further support the IP system in terms of better

incentives and guidelines to establish a better IP knowledge base society and guidelines

that will be very useful for the industries and stake holders.

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Malaysia have also establish a very good incentive and grants to support further in their

drive to create more research and development activities, product positioning and also to

assist the SMEs and Start Up companies as well as the universities and R&D

organizations. This grants and incentives are been offered by various government

ministries to assist the industry to further develop and penetrate global markets.

MyIPO is also taking measures and improving its systems to enable it to be granted the

ISO certification. This will further improve its process and work flow activities and allow

it to monitor the whole system and render any problems by controlling and getting it

solve in a faster time frame. This is to be done by October 2006.

MyIPO has also implemented a very good and practical Balance Score Card system

which will focus on the important performance metrics and further supporting a better

management system.

Weaknesses in MyIPO or Malaysia can be seen that there is no Unfair Competition Law

and Trade secret Laws.

MyIPO client charter has not fully shown the exact situation or works that are being

handled such as amendment of applications, appeal cases, time frame required to respond

to agent’s renewal, time frame required for opposition.

MyIPO does not implement e-learning system into its education and awareness program

which is vital in creating an IP knowledge base society internally or externally.

MyIPO also do not have Industrial property Digital Library (IPDL) which is very useful

as a resource informative centre.

MyIPO website is very important and should be very informative and user friendly. There

many explanation that are needed to be upgraded.

MyIPO organizational chart is basic and need to be upgraded if Malaysia needs to utilize

IP as an economic generating tool in order to have better duties and functions.

The filing system from single class application to multi class application should be

introduce in order to facilitate and reduce cost at national level or through Madrid system.

MyIPO should revise its regulations and laws pertaining to Opposition proceedings in

Trademark. This is because the present situation allows the opponent to have opposition

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proceeding twice. Once in MyIPO and followed in High court. This is creating double

process for the same matter in dispute. Once the opponent loose the inter parte hearing in

MyIPO they can appeal in High court against that decision. Whereby, the opponent

should proceed with invalidation of the said mark rather than repeating the whole process

again and delaying the registration process to take place.

Strength over Opportunities Strategies (S-O) hereby will identify what are the solutions

needed by MyIPO, by utilizing its internal strengths to overcome the opportunities that

are demanded by the industry or IP stake holders. MyIPO should further cut short on its

Patent or Utility Innovation applications time. This is to compensate the short life cycle

of the product or technology in order to commercialize it. There are two methods of

executing this process either by upgrading the knowledge and have better software or

processing tools available or to employ more examiners. Even outsourcing the prior art

search to create a faster decision making process for the examiners (of course with a non

disclosure agreement (NDA) with the party in concern).

The industry or stake holders also want MyIPO to create a better and efficient data base

for their reference to enable them to create a better product or technology. They can

access it from their location in order to seek further information or to look into

competitor’s product or technology. MyIPO already have a data base for this purpose but

the updating of the status is been going on a regular basis. IT might take some time to

have a really reliable data base but it is possible. Furthermore, MyIPO should also

implement its Intellectual Property Digital Library (IPDL) to play a vital role in

communication and information dissemination activity. MyIPO do have its in-house IT

division which is capable to create IPDL and also to get assistance from WIPO into

implementing this features.

The stake holders are further pushing MyIPO to create a system where they can accede

into global application from a one stop national application. MyIPO have already

implemented in terms of Patents, in near future MyIPO is also studying and willing to

accede into Madrid System, WCT and WPPT. MyIPO should also look into OHIM as

well for design registration. To have a better and effective implementation of this filing

system to international, MyIPO should also create a receiving office that have national

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filing and also to receive international filing as well. MyIPO should also have a division

for advising these applicants on the requirements and needs of the international filing as

well national filing, which should be situated before the proper filing counter. This will

help to solve many problems pertaining to needs and requirements in the relevant acts

and regulations and will reduce the time frame for processing the applications as well.

This is because there won’t be much amendment required at the formality stage and these

applications can go direct to the examination stage.

The stake holders and the industries want MyIPO to have a better training and awareness

programs than the current programs and campaigns. They still do not have a better

knowledge and know how on IP especially Patents and Utility Innovations. MyIPO have

conducted many programs and education awareness campaigns in order to nurture the

society on IP importance, it have been an ongoing process. MyIPO can further improve

on these matters by having regular dialogues session with the industries, SMEs,

Universities and R&D organizations as well as other IP stake holders to create a better

course structure base to the needs and expectations of these stake holders. This will have

more effective impact on these courses held.

The stake holders also want MyIPO to affirm and create better IP agents or should be

known as ‘Attorneys’. This is because the current situation especially for trademark and

industrial design the agents are not well verse in their knowledge as well know how and

also certain Patent agents also have the same qualities. They want MyIPO to monitor and

also have a firm rules and regulations pertaining to IP agents. MyIPO hereby can create a

better knowledgeable IP Attorneys by having examinations for the entire field of IP such

as Trademark Attorney, Industrial design Attorney and Patent Attorney and also have a

long term course that should be attended by these to be attorneys before they qualified to

be appointed as IP Attorneys by MyIPO. This will create a standard and also make these

attorneys more knowledgeable and specialized people. This is because IP Attorneys are

as important as bridging the IP community and IP office. Their roles are also considered

important in order to increase the filing and also creating an IP base society. The reason

the author suggested that the term “Agent” is been replaced by “Attorney” is because

once the Intellectual Property High Court (IPHC) is been established, these attorneys can

represent their clients for civil matters. This will also reduce the cost for the clients

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because they neither do nor have to engage other Law Attorney since they have already

appointed an IP attorney to represent them in the IP matters.

The stake holders especially the Universities and R&D organizations would like MyIPO

to further enhance its laws and regulations to encourage better research and technological

activities. They have requested that a similar Act is inserted into the patent Act that is

similar to “Bay-Dole Act” in United States. This will nurture the development of transfer

of technology from the academic to the industry. Also encourage more start up

companies to be involved in these activities as well. MyIPO do have good laws and

regulations, but it only have to amend certain acts and regulations to make these activities

possible and more effective.

Further the author would like to analyze the situation base on the Weaknesses over

Opportunities (W-O Strategies)

The stake holders, researchers, industries would like MyIPO to create file wrappers that

will benefit the industry as well establish MyIPO as a efficient and effective resource

center for information. These file wrappers are very important information that are

needed by the IP know how society to enable them to create something new or to acquire

further assistance from the IP owner. This will encourage the development of IP base

activities and also encourage more filings as well. MyIPO have not taken these steps into

consideration at this moment of time. It will probably look and study into this request

with priority and find the solutions to make these file wrappers possible.

The stake holders also expects MyIPO to create divisions for Office of Industrial Liaison

to assist them through having advisory and experts pertaining to know how and method

of doing business leveraging on IP. MyIPO hereby should take this suggestion towards

implementing when there is an exercise to further reorganize its organization chart for a

better effective role in upgrading their services in terms of their duties and functions.

The stake holders would like MyIPO to amend further the existing laws and regulations

pertaining to transfer of licensing as well employee inventions to create a clearer

interpretation within the laws and regulation which will assist them further to leverage on

this advantaged to generate more research and development as well negotiating for better

technologies and obtaining revenue to sustain further research and development activities.

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This could only been done ones MyIPO have iron out its current Laws and Regulations

pertaining to this matter whereby under the Copyright law there are already such

provision addressed. So MyIPO should also look into this aspect in patents for a clearer

laws and regulations as well.

The industries also would like MyIPO to create more knowledgeable and know-how

in-house experts to footer technical industry experts to assist the universities and

management of patent portfolios in order to utilize research outputs. MyIPO will be able

to implement this division of experts by firstly sending the examiners to be attached with

developed countries IP offices and acquire the know-how and knowledge how this is

been done by this IPOs. Secondly MyIPO can also do an attachment of this examiners on

technical fields with multi-national companies which have got good internal IP

Department and how they have utilize IP for their advantages.

Using the Strength-Threats (S-T Strategy), the author is looking into the available

solutions that could be used in overcoming the Threat from external factors.

Malaysian inventors are also equally as good as developed countries inventors. The

problem that these inventors in Malaysia are currently facing are that after inventing and

obtaining the grant they find it difficult to commercialize it and to cover the cost incurred

by them during their research and development stage. This has been one of the many

factors that had created less patent development efforts. This also had created what is

known as “Non-Intelligent Patents” or “Sleeping Patents”. MyIPO should overcome this

problems by setting up an advisory body and also education campaign on how to leverage

on IP information and also patent mining activities to identify the patent that is needed or

much sought by others. This will help the researcher to have better ideas and to create

better technologies that are needed and not just creating technologies that have no use to

the industries.

As for Weaknesses over Threats Strategy (W-T), the author has identified the potential

threats that MyIPO will be facing in time to come. The issue that will be a potential

problem will be known as an increase in the number of “Non-Intelligent Patents” or also

known as “Sleeping Patents”. Even though the number of patent applications will show

an increase but the situation of “Sleeping patents” will also be a problem as well. Even

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though the inventors obtain the patent rights for this type of patents, but it will not have

any commercial values and will lay open and also pose a threat for future research and

development activities which uses a part or portion of this patented technology in order to

create a better technology. This problem is currently being happening in the developed

countries. Simultaneously, this situation will be worst when it will create people who

have other intentions, which are to make money out of this type of patents. They are also

known as “Patent Troll”. Currently these groups have been gaining momentum and

creating corporations assisted by well equipped patent attorney to bring this type of cases

to court and winning. This will create an unhealthy situation towards discouraging the

development of new technologies which tend to use a part of the “Sleeping Patent”

technology in their technology. MyIPO have to be alert on have to come up with a

defensive precaution strategy to avoid this from happening. It should have more

awareness campaign as well have an advisory division to the patent applicants to assist

them to invest into patents that are in demand and also do have a commercial value. This

will avoid the percentage in creation of “Sleeping Patents”.

MyIPO should also look and revised its Copyright laws to tackle the Internet-Based

Piracy and also take a firmer approach on illegal photocopying. MDTCA on the other

hand should need to increase the number of enforcement officers as well to expose them

to a better knowledge on law and also procedures to have an effective enforcement that

will overcome this problems. MDTCA also should give priority to the enactment of

Unfair Competition Law, cause this will overcome many obstacles that are been faced by

the owners of intellectual property at this present time.

Hereby the author have identified the strengths, weaknesses, opportunities ands threats

and also by using the TOWS Matrix method to look into the solutions and also current

problems that still could be upgraded within MyIPO and MDTCA. Hereby, the author

has classified MyIPO as an organization which should emphasized on Hold and Maintain

Strategy. This will enable MyIPO to excel further and also to be more efficient and

effective in implementing its duties and functions.

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5.2 JPO (Japan)

Meanwhile analyzing the situation in JPO, which is under METI, the author will also use

the same method of analyzing and identifying the best strategies, that could be

implemented further to improve its duties and functions towards the needs and

expectation of the IP users.

Strength point of JPO could been seen in terms of their commitment to underpin the

vision of Prime Minister which is to built a nation on Intellectual Property. This could be

seen through the amendment of Laws and Regulations related to IP that have been

frequently studied and changed in order to create a better protection, encouraging

commercialization aspects for the IP owners as well as to encourage foreign investors.

The setting up of Intellectual Property High Court (IPHC) to further support the judicial

system to deal with the IP related cases in a faster time frame. IPHC has been showing

positive results in terms of settling dispute cases in a shorter time frame.

In its quest to support its nation and businesses, Japan has initiated and implemented and

reform its application structure towards realizing of global patents. It has also made

efforts to promote overseas applications and speeding of rights acquisition through

Trilateral Co-operation with United States of America and also European countries.

JPO and NCIPI, has been promoting and assisting SMEs by creating regional IP

strategies.This is important, because SMEs are the majority businesses and also creating

jobs and employment which in return is very important for the growth of economy. JPO

also have taken measures to accelerate the application procedures to overcome the

demand of the applicants to have a faster processing time in order for the industry to

commercialize their IP. JPO also has established a partial return system of fees for

examination request to ease the burden of the applicants. JPO also assist the SMEs by

expanding the category for corporate eligible for tax reduction relating to examination

request fees. JPO also introduce of granting of incentive for prior search report by the

applicants.

JPO have also taken measures to take firm steps against counterfeiting goods. Through

METI the law for Unfair Competition has further been revised to strengthen the

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protection of the genuine owners. Japan also has taken firm steps pertaining to boarder

measures by amending its Custom Tariff Law.

JPO has given priority to the development of IP very seriously. This could been seen in

their effort and also expenditure in their year 2006 budget to expand the duties and

functions to fulfill the needs and expectation of the industry and also the stake holders.

Japan has shown a serious commitment towards the importance of IP. This could be seen

through the establishment of Intellectual Property Strategy Council in the year 2002. The

Prime Minister is the chief of this council.

Relating to the weaknesses, the author has identified matters pertaining to the Japan

Patent Abstract (PAJ). The author finds that the translation version of this abstract does

not convey the actual terms and terminology of the inventions. Sometimes it is hard to

understand what is the precise contains. This is because this translation is being done by

using software.

JPO also implemented acceleration of examination process, this is to encourage the

SMEs, but the potential problem arises here is pertaining to the patents that have been

applied by big companies. This is vital for the big companies to obtain their rights faster

than the time frame at this present moment. Time is very critical issue for big companies

in order for them to commercialize as well to protect their products or technology in

terms of being infringed.

The author also would like to analyze the Strengths over Opportunities (S-O) strategies

relating to Japan scenario. There are needs from the industries that JPO should start better

negotiation process in order to benefit Japanese firms to venture into European and US.

To create more advantages for the Japanese firms which otherwise will result in losing

million of dollars in law suits in USA. The Japanese firms also would like JPO, METI

and other government authorities to further persuade USA, to loosen the “First-to-Invent”

rules. This has so far been implemented by JPO, METI and other government authorities

through the trilateral co-operation between Japan, USA and EPO. It has shown a very

positive reaction whereby, USA has already amended its laws pertaining to local

inventors as well as for foreign inventors. This could be seen by USA amending the

relevant acts pertaining to this subject matter.

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The Japanese firms also need JPO and Japan to speed the Patent Prosecution Highway

(PPH). This will enable the applicants whose claims are determined to be allowed /

patentable in an application filed in the Office of First Filing (OFF) to request accelerated

examination of the corresponding application filed in the Office of Second Filing (OSF)

with a simple procedures The current accelerated examination systems of the JPO and the

USPTO require an applicant to conduct a pre-examination search and to submit the

search results (references), an explanation of comparison between the claimed invention

and prior arts and an explanation of patentability of the claims. These needs have been

already been in the pilot implementation stage. The USPTO and the JPO agreed to

conduct a trial of the PPH in order to gauge the interest of the applicants in the program

and determine if the program contributes to improving quality and efficiency and

reducing the duplication of work in each office. The trial period is scheduled to last for

one year, to July 3, 2007.

Bu using Weaknesses over Opportunities (W-O) strategy, the author would like to further

discuss on the needs of the industries that would prefer JPO and NCIPI to come up with

an easier understandable guidebook which will give a better understanding and support

more foreign base applications. Since Japan has already utilized Intellectual Property

Digital Library (IPDL), this matter should also be emphasized in their task to explain

pertaining to this request.

Hereby the author would like to move into Strength over Threats (S-T) strategy. There

has been an increase over the increasing in the number of “Non Intelligent” or “Sleeping

Patents”. This will in turn be a hurdle for the inventors to create better technologies

further. Hereby, the government of Japan has been continuously announcing in major

papers for the inventors to only file for patents that are of use to them, than rather filing

patents that are of no use or do not have any demand or commercialization factor. This

could also be avoided by increasing the fees at the request of examination stage. This will

only encourage the serious applicants only to file for request for examination for their

patents.

The issue to discuss under the Weaknesses over Threats (W-T) strategy is pertaining to

the increasing in number of “Patent Trolls”. Patent Trolls has been increasing to form

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corporations and also hiring good and well versed IP attorneys to represent them in law

suits. They have been more organized and are not looking in licensing aspects to settle a

dispute but to gain monetary profits. This has affected the electronic, telecommunications

and IT based technologies. It might also explore into other technology fields if there are

no proper measures been taken at this point of time. As one of the leading developed

country Japan should look into this mater seriously as well to amend the laws and

regulations pertaining to unused patents. This will limit the execution of power of this

patent owners, who only intends to make profits and do not intend to commercialize their

patent rights.

After analyzing the TOWS matrix and also the strengths, weaknesses, opportunities and

threats, the author has established that Japan intellectual property office have already

anticipated and in midst of fulfilling the needs and expectations from the industries. The

author opinion is that JPO should adopt the Grow and Build strategy. That is to capitalize

on strengths and also to seek solutions for emerging threats that need to be addressed

seriously.

Hereby, the author has already concluded the type of strategies that should be adopted by

the IPOs in Malaysia and also Japan. Which will create a better strategic management

policies and also to underpin their important role in developing the economic growth.

This will also increase in their duties and functions as well to develop further the SMEs,

Universities, Research and development organizations and Big Companies as well. IPOs

are important in supporting the development of new technologies and products as well to

assist in penetrating into global market.

The author will further suggest steps and also measures that should be implemented to

have a better efficient and effective intellectual property office in Chapter Six, pertaining

to their functions and duties.

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References:

1. Step 5 – Establish Strategies.http://www.home.ubalt.edu/ntsbmilb/step5.html.page1

2. SWOT Analysis Method and TOWS Matrix. http://www.quicmba.com/strategy/swot/

2. Step 5 – Establish Strategies. http:www.home.ubalt.edu/ntsbmilb/step5.html.page3

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CHAPTER 6: RECCOMENDATIONS AND CONCLUSION

The research work as presented in previous chapters depicts the issues faced by the

Malaysia IPO and Japan IPO as to identify the actual issues that are sought by the big

companies, SMEs, R&D organizations and Universities. This in return will enable them

to utilize IP as a tool to encourage their research and development activities as well to

enable them to penetrate the global markets by using IP as tool of commercialization. IP

is really important in the course of trade in the 21st century. Unfortunately, since the

research work is done in a rather short period of time, from Jun 1st, 2006 to September

14th, 2006, the research investigation might be less extensive and exhaustive as it was

expected to be. As there are huge amount of other aspects to be taken into consideration,

the author has limited this research focusing into a few vital issues only. The issues that

the author has focused in are related to the function and duties of the IPOs that could be

upgraded to be more efficient and effective in serving and fulfilling the needs and

expectations from the industries and also the IP stake holders. This will enable the IPOs

to take into considerations the issues that are been highlighted in the authors research

when there is a need in changing the IPOs management strategies and policies to suit the

demand by the IP users as well the stake holders. More extensive and exhaustive

investigation is recommended for future research studies and also to collect more data’s

through questionnaires and also to be followed up by interviews to have a better

perspective on these issues and challenges. This will provide a good insight in how these

entities connecting to form a bigger picture of the actual situation.

The research work has given the author a profound education on the issues. The author

wishfully believes that the research results presented in previous chapters would

contribute to a better and harmonized intellectual property office in some extents. These

recommendations will be based on the issues that are been raised by the industries, SMEs,

Universities and R&D organizations which are been divided into external expectations

that have not been implemented on full scale which is to assist in Licensing aspects, High

Quality of Decision Making and Incentives and better Awareness campaigns. The

internal factors or issues that should be further upgraded are to generate more filings,

need more speedier processing and registration system, need to upgrade the Acts, Laws,

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Regulations and Policies concerning IP and also need to groom more IP experts to assist

the IP stake holders in order to prosper business underpin by IP. The author will

elaborate his conclusion and recommendations base on factors that will be divided into

Political (P), Economic (E), Social (S) and also Technology (T). The author has

simplified it into P-E-S-T analysis methodology. These conclusions will be base on a

more general and also in certain factors specific issues will be analyze base on the needs

of the IPOs in order to be more harmonized and also effective and efficient. As for final

concluding remarks, there are a few key factors the author would like to make as follows.

MyIPO and Malaysia as a member country of ASEAN should push the issue further to

establish a regional IP office to facilitate the citizens to penetrate the ASEAN region with

ease by using IP as a tool to commercialize. Malaysia as a member of ASEAN should

push for standardize of information exchange, to establish a harmonized IP system of the

member states such as been done by European countries (EPO) and also standardized the

registration system of the ASEAN member countries. This will create a strong regional IP

community and also have a better persuasive power to negotiate at the WTO and WIPO

as well to push for better policies that will benefit the developing countries.

MyIPO and MDTCA should focus on amendment of Laws, Regulations and Acts

pertaining to IP which in return will support the growth in businesses and research and

development activities that will generate better income for the country in term of

technology transfer and also licensing. The acts that should be enacted at present are

Unfair Competition Law, Trade Secret Law and also Copyright Law, Trade Mark Law

and Patent Law. This is to enable Malaysia to join the WPPT and WCT as well Madrid

System. Further should also study to accede into OHIM for Industrial design. This move

will benefit the business and R&D community that will assist them and encourage them

to be more productive since they are confident of the protections and also incentives that

will compensate their cost, time and creations.

Malaysia have already enact it National IP policy, but it need to support these policies by

setting up a working group which should be overseen by the Cabinet Secretariat. This is

to be sure that it will be implemented efficiently as well effectively. The head of this

secretariat should be the Prime Minister himself. By establishing this, the secretariat will

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have all the relevant government agencies to work together and create effective IP base

businesses. As well it will create a better enforcement system by coordinating the

MTDCA enforcement division as well from the customs to strengthen the boarder

measures as well. This secretariat will also be in charge and plan the yearly IP awareness

programs and its implementations on a macro level, supported by all the government

agencies which are related to trade and business activities.

Malaysia is already looking into establishing a Intellectual Property High Court (IPHC)

and need to make changes into the acts as well. This is to create Unfair Competition Law,

because more than 60% of the cases will be related to this matter. The Act of Unfair

competition much as include these provisions related to IP matters as well. Unfair

Competition should include Acts related to Indications of goods and business; Acts

related to Slavish Imitation; Acts related to Domain Names (Cyber-squatting); Acts

related to Trade Secrets; Acts related to Misleading Indications; Acts related to injurious

to business reputation of a competitor; and Acts related to invalidating digital data

protection (Anti-circumvention). The IPHC functions will be more to handle cases

pertaining to IP litigations. This could be divided into three (3) categories that are

Administrative Cases, Civil Cases and Technical and Non Technical cases.

Administrative cases are concerning to prior decisions made by MyIPO that the

applicants are not satisfied with. Civil cases litigations related to infringements cases.

This is when an IP owner fails to claim for injunction or claim for damages. With some

conditions that the owner in order to proceed with this type of litigation should secure his

right which has been registered, only than can he executes the litigation. Whereby,

technical cases are pertaining to Patent inventions, Utility Innovations, Layout of the

Integrated circuits, rights of the authors of a software programs. Non technical cases are

such as Industrial design, trade mark, Copyright (excluding rights of the author of a

software programs), breeder’s rights, and infringement of business interest by acts of

unfair competition. To be a more effective decision making on dispute, IPHC should

have a number of divisions that is to advise and assist the honorable judge pertaining to

cases handled. There should be a technical support division which consists of universities

professors, researchers from technical field, member of MyIPO seconded to this section.

This division should be in charge of finding information to the technical dispute matter,

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prior art search and also brief the judge what is the actual dispute. This will lead the judge

to make an accurate decision.

Related to “Patent Trolls” increasing treat to the genuine users to the same type of

patented technology, there should be an act on patents revised to cater to overcome these

potential increasing problems. This has been a phenomenon issue experienced mostly by

countries that are solely depending on technologies developments. The developed

countries should arrest this problem critically before it destroys and affects the

technological development in the future. There should be an amendment in patents act

pertaining to Non-Use. This will reduce the ability to prosecute by this patent trolls and

only allow lower compensations.

Economic approach that should be utilized by MyIPO, are whereby steps that should be

taken by MyIPO and MDTCA to assist the economic activities that are related to IP.

MDTCA should set up a Licensing Body which should be established by non-

governmental organization. This body will be monitored by MDTCA similar to the

consumer associations. This is to make sure that this body is implementing and effective

as well efficient in fulfilling the objectivity of its establishment. MyIPO should also play

an important role in assisting on setting up this body to feed information and data

pertaining to legally owned IP assets that are to be license out. This will encourage more

innovations and also spur the research and development activities as well encourage more

filings. Licensing will have a chain effect on the transfer of technology. Whereby,

transfer of technology 1 is an extremely effective means for developing countries to catch

up the developed countries. Its typical example can be seen in the case of Japan, which

achieved marvelously the economic reconstruction from a total devastation after the

Second World War. In order to smoothen technology transfer, prerequisites should be

arranged to improve the infrastructure, such as the protective system of intellectual

property, which is suitable for the introduction technology. Technology trade or business

of technology transfer has been expanding in major countries in the amount of both

import and export. This tendency is considered to be because of globalization of business

activities; the transfer of production bases due to dynamic economic growth in Asia and

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the transfer of research and development bases searching for human resources and also

because attention to intellectual property rights has been increasingly paid.

MyIPO and MDTCA should also encourage the research and development activities from

universities to industry for commercialization purposes. This could be done by

establishing better patents acts related to research and development activities as well

when it is been commercialized as well from the universities to industry. These activities

should nurture the start up companies. There should be an establishment as Transfer of

Technology Office such as the one appears in Japan known as Technology Licensing

Office (TLO). This is very important if it is to be seen from the standpoint of individual

enterprises, the introduction and export of Technology through License-In or License-Out

are closely related to business management. Particularly License-In and Out are strictly

linked with business plan or strategy of mainly two departments that are R&D and

business including Overseas Business in the enterprise.

The author has classified training and awareness under the social analysis. Under this

educating the IP users and the society in general is very important factor if Malaysia

would want to emerge as a IP base country and enable to penetrate global market legally

and at the same time secure a high place in the world trade. To do this MyIPO should

emphasize on educating the society as well the business owner how to maximize their

profits by using IP as the tool. MyIPO should cater its awareness and training programs

to educate young people, high schools, universities, medium and small size enterprises,

and research and development organizations. Accelerating the development of new

industries and the founding of new business ventures by intellectual creation, that is

through intellectual property rights. Which in return will build up the driving force for

social and economic structural reform and development as well building technical

superiority and dominance in global competition to become global standard .To further

establish or to rationalize MyIPO should have training courses that encourage

dissemination of patents and utility innovations, class room style lectures on themes such

as patent strategy, patent management and employee inventions. MyIPO should also

dispatch instructors with a thorough knowledge of the intellectual property system and its

utilization to groups who request them. Within MyIPO the Human Resource department

should play a more pro active role in nourishing the knowledge of the examiners by

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creating training as well exposure to the latest and current development especially in the

technological fields as well the changes in trademark globally in terms on laws and

practice.

In view of the technology edge and information system, MyIPO should make full use of

this opportunity to put itself ahead and set as an example for other ASEAN member

countries. It is important for MyIPO to utilize Intellectual property Digital Library (IPDL)

in order to disseminate information and also nurture the knowledge and know how on IP

related matters. The pervasive use of the Internet and unprecedented demand for

dependable access to bandwidth-intensive multimedia applications motivate utilization of

Dense Wavelength Division Multiplexing (DWDM) 2 as a technological enabler of

electronic government (e-government) operations by public agencies. In the public-sector

DWDM increasingly serves as a reliable technology for enhancing citizen access to inter-

agency and intra-agency e-government programs, regulations, and policies and providing

high speed connectivity to e-government resources via optical fiber, a medium that

transport voice, video, and data signals as light pulses. DWDM also supports network

backbone operations and accommodates bandwidth requirements for e-government

interactions that take the form of government-to-government (G2G), government-to-

employee (G2E), government-to-citizen (G2C), and government-to-business (G2B)

exchanges. This has been successfully been implemented by most of the developed

countries such as Canada, Japan, United States, European Union and South Korea.

Public-sector agencies that build a successful DWDM infrastructure must establish

attainable goals and objectives with specific milestones, a realistic timeframe for full-

scale implementation, and set a standards and guidelines to facilitate dependable G2G,

G2E, G2C, and G2B interactions that conform to agreed-upon security and private

policies.

MyIPO should also establish an e-learning concept. This is because our society is

gradually changing from information-based to knowledge-based. 3 The Internet is

transforming our workplace and the way we work and learn. E-learning is a complex

field involving institutional, individual, technical, and social components. The e-learning

ecosystem refers to the environment and the stakeholders involved in e-learning. Within

the e-learning ecosystem, there are infrastructures and platforms to support stakeholders

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in performing their roles required for teaching and learning such as administrator, learner,

instructor, course designer, and content developer. An important aspect of e-learning is to

put the control of the learning process in the hand of learners. It is the interaction between

the learners and the e-learning environment that determines the quality and effectiveness

learning. As e-learning is abased on technology, the technical readiness of the learners is

critical. Technical readiness includes the technical knowledge and skills required to

operate the system used to deliver the e-learning courseware. Learning objects

repositories are developed to support sharing and reuse of learning objects. Copyright is

an issue, as the law has nor been able to keep up with the development of e-learning.

New laws are emerging and new technologies are developed to make learning objects

sharable and reusable while still protecting intellectual property rights. Digital rights

management (DRM) technology is developed for vendors and publishers to protect their

intellectual property. The e-learning system should be established for internal as well for

external in order to disseminate information and knowledge on IP related subjects.

Hereby the author has voice out his recommendations towards creating a better

harmonized intellectual property office, using the P-E-S-T solutions method.

Technology 4 is changing very fast and laws are finding it difficult to cope up with the

developing technology. In this context developing countries have a distinct disadvantage.

Take the case of new plant variety protection. The USPTO had maintained a dividing line

between Plant Breeders rights and patents by stipulating the sexually reproduced plants

that would not qualify for patents. IPR regimes should accommodate the progressive

maturation of a production and innovation base as each country may have its unique

innovation system which could be at different stages of development in different

countries. There is a need to understand that a uniform IPR system may not suit the needs

of many countries. Changes in IPR system should not be unidirectional or patterned after

an individual model, namely that of countries that are the frontier of property rights

legislation and enforcement. Further, there would be little acceptance of a system which

promotes convergence in order to provide better level of protection for developed

countries. Major differences in the level and scope of protection have been removed

among countries which are signatories of the TRIPS Agreement. A balanced approach is

called for which would perhaps demand that the harmonization of IPR system should

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based on common principles acceptable to all countries, as well it should be driven by the

spirit of facilitating of trade and not by the desire of controlling and monopolizing trade.

It should also honour the mutuality of interest as well avoid unfair competition and

providing a near level field to all.

Confidential information – secrecy and the role of an academic? 5. There is some overlap

here with discussion of whether an academic researcher is employed to invent and the

scope of his or her duty of fidelity. However, obligations of confidence extend beyond

patentable inventions to encompass all forms of secret information. Where the principal

objective of university research is publication and dissemination of information and

knowledge, there can be a direct conflict between publication and confidentiality. The

crucial issue concerns the extent to which an obligation of confidence that arises from the

duty of fidelity could ever arise relation to the result of an academic’s research. The

application of these principles in universities requires careful analysis. Two issues arise.

The first is to define the scope of the duty of fidelity as far as obligations of confidence

are concerned. The second is to consider some circumstances in which the dispute could

arise between researchers in a university.

Furthermore, creation of IP within universities is often a complex matter involving

different classes of IP creators, and there is no simple approach to ownership and rights

allocation. Universities have opportunity to make many choices. The final balance of

ownership and rights that we see in university IP policies takes account of certain matters

that are the type of situations and factors that may influence universities to claim

ownership or other rights, the classification of the originator and the material in respect of

which such claims are advances. This is a phenomenon issues faced by most of the

ownership claims for copyright in a professor’s textbook, his or her course materials, or

computer programs, an invention created by a supervised postgraduate student, and

arrange of IP that a team of staff and students create with university funding. There

should be clearer protections for this type of inventions. WIPO 6 has launched an initial

research project with Japan Patent Office, assisted by the National Graduate Institute for

Policy Studies in Tokyo, and in cooperation with the UN University. The purpose of this

set up is to gather empirical data that can be analyzed, interpreted, evaluated and reported

upon in order to help assess the true impact of the IP system on developing countries.

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Through this process, that WIPO and national governments will better equipped to

understand the complexities and challenges of the international IP system. Only with

deeper understanding the international institutions and national governments will be able

to develop more focused and efficient policies and programs designed to help developing

countries take advantage of the IP system for enhancing their own economic, social and

cultural development. The main purpose of IPOs is to sustain the vision of CREATION,

PROTECTION and COMMERCIALIZATION. This should be the main pillars in

developing their mission and vision in serving the IP users and also assisting the country

to grow nationally and internationally.

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References:

1. Technology Transfer and Licensing (4th Edition); Ph. D. Koh Kunieda, JPO, APIC-

JIII December 20th, 2004. Page 10-11

2. Encyclopedia of E-Commerce, E-Government and Mobile Commerce: DWDM

Technology and E-Government Initiative; Marilyn Kemper Littman; Idea Group,

Reference 2006. Page 234

3. Encyclopedia of E-Commerce, E-Government and Mobile Commerce: E-Learning

Concepts and Development; Fung Fai Ng; Idea Group, Reference 2006. Page 391

4. Intellectual property Rights: A Bulletin from TIFAC; Vol 9 NO. 7-9 July – September,

2003. www.indiapatents.org.in

5. Universities and Intellectual Property: Ownership and Exploitation; Published by:

Oxford University Press 2003;Ann Monotti with Sam Ricketson.

6. Opening address by Mr. Allan Roach, Director, WIPO Japan Office; Opening

Ceremony of the WIPO Japan Office, UN House, Tokyo. Japan. September 15, 2006

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Recommended Reading:

1. Competitive Advantage: Creating and sustaining Superior Performance; Porter,

Michael E.

2. The Ultimate Strategy Library: The 50 Most Influential Strategic Ideas of All Time;

John Middleton

3. Simplified Strategic Planning: A No-Nonsense Guide for Busy People Who Want

Results Fast ! ; Bradford, Robert W., Duncan, Peter J., Tracy, Brian.

4. The LESI GUIDE to LICENSING BEST PRACTICES: Strategic Issues and

Contemporary Realities; Licensing Executives Society International; Editor

Robert Goldscheider