Can I Get A Patent For That, Please?

The question of what can and cannot be patented is not as straightforward as it appears, especially if it is not a device with buttons one could poke at.

Consider the following and ask yourself if these can be patented in Malaysia:

1. Your grandmother’s recipe for deep-fried bitter gourd chips

2. The cure for Covid-19

3. An algorithm that assesses the trustworthiness of a person based on their appearance and assigns a score to that person

4. A mobile application

5. A nutritional supplement containing extracts from superfood A, folk remedy plant B and snake oil

6. The shape of an aircraft part

If you said yes, no, maybe, or ‘I’m not sure’ to any or all of the above, read on.

Patents are granted for "inventions" - any solution to a problem that is practicable in any field of technology. So it follows that you cannot patent a word, the appearance of an object or a type of plant. Other forms of IP protection, namely trade marks, industrial designs and plant variety protection are available to cover these types of intellectual property.

Additionally, just because you invented something, it does not mean that your invention automatically qualifies for a patent. The invention must be new, meaning that no other such invention already exists in the world; inventive, meaning that the invention is not obvious to a person in the same industry; and industrially applicable, meaning that it can be made or used in any industry.

While you can get a patent for a device, composition, medicament, process, method, or system, there are some things that cannot be patented. These are:

1. Discoveries, scientific theories and mathematical methods.

2. Plant or animal varieties or essentially biological processes for the production of plants or animals. These do not include man-made micro-organisms and related processes/products.

3. Schemes, rules or methods doing business, performing purely mental acts or playing games.

4. Methods for treatment of human or animal body by surgery or therapy.

5. Inventions that are contrary to public policy or morality.

Now that you know this, would you be able to determine if the earlier listed subject-matters are patentable? Let’s find out:

Your grandmother’s recipe for deep-fried bitter gourd chips

Maybe your grandmother’s deep-fried bitter gourd chips taste so heavenly, they immediately resolve disputes between quarrelling family members because everyone would be so preoccupied with consuming the chips that they forget their quarrels. As amazing as these bitter gourd chips may be, the recipe and finished product do not solve a problem in a field of technology so they are not patentable. Food processing methods that improve shelf life or preserve foods without affecting taste, however, can be the subject of a patent.

The cure for Covid-19

If the cure relates to a method, that method is not patentable. Do note that in some jurisdictions such as the US and Australia, medical methods are patentable subject matter. But any medicines, devices or chemical compounds that can be used to treat Covid-19 or any other illness can be patented.

An algorithm that assesses the trustworthiness of a person based on their appearance and assigns a score to that person

Algorithms are mathematical methods, so they cannot be patented. What can be patented, however, are devices or methods that utilize these algorithms to create a real and tangible result.

A mobile application

A mobile application is essentially a set of instructions that tells a device to perform certain operations (If A>B; then LOOKUP(D3:D24); Else…) so mobile applications and software in general are not patentable. What can be patented instead are inventions that are realised using such software which interacts with the hardware to produce a tangible result.

A nutritional supplement containing extracts from superfood A, folk remedy plant B and snake oil C

Mere combinations of natural products are not patentable, so good luck trying to patent a concoction of tongkat ali, maca root and dragon’s blood extracts without lab results proving its efficacy. In order for such supplements to be patentable, they must i) solve a problem in a field of technology and ii) demonstrate that the combination has synergistic/unexpected effect.

The shape of an aircraft part

If the shape of the aircraft part is purely ornamental and does not solve a problem then that shape is not patentable, but if the shape is functional and creates a special effect, e.g. causes mircoturbulent flows to reduce overall drag forces then the shape may be patented. Do note that unlike industrial design registration, the shape cannot be claimed in a graphical manner so the written description and claims must clearly define the shape that is claimed.

But what about gene-editing therapies, perpetual motion machines, deceased persons chatbots, MLM schemes, plastic-eating bacterium and AI inventions? Can these be patented? Granted, the given examples are not representative of everything under the sun that one would consider patenting, but hopefully, you now have a general idea of what can and cannot be patented. If you are ever unsure of whether you have a patentable invention, why not give us a holler? After all, we’re here to help.

Trademark Infringement: When it comes to "inspired" branding, how close is too close?

Is your brand inspired by another brand? It may be a tongue-in-cheek parody of the brand that everybody loves (or loves to hate), or maybe it's a tasteful homage to an awesome product from your teenage years, but when it comes to brand protection, there's a fine line between "inspired" and infringement. So how close can you fly to the original brand before you feel the heat of a pending lawsuit?

Well let's take the example of our KFC doppelganger here. There's a clear intention to copy from the original. Aside from sharing 2 out of the 3 letters with the original (i.e. KPC vs KFC), the font used is also similar to the original and the letters KPC are visually very similar to KFC. In fact, even the likeness of the good Colonel was almost faithfully reproduced (itself a potential copyright infringement issue). You can imagine it's not going to be easy telling the two of them apart, especially after a night-out (which incidentally is the perfect time for some finger lickin' good chicken)!

So the verdict? If the KPC mark is used in trade, it'll most definitely be considered trademark infringement.

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In this battle of the alt-milk brands, there are clear similarities between the two trademarks as well as their packaging. However, in a recent court case, the judge found that even though there were similarities between trademarks of the two companies, the similarities were "at a very general level" and that the "similarity is due to the presence in both the sign and the mark of the letters ‘oat’ that are descriptive of the relevant products".

So the verdict? If you incorporate a descriptive or generic word in your trademark, it is more difficult for you to prevent another business from using a similar sounding trademark as that would give you an unfair monopoly over the descriptive/generic word.

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Similar to the Oatly vs Pure Oaty case, here the marks are also very alike, with the word "Face" and Body" being the distinguishing factor. In fact, consumers might even think the two brands are related. However, the similarity of these two trademarks is due the fact that they share the words "the" and "shop", which are generic/descriptive and commonly use in trade (think The Chicken Rice Shop, The Ribbon Shop, The Custom Shop etc.).

The verdict? The more descriptive your trademark is, the harder it is for you to enforce your trademark rights and prevent another business from using trademark that's very similar to yours.

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Is someone using a brand that is similar to yours? Are you planning to start a new gig but not sure if you're stepping on someone's toes with your new brand? Why not talk to us? We're here to help!

Know How To Have An Unseen Advantage

It’s been many weeks since folks in Malaysia have been told to return to their hidey-holes. On the other side of the world, people in the US and UK are slowly being allowed to leave the safety of their nests. You don’t have to be an infectious diseases expert to know why: many developed nations have vaccinated most of their population while the rest of us are still waiting for our vaccine dropships to arrive. Since R&D and clinical trials are usually the hardest and most time-consuming part of vaccine production, now that that’s done and dusted, why is it that most people around the world are still not getting the lifesaving jabs?

To many observers, the culprit behind the delay is none other than Patents! As the vaccines and the processes behind them are mostly patented, no one apart from the patent holders (and a few licensees) are allowed to make these vaccines. Accordingly, there are increasing calls for a temporary waiver of these patent rights to boost production of vaccines.

However, putting the blame solely on patents is an oversimplification. There are in fact many factors at play, causing the disparity between the ‘haves’ and ‘have nots’, and one less-talked-about factor is the Know-How on vaccine production. While many are familiar with patents, trade marks, designs and copyright, not many are aware that the knowledge on how to do things or ‘Know-How’ is also a form of Intellectual Property.

Pretend, if you can, that the following is true: Gordon Ramsay invented the Beef Wellington dish and his recipe which you can find on his website is a patent. Now, all the necessary steps and ingredients for the dish are already included in the recipe. But unless you have the skills, talent, and the years of cooking experience of a master chef, it is likely that your Beef Wellington will not be gracing the covers of food magazines any time soon. The missing pieces in your under-baked Beef Wellington? It’s the Know-How.

Similarly, some vaccines like Malaysia’s No. 1 preferred Pfizer-BioNTech vaccine are based on cutting-edge technologies that not many people are experts on. Even with access to patent disclosures, raw materials, and production facilities, without the right Know-How, there is no guarantee that a viable vaccine will be produced. And like the jealously guarded secrets of a Kung-Fu master, the companies behind these vaccines are unlikely to pass on their critical secrets or hidden techniques for fear that the student may one day surpass the master.

It’s in times like this that the value of Know-How becomes apparent. However, in order to keep one's edge in a competitive world, one must know how to protect one's Know-How (see what I did there? ;)). The thing about Know-How is that it can be in the form of transferable and non-transferable skill, knowledge, or expertise. Transferrable Know-How such as information and methods of doing things are not patentable subject matter, nor is copyright sufficient protection as it only protects the literary expression of the information and does not prohibit others from acting on the information.

How Know-How is protected is the same as how anyone would keep a secret, but in this case the Know-How would be protected as a Trade Secret. Some would hide it in the deep recesses of their mind or keep the steps under lock and key. If the Know-How relates to a process, that process may be performed in a restricted-access area only. Employees or partners with access to the Know-How should also be sworn to absolute secrecy on pain of death (normally through Non-Disclosure Agreements).

Don’t know how you can protect your Trade Secret? Why not give us a holler? After all, we know how to help (sorry...).