HM Medical Clinic

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Intellectual Property Updates
KDN NO.: PP12637/08/2013(032554) Issue #2, August 2012 "Brunei joins the Paris Convention effective CONTENTS:
"New Patent Law in Brunei from 17 February 2012" ∙ All Change for Brunei Patents
01 January 2012" ∙ Voluntary Notification
of Copyright ∙ The TWISTER
Industrial Design Cases ∙ Prospective Infringement
under Medicines Act "Brunei joins the ∙ Conferences and Seminar
"Brunei joins the PCT effective Budapest Treaty ∙ News at Henry Goh
24 July 2012" effective 24 July 2012" All Change for Brunei Patents
IP owners. It will allow applicants in 01 January 2012, that is until 31 many cases to pursue a streamlined Brunei Darussalam's Patents
Order, 2011 came into force
December 2013.
on 01 January 2012. Follow- prosecution process by relying on the 3) An application for a qualifying
ing that, on 17 February 2012 results of the international preliminary patent that is pending as of 01 January
Brunei became bound by the Paris examination.
2012 may be made the subject of an Convention, and on 24 July 2012
Under the old Inventions Act application for re-registration under DAVE A WYATT the country's accession to the PCT 1925, patent protection was secured the old Act within 12 months of the
BY and Budapest Treaty took effect.
in Brunei by re-registration of a patent grant of that patent.
The Patents Order repeals the granted in the United Kingdom All existing re-registration Inventions Act 1925 and establishes for (including via the EPC), Malaysia or patents, and those obtained under the first time an independent patent Singapore within three years of its provisions 1) to 3) above are now system for the receipt, processing and grant. The transitional provisions subject to the payment of local annual grant of patents by a new Paten allow for continued re-registration of fees. Under current PRO practice, an Registry Office (PRO) under the care of such a patent ("qualifying patent"), as application for renewal must be the Brunei Economic Developmen follows: accompanied by evidence that the 1) Any re-registration application filed basic foreign patent has not been The substantive and proce- before 01 January 2012 will be revoked.
dural aspects of the new law closely processed under the old Act. For further information, please mirror those of the Singapore Patents 2) Any qualifying patent that is do contact us or refer to our website's Act 1994. English is the official granted no more than three years Law and Practice Updates section language of the patent grant proce- before 01 January 2012, and is in force where there is now a dedicated page on that date, may be made the subject for Brunei.
Brunei's accession to the PCT of an application for re-registration will be of particular interest to foreign under the old Act within two years of Patent, Trade Mark and Industrial Design Specialists

of Copyright
Since 01 June 2012, copyright is dependent on the information effect on admissibility of evidence.
stakeholders can now volun- provided by the applicant.
This is because the original presump- tarily notify the Copyright
tion of ownership under the Act is Either hard or electronic Controller of their claims and copies are permitted, depending on maintained and any certified extracts
deposit a copy of an eligible work the nature of the work to be depos- from the Register shall be prima facie
with the Intellectual Property ited. Official fees also depend on how evidence of the particulars therein
LIM ENG LEONG Corporation of Malaysia (MyIPO) for voluminous the work deposited is. If a and shall be admissible in all courts.
BY recording. The types of work accept- replacement is required by the
Since there is no substantive able include literary, musical and Controller, it must be provided within examination of the work deposited,
artistic works, films, sound recordings, 30 days of the request; otherwise the the process of having the notification
broadcasts and derivative works notification is deemed as withdrawn.
recorded should be quick and recognized by the Copyright Act 1987.
If the notification is in order painless. No doubt there are still no A notification shall contain and upon its successful entry into the actual formalities to register copyright particulars such as details of the Register, the Controller shall inform here because of automatic protection copyright owner, details of the the Applicant in writing. from the Berne Convention. However, author(s), a Statutory Declaration to Applicant may go one step further and since most copyright owners have for assert the applicant's locus standi, a ∙request for a proper certificate to this years been demanding for a more
copy of the work, date and place of effect by filing a form and paying the tangible form of protection similar to first publication, and accompanied by prescribed fee. their trade mark and patent peers, the the prescribed fee. Accuracy of the Despite its voluntary nature, new Regulations can be seen as a information entered into the Register ∙the notification does have a profound fulfillment of such a request.
The TWISTER Industrial Design Cases
hear these cases simultaneously. The trial commenced in August 2011 and Tropicana Products, Inc (a
subsidiary of PepsiCo, Inc)
obtained a Malaysian Indust-
stretched until October 2011, covering rial Design (ID) Registration MY
three separate sittings with nine days of 06-00624 on 10 February 2006. The
trial in total.
registered ID was used in relation to
On 03 July 2012, the Court the TROPICANA TWISTER bottle
pronounced a Judgment in favour of AZLINA A KHALID products launched in 2008 where
Tropicana, affirmed and confirmed BY the product with its novel and
that it had succeeded in establishing attractive bottle design enjoyed
industrial design infringement in all significant commercial success. Subse-
the four suits where the Defendants' quently it was discovered that some
bottles were adjudged and deemed parties had infringed the registered ID.
as obvious imitations of Tropicana's Tropicana then issued various Writ
registered ID. In summary, the follow- actions for industrial design infringe-
ing orders were granted against the ment against four different entities at
the Kuala Lumpur High Cour
t bearing
the following Suit Numbers:
1. Civil Suit No. D-22IP-12-2010
2. Civil Suit No. D-22IP-41-2010
(d) General Damages; and 3. Civil Suit No. D-22IP-59-2010
4. Civil Suit No. D-22IP-66-2010
As for both invalidation Tropicana also initiated invalida- actions, the Court also agreed with tion actions against two registered IDs Tropicana and subsequently revoked which belonged to one of the Defend- the relevant Respondents' registered ants in the abovementioned suits and industrial designs for lack of novelty.
another foreign Respondent under Henry Goh is proud to be part Kuala Lumpur High Court Originating
of these landmark cases wherein we Motion No. D-25IP-10-2010 and Kuala
had acted as Tropicana Products, Inc's Lumpur High Court Originating Motion
Industrial Design Agent. From day No. D-25IP-1-2011 respectively.
one, we provided our client with All the six actions were filed at various industrial design opinions, the Malaysian IP High Court and there advisory and full litigation support was a decision by the presiding Judge to * Image reproduced with permission from services for all the six cases. Tropicana Products, Inc/PepsiCo Malaysia Sdn Bhd.

PROSPECTIVE INFRINGEMENT
UNDER MEDICINES ACT
It was undisputed that there was no past act of infringement by the In the Singapore case of
AstraZeneca AB (SE) v Sanofi-
Aventis Singapore Ltd [2012] act of the defendant in applying for
SGHC 16, plaintiff and defendant product licenses and as such no action
could be brought under the Patents development and manufacture of Act.
for patent infringement under the AMEEN KALANI healthcare products. The plaintiff
The plaintiff had commenced Patents Act. It was concluded by the BY owns a patent for a pharmaceutical an action under Section 12A of the Court that under this Section, it will be
composition which is composed of an Singapore Medicines Act which it necessary to assess the theoretical
active ingredient called Rosuvastatin alleged provided a separate and
aspect of infringement, that is, Calcium and a stabilizer composed of independent cause of action from whether the products for which the
an inorganic salt in which the cation the Patents Act. The Medicines Act product licences were sought fall
was multivalent.
is a legislation that was enacted in squarely (pith and marrow) within the The defendant had applied to 2004 to enable Singapore to fulfill part claims of the patent. the Singapore Health Sciences of its obligations arising from the The Court noted that Section Authority (HSA) for product licenses in United States-Singapore Free trade 12A is pro-patentee as the applicant respect of Rosugard film-coated tablet for a product licence is forced to According to the Plaintiff, reveal the composition of its product application, the defendant declared Section 12A allowed commencement upon taking out of an action by the that the plaintiff's patent will not be of pre-emptive action in anticipation plaintiff and that until that point it is infringed by doing of the acts for of the defendant committing the not possible to strike out the plaintiff's which the licenses were sought. patent infringement by carrying out of case. The defendant's risk of revealing As required by HSA, the the acts for which the product licences such confidential information may be defendants served a notice on the were sought. mitigated by applying to the Court for plaintiff stating that to the best of The Court analysed the provi- the information to be restricted to their belief, the plaintiff's patent will sions of Section 12A together with its certain persons or for the plaintiff to accompanying subsidiary legislation undertake not to use the information compositions for which the licenses and concluded that it allows for taking for purposes outside the Court action. were sought do not comprise an out of an action for declaration of Defendant's application to strike out inorganic salt in which the cation was prospective or future infringement plaintiff's Statement of Claim was which is separate from the civil action dismissed.
Conferences & Seminar
Kuala Lumpur, Malaysia Melbourne, Australia Henry Goh was also repre- Dutch Business Council at the Holiday It has been a busy first half of sented at the 134th INTA Meeting held Inn Kuala Lumpur Glenmarie. In the year for the Firm. in Washington D. C. from 05 to 09 May addition to our speakers, the audience Our Director, Mr. Ameen 2012 by our Executive Director, Mr. had the opportunity to hear from Kalani, Senior Legal Counsel, Ms. Dave A. Wyatt, Director, Mr. Ameen Dr. Woon Weng Chuen, representing Azlina Aisyah Khalid and Business Kalani and Legal Counsel, Mr. Lim Eng the Development Manager, Ms. Oon Yen Leong. With a record attendance Malaysia, who gave an IP owner's Yen, attended the FICPI World of more than 9,500 this year, it perspective on IP management and Congress in Melbourne, Australia from proved to be a fruitful time of commercialization. The seminar 17 to 20 April 2012. The Congress renewing old ties and establishing ended with a briefing on the upcom- was an excellent opportunity to new ing developments in Malaysia's IP laws exchange views and participate in professionals.
by the Deputy Director General of the discussions with our IP peers from On 10 July 2012, we co-hosted Malaysian IP Office, Pn. Shamsiah around the globe.
an IP seminar with the Malaysian Kamaruddin.

NEWS AT HENRY GOH Continuing the year-long
35th Anniversary celebration!
Event: "One Earth, One Home Run" Date: 22 April 2012
Organised by Space U8 Mall, Shah Alam, the People of Henry Goh participated in support of the run's green theme. Even the T-shirts worn were green in colour, made of 100% organic cotton. The run ended with pledges to sustain a greener environment.
Event: Bowling @ Tropicana Golf & Country Resort Date: 23 June 2012
We struck the bowling alleys at Tropicana Golf & Country Resort that Saturday morning for a friendly competition involving 7 teams. Team "Mama Vogue & Boy" emerged victorious with an impressive score. All winners went home with cash prizes and trophy-bowls.
Event: Visit to Rumah Jalinan Kasih, Cheras. Date: 14 July 2012
A home established for underprivileged children run by a charitable organisation. The children were treated to a fast food lunch and received goodie bags containing shoes and clothes for the coming Hari Raya celebration, toys and cash contributions from the staff and management of Henry Goh.
2012 Henry Goh & Co Sdn Bhd. All rights reserved. Henry Goh & Co Sdn Bhd (332744-A) Henry Goh (S) Pte Ltd (199203221-E) Information herein is based on reliable data, published House of Henry Goh, 217, Jalan Imbi, 20, Science Park Road, #03-34/35, TeleTech Park, in good faith to give an overview of events and issues in intellectual property. Interested parties are advised to 55100 Kuala Lumpur, MALAYSIA.
Singapore Science Park II, SINGAPORE 117674.
contact the company for further details prior to relying on the contents of this newsletter. Views expressed by the writers +(65) 6333 9525/6 herein are their own and do not necessarily refl ect those of Henry Goh. Other trademarks and images are the registered property of their respective proprietors and used here merely for illustrative purposes.

Source: http://www.henrygoh.com.my/downloads/hgipu0812.pdf