Recently we were questioned by a client in terms of the difference between a Patent and an Industrial Design and what does both generally protects and what constitute an infringement of ones’ rights on either a patented invention or a registered design. In layman terms, the easiest way to explain the core difference between the two is that Patent generally protects the “interior” parts of an article or invention, whereas Industrial Design protects the “exterior” parts of an article or design.

PATENTS

A Patent is a government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. Do note that not everything is a patentable invention. In order to get a patent granted for an invention it needs to satisfy the following elements as provided under Section 11 of the Patents Act 1983:

1. New / Novel in the world
2. Involves an inventive step / Non-obvious to a person skilled in the relevant industry
3. Industrial applicable i.e. it fulfilled the current industry need

Once an invention fulfilled all of the above criteria, a patent will be granted and shall deem to be protected by law for 20 years (Patent). Interesting fact, if your invention is unable to fulfill element 2 under Section 11, you may consider to apply for a “Petty Patent” instead, also known as Utility Innovation which grants similar protection for an invention for a period of 10 years upon fulfilling element 1 and 3 of Section 11.

Please do take note that certain things are not patentable, at least in Malaysia, as stated under Section 13 of the Patents Act 1983 which include the followings:

(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man‐made living micro‐organisms, micro‐biological processes and the products of such micro‐organism processes;
(c) schemes, rules or methods for doing business, performing purely mental acts or playing games;
(d) methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.

Henceforth, kindly do not bother yourself to file your invention if it is unable to fulfil Section 11 or fall under the descriptions stated under Section 13. Furthermore, kindly also save your money and time to try and register an invention which has been filed in other countries as the examination involved will flag up the prior arts from other countries which are previously granted or expired. Why can’t you register an expired invention? Because it’s no longer new!
Another thing to take note about novelty or new is that the invention which you intend to file MUST NOT be published or announced anywhere in the world as it will eliminate the novelty of your invention.

INDUSTRIAL DESIGNS

Often confused with other limbs of intellectual property such as patents or copyrights. ID is defined by law under Section 3 of the Industrial Designs Act 1996 which features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include the following:

(a) a method or principle of construction; or
(b) features of shape or configuration of an article which —

(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part

In layman terms, any design of an article which is capable of being mass produced fits the above description and may be protected under IDA 1996. Why I said “may be”? Because the design would still need to fulfil the registerable criteria provided under Section 12 of the IDA 1996 i.e. NEW. Obviously, the design has to be new in order to be registered, but unlike Patent where the novelty is judge globally, novelty for industrial design are judged in accordance with what the examiner is able to find in Malaysia or potentially the internet. Another point to note is, similar to a Patent, Section 12(2) further provides the following:

“an industrial design for which an application for registration is made shall not be considered to be new if, before the priority date of that application, it or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade—

(a) was disclosed to the public anywhere in Malaysia or elsewhere; or
(b) was the subject matter of another application for registration of an industrial design filed in Malaysia but having an earlier priority date made by a different applicant in so far as that subject matter was included in a registration granted on the basis of that other application.

What the above is trying to deliver is that a design loses its novelty if it or something of close resemblance was disclosed anywhere in Malaysia or elsewhere or is simply in conflict with a prior design within the register. However, one advantage for ID is that a 6 months grace period is granted to a design. Meaning, if a design is disclosed, it has exactly 6 months to file itself with the local registry to avoid jeopardizing its novelty.  

The above roughly sums up the difference between patent and industrial design in Malaysia with each are guided by different procedures which shall be explained further at a later time. Thank you for your kind attention thus far. 

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