Introduction

The starting point for a holistic assessment of the patentability standard in Malaysia must naturally be the law itself. While the Patents Act and Regulations do not contain any specific provisions for computer-related inventions, there are general requirements that are pertinent. These include primarily the definition of an invention and a list of inventions that are explicitly excluded from patentability. Beyond that, there are clues to be found in certain requirements of the description, claims and even the abstract of an application.

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In Malaysia, there is more than one form of Intellectual Property (IP) rights available to protect technology, particularly, computer programs and software. The applicable laws are the Copyright Act 1987 (“CA”), the Patents Act 1983, (“PA”), the Trade Marks Act 1976 (“TMA”) and the Layout-Designs of Integrated Circuits Act 2000.

Copyright

Computer programs, defined to cover both the source codes and object codes, are specifically protected under the Copyright Act as a form of literary work. The rise of free and open-source software (FOSS) licensing adds an additional dimension to the use of copyright law. The law is co-opted to promote free access to computer programs and their source codes. Although the term ‘database’ is not used in the Copyright Act 1987, it is accepted that the definition for “tables or compilations” as a form of ‘literary work’ is sufficiently wide to encompass electronic databases. The Malaysian copyright law, being derived principally from English law, adopts the same approach.

Copyright is recognised as the main protection for the rights of the owner for computer programs and software per se. The law of copyright protects the expression of ideas but not the idea itself, therefore the concept or idea behind a software or program may not necessarily be protected by copyright until the time it is reduced to written form. However, the copyright of such computer programs only subsists if the following conditions are met:

1. If the work is original, and

2. If the creator is a qualified person or the work is made in Malaysia or the work is first published in Malaysia.

Copyright is conferred on computer programs upon the creation of the work provided that all the statutory requirements have been fulfilled. There is no mandatory requirement as to registration for copyright protection. Although copyright is a non-registrable right in Malaysia and owners enjoy automatic protection, ownership can still be difficult to establish when there is an infringement by third parties. The CA 1987 provides that copyright owners may declare ownership over the works by way of a statutory declaration or by filing a voluntary notification to the Controller of Copyright, and this will be prima facie evidence of the facts contained therein.

Patent

Pursuing patent protection for computer software related inventions have always been complicated affairs. Notwithstanding the substantial differing substantive requirements employed by different patent jurisdictions from around the world on the subject matter, applicants also potentially face subject matter exclusion objections while attempting to convince patent examiners that their inventions are both novel and inventive.

Section 13(1) of the Malaysian Patent Act makes it clear what are specifically excluded from patent protection. Although there is no mention of computer software related inventions in this section or any section of the Malaysian Patent Act, Chapter 5 of the Guidelines for Patent Examination published by the Malaysian IP Office contains a specific portion on computer software related inventions. Therefore, in order to gain a software patent, the invention must possess a technical effect. The meaning of ‘technical effect’ is not provided in the provisions of the act. The guidelines, however, provide that a computer software related invention needs to contribute measurable technical improvements to the field of computing for it to be suitable for filing in Malaysia.

Computer software related inventions that only carry out basic data processing do not quality for patent protection in Malaysia. Needless to say, for computer software related inventions that carry out purely mental acts or business methods, the steps carried out by these inventions that are parallel to the mental acts and business methods which they are based upon are entirely excluded from patent protection due to Section 13(1) alone. However, if there are any components or modules within them that contribute to measurable, quantifiable technical improvements in the field of computing, these components or modules may potentially qualify for patent protection.

Therefore, aside from carrying out a pre-filing patentability search, potential applicants are strongly encouraged to review their inventions thoroughly to ascertain that the aspects and/or scope of their intended protection are not excluded from patent protection in Malaysia. The applicant should also be mindful to avoid claiming any open-source codes or their derivatives that are embedded within their inventions, assuming there are any, as these codes are already in the public domain. Furthermore, open-source codes by the very nature of their design allow them to run on any computer / computing devices, thus risk raising red flags with examiners when the patent application enters the prosecution stage.

Conclusion

The current policy of the Malaysian Government is to prepare the country for the digital economy. An important aspect of the implementation of this policy is to work towards the adoption of Industry 4.0 technologies in the manufacturing industry and related service sectors. Under its program, The Ministry of International Trade and Industry is even offering qualifying SMEs a complimentary I4.0 readiness assessment that will examine a business’s current status in terms of people, technologies and processes. It is to be expected that one of the outcomes of such a drive towards digitalization will be growing interest and activity in the field of patenting in the computing and communications spheres.

Author :Tanya Saraswat, A Student of Narsee Monjee Institute of Management Studies, In case of any query, contact us at Global Patent Filing, or write back us via email at support@globalpatentfiling.com.