Working to protect Intellectual Property rights

The purpose of intellectual property (IP) law is to protect as well as reward intellectual creations. Wendy Lam, managing partner of V Chong W Lam, explains how the law works and what is expected of lawyers who specialise in this type of law.

Inventors are understandably protective of their inventions, particularly if their inventions cost a lot of money to produce and are able to help them generate more money. By patenting their invention, they can exploit the invention without fear of being copied by another person or organisation during the period of protection. Even if their invention is copied, there is recourse in the legal courts. In Malaysia, that period of protection is 20 years from the date of filing the patent application. In this instance, the law protects the inventors and allows them to enjoy the fruit of their intellectual labour.

In addition to patents, there are other intellectual property rights which include copyright, trade and service marks, industrial designs, trade descriptions, geographical indications and layout designs of integrated circuits among others. Each of these areas constitutes a body of law in itself.

Copyright covers a wide area that ranges from literary, musical and artistic works such as books, computer software, songs, and paintings, to films, sound recordings and broadcasts. Copyright prevents others from using these works without payment. Creators of these works have exclusive rights to control the reproduction in any material form; the communication to the public; the performance, showing or playing to the public; the distribution of copies to the public by sale or other transfer of ownership; and the commercial rental of these works to the public.

New developments

There are constant developments within IP law as this type of law is closely linked to innovations and technological advances. IP lawyers are actively lobbying for international conventions to recognise new rights or to change standards for implementing these rights. For example, in Malaysia, only visual marks are recognised whereas in the US, the registration of sound trade marks as well as smell trade marks are allowed.

The work

All lawyers, regardless of area of specialisation, will meet with clients, research the subject matter, read cases, and draft legal documents. In IP specifically, the work involves prosecution, licensing and litigation. In prosecution work, an IP lawyer needs to be well versed with rules and regulations pertaining to the registration of trade marks, industrial designs, patents, geographical indications and layouts of integrated circuits. Dealing with the Malaysian Intellectual Property Office (MyIPO) will be an everyday affair. One form of exploiting IP is to license it to third parties in return for royalties, which involves not only IP but also contract and commercial law.

Litigation typically occurs when there is infringement of an IP right or when parties dispute ownership of an IP right. It should be the last resort and lawyers should explore all other means to resolve the problem before it gets to that stage. While creativity is not commonly associated with the legal profession, it is essential for IP lawyers to be creative when looking for solutions for clients.

IP lawyers can also be involved in policy work that includes lobbying government ministries regarding certain rights for clients.

It is a misconception that all clients want monetary compensation when their IP rights have been infringed. Some clients just want their works to be used or marketed in their original forms. For example, one client felt that substantial modifications made to his original work (a sculpture) affected his reputation as an artist, and therefore wanted his work to be restored to its original form. Other clients are concerned about and want to assert ownership over specific branding to enhance their reputation and goodwill.

While it's possible to specialise in one area of IP rights, the awareness of IP law is still low in Malaysia compared to more developed countries such as the US where there are trade mark attorneys looking specifically at trade marks only or in Europe where patent attorneys deal exclusively with inventions and utility innovations and are likely to possess a technical PhD in their area of expertise.

Is IP law for you?

As IP law cuts across all sectors and industries, from tangible things like machinery to intangible things like music, IP lawyers deal constantly with clients from diverse backgrounds and industries, and more often than not, with cutting-edge technology. For example, you might have cases that deal with biotechnology or genomes, or cases involving pharmacology and efficacy of certain types of drugs. Therefore, a strong foundation in the law is crucial so that you can come up with solutions for your clients. It helps to have a natural curiosity or interest in general and specific knowledge of various industries.

A strong command of the English language is necessary as you need to describe various processes or products using technical terms depending on the industry. For example, you could be describing manufacturing processes, or layout designs of integrated circuits in electronic products, or the contraindications of a particular drug. You also need to be meticulous in your work as details can trip you up.

Needless to say, you need to have studied IP law in your undergraduate law studies if you want to specialise in this area. It would also help to have studied contract, commercial transactions, and corporate law.

The future

The prospects appear bright for litigators and those involved in licensing work. As the awareness of IP law increases, the work will also increase in tandem. This is because IP is an asset which generates substantial income for its creator if protected and exploited appropriately.

Some advice

IP law covers a wide area with sets and subsets of laws for each area of IP rights. In addition to reading lots of cases, aspiring IP lawyers must be prepared to read widely in order to gather information on other industries. The ability to find practical solutions for clients is critical. You must have the right attitude towards the work and be willing to be trained.

About the author

Wendy Lam graduated from the University of Malaya in 1995. She worked for an IP firm for 7 years before setting up her boutique firm V Chong W Lam with a former university coursemate in 2003. She is currently the managing partner and her responsibilities include looking into the administrative aspects of the firm in addition to her legal portfolio.

© GTI Specialist Publishers. Reproduced with permission.