Patent

Introduction


The Patents Act 1983 (the “Patents Act”) and the Patents Regulations 1986 (the "Patents Regulations"), which came into force on 1 October 1986, govern the grant and validity of patent rights for inventions in Malaysia. These statutes provide an independent patent system for Malaysia under which an application must be filed with the Intellectual Property Corporation of Malaysia (MyIPO) to secure the grant of a Malaysian patent. The earlier system of re-registering UK patents has been repealed.

Various updating amendments to the Act and Regulations have been introduced over the years, with significant changes being made in 1995, 2001, 2003 and 2006.

On 16 May 2006, Malaysia acceded to the Patent Cooperation Treaty (PCT). As a result, the PCT entered into force for Malaysia with effect from 16 August 2006. The PCT provides a new avenue for Malaysian individuals and companies to initiate the complex process of securing patents overseas, by allowing them to file an international patent  application. It also simplifies the process of applying for a Malaysian patent for overseas applicants that have filed a PCT application on or after 16 August 2006.


Definition of invention


The Act defines an invention as an idea of an inventor which permits in practice the solution to a specific problem in the field of technology. An invention may be, or relate to, a product or process.


Patentable inventions


To be patentable, an invention must:

• be new, i.e. not disclosed to the public in Malaysia or anywhere else, before the priority date of the application;

• involve an inventive step, i.e. not be obvious to a person reasonably skilled in the art, having regard to what was already in the public domain as of the priority date;

• have industrial application, i.e. be capable of being made or used in any kind of industry;

• be capable of definition, in one or more claims of the patent application, in terms of its technical features; and

• be supported by an enabling description and any necessary drawings that teach others how to make and work the invention, and disclose the best mode of doing so that is known to the applicant.

 

Excluded inventions

 

In addition, an invention will not be patentable if it falls within any of the following categories of excluded subject-matter:

• discoveries, scientific theories and mathematical methods;

• plant or animal varieties or essentially biological processes for the production of plants or animals, other than man made living micro-organisms, microbiological processes and the products of such  microbiological processes;

• schemes, rules or methods of doing business, performing purely mental acts or playing games; and

• methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (although products used in any such methods are patentable).

A patent shall not be granted for an invention in respect of which the performance of any act would be contrary to public order or morality.


Novelty grace period


Although worldwide novelty is one of the requirements for patentability, the Patents Act expressly allows for public disclosure of the invention which occurred no more than one year before the filing date of the application to be disregarded, if such disclosure was due to acts done by the applicant (or his predecessor in title) or was a consequence of any abuse of the rights of the applicant (or his predecessor in title).


Applicant and inventor


An inventor (i.e. the person who actually created the invention) is entitled to apply for a patent. If there is more than one inventor involved, a joint application may be made which allows each inventor to claim an equal share in the patent rights. However, in cases where the invention was created by an employee in the course of his/her employment or made pursuant to a commission, the patent rights are deemed to accrue to the employer or the commissioner respectively. This is subject, however, to the terms of the contract.


Priority claim


As Malaysia is a member of the Paris Convention, an applicant can claim the priority date of a first application in respect of the invention that was filed in another Paris Convention country. A priority claim may also now be made in respect of a first application made in a World Trade Organization (WTO) member country. In either case, the application in Malaysia must be filed within a period of 12 months from the earlier application’s filing date.

The effect of a priority claim is that the novelty and inventive step of the invention will be determined relative to the state of the art (i.e. what was in the public domain) as of the priority date instead of the filing date of the application. As a result, any relevant publications that occurred after the priority date do not need to be taken into account when assessing patentability.


Application process


In order to obtain the grant of patent in Malaysia, an application must be filed with MyIPO. To secure a filing date, the application must include:

• the name and address of the applicant;

• the name and address of the inventor;

• a description of the invention, together with any necessary drawings referred to in the description;

• at least one claim; and

• payment of the filing fees, consisting of a basic fee plus a fee for each claim in excess of 10.

If the application claims the benefit of the priority of an earlier application, the application must also include initially at least the country and filing date of the earlier application.

The application should be made using Patents Form No. 1. This and other necessary forms are available from http://www.myipo.gov.my/.

Additional formal requirements, that may be completed later if necessary, include:

• an abstract;

• the serial number of the priority application (due within 3 months of the Malaysian filing date);

• an Appointment of Patent Agent form, duly signed by the applicant, where a registered patent agent is engaged to file the application; and

• where the applicant is not the inventor, a statement justifying the applicant’s right to the patent (for example, by virtue of employment or assignment).


Patent Cooperation Treaty (PCT)


The Patent Cooperation Treaty (or PCT) is an international agreement on the filing of international applications for patents. Although there is no such thing as a world patent, the PCT provides a simplified way of initiating the process of obtaining national patents in the PCT member countries (of which there are more than 140).

An international application is filed with one patent office (the Receiving Office) in one language, and is subject to international search (by an International Searching Authority) and publication (by the  International Bureau). There is also an optional step of international preliminary examination (by an  International Preliminary Examining Authority), that allows a dialogue with an examiner on the issues of
patentability.

The filing of an international application is treated as equivalent to the filing of a bundle of national patent applications in the individual PCT member countries. The latter are obliged to recognize the international application, treat it as filed on the international filing date, and process it as a regular national patent application. These effects are dependent upon the applicant entering the national phase in time, by paying the national filing fee and providing a copy or translation of the PCT application. The results of any international search and examination done under the PCT in the international phase, on the other hand, are not binding on any national patent office.

Any PCT application with an international filing date on or after 16 August 2006 is entitled to enter the national phase in Malaysia within a term of 30 months from its priority date. In order to enter the national phase for the purpose of obtaining the grant of a patent in Malaysia, an application must be filed with MyIPO within the above 30-month term that includes:

• an identification of the PCT application;

• a copy of the PCT application in the English language; and

• payment of the filing fees, consisting of a basic fee plus a fee for each claim in excess of 10.

The national phase application should be made using Patents Form No. 2A.


Preliminary examination


After filing an application, a formalities officer at MyIPO will check that the minimum requirements for the accordal of a filing date have been met and, in that case, issue a Certificate of Filing that bears the allocated application number. In the case of a PCT national phase application, the international filing date will become the filing date of the Malaysian application.

The application will then be the subject of a preliminary examination in which various formal requirements are checked. In the case of non-compliance, a Preliminary Examination – Adverse Report will be issued, giving the applicant a period of 3 months to address the objections. Otherwise, or after successfully responding to any objections, a Preliminary Examination – Clear Report will be issued.


Substantive examination


Within 18 months from the filing date of the patent application (4 years in the case of a PCT national phase filing), the applicant must request for one of the substantive examination options, i.e. normal or modified substantive examination and pay the prescribed official fee, or request deferment. This 18-month (4-year) period is generally non-extendible and a failure to proceed with such a request in time will result in the application being deemed withdrawn. The choice of the particular type of substantive examination to be requested depends on a variety of factors. Note that for non-PCT originating  applications filed before 15 February 2011, the term for requesting examination is 2 years from the filing date.

Normal substantive examination is a regular, full examination of the application. However, if the applicant has filed any patent applications for the same or substantially the same invention in any of certain recognized foreign countries, the filing details and available search and examination results of those applications must accompany the examination request. The foreign prosecution results will normally be highly influential on the examination of the Malaysian application.

Modified substantive examination is a simplified examination process in which the applicant is required to amend the description, drawings and claims of the application in line with those of a patent that has  already been granted for the same or substantially the same invention in any of certain recognized foreign countries. For this reason, a request for modified substantive examination is required to be accompanied by a certified copy of the foreign patent, an English translation of the patent if it is not in English, and the necessary amendments for conformity with the foreign patent.

Currently, the relevant foreign countries as mentioned above are Australia, the United Kingdom, Japan, the Republic of Korea, the United States and applications/patents filed with/granted by the European Patent Office. For the purposes of normal substantive examination, any search or examination conducted by these patent offices under the PCT is also relevant.

If the information and/or documents required to support a request for normal or modified substantive examination are not available, the applicant may request deferment. There is no official fee payable for  requesting deferment. As from 16 August 2006, the deferred term for either type of examination request expires a uniform maximum period of 5 years from the Malaysian filing date. If, after being granted a deferment, the applicant does not proceed with a request for either type of examination, the application will be deemed withdrawn. Note that shorter deferment periods may still apply to applications filed prior to 16 August 2006.

After requesting examination, the application will be examined for compliance with the prescribed requirements set out in the Patents Act and Regulations. Normally, the applicant may expect to receive at least one adverse report that requires a response by way of amendment, argument or both, within a term of 2 months. The application will be refused if no response, or no satisfactory response, is made in time.

Upon the successful completion of the substantive examination, the patent will be granted, a Certificate of Grant will be issued, and the patent will be recorded in the Register. Also, the particulars of the patent and the abstract will be published in the Government Gazette.

The above summary of the patenting process is necessarily simplified. Numerous detailed requirements that must be met either at the outset, or before an application can proceed to grant, are set out in the Patents Act and Regulations. For this reason, it is strongly recommended to engage a registered patent agent to advise you on the protection of an invention and to represent you before the Registrar of Patents when your application is filed and examined. Many members of MIPA are registered patent agents.

 

Expedited examination


Since 15 February 2011, there are formal provisions for requesting expedition of examination of a patent application. There is no time limit for requesting expedition provided the application has already been laid open to public inspection and a request for examination has been submitted. Justification for the expedited examination is required in the form of a Statutory Declaration. A non-refundable official fee is payable.

The grounds on which expedited examination may be considered are:

• national or public interest;

• evidence of potential infringement or ongoing infringement proceedings;

• registration is a condition to obtaining monetary grants from the Government or institutions recognized by the Registrar;

• the invention has already been commercialized or the applicant intends to do so within two years of requesting expedition;

• the invention relates to green technologies that will enhance the quality of the environment or conservation of energy sources; or

• other reasonable grounds.

Upon approval of the request by MyIPO, the applicant must pay a further, substantial official fee for the expedited examination.

According to MyIPO, the applicant can expect an examination report within four weeks of paying the expedition fee. A term of three weeks is given for response and no extension of time will be allowed. If no response is filed within this shortened timeframe, the application will revert from fast track to normal track.


Term of protection


For an application filed on or after 1 August 2001, the patent granted on it will be valid for up to 20 years from the date of filing, provided the prescribed annual fees are paid.

If the patent originates from a PCT application, the maximum term will be 20 years from the international filing date.

Patents granted on applications filed before 1 August 2001 have a maximum term of 15 years from their date of grant, or 20 years from their date of filing where the 20-year term expires later (and subject to  the application or patent being pending, or granted and in force, as of 1 August 2001).

The first annual fee is due one year from the date of grant. The amount of the annual fee increases as the patent gets older.


Exclusive rights


After grant, the patent owner has the exclusive right to exploit the invention covered by the patent in Malaysia and to take legal action against any infringer of the patent; to assign or transmit the patent; and to conclude licence contracts.

The right of exploitation covers:-

if the patent is granted in respect of a product

• making, importing, offering for sale, selling and using the product, and

• stocking such product for the purpose of offering for sale, selling or using; if the patent is granted in respect of a process

• using the process, and

• making, importing, offering for sale, selling and using a product obtained directly by means of the process.

Generally, a patent is infringed by any person who does any of the above acts, for industrial or commercial purposes, without the consent of the patent owner.


Provisional protection


As from 20 April 2006, a patent application is laid open for public inspection after 18 months from its priority date (which means the filing date in the case of an application having no priority claim). It is then possible for third parties to obtain copies of the specification. Upon the grant of the patent, the patent owner has the right to claim compensation for any third party use of the invention in the period between the application being laid open for public inspection and its date of grant.


Utility innovation certificates


The Patents Act also provides for the grant of utility innovation certificates. A utility innovation is defined as any innovation which creates a new product or process, or any new improvement of a known product or process and which can be made or used in any industry. Only one claim is allowed for a utility innovation application. The procedure for grant is essentially the same as for patents, including the need to request substantive examination. However, for registration, there is a requirement of novelty, though not inventive step.


Transfer of patent rights


The Patents Act provides for patents and utility innovation certificates to be transferred by way of assignment or transmission. The registration of assignments/transmissions is not mandatory, though it is strongly advisable. Registration is necessary in order for the transaction to have effect against third
parties.


Invalidation


A patent may be invalidated at any time after its grant upon the application of an aggrieved party to the High Court. The grounds for invalidation include that the invention is not patentable, or the patent owner is not entitled to the patent. Invalidation may also be sought by way of counterclaim by the defendant in an infringement action.