Malaysian Patent Agent


Patents in the context of Malaysian Law


Malaysia grants two types of patents: Standard Patent and Utility Innovation


Patent Grants are exclusive rights given for an invention, which is a product or a process that provides a new way of doing something, a new process or a new technical solution to solve a problem. It is required to have inventiveness or an inventive step. Patent grants can have multiple claims.


An Utility Innovation Certificate is an exclusive right granted for a "minor" invention which does not require to satisfy the test of inventiveness as required of a standard patent. Utility Innovation can have only one claim and thus the protection granted is narrower.




What is patentable under the Malaysian Patent Act 1983?


It is patentable if:-

* it has NOVELTY (newness)

* it incorporates an INVENTIVE step (which is not obvious to those skilled in the arts)

* it is applicable in INDUSTRY


It is not patentable if:-

a) it is a mathematical models, a discovery or it is a scientific theory ;

b) is a plant or animal variety or essentially biological process for the production of plant or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;

c) is a scheme, rule or method for doing business (including internet business methods), performing purely mental acts or playing games;

d) is a method for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body, provided that these shall not apply to products used in any such methods.


Malaysian Patent Grant confers the right to the owner to exclude others from using the invention and:-

a) a exclusive right to exploit the invention ;

b) assign the patent to a third party;

c) to license out


Protection Period

A Malaysian Patent is protected for 20 years from the date of filing and a Malaysian Utility Innovation is protected 10 years( extendable twice by 5 years each) from the date of filing and subject to commercial usage.


Malaysian patents are governed by the Malaysia Patents Act 1983 (amended)


Can a Malaysian file in other countries first?

Under the "National Security (Section 23A and 62A ) Enactment Law", Malaysian citizens are required to first file in Malaysia before filing in other countries. However, for those who deem it fit to file first in other countries, they must first seek written authority from the Registrar of Patents.


Filing Process and Timeframe


Filing in Malysia requires:-

* application forms (including appointing agent form where relevant)

* specifications and drawings

* required fees


Examination will then be carried out for:-

* Formatting and completeness of documents (about 5 weeks)

* Substantive Examination (about 4 to 5 years)


Substantive examination can only precede when permission is granted and the required fees paid. There is also a new expedited process for substantive examination. Again, a request has to be filed to get permission and an additional fee to be paid. Expedited process cuts short the period of prosecution by six months.


A Malaysia Patent Grant will be issued when the examiners find that the requirements are fulfilled.


File under the Patent Co-operation Treaty (PCT)

For international applications that has entered the national phase in Malaysia, a request for substantive examination must be filed within 20 months from the filing date of the first application in a national phase country.


However, a PCT application has to be lodged and amount of fees paid in the host country within 12 months of first filing to enjoy priority claims.


For ASEAN Patent Examination Co-operation ("ASPEC") Programme :-

If full substantive examination is requested for a Malaysia patent application, and if the applicant has filed a corresponding application in a participating ASEAN country, it is possible to submit search and examination results from the corresponding application to assist with examination of the Malaysia patent application. Countries like Cambodia, Indonesia, Lao PDR, Singapore, Thailand, Vietnam, Philippines and Malaysia are members of this grouping.


Patent Infringements | Malaysia

* Where to file for infringements?

All infringements must be filed at the High Court


* Is there a posibility of remediation?

There is no express provisions for remediation at the moment.


* Who can represent at the court?

Advocate or Solicitor.


* What to initiate proceedings?

File a writ of summons/statement of claim at the court.


* Can a party be compelled to disclose documents/materials?

Yes.


* How are arguments and evidents presented?

When a court proceeding starts.


* How long does a trial last?

12 days.


* Can court desicions be based on precedent cases?

Yes.


* Can a patent be invalidated?

Yes.


You might want to take a closer look of Malaysian Infringement Laws

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To learn more and avail yourself to the better patenting system, email us at terry@patentagentip.com