Filing a Patent Application in Malaysia: What Applicants Should Know?

 

2017-05-15 15.47.19

Filing a patent application in Malaysia is not an easy task. There are several information that the Applicant or the patent agent needs to know in order to file a complete straightforward application. This article sets as a general guide to applicants on requirements and timelines for patent prosecution in Malaysia. It may be set as a guide to avoid unnecessary office actions from the Registry.

The ultimate requirement for filing a patent application in Malaysia is set out in Sections 11, 12, 13, 14, 15 & 16 of the Patents Act 1983. The applicant must ensure that the invention is novel, involves an inventive step and has industrial application.

Appended below are requirements for pending patent applications currently being processed by the Malaysian Intellectual Property Office (MyIPO):-

a. Patent application under the Paris convention

An applicant for a conventional application claiming priority under the Paris Convention must file his application within 12 months from the priority date. The following items are required for filing the same:-

1.    Name, address and nationality of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 1 (Request for grant of patent);

6.    Form 17 (Power of Attorney); and

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent);

Items 5) and 6) must be filed at the time of filing the patent application at the Patent Registration Office. Electronic copies may be sent ahead.

b. National Phase application under the PCT

An applicant for a PCT application entering the national phase may file his application within 30 months from the priority date. The following items are required for filing the same:-

1.    Name and address of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 2A (Fee for entering the national phase);

6.    Form 17 (Power of Attorney);

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent);

8.    PCT request form (PCT/RO/101) in English; and

9.    Search or Publication page (if available).

Items 5) and 6) must be filed at the time of filing the patent application at the Patent Registration Office. Electronic copies may be sent ahead.

c. Utility Innovation Application

An applicant for a utility innovation application claiming priority under the Paris Convention must file his application within 12 months from the priority. The following items are required for filing the same:-

1.    Name, address and nationality of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 14 (Application for grant of certificate for utility innovation);

6.    Form 17 (Power of Attorney); and

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent).

Items 5) and 6) must be filed at the time of filing the utility innovation application at the Patent Registration Office. Electronic copies may be sent ahead.

d. Divisional Application

An applicant for filing a divisional application must file his application within 3 months from the date of mailing of the examiner’s first report. The following items are required for filing the same:-

1.     Name, address and nationality of the Applicant(s);

2.     Name and address of the Inventor(s);

3.     Priority data (date, priority number and country of the basic application);

4.     Specification in English/Malay;

5.     Form 1 (Request for grant of patent);

6.     Form 17 (duly signed by the applicant);

7.     Form 22 (duly signed by the applicant);

8.     Form 5 or Form 5A; and

9.     Information of the parent application (application number and date of filing).

Items 5), 6) and 7) must be filed at the time of filing the divisional application at the Patent Registration Office together with a request for full or modified substantive examination. Electronic copies may be sent ahead.


e. Request for Substantive Examination Under the Paris Convention

An applicant requesting for a substantive examination for conventional / non-conventional/ utility innovation application claiming priority under the Paris Convention must be filed within 18 months from the filing date. The following items are required for filing the same:-

 

Full substantive examination:

1.    Particulars of corresponding patent applications: application number, filing date and status; and

2.    Results of searches and/or office actions and/or granted patents from the prescribed countries namely Australia, Japan*, Korea* UK, US, EPO, ASPEC member states or the International Search Report / International Preliminary Report on Patentability issued via PCT.

OR

Modified substantive examination

1.                  A certified true copy of the granted patent from any one of the prescribed countries namely Australia, Japan*,   Korea* UK, US or the EPO.

 

*a certified translation in the English language of the search report and/or office action and/or granted patent is required for filing at the Patents Registration Office.

f. Request for Substantive Examination Under the PCT

An applicant requesting for a substantive examination for a PCT application entering the national phase must file the application within 48 months from the international filing date. The following items are required for filing the same:-

 

Full substantive examination:

1.    Particulars of corresponding patent applications: application number, filing date and status; and

2.    Results of searches and/or office actions and/or granted patents from the prescribed countries namely Australia, Japan*, Korea* UK, US, EPO, ASPEC member states or the International Search Report / International Preliminary Report on Patentability issued via PCT.

OR

Modified substantive examination

2.                  A certified true copy of the granted patent from any one of the prescribed countries namely Australia, Japan*,   Korea* UK, US or the EPO.

*a certified translation in the English language of the search report and/or office action and/or granted patent is required for filing at the Patents Registration Office.

g. Amendment of clerical errors

An applicant requesting for amendment of clerical errors or obvious mistakes may file his application at any time while the patent is pending or has been granted. The following items are required for filing:-

 

1.     Form 16 (Request to amend application for grant of patent); OR

2.     Form 16A (Request to amend patent); and

3.     A copy of the amended page(s).

h. Recordation of change of name or address
An applicant filing a recordal of change of name may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the applicant); and

2.     Certified true copy of the certificate of change of name

i. Recordation of a Merger

An applicant filing a recordal of Merger may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the applicant); and

2.     Certified true copy of the certificate of merger

j. Recordation of an assignment

An applicant filing a recordal of Assignment may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the assignor);

2.     Form 17 (Power of Attorney duly signed by the assignee); and

3.     The original or a certified true copy of the deed of assignment.

All relevant forms should be accompanied by the prescribed fee. Applications and requests can be submitted by hand or via e-filing through the IP online system. Generally the e-filing fees is more cost saving.

It is hoped that the information above will be of help to potential applicants or patent agents. Please note that this article is merely a guide and is purely for academic purposes only. Further information may be obtained from The Patent Registration Office itself http://www.myipo.gov.my/en/myipo/ or a patent agent.

Filing a Patent Application in Malaysia: What Applicants Should Know?

Advantages of Patent Cooperation Treaty (PCT)

The PCT is open to countries that are member states of the Paris Convention, which concluded in Washington in 1970 and thereafter administered by WIPO. There are 148 contracting states until October 2013, Malaysia joined PCT on 16 May 2006 and came into force on 16 August 2006. It is an agreement for international cooperation in the filing, searching and examination of patent applications.

The Patent Cooperation Treaty (PCT) provides a savvy route for patent applicants to seek after patent protection at the same time in a different jurisdiction countries. The PCT route is represented by the extent to which they have adopted the PCT application for the international protection (select countries during application).

At the point when a PCT application is filed, it is then subjected to an international search, which carried out by ISA. The International Search Report (ISR) contains information of published documents that affect the patentability of the invention claimed, the patentability opinion also prepared by ISA. The applicant may choose to withdraw his application if opinion report is unfavorable. In case the international application is not withdrawn, the application will be published with the ISR by the International Bureau of WIPO.

 

PCT.gif

 

figure (from MyIPO)

 

PCT Advantages:

  • the applicant has more time (up to 18 months) than Paris Convention application to decide which foreign countries to apply the patent application.
  • let patent applicant to delay strategies decision.
  • provides preliminary feedback regarding the patentability of said invention.
    Applicant can evaluate the chances of his invention after ISR has been delivered.
  • allow patent applicant to present argument for patentability and amend claim prior to filing with national phase offices.
  • delay prosecution cost of filing application in multiple countries
    to prepare the translations (if required) and to pay the national fees of application.
  • the formal ground of examination of processing the application cannot be rejected by the designated office if his international application is in the form prescribed by the PCT.

 

The PCT system enables the applicant to make a single application in Malaysia (the international application) and then designate as many other countries that are involved in the PCT. Bear in mind that the PCT system is a patent filing system, not patent granting system, there is no way by paying one-time fee of PCT application that can covered international application.

Advantages of Patent Cooperation Treaty (PCT)