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.

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

UTILITY INNOVATION VS. PATENT

What is IP?

The above video briefly explained the types of Intellectual Property (IP). There is limited information on Utility Innovation. Thus, today I will explain about Utility Innovation in IP.

Do you know what is Utility Innovation (UI)? Some people may not aware that UI is one of the IP elements. Terms such as ‘petty patent’, ‘innovation patent’, ‘minor patent’, and ‘small patent’ may also be considered to fall within the definition of UI.

Utility Innovation is another type of intellectual property that is very similar to patent. It is an exclusive rights conferred to an innovator that manages to come up with an incremental improvement to an existing product or process. With the exclusive right, the innovator can work the incremental invention by preventing others from exploiting the same without prior consent.

UI1

Source

This exclusive right is available in a number of national jurisdictions, which include Malaysia. The protection is territorial. In Malaysia, UI is governed by Patents Act 1983. The term of protection for a utility innovation is 10 years and subject to renewal for two consecutive 5 years. In the event that a particular inventor renew the invention twice, the duration of protection is equivalent to patent i.e. 20 years. However, an application for extension must be accompanied by an affidavit of the owner of the certificate for the utility innovation showing that the utility innovation is in commercial or industrial use in Malaysia explaining satisfactorily its non-use.

So, what is the difference between UI and patent?

UI and patent seem to have overlaps. How?

  • Firstly, it is possible to apply for both patent and utility innovations in respect of one invention. However, only one can be granted for the same invention.
  • Secondly, it is also possible for the application for a patent to be converted into a certificate of utility innovations and vice versa. To do this, certain formalities would have to be complied with.

Registrability

Since UI is considered as incremental invention, the requirement for obtaining protection also less stringent. To qualify protection for UI, the requirement of inventive step is omitted. The diagram below might help you in understanding what I mean.

UI

The threshold of novelty for utility innovations is also lower than a normal patent. Only local newness is required, i.e. that it must not be known or disclosed in Malaysia.

  •  no requirement for worldwide disclosure as disclosure outside Malaysia is disregarded for the purpose of determining prior art.

Based on section 14(1) of Second Schedule of Patent Act 1983, a utility innovation is new to Malaysia if it is not anticipated by prior art.

Registration

The procedure of registration of UI is similar to patents. Each application will go through the formality and substantive examination. All rules pertaining to acquisition, exercise and termination of right of patents would be applicable to UI.

In a nutshell, patent and UI can be concluded as table below:

Untitled

Statistics

Now, lets see the application statistic of UI and patent in Malaysia. Based on the explanation above, it seems to be easier to get protection under UI rather than patent. Nevertheless, the statistics of application in MyIPO for UI is minimal compared to patent.

Picture2

Data as at year 2011. The statisics showed that the application for UI is marginal as compared to patent application (regardless local or foreign applicants).

Advantages

So, why we should apply for UI if we have an invention that might no be granted a patent? There are some advantages of UI, as follows:

  • One of the main advantages is that filing a UI is much cheaper than obtaining and maintaining a patent
  • UI is normally granted faster than a patent due to lower threshold than patent
  • UI may encourage local innovation so that local industries produce more goods
  • UI can protect valuable inventions/innovations which would otherwise not be protected under the standard patent law or other intellectual property laws
  • UI can provide revenue to governments in the form application fees etc.
  • Registered UI rights can act as a source of valuable information via published specifications
  • The existence of a UI may reduce incentives for industry to lobby for the inclusion of minor inventions

Many of Malaysians are actually creative and innovative in nature. Perhaps without they realized, the tweak on any instrument they use in their daily life can be registered as UI. Based on my very own experience in my hometown, there are many new instruments that villagers invent to solve their daily problem. Some of them are really have a good prospect! However, lack of information about IP and particularly UI may lead to small number of UI’s registration. Therefore, MyIPO’s continuously put an effort in giving awareness to Malaysian about IP. Perhaps we can see the number of application in UI increase!

Okay, I think enough for now. Till we meet again.

Zuherryna dimyati – I am not an IP Guru, but I wrote based on what I’ve learnt in my MIP classes.
UTILITY INNOVATION VS. PATENT

Patent Prosecution Highway (PPH) in Malaysia- Advantages & Disadvantages

Patent Prosecution Highway (PPH) in Malaysia- Advantages & Disadvantages

 

Introduction

As the globalization of the world economy advances, the number of filed patent applications tends to increase worldwide. Patent assets may be used as leverage during business transactions (e.g. mergers, licensing, acquisitions, etc.). However, the backlog of applications awaiting examination in MYIPO and most major Patent Offices is a significant issue.

 

Although not clearly defined, the backlog of unexamined patent applications consists of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and as of 2009 it reportedly continues to grow.

 

The backlog of patent applications is counter-productive to legal certainty, and that has a negative effect on the innovation process. According to a 2010 study by London Economics, “the cost to the global economy of the delay in processing patent applications may be as much as £7.65 billion each year.”

 

Since 2006, a number of collaborations, known as Patent Prosecution Highway (PPH), have been set up between various patent offices, initiated to provide accelerated examination procedures by sharing information between both Patent Offices, ultimately reducing the patent backlog.

 

Effective from 1 October 2014, MyIPO and JPO will commence the PPH pilot program for a period of three years. The program will initially run for a trial period of three years until 30 September 2017, followed by an evaluation to determine whether and how the program should be fully implemented thereafter.

 

What is PPH?

Under the PPH program, if the claims of an application have been found to be acceptable by a 1st patent office, the applicant may then request accelerated examination of a corresponding application at a 2nd office. The PPH is a procedure whereby Patent Offices can make use of relevant work already conducted by another office when conducting examination.

PPH leverages fast-track examination procedures already in place among participating Patent Offices, allowing applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

 

The following Patent Offices are participating in the GPPH agreement:

PPH Countries

Types of Request

1) PPH

2) PCT-PPH

*PPH can be done through the PCT. With PCT-PPH, you essentially pay the same but you have a PCT application as well.

 

How does it work in Malaysia?

PPH Malaysia

 

This PPH program between MyIPO and JPO allows both Malaysian and Japanese companies to obtain patent rights quickly in their respective countries.

 

The requirements for filing a request for PPH are as follows:

  • The 2nd Patent Office (SPO) patent application is in particular relationship with the 1st Patent Office (FPO) application, i.e., claims priority under Paris Convention, PCT national phase;
  • The FPO patent application has at least one claim that was determined by the FPO to be patentable / allowable;
  • All the claims in the SPO patent application sufficiently correspond to the allowable/ patentable claims in FPO patent applications;
  • The examination has not begun in the SPO at the time for request for PPH;
  • A request for Substantive Examination must have been filed at SPO either at or prior to the time of the PPH request.

 

The following are the documents that need to be filed during the filing of the request for PPH:

  • PPH application form.
  • Copies of all office actions in English.
  • Copies of allowable claims in English.
  • Copies of reference cited by JPO examiners.
  • Claim correspondence table.

 

Advantages

For Patent Offices:

– It permits each participating patent office to benefit from the work previously done by the other patent office

– Reduces duplication of efforts and decrease workload

– Improves the quality of examination worldwide

 

For Patent Applicants:

– Reduces work/ costs

– Reduces time to final disposition

– Applicants are able to streamline their patent portfolios.

– Stability of the patent rights granted.

 

Disadvantages

– Examination under the PPH is NOT a rubber stamp approval.

– Examination still takes place before both patent offices.

– Applicant must still comply with all the requirements of each jurisdiction (e.g. criteria for

patentability, formalities, duty of disclosure, etc.).

– Claims need to be strategically aligned to correspond to those allowed by the 1st Office.

– Type of claim amendments permitted may be restricted.

– Accelerated examination status obtained using the PPH is not transferred to continuation applications.

 

Conclusion

The PPH is already showing signs of success. The fact that highways exist and are successfully conveying applications is a proof that work sharing among Patent Offices is possible. Driving a patent application along the PPH can be fast and relatively inexpensive experience. The increasing use of PPH will likely add to the congestion, but with careful planning it can make for a pleasant ride.

The next major challenge for the PPH program, however, is to integrate into the multilateral patent system. In addition, the PPH has some large potholes for the unwary applicants.

Last but not least, the applicants must consider the criticality of their patent application, where patent protection is needed, the scope of subject matter to be protected, how that scope may vary across different countries, the timing for obtaining protection, and cost limitations. These factors will dictate the applicants’ choice of using the PPH or sticking to the road of traditional prosecution.

 

Image

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)