Malaysia National Phase Application

Our client has a PCT application which will enter into Malaysia phase, however, the priority application has just rejected as being failed to comply with the enablement requirement.
The specification describes a test result, namely, recites that “it is verified by clinical test that the total ratio of therapeutic effectiveness is up to 80%”. Then, the examiner contends that the specification discloses only the test result (80%) but no test method or process and the test was not described in such a way as to enable one skilled in the art to know how to obtain the result and be sure of the 80% effectiveness.
Accordingly, the specification fails to comply with the enablement requirement. In this situation, according to your patent application practice, please give us your determination that, if we file the application in Japan, whether the application might substantially be rejected under the same reason as set forth above.
If so, could you give us some suggestions to successfully avoid the above question?


We recommend the following steps to be taken with regards to the Malaysian national phase application:

Step 1: File the national phase application in Malaysia.

Step 2: Allow the priority application to be abandoned (assuming this is what your clients' wish).

Step 3: Request for a full substantive examination under Section 29(A) of the Malaysian Patents Act, which means that the Malaysian national phase application will be examined on its own merit.

Step 4: Await the Malaysian Examiner's report to evaluate next action vis-avis the Malaysian national phase application.

General Questions on Filing Patent Application in Malaysia

Question 1
Kindly let us know what is the deadline for requesting examination (patents) if the national phase of a PCT application is entered?

Answer 1
4 years from the PCT filing date.
However, on or before this deadline, should a deferment request be filed, the said deadline will be extended to 5 years from the PCT filing date.

Question 2
If the deadline for requesting examination has expired, does your national law foresee a remedy, or has the application definitively lapsed?

Answer 2
No provision for remedy. Application will be considered withdrawn.

Question 3
Does your law foresee that a small entity status enjoys a reduction of fee(s)?

Answer 3

Question 4
Should an assignment document be notarized?

Answer 4
Yes, should the original not be available.
Note: An assignment document is not a requirement for filing patent / design applications. However, the same will be required in the case of a merger or assignment from one entity to another.

Question 5
Should an assignment document be legalized by Apostille or by the Consulate?

Answer 5

Question 6
Does your PTO request the filing of original documents (POA, assignment) or is a copy sent only by fax of those documents accepted by your PTO?

Answer 6
Only originals are accepted.

Question 7a
In case the priority document is drafted in a language other than English, do you need a verified English translation of the priority document, i.e. duly verified by the translator or authorized by the applicant?

Answer 7a
Yes, a verified English translation of the priority document, i.e. duly verified by the translator will be required.

Question 7b
If yes, what is the deadline for filing such translation with your PTO?

Answer 7b
Within 3 months from the filing date of the PCT national phase (patents) / filing date (designs) and no extension of time is possible.

Question 7c
What is the legal consequence if the priority document is not filed within the deadline?

Answer 7c
Loss of priority date.

Question 8
What is/are the official language(s) for filing a patent application?

Answer 8
English is the main language used.

Question 9
What is/are the official language(s) in which documents like POA, assignments must be drafted?

Answer 9
English is acceptable.

Question 10a
Kindly let us know if you need particulars for filing an application in your country (patent application number, copy of the office actions, responses to the office action, …) of corresponding foreign patent applications/patents?

Answer 10a
Yes. This includes:
(a) prescribed information / supporting document concerning filing of any application outside Malaysia.
(b) prescribed information concerning results or search / examination carried out by an International Searching Authority.

Question 10b
If yes, mention the countries/organization(s)

Answer 10b
Prescribed countries: US, AU, EP, KR, JP, GB.

Question 10c
If yes, is there a deadline for filing these particulars?

Answer 10c
At the time of requesting examination.

Question 10d
If yes, what is the legal consequence if we do not file such particulars despite corresponding foreign patent application(s)/ patents exist?

Answer 10d
Application will be considered withdrawn.

Power of Attorney Requirements for the Payment of Patent Annuities in Malaysia

Question 1
Is a power of attorney required to make patent annuity payments in Malaysia?

Answer 1
Yes, unless the annuity agent is also the prosecution agent of the patent.

Question 2
Is the power of attorney per proprietor or per each individual patent? For example, if a patent owner has 10 patents and wants to make an annuity payment on each patent does the patent owner need to submit 10 power of attorney forms (1 for each patent) or can the patent owner submit 1 power of attorney which would cover annuity payments for all 10 patents?

Answer 2
A single power of attorney is sufficient and the same may be used to cover annuity payments for all 10 patents.

Question 3
How often does the power of attorney need to be submitted?

Answer 3
Only once. Should there be a change in the agent on record, then a fresh power of attorney needs to be submitted only once for the new agent on record.


US Patent Application : Information Disclosure Statement (IDS)

What is the deadline to submit an Information Disclosure Statement (IDS) having details of the "information that is material to the patentability" for a given U.S. patent application.

The rules for when an Information Disclosure Statement (IDS) must be filed are somewhat complicated. As a general rule, an IDS can be filed at any time during the U.S. patent prosecution. The question is whether a fee must be paid when the IDS is filed. The fee is $180, and this fee is charged in situations where the IDS submission forces the Patent Examiner to re-evaluate the invention. Here is a summary of the rules:

1. There is no fee if an IDS is submitted within three months of the filing date of the U.S. patent application.

2. There is no fee if the IDS is submitted before a first Office Action is mailed out by the Patent Office.

3. There is no fee if the information for the IDS was received for a corresponding application from another patent office, and the IDS is submitted within three months of receiving the information.

Requirement for Disclosure of Either Prosecution Results and/or Prior Art


We are trying to identify the applicable regulations for obtaining an Access and Benefit Sharing (ABS) agreement and related permits for biological materials obtained in Malaysia. Our understanding is that there is a policy framework but no implementing laws or regulations at the national level, but that certain states, e.g., Sarawak and Sabah regulate such activity locally. Can you readily say what would be the appropriate procedure, for example where a Malaysian research institution is collaborating with a US corporation (our client) to obtain and test materials from Malaysia?

Please let us know if this is a more complex query than you can answer in a simple response.

This does not come under Patent Laws. We have received feedback from the Ministry of Natural Resources and Environment with regards to Access and Benefit Sharing requirements in Malaysia. We provide herewith the information relevant to your enquiry.

At the moment there is no specific domestic law in Malaysia as you rightly pointed out on this matter (except for Sabah and Sarawak which have state laws). Malaysia is currently in the process of developing such a law. Nevertheless this matter is governed by the National Policy on Biological Diversity (1998) and as an interim measure when a Malaysian Research Institution is working with a foreign collaborator, the Economic Planning Unit (EPU) Guidelines applies.

(A) Application to conduct research in Malaysia

According to these guidelines a foreign researcher (having a Malaysian counterpart) who intends to conduct research in Malaysia is required to obtain prior permission by filing in the following documents:

(1) Application to conduct research in Malaysia (EPU/ Research Form 1); and
(2) Immigration Form Im 12 – Pin. 1/97

The above documents must be accompanied by:
(1) A research proposal containing objective, scope, methodology, conceptual definitions, location and schedule of research;
(2) Official letter from the financial sponsor stating the amount of financial assistance obtained and the term of contract (if applicable);
(3) Letter of consent from Malaysian counterpart;
(4) Identification of researchers (eg. Copy of passport);
(5) Application fee of MYR50

The EPU will coordinate with the relevant local parties (ministries/departments/agencies/state governments) to process the said application and will inform the applicant of the approval status. If approved and upon payment of a registration fee of MYR150, a researcher pass will be issued after which, the researcher is permitted to start the research.

(B) Conducting research in Malaysia

The researcher issued with a researcher pass is subject to the following:
(a) Code of Conduct when conducting research in Malaysia; and
(b) Collection and Distributing Specimens

The code of conduct makes mention of the following:

Any collection and distribution of specimens must be in accordance with the Guidelines for the Collection and Distribution of Specimens (enclosed herewith as Appendix B3). The researcher has to obtain written approval from the relevant department(s), stating details of the specimens if any and submit a copy of the letter of approval to EPU before taking the specimens out of the country.

The Guidelines for collection and distributing specimens is divided into there types of specimens being Herbarium Specimens, Museum Specimens and Living Specimens. The said guidelines spells out the mode of distribution of the said specimens to the relevant department(s) as deposits, as well as requirements of permits for the specimens to be kept for use by the researcher. Should you require more information on a specific biological material, kindly let us have further details on the same.

Patent Filing by Malaysian Inventors

As we understand it, Malaysia has a first patent filing requirement whereby an inventor who conceives an invention in Malaysia and who wishes to file a patent application for the invention is required by law to submit their application to the Malaysian Patent Office first or get a security clearance from the Malaysian Patent Office in order to file elsewhere first. Can you let us know what the consequences are if the inventor doesn’t file the application first in Malaysia or get a security clearance before filing the application elsewhere?

The Malaysia Patent Act 1983, requires that patents originating in Malaysia to be filed in Malaysia first.

Section 23A of the Malaysian Patent Act 1983 elaborates on "Applications by residents to be filed in Malaysia first". The section states no person resident in Malaysia shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless -

(a) an application for a patent for the same invention has been filed in the Patent Registration Office (MyIPO) not less than two months before the application outside Malaysia; and
(b) either no directions have been issued by the Registrar in relation to the application or all such directions have been revoked.

This means that if the inventor is a Malaysian resident or citizen or the applicant is a Malaysian resident or citizen or a company organized under the laws of Malaysia, the patent application must be first filed in Malaysia. If the applicant has no interest in filing in Malaysia or intends to file elsewhere first before filing in Malaysia, then a foreign filing license must be obtained from the Patent Registration Office (MyIPO).

A request for such license must be accompanied with a copy of the patent specification to be filed elsewhere together with the details of the Malaysian inventor and/or applicant.
Under Section 62A, any person who files or causes to be filed a patent application in contravention of the said Section 23A, commits an offence and is liable on conviction to a fine not exceeding RM15,000.00 or to imprisonment for a term not exceeding two years or both.

Modified Substantive Examination

If an applicant selects Modified Substantive Examination but the examination of all of his corresponding applications in Australia, Japan, Korea, Europe, and the US is not completed by the 63-month deadline in Malaysia, can the applicant somehow obtain more time in Malaysia (perhaps, by filing a divisional application)?

Should an applicant wish to file a request for modified substantive examination but the examination of corresponding applications in the prescribed patent offices (AU, JP, KR, EP, UK, US) is not available at the expiration of the 63-month deadline, the applicant will not be able to obtain any further extension as the applicant must instead file a request for substantive examination to prevent the application from being deemed withdrawn.

The Malaysian Patents Acts requires that a request for full or modified substantive examination must be filed at the time of filing divisional application(s). Therefore, this approach will not be able to provide the applicant with more time as a request for modified examination must be filed at the time of filing the divisional application(s).

Individual Application Number for Multiple Application of Industrial Design

Please verify that you filed Zx4724 and Zx4725 together in one application as Zx4724X. For my clarification, please explain how filing a single application with multiple cases works, i.e. is it one application and multiple application numbers.
Answer: etc.
We confirmed filing Case Zx4724 and Case Zx4725 as Case Zx4724X in a single application on 4th March 2009 at the Intellectual Property Corporation of Malaysia (MyIPO).
Multiple applications refers to two or more industrial designs (IDs) which can be filed in a single application provided that they relate to the same class of the International Classification for Industrial Designs or to the same set or composition of articles. Two or more IDs filed at MyIPO will be given an application number each to identify the individual ID although it is filed as a single application.

Requirement for Disclosure of Either Prosecution Results and/or Prior Art

My attorney has asked the question as to what the requirements are in Malaysia with regard to prior art disclosure and/or disclosure of search results. What is required by the Malaysian Patent Office?

No provisions in the Malaysian Patents Act 1983 request for a disclosure of prior art or relevant search results from an applicant and there is no decision to contrary on the said matter.