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 Application will be considered withdrawn.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
No.

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
No.

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.