Patent Filing by Malaysian Inventors

Question:
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?

Answer:
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(b) either no directions have been issued by the Registrar in relation to the application or all such directions have been revoked.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.