Foreign First Filing Clearance

We have an application to file in the United States and have 1 inventor of Malaysian citizenship. Please inform of us if there are any requirements that need to be fulfilled by the Malaysian patent office by us before we first file in the United States. If something is required, please let me know the details and how long it will take before we have permission to file?

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.

For sake of clarity, we reproduce Section 23A(a) of the Malaysian Patents Act.

23A. Applications by residents to be filed in Malaysia first.
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 not less than two months before the application outside Malaysia.
We will need to apply for a waiver from Intellectual Property Corporation of Malaysia (MyIPO) to enable the patent application to be filed in the United States Patent Office without having it first filed in Malaysia. The time frame for MyIPO to issue the waiver will be 3 to 5 working days. In order for us to request for a waiver from MyIPO, we would require:
a) a copy of the patent specification.
b) name and correspondence address of the applicant of the said invention.
c) name, correspondence address and citizenship of the named inventors.
d) applicant's rights to the invention: by virtue of assignment/being the inventor's employer etc.

Under Section 62A, any person who files or causes to be filed a patent application in contravention of Section 23A: Applications by residents to be filed in Malaysia first, commits an offence and is liable on conviction to a fine not exceeding RM15,000 (approx USD4700) or to imprisonment for a term not exceeding two years or both.

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