Changes In The Patent Cooperation Treaty - Singapore

PCT Changes on 1 April 2007

1. Confirmation of Incorporation by Reference of missing parts/elements (rule 20.6)
- to allow inclusion of missing parts or elements that were present in the priority document but was omitted in the PCT application without causing changes to the international filing date.
- the Receiving Office (RO) will inform the applicant whether their request for incorporation is accepted or refused.

2. Restoration of the Rights of Priority (Rule 26bis.3)
- to allow a priority claim to an earlier filed application outside the priority period (ie, > 12 months).
- Restoration of Rights of Priority - within 2 months from expiry of priority ie. 14 months.

3. Rectification of Obvious mistakes (Rule 91)
- now, the mistake must only be obvious to the "competent authority", not "anyone".
- new time limit ; request must be submitted within 26 months from priority date.

4. Physical Requirements (Rule 11.9(d))
- require all text in international application to be at least 0.28 cm.

5. Correction Procedure (Rule 26.4)
- may be stated in a letter.

PCT Changes on 1 July 2008

1. Extension of time limit for payment of the restoration fee (Rule 26bis.3(d))
- time limit for payment of fee is 3 months from expiry of priority period.
- RO may extend this time limited for up to 2 months.

2. Request to take into account the result of earlier searches (Rule 12bis.1, 4.12 & 41)
- request International Search Authority (ISA) to take into account earlier search carried out by other ISA or national office.

3. Prevention of International Publication
- notification to withdraw application should be sent directly to IB to prevent accidental publication of withdrawn application.

4. Reduction of International Fees
- International filing and handling fee reduced by 90% for applicants from certain countries (Antigua, Barbuda, Bahrain, Barbados, Libyan, Arab Jamahiraya, Oman, Singapore, Trinidad and Tobago, UAE & Seychelles).

5. E-filing: submission of pre-converted files
- Receiving offices (RO) allow to accept submission of International application (IA) in its pre-converted format in the event the submitted IA in pdf. contain errors due to the conversion process.

6. Use of email for advance copies of notifications
- enable notification to be sent to applicant in advance of paper notification.

PCT Changes on 1 January 2009

1. New publication languages
- publication available in Korean and Portuguese.
- will contain title, abstract and search report in English.
- only apply to application with filing date on or after 1 January 2009.

2. Supplementary International search (SIS) (Rule 45bis)
- to enable applicant to request further searches in prior arts of specific languages eg. Swedish, Danish, Finnish and Norwegian.
- currently only conducted by 3 SIS authority – Sweden, Russia and Nordic Institute.

PCT Changes on 1 July 2009

1. Declaration under Article 14(4)
- the RO will send a Declaration to the applicant that an application will be considered withdrawn.
- the applicant will be sent a notification to be informed of RO's intent to send the Declaration.
- the applicant can request for 2 months time extension to submit argument in reply to the notification.

2. Form of claims amendments
- for amendment under Art 19 or 34, replacement sheets containing complete set of claims must be submitted.
- for deletion of claims, no renumbering of remaining claims is required.

3. Filing of sequence listings
- sequence listings forming part of the international application.
- no page fee for sequence listing filed in ST.25 text format filed in electronic form.
- however, full page fee will be chargeable if filed in image or pdf format.
- table relating to sequence listing will count as regular pages of descriptions.

Re-Correcting Biologic Sequence Information

Question 1
Can a patent application be amended to correct a nucleic acid or amino acid/protein sequence?

Answer 1
As far as the Malaysian Patents Act 1983 is concerned, it is possible to amend patent application or a granted patent provided that the amendment shall not go beyond the disclosure in the initial application by virtue of Section 26A of the Patents Act 1983.

The procedure to amend the patent application or granted patent is by filing appropriate amendment form together with the written description that shows which claims need to be amended.

In the case of use of microorganism in initial patent application, as Malaysia is not a signatory to the Budapest Treaty which determines the Rules for depositing microorganisms in a recognized collection, and for access to samples from that collection, the microorganism will not be available to the public in Malaysia, after the grant of a patent on the present application, unless the patentee authorizes release of cultures of the microorganism to interested parties.

Further, if the initial application requires for its performance the use of a microorganism which is defined by reference to a culture collection and the accession number of the deposit of the microorganism therein, the applicant/patentee needs to provide any requester [that is any person requesting a sample of the relevant microorganism] with a declaration, addressed to the depositing authority, authorizing the depositing authority to furnish a sample of the relevant microorganism to the requester, provided that the requester undertakes not to make the deposited culture or any culture derived therefrom available to any third party before the expiry of the patent.

Question 2
Can a patent be corrected to correct a nucleic acid or amino acid/protein sequence?

Answer 2
Yes, it is possible.

Question 3
Can a biologic deposit serve as the basis for the amendment/ correction?

Answer 3
Yes, it is possible.

Question 4
If possible, what is the procedure?

Answer 4
The procedure is by way of executing statutory declaration stating that the disclosure contains the sequence as corrected.

Question 5
If possible, would you advise making the amendment/correction? Under what circumstances?

Answer 5
We would advise in favour of making the amendment if it would broaden the protection of the claims of the initial application.

Prior Use-Rights Derived Which Constitute Another Limitation To The Patentor's Exclusive Right As Delineated In S37(2) Of The Patent Act 1983

Question 1
Clearer pictaure regarding “a prior use right” as one of the means of defense on a patent litigation in Malaysia. We have studied regarding prior use right based on your patent law article, but it is still difficult for us to find any detail information or practice about prior use in Malaysia.

1. Case law on prior use.
2. Interpretation of “prior use” under a patent law in Malaysia.
3. Textbook – if there is a fundamental textbook about patent system in English.

Answer 1
In answering the your enquiries regarding “a prior use right” as one of the defense on a patent litigation in our country. Prior use right is governed under S37(2)[1] which reads together with Section 38 (1)[2] where a person at the priority date of the patent application:-

(a) was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the product or using the process referred to in paragraph (a),

he shall have the right, despite the grant of the patent, to exploit the patented invention, provided that the product in question is made, or the process in question is used, by the said person in Malaysia and further provided that he can prove, if the invention was disclosed and his knowledge of the invention was not a result of such disclosure.

In section 38 (2), the provision reads that the right referred to in subsection (1) shall not be assigned or transmitted except as part of the business of the person concerned. This particular provision defined that to what extent the right conferred wherein the right may not be transferred except as part of the course of business.

Good faith is defined which includes due inquiry and implies not only an upright mental attitude but also clear conscience, and that ordinary prudence has been exercised according to the standard of a reasonable person as per Gopal & Anor V Awang Bin Mona[3].

Further, in the course of business is defined as something that is part of its activities. This can be referred to the case of Charles R Davidson & Co V M’Robb (or Officer)[4] , per Lord Dunedin.

Malaysian case that related to the above provision is Intercontinental Specialty Fats Sdn. Bhd. V Asahi Denka Kogyo KK [5]. According to this case as per Abdul Aziz J, the defendant were the proprietors of UK Patent GB 2028862B for an invention called ‘cacao butter substitute ‘.

In this case, the defendant’s patent was registered, first in the UK in 1978, citing the priority date to be August 30, 1978. It was subsequently re-registered in Malaysia under the old Registration of UK Patents Act 1951. The date of the registration of the patent in Malaysia being July 18, 1985. The plaintiff sought to argue that prior to the date of registration of the patent in Malaysia, they had manufactured the product that is the subject of the patent in good faith. By virtue of S38 of the Patents Act 1983, the plaintiff further argued that despite the grant of the subject patent, they had and continue to have the right to exploit the invention on the basis of prior use.

Abdul Aziz J found that S38 exceptions do not apply to patents that were granted prior to the 1983 Act. This is because the previous 1951 Act only deals with re-registration of UK patents and does not govern any prior use. Secondly, the phrase ‘the patent application’ in S38(1) covers only patent applications under the law 1983 Act (the new Malaysian Patent Act). The learned judge rightly pointed out that the phrase ‘priority date’ under S38 seems to point to the priority date of a patent application under the law 1983 Act. This is because the plaintiff sought to argue that for the purposes of prior use right, they quoted the date of registration in Malaysia as the priority date. With respect to obviousness, the priority date was August 30, 1978 when the patent was applied in the UK. As S38 deals with any potential prior use of a patented product or process prior to its application in Malaysia under the Act 1983 Act, the plaintiff had failed to prove that the 1983 Act governs them in any way[6] .

The essence of this right was rightly summed up by the learned judge, Abdul Aziz J, in that it covers good faith use of a product or a process which eventually is patented by someone else. On a comparative basis, this notion of ‘good faith prior use’ is similar to that of ‘honest concurrent user’ in trademark law [7].

1. Patents Act 1983
2. Ibid
3. [1978] 2 MLJ 251 at 255
4. [1918] AC 304 at 321
5. [2000] 4MLJ775 (HC)
6. Patent Law in Malaysia, Cases and commentary, Dr. Ida Madieha
7. Ibid


Patent Registration Enquiry

Question 1
Is it possible for An Australian Pty. Ltd. company to be the applicant for Malaysian patent?

Answer 1
Yes. However, it depends on the nationality of the inventor’s according to the laws in Australia, i.e. if the named inventor is Australian, then there might be a security clearance to file a first filing application outside Australia.

Question 2
If so, is the process the same or more demanding / onerous?

Answer 2
The process is the same.

Question 3
If so, is the likelihood of a Pty. Ltd. company being granted a Patent equally or less likely? i.e. : does it enhance our application if we use a Sdn. Bhd. Entity?

Answer 3
On paper, there is no preference given. However, in practice, a local entity is given priority for fast track/expedited prosecution to grant.

PCT National Phase In Indonesia, Malaysia & Singapore (How PCT rule 17(c) is applied)

Question 1
I am writing to ask a question about the PCT National Phase in Indonesia, Malaysia and Singapore. In particular, I would appreciate it if you could answer a question about how PCT Rule 17(c) is applied in Indonesia, Malaysia and Singapore.
Assume the following facts: a year or more after entering the national phase in these three jurisdictions from an international application, but before examination, it is realized that there was an inadvertent failure to submit the priority document both in the international phase and upon entering the national phases. The claim of priority was however properly made on the “Request” in the international phase.
Does the applicant, after discovery of the inadvertent failure, have an opportunity under PCT Rule 17(c) in one or more of these jurisdictions to furnish the priority document within a time limit which is reasonable under the circumstances?
Or, is the priority claim irrevocably lost after expiration of some fixed time limit after the national phase commences set by rule or statute in the pertinent jurisdiction under PCT Rule 17(c)?

Answer 1
PCT Rule 17(c) states that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable. Therefore, according to the above rule, the claim of priority will not be automatically disregarded if the priority document was not submitted during the international phase and the national phase. Generally, upon entering the national phase in the respective countries, the national offices will conduct a formality examination to ensure that all the required documentation are correct and in good order before proceeding to prosecute the application further. However, if they found that the priority document was not submitted during the international phase, the national office will then notify the applicant of the missing priority document and allow the applicant time to furnish the outstanding document. If the applicant fail to submit the required document after the allowed time, only then will the priority claim be disregarded.

Please be advised that under the current Indonesian, Malaysian and Singapore Law, there is no requirement to submit the priority document at the time of entering a PCT application into national phase in the respective countries. The applicant is only required to provide the details of the priority date, the priority application number and the country of filing in order to claims the priority date of the priority application.

A certified copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the Registrar. If such a request is made by the Registrar, the said certified copy of the priority application must be submitted within two to three months from the date of the Registrar's request depending on jurisdiction.

We hope the above addressed your query.

Information And Documents Regarding Entry Into National Phase In India Of An International PCT Application

Question 1
When does a patent application enters into national phase of India as PCT? How does the national phase start?

Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.

The time limit for entering the National Phase

(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.

(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.

Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?

Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.

(1.) Basic requirements

Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:

(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;

(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.

(2.) Additional special requirements

Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:

a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.

Legalization Of Formal Documents For Patent Fillings In Malaysia

Question 1
Requirements regarding legalization of formal documents; i.e. priority documents, assignments and power of attorney? Are the requirements different for applications filed direct versus PCT national phase in Malaysia?

Answer 1
In Malaysia there is no requirement for legalization of any formal documents. This applies to both direct filings and PCT national phase filings.

However, in Malaysia, certified true copy of the priority application will only be required to be submitted upon receiving an issued request or notification from the registrar.

If such a request is made by the registrar, the said certified copy of the priority application must be submitted within three months from the date of the Registrar's request.