Modified Substantive Examination In Malaysia

Question 1
Whether an application can be granted directly in Singapore relying on a corresponding Korean patent registration, in accordance with the agreement between Singapore and Korea.

Answer 1
In Singapore, only those patent applications having a priority date or filing date on or after 2nd June 2006 can be amended to conform to the corresponding Korean patents for the purpose of grant.

In Malaysia, only those patent applications having a filing date on or after 19th July 2003 can be amended to conform to the corresponding Korean patents for the purpose of grant.

Question 2
Whether the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia?

Answer 2
Yes, the Modified Substantive Examination is applicable retroactively to pending applications in Malaysia so long as they were filed on or after 19th July 2003.

Question 3
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application should be filed in Malaysia within one year from the filing date, or may be filed anytime before being laid open.

Answer 3
Yes, for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean application should be filed in Malaysia within ONE year from the priority date [for conventional applications] or within ONE year from the earliest public disclosure date [for non-conventional applications].

Question 4
In order for the Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, whether the Korean application and a corresponding Malaysia application to be filed should be identical, and if so, how will the Malaysia application be handled when those are different.

Answer 4
In order for a Korean application to be granted in Malaysia taking advantage of the Modified Substantive Examination, the Korean patent must have similar scope of protection or narrower scope of protection against the Malaysian application as the Malaysian Patents Act 1983 prohibits any amendments to a Malaysian application if the amendments go beyond the disclosure in the Malaysian application as originally filed.

In case that the Korean patent is wider in scope as opposed to the Malaysian application, it would be advisable not to file a request for Modified Substantive Examination based on the Korean patent.

One way to overcome this is to conform to a corresponding patent granted in European Patent Office (EPO), UK, US, Australia or Japan if the foreign patent has similar scope of protection or narrower scope of protection against the Malaysian application.

The other suggestion will be filing a request for Full Substantive Examination. There is no need to conform the present claims to corresponding foreign patent claims if a request for Full Substantive Examination is filed.

Question 5
In order for the Korean application to be granted in Malaysia taking advantage of the
Modified Substantive Examination, which documents are required?

Answer 5
We will require a certified true copy of the Korean patent, and a certified English translation of the said Korean patent.