Question On The Patent System In Malaysia

Question 1
What is the subject of protection in the patent law?

Answer 1
Product: Yes
Apparatus: Yes
Method: Yes
Manufacturing method of a product: Yes
Use of a product: Yes
Program: Yes
Program : Computer programs are patentable provided that the computer program that in use permits solution to a specific problem in the field of technology with a hardware configured to run the the program.
Others?
a. Swiss-type claim : "Use of substance A in the manufacture of a medicament for the treatment of condition B”.: Yes
The claims can be valid if drafted as if they were directed to a manufacturing process.
b. Process claim : It usually refers to a manufacturing process that involves a series of steps for making something. For instance, a process for making a lip balm or a process for making a doughnut.: Yes
c. Non-patentable Inventions:-
i. Discoveries, scientific theories and mathematical methods;
ii. Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
iii. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
iv. Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body;

Question 2
What is a geographic standard for novelty judgment? Domestic or international?

Answer 2
International with absolute novelty requirement.

Question 3
What is a legal period for requesting substantive examination?

Answer 3
An international application which has entered the national phase has a legal period of 4 years from the filing date of the international application to request substantive examination.
A non-conventional application / conventional (Paris) application has a legal period of 2 years from the filing date of the application to request substantive examination.

Question 4
Is there any system to accelerate examination?

Answer 4
There is no specific provision in the Malaysia Patents Act 1983 to accelerate examination. However, the prosecution of a patent application may be expedited in the following way:
Should a corresponding Malaysian patent application be granted in any of the prescribed countries, namely Australia, Japan, the Republic of Korea, the United Kingdom, or the United States of America, or under the prescribed treaty or Convention means the European Patent Convention, and the Malaysian claims are to be brought into conformity to the said granted claims.

Question 5
What is the average time frame from an application to a decision to grant a patent?

Answer 5
Approximately 3 to 4 years from the application date.

Question 6
What is an existing term of a patent?

Answer 6
20 years from the filing date of the application, subject to the following:
The period of protection for a granted patent will depend on its filing date. If the filing date is prior to 1st August 2001 (i.e. before the coming into force of the Patents (Amendment) Act 2000), and the application was pending or granted and in force as of that date, the duration is 15 years from the date of grant or 20 years from the filing date, whichever expires later. If the filing date of the application is after 1st August 2001, the patent is protected for 20 years from the filing date.

Question 7
Is there any system for extending a patent term?

Answer 7
No. (Malaysia has no provision/ for Supplemental Protection for drugs)

Question 8
Is there the patent system which includes a prior user's right?
Answer 8
Yes

Question 9
If yes, what are the basic requirements for a prior user's right?

Answer 9
The 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 which is the subject of the invention claimed in the application.
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:
Provided further that he can prove, if the invention was disclosed under the circumstances:
i. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;
ii. if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;
iii. if such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act;
that his knowledge of the invention was not a result of such disclosure.
The above-mentioned right shall not be assigned or transmitted except as part of the business of the person concerned.