Question On The Utility Model System In Malaysia

Question 1
Is there utility model system in Malaysia?

Answer 1

Question 2
What is the subject of protection in your utility model system?

Answer 2
Utility Innovation : Any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application and includes an invention.
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.
Swiss-type claim : "Use of substance A in the manufacture of a medicament for the treatment of condition B”.: Yes
The validity of claims drafted as if they were directed to a manufacturing process.
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
Utility Model system excludes:-
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;

Drawbacks in comparison with patent:
i. UI allows a maximum of a single claim only.
ii. Applicant is not able to register a license.

Question 3
Is there a publication system for a utility model?

Answer 3

Question 4
If yes, what is the time frame of the publication from the application date?

Answer 4
18 months from the application date.

Question 5
Is there a substantive examination for a utility model?

Answer 5
Yes. The procedure is the same as patent application.

Question 6

What is the average time frame from an application to decision to grant a utility model?

Answer 6
1 to 2 years.

Question 7
In the case of enforcement, is an expert opinion on registrability of a utility model required?

Answer 7
Yes. There is no requirement for inventive step.

Question 8
Is it possible to have both a patent and utility model for the same invention granted?

Answer 8

Question 9
What is the existing term of a utility model?

Answer 9
The term for a utility innovation is 10 years from the date of filing, with the possibility of renewal for 5+5 years upon proof of use.
Maximum term for utility innovation is 20 years.

Proof of use : presenting evidence of commercial or industrial use or a satisfactory explanation of non-use in Malaysia.

Question 10
Is there the utility system which includes a prior user's right?

Answer 10
Prior user’s right : personal defence for someone who non-publicly used an invention, to (continue to) use the invention that is in the meantime patented by another person. It’s a shield, not a sword. It is to mitigate the effect of first filing and introduce fairness towards prior user.
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.

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