Questions On Enforcement In Malaysia

Question 1
Is it possible to license a granted patent?

Answer 1
Yes.

Question 2
Is it possible to grant a know-how license?

Answer 2
Yes.

Question 3
Are there any requirement for granting a license? Notification to the government, for example. If yes, what is it?

Answer 3
Yes.
Recording a license at the Intellectual Property Corporation of Malaysia (MyIPO).
A licensor may apply to the Registrar in accordance with the regulations as prescribed by the Minister for an entry to be made in the Register that any person may obtain a license. Then, any person may apply to the licensor through the Registrar for a license. When a license contract has been concluded between the parties, the contracting parties shall inform the Registrar accordingly and the Registrar shall record such fact in the Register, Upon a request in writing signed by or on behalf of the contracting parties, the Registrar shall, on payment of prescribed fee, record in the Register such particulars relating to the contract as the parties thereto might wish to have recorded, provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.

Question 4
Are there any laws for regulating license contract items? If yes, what is regulated?

Answer 4
Yes.
(e.g.) License term :No
Scope if license :No
Confidentiality obligation :Yes
License fee :No
Remittance :No

Any clause or condition concerning restrictions against the scope, extent or duration of exploitation of the patented invention, or the geographical area in, or the quality or quantity of the products in connection with the patented invention may be exploited, and, obligations imposed upon the licensee to abstain from all acts capable of prejudicing the validity of the patent, shall be deemed invalid clauses in license contracts.

Question 5
Is there any system for avoiding a double taxation (credit for foreign taxes) in Malaysia?

Answer 5
Yes.
In Malaysia, Double Taxation Agreement (DTA) exists between Malaysia and other agreed countries to provide investors with certainty and guarantees in the area of taxation. Double Taxation Agreement (DTA) is an agreement between two countries seeking to avoid double taxation by defining the taxing rights of each country with regard to crossborder flows of income and providing for tax credits or exemptions to eliminate double taxation.
The objectives of Malaysian DTA are as follows:
i. to create a favorable climate for both inbound and outbound investments;
ii. to make Malaysia’s special tax incentives fully effective for taxpayers of capital exporting countries;
iii. to obtain a more effective relief from double taxation compared to relief gained under unilateral measures; and
iv. to prevent evasion and avoidance of tax.

Question 6
Does the double taxation treaty exist between Malaysia and Japan?

Answer 6
Yes
The Government of Malaysia and the Government of Japan have concluded an Agreement for the avoidance of double taxation and the prevention of fiscal exasion with respect to taxes on income. The Double Taxation Prevention Treaty, in principle, enables offsetting tax paid in one of countries against the tax payable in the other, in this way preventing double taxation.
The taxes which are the subject of this Agreement are:
a) In Malaysia:
(i) The income tax;
(ii) The supplementary income tax, that is, tin profits tax, development tax and timber profits tax and
(iv) The petroleum income tax.

b) In Japan
(i) The income tax; and
(ii) The corporation tax.

In the Double Taxation Prevention Treaty, Japan is subjected to withholding tax at the rate of 10% for royalties and certain rentals and withholding tax of nil or 10% rate of the interests.