Recommendations For Patent Prosecution In Malaysia

Question 1a
Questions in an effort to identify ways that we can reduce unnecessary spending and improve the efficiency of our prosecution in Malaysia? Is there a point where additional claims no longer add value?

Answer 1a
No.

Question 1b
Does it matter whether the claims are independent or dependent with respect to costs?

Answer 1b
No.

Question 2
What types of pharmaceutical-related Claims are allowable in Malaysia?

Answer 2
1. Composition claims (product claims)
2. Process claim
3. Swiss-type use claim (in the format of “Use of substance X in the manufacture of medicament for the treatment of condition Y”)

Question 3
What types of pharmaceutical-related Claims are NOT allowable in Malaysia?

Answer 3
1. Method of treatment of human or animal body by surgery or therapy (can be overcome by amending this type of claims to be read as Swiss-type use claims).
2. Omnibus claims (which is in the format of; “An X as shown Figure Y” or “Apparatus as described in the description”)

Question 4
Does the Intellectual Property Corporation of Malaysia (MyIPO) restrict the scope of claims based on the examples and/or data present in the application at the time of filing? e.g. will the Examiner require the scope of a compound claim to be restricted to exemplified examples?

Answer 4
According to Malaysian Patents Act, examples are preferred embodiments of the specification and variations are allowed so long as it does not go beyond the scope of the claims. Examples are also does not restrict scope of invention.

Question 5
Are there limitations on the scope that one can claim for a biologic or antibody?

Answer 5
Biologic materials such as therapeutic antibodies against protein or genetic sequence are generally considered to be patentable and qualify as an invention so long as the antibody gene sequence are novel, involve an inventive step, and industrially applicable. 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; are considered not patentable, microorganisms (which are isolated from natural sources) and not subjected to any gene transfer or recombinant manipulation can be considered man-made organisms and is patentable only if it is new, involves and inventive step and is industrially applicable.

Question 6
Will the Intellectual Property Corporation of Malaysia (MyIPO) accept claims that have been granted in other countries? If yes, what countries?

Answer 6
Yes. Prescribed countries; Australia (AU), Japan (JP), Korea (KR), Great Britain (GB), USA and EPO.

Question 7
Can you delay prosecution until claims grant in one of these countries?

Answer 7
Yes, we can file for deferment of request for substantive examination; and the maximum delay is 5 years from the filing date.

Question 8
If there a pro forma response that could be filed to address nuisance oppositions filed by Generic companies?

Answer 8
In Malaysia, there is NO provision for oppositions during the prosecution of patent application stage. However, generic companies may file for Non-infringement declaration (NID) and / or revocation after the patent has been granted. In this case, there is no pro forma response as NID and / or revocation are court proceedings.