Malaysia's Patent Law

Question 1
a) If the filing date is on or before 16 August 2006 must a petition for examination be filed 24 months from the filing date?
b) When are annuities due for a patent with a filing date on or before 31 August 1999?
c) What is the term of a patent with a filing date on or before 31 May 1967?
d) What is the term of a patent with a filing date on or before 31 July 1989?
e) What is the term of a patent with a filing date on or before 31 August 1999?
f) What is the term of a patent with a filing date on or after 1 January 1994?

Answer 1
a) Yes.
b) According to Malaysian Patent Act, annuities are only due after the patent has been granted. Therefore, for an example, if the filing date is 31 August 1999, and the patent granted on 31 August 2003, the first annuity will be on 31 August 2004.
c) d), e) and f) 20 years from the filing date or 15 years from grant date, whichever is longer.

Question 2
In a situation where the 12 month deadline for filing a Malaysian application claiming priority from an earlier application has passed (some years previously), and the earlier application ahs been published, is there any means for obtaining patent protection in Malaysia for the invention claimed in the earlier application?

Answer 2
In Malaysia, it is possible to obtain patent protection for an invention which has missed its priority deadline, dependant on the date that the subject matter was first disclosed to the public. For this purpose, we can file a ‘non-conventional’ patent application. Malaysia allows applications to be filed up to 12 months after subject matter has been disclosed to the public.
There are also other forms of protection available in Malaysia, as the patent system follows the European system closely.
Patent Protection
As mentioned above, a non-conventional Malaysia patent application can only be filed if there was no disclosure of the subject matter of the PCT or foreign application beyond the 12-month grace period calculated from the filing date of the proposed Malaysian application. If the subject matter was disclosed more that 12 months ago, we confirm that the subject matter would have lost its novelty and patent protection is not available.

Question 3
Are there any alternative forms of protection, such as design protection available in Malaysia?

Answer 3

Industrial Design Protection
The design of the external features of an object can be protected as an industrial design under the Malaysian Industrial Designs Act 1996 if the design is not purely functional.
Under the Industrial Design Act, an industrial design will not be considered as novel it was disclosed to the public anywhere in Malaysia unless the disclosure was made in an official or officially recognized exhibition or it was disclosed by a person other than the applicant as a result of an unlawful act committed by that person.

To summarize, the novelty requirement in Malaysia for an industrial design application is domestic requirement. In this case, the disclosure of a design in a trade show in the US for example is not relevant as the disclosure was in the US and not Malaysia.

However, if a PCT application with drawings were previously published and they are available online in Malaysia, there is a possibility that the industrial design would have lost its novelty. However, the issue of whether the publication of the drawings in the Internet can constitute a prior disclosure in Malaysia is yet to be tested in the Courts. Furthermore, under Section 3(b) of the Industrial Design Act, an industrial design should not include features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the industrial design to form an integral part.

Please note that currently, there is no substantive examination for industrial design applications. Theoretically, we can proceed to file an industrial design application and chances are we would be able to obtain the registration, as the Examiners will not conduct a substantive examination to identify prior existing industrial designs. However, during litigation, a defendant may be able to attack the validity of a granted industrial design on the basis of novelty.

Copyright Protection
Under the Copyright Act 1987, all three dimensional articles can be protected provided that the articles are not protected under the Industrial Design Act. This applies only to articles designed after 1 September 1999 (the date the Industrial Design Act came into force).

If an item cannot be protected under the Industrial Design Act, or Patents Act, it may still be protected under the Copyright Act.

However, it must be noted that the protection provided under the Copyright Act is very much limited. For an example, the copyright protection will cease as soon as the subject design been reproduced more than 50 times by an industrial process by the owner.

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