Patent Working And Compulsory Licences In Malaysia

Question 1
Are there requirements for working a patent in your country? If so, what are they? Are there any reporting requirements required working in your country?

Answer 1
There is no requirement for working a patent in Malaysia. However, non-working patent is subject to compulsory license.

Question 2
What are the consequences to the patentee for not working a patent in your country? (Invalidity, shortened term, opens to compulsory licenses, etc.)\

Answer 2
Non-working patent is subject to compulsory license under Section 49 of the Malaysian Patents Act 1983.

Question 3
Is importation of a patent product sufficient to satisfy your country's working requirements? For process patents, must the process be executed within the country, or is importation of a product made by the patented process sufficient?

Answer 3
There is no requirement for working a patent in Malaysia. However, in accordance to Section 49 of the Malaysian Patents Act 1983, compulsory license will not be granted if there is use of the patented product or application of the patented process in Malaysia. In addition, when a patent is not worked, a third party can apply to the Intellectual Property Corporation of Malaysia (MyIPO) for a license or rights.

Question 4
Are the laws in your country in compliance with the provisions of GATT/TRIPS? If not, are there efforts to being them into line with GATT/TRIPS?


Answer 4
Malaysia is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO). Malaysia's Intellectual Property Laws are in conformance with international standards and have been reviewed by the TRIPs Council.

For countries with compulsory license provisions for patents:

Question 5
What is required for a third party to obtain a compulsory license? Is direct negotiation between the third party and the patentee required before application for a compulsory license (or is the fact of non-working sufficient)?

Answer 5
Direct negotiations between the third party and the patentee is required before application for a compulsory license wherein the person/ a third party shall only apply for compulsory license when the third party has made efforts to obtain authorization from the owner of the patent on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time.

However, subject to subsection (1) of Section 49 of the Malaysian Patents Act 1983, any person may apply to the Registrar for a compulsory license at any time after the expiration of three years from the grant of a patent, or four years from the filing date of the patent application, whichever is the later, under any of the following circumstances:

(a) where there is no production of the patented product or application of the patented process in Malaysia without any legitimate reason;
(b) where there is no product produced in Malaysia under the patent for sale in any domestic market, or there are some but they are sold at unreasonably high prices or do not meet public demand without any legitimate reason.

Question 6
Have there been any compulsory license applications in your country?


Answer 6
No.

Question 7
Have there been any compulsory licenses granted?

Answer 7
No.

Question 8
What is the compensation given to the patent holder if a compulsory license is granted?

Answer 8
In accordance to Section 52 of the Malaysian Patents Act 1983, the amount and conditions of the royalty due from the beneficiary of the compulsory license to the owner of the patent is determine by the Intellectual Property Corporation of Malaysia (MyIPO).

Question 9
What can a patentee do to counter a request for a compulsory license?

Answer 9
The patentee/owner of a patent should prove that the grounds for a request for a compulsory license have not been met.

Question 10
After grant of a compulsory license, can the patentee negate/cancel/nullify the compulsory license? If so, how?

Answer 10
The Intellectual Property Corporation of Malaysia (MyIPO) shall cancel the compulsory license upon request of the patentee/owner of the patent based on the following grounds in accordance to the provisions of subsection (2) of Section 54 of the Malaysian Patents Act 1983.

(a) if the ground for the grant of the compulsory licence no longer exists;
(b) if the beneficiary of the compulsory licence has, within the time limit fixed in the decision granting the licence, neither begun the working of the patented invention in Malaysia nor made serious preparations towards such working;
(c) if the beneficiary of the compulsory licence does not respect the scope of the licence as fixed in the decision granting the licence;
(d) if the beneficiary of the compulsory licence is in arrears of the payment due, according to the decision granting the licence.

Question 11
Are there any unusual or unique circumstances/requirements, specific to your country relating to the application for and/or grant of a compulsory license?

Answer 11
There are no unusual or unique circumstances/requirements in Malaysia which relates to the application for and/or grant of a compulsory license.