Prosecution Of Patent, Trademark & Design In Malaysia

A. PATENT

Question 1
The availability of Examiner interview, for prosecution matters such as timing for filing of divisional application or voluntary amendments, and request for extension of time to response to the office action, during the substantive examination?

Answer 1
Availability of a Examiner Interview – such a procedure is available to discuss the patent application with the Examiner.

Timing for Divisional application – can be filed anytime until the end of the 3 month after issuance of the first office action/report, provided the divisional application does not go beyond the disclosure of the initial application.

Timing for Voluntary amendments – can be filed anytime while the application is still pending. Again the subject matter of the application does not go beyond the disclosure of the initial application.

Request for Extension of time – can be requested for it the applicant is be unable to respond to the office action at the end of 3 months after the office action/report is issued.

Question 2
What is the availability of remedial measures in case of failure to timely submit a response to an office action, payment of patent maintenance fee or request for examination?

Answer 2
The remedial measure for failure to respond to an office action within time is to pay an extension fee and respond to the office action within the extension of time period applied for.


Question 3
Do you have any expedited examination (examination with special dispatch) system in Malaysia?

Answer 3
Yes, we do have a route for the applicant to expedite examination that is the Modified Substantive Examination. This option allows examination to be expedited by conforming the claims to any corresponding granted patent from the United Kingdom, European Patent Office (EPO), United States of America, Australia, Republic of Korea and Japan.

Question 4
Do you have any system to extend patent term (e.g. in case of a pharmaceutical patent)?

Answer 4
No, the protection period is 20 years from the date of filing and no extension is provided (even for pharmaceutical inventions).

Question 5
Do you have a specific rule to determine the unity of invention?

Answer 5
According to Malaysian Patent Law, the application must relate to one invention only, or to a group of inventions so linked as to form a single general inventive step.


B. TRADEMARK

Question 1
How long does it take for registration in general?

Answer 1
A Trademark registration is secured within 12-24 months from the date of filing. Unless the trade mark faces several objection from the Intellectual Property Corporation of Malaysia (MyIPO), the process of registration will be fairly expeditious.

Question 2
Opposition/cancellation action/nullification action
In what government office is the trademark opposition/cancellation action/nullification action accepted? How long it take to get the first instance (decision) in respective action?

Answer 2
(i) Opposition proceedings are accepted by the Trade Mark Division of the MyIPO, which is under the Ministry of Domestic Trade and Consumer Affairs Malaysia. Such actions are to be addressed specifically to the Register of Trade Marks who is the person appointed by the Minister to superintend all matters relating to trade marks.

(ii) As to cancellation action/nullification action, these proceedings are available in Malaysia but it has to be done in the Court.

(iii) The time taken to conduct opposition proceedings until a first instance decision is approximately is 2 years from the date of filing of the Notice of Opposition.

(iv) The time taken to conduct rectification proceedings (cancellation/nullification) until a first instance decision is 1 year from the date of filing the Notice of Originating Motion.

Question 3
Is there any bailout (restoration measure) of the lapsed trademark registration due to failure of renewal application (after expiration of the grace period)?

Answer 3
There is a procedure to restore the trademark. A trademark which has been removed from the Register for non-payment of renewal fees will still be treated as being registered for a period of one (1) year from the date of expiration of the last registration. Once the mark has been removed from the register for non-payment of the renewal fee, it can be restored only at the discretion of the Registrar and on payment of a restoration fee in addition to the renewal fee.


C. DESIGN

Question 1
Is it acceptable for a Design application regarding :
(a) partially claimed design
(b) the computerized objects, that is “ICONIC”?

Answer 1
(a) Partially claimed design are acceptable so long as they are solely judge by the function which the article has to perform.
(b) An article been define as any article of manufacture of handicraft and ICONIC product may not be registered.

Question 2
How about the registrability and/or enforceability of
(a) design that cannot be visible in its normal use by an end user; or
(b) design for spare parts of an article?

Answer 2
(a) Design that is not visible when sold cannot be registered.
(b) Design for spare parts is also not registrable in Malaysia as the definition of industrial design does not include features of shape or configuration of an article which is dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Question 3
In filing a Design application claiming the priority, if the Applicant made a small amendment for the drawings used in the priority application and submitted this amended drawings as the formal drawings in Malaysian Patent Office, can the priority be accepted? For example :
(a) for the priority application, an entirely claimed Design shown in the solid line is submitted and, on the other hand, for the application claiming this priority, a partially claimed Design shown in the dotted line is submitted. In this situation, can the priority be accepted?
(b) after the priority application, the design was very slightly changed on the actual product. In this situation, can the priority be accepted on a design application for the actual product in Malaysia?

Answer 3
No, the priority cannot be accepted, because it will consider to be different.

Question 4
Is it possible for the proprietor of Design A to make the enforcement against the similar Design B which belongs to the different class from Design A.

Answer 4
It is possible for the proprietor of Design A to enforce their rights against the proprietor of similar Design B which is of a different class from Design A, because class is not a issue in design enforcement.

Question 5
Whether the relevant Design registrations discovered by a search may be similar or not to the search subject based on your experience?

Answer 5
Based on our experience it is possible to make our comment as to whether the relevant Design registration discovered by a search may be similar or not to the search subject.

Question 6
Please let us know the landmark case of the design infringement in Malaysia?

Answer 6
The landmark design infringement case is Besalon International v. South Strong Industries [1997] 2 MLJ 131:

The 1st Plaintiff was the lawful assignee and registered proprietor of registered design No. 1,001,901 under the Registered Designs Act (1949) UK for a roofing tile design as of 10.08.1981, renewed until 10.08.1996.

The defendant was the registered proprietor of registered design No. 2,043,178 for a roofing tile design as of 9.11.1994 whose design was identical to that of the 1st Plaintiff.

The 1st Plaintiff took and action against the Defendant as persons prejudicially affected by the defendant’s tile design and claimed the following :

(i) That the despite being granted registration in the UK, the defendant did not acquire the rights afforded by such registration in Malaysia; and
(ii) The defendant’s registration was invalid due to prior publication of the tile design by the plaintiffs and prior use of the design in Malaysia.

At the hearing, the issue to be decided by the Court was whether the defendant’s registered design was enforceable in West Malaysia, Sabah and/or Sarawak and whether the Plaintiff’s were entitled to relief.

It was held that :
The prior publication of the registered tile design, consisting of the prior use or manufacture of goods or objects to which the design had been applied and/or the prior disclosure to the Malaysian public to the design destroyed any claim to novelty and rendered the defendant’s registered design No. 2,043,178 unenforceable in Malaysia.

The Plaintiffs and Defendant had manufactured, promoted and/or sold differently branded tiles bearing the dispute design in Malaysia prior to the Defendant’s registration of the design on 9.11.1994 in the UK. Thus the design lacked novelty and was unenforceable in West Malaysia, Sabah and/or Sarawak.