TOPIC : GENERAL QUESTIONS ON FILING PROCEDURE IN MALAYSIA

Question 1
If the national phase of a PCT application is entered?
(Example of fictive response: 5 years from the PCT filing date)

Answer 1
4 years from the PCT filing date.
However, on or before this deadline, should a deferment request be filed, the said deadline will be extended to 5 years from the PCT filing date.

Question 2
If the deadline for requesting examination has expired, does your national law foresee a remedy, or has the application definitively lapsed?
(Example of fictive response: 2 months after receipt of a noting of loss of rights it is possible to file a reinstatement request and to pay a surcharge).

Answer 2
No provision for remedy. Application considered withdrawn.

Question 3 (a)
Does Malaysian law foresee that a small entity status enjoys a reduction of fee(s)?

Answer 3 (a)
No.

Question 3 (b)
If yes, please mention the definition of a small status entity.
(Example of fictive response: 20 employees or less)

Answer 3 (b)
There is no provision for reduced filing fees.

Question 4
Please provide us with all blank documents in English and your national language (for patent applications) necessary for completing the entry into the PCT national phase (patent applications) in your country.
(Example of fictive response: Power of attorney form, Assignment document in English and your national language, forms P3&P26…)

Answer 4
Documents required are as follows:
(a) Power of Attorney (Form 17)
(b) Fee for Entering the National Phase (Form 2A)

Note: An assignment document will not be required. However we will prepare a “Statement Justifying the Applicant’s Right (SJAR)” at our end. For this purpose, please inform us how the Applicant derives the rights to the invention, i.e. either by way of assignment or virtue of employment contract.

All documents are provided in English only.

Question 5
Provide us with all blank documents in English and your national language (for designs) necessary for completing the filing of a design application in your country
(Example of fictive response: Power of attorney form, Assignment document in English and your national language, forms P3&P26…)

Answer 5
Documents required are as follows:
(a) Power of Attorney (ID Form 10)
(b) Application for registration of an Industrial Design (ID Form 1)

Note: An assignment document will not be required. However we will prepare a “Statement Justifying the Applicant’s Right (SJAR)” at our end. For this purpose, please inform us how the Applicant derives the rights to the design, i.e. either by way of assignment or virtue of employment contract.

All documents are provided in English only.

Question 6
What is the deadline for filing the documents mentioned in items 4 and 5?
(Example of fictive response: 2 months from the 30/31 months deadline from the PCT filing date (patent applications) / filing date (designs))

Answer 6
Patent Applications:
(a) Form 17 & SJAR: no deadline unless a communication is received from the PTO. However, we prefer to file within 3 months from the filing date of the PCT national phase
(b) Form 2A: 30 months deadline from the priority date of the PCT application
Design
(a) ID Form 10: upon filing
(b) ID Form 1: upon filing

Question 7
Kindly let us know if the deadline mentioned in item 6 has expired, is there still an extension of time possible with surcharge?
(Example of fictive response: yes, 2 months from the communication date of the PTO + surcharge)

Answer 7
Patent Applications:
(a) Form 17 & SJAR: N/A
(b) Form 2A: 2 months from the date of removal of the cause of failure to meet the deadline or 12 months after the expiration of the deadline, whichever period expires first + surcharge

Design
(a) ID Form 10: 3 months of extension of time + extension fee
(b) ID Form 1: no extension of time is possible


Question 8
If the deadline mentioned in item 7 has expired and no document has been filed, what is the legal consequence for the application regarding each document?
(Example of fictive response: assignment: application deemed withdrawn; POA: no representation possible; priority document: loss of priority date)

Answer 8
Patent Applications:
(a) Form 17: no representation possible and application considered withdrawn
(b) Form 2A: application considered withdrawn

Design
(a) ID Form 10: application considered withdrawn
(b) ID Form 1: application considered withdrawn

Priority documents must be filed within 3 months from the filing date of the PCT national phase (patents) / filing date (designs) and no extension of time is possible, failing which there will be loss of priority date.

Question 9
If it is possible to file a General Power of Attorney in Malaysia?

Answer 9
No provision for General Power of Attorney.


Question 10
Should an assignment document be notarized?

Answer 10
Yes, should the original not be available.
Note: An assignment document is not a requirement for filing patent / design applications. However, the same will be required in the case of a merger or assignment from one entity to another.

Question 11
Should an assignment document be legalized by Apostille or by the Consulate (please precise by Apostille or by the Consulate, if any)?

Answer 11
No.

Question 12
Does your PTO request the filing of original documents (POA, assignment) or is a copy sent only by fax of those documents accepted by your PTO?
(Example of fictive response: a copy sent only by fax is accepted, no original needed).

Answer 12
Only originals are accepted.

Question 13 (a)
In case the priority document is drafted in a language other than English, do you need a verified English translation of the priority document, i.e. duly verified by the translator or authorized by the applicant?

Answer 13 (a)
Yes, a verified English translation of the priority document, i.e. duly verified by the translator will be required.

Question 13 (b)
If yes, what is the deadline for filing such translation with your PTO?

Answer 13 (b)
Within 3 months from the filing date of the PCT national phase (patents) / filing date (designs) and no extension of time is possible.

Question 13 (c)
What is the legal consequence if the priority document is not filed within the deadline? (Example of fictive response: loss of priority date).

Answer 13 (c)
Loss of priority date.

Question 14
What is/are the official language(s) for filing a patent application?
(Example of fictive response: English or French only)

Answer 14
English or Malay Language (National Language)

Question 15
What is/are the official language(s) in which documents like POA, assignments must be drafted? (Example of fictive response: English or French only)

Answer 15
English or Malay Language (National Language)

Question 16 (a)
Kindly let us know if you need particulars for filing an application in your country (patent application number, copy of the office actions, responses to the office action, …) of corresponding foreign patent applications/patents?

Answer 16 (a)
Yes. This includes:
(a) prescribed information / supporting document concerning filing of any application outside Malaysia
(b) prescribed information concerning results or search / examination carried out by an International Searching Authority

Question 16 (b)
If yes, mention the countries/organization(s) (Example of fictive response: US, AU, EP)

Answer 16 (b)
Prescribed countries: US, AU, EP, KR, JP, GB

Question 16 (c)
If yes, is there a deadline for filing these particulars?

Answer 16 (c)
At the time of requesting examination.

Question 16 (d)
If yes, what is the legal consequence if we do not file such particulars despite corresponding foreign patent application(s)/ patents exist?

Answer 16 (d)
Application considered withdrawn.