TOPIC : QUESTIONS ON MALAYSIAN NATIONALITY FILING PATENT APPLICATION ABROAD

Question
A Chinese company has an employee who has Malaysian nationality and co-developed an invention in Beijing with other Chinese inventors. We want to file an application for this invention in European Patent Office under the name of the Chinese company. Could Patrick Mirandah Co. tell us whether we should get approval from Malaysia official for this filing?

Answer
It is necessary for a Malaysian Inventor working abroad to have a clearance from the Intellectual Property Corporation of Malaysia (MyIPO) for a patent which he is an inventor or joint inventor.
For sake of clarity, we reproduce Section 23A(a) of the Malaysian Patents Act.
23A. Applications by residents to be filed in Malaysia first.
No person resident in Malaysia shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless
(a) an application for a patent for the same invention has been filed in the Patent Registration Office not less than two months before the application outside Malaysia.

We will need to apply for a waiver from MyIPO to enable the patent application to be filed in the European Patent Office (EPO) without having it first filed in Malaysia. In order for us to request for a waiver from MyIPO, we would require:
1. a copy of the present specification or a brief description of the invention.
2. name and correspondence address of the applicant of the said invention.
3. name, correspondence address and citizenship of the named inventors.
4. applicant’s rights to the invention : by virtue of assignment/being the inventor’s employer etc.