COMPETITION ACT 2010

SECTION A: AN OVERVIEW OF THE CA 2010

Status:

Passed by Parliament: 26 April 2010.
Date of Royal Assent: 2 June 2010.
Date of publication in the Federal Government Gazette: 10 June 2010.
In force from: 1 January 2012

Application of the CA

• The CA 2010 applies to any commercial activity, both within and outside Malaysia.
• In relation to the application of CA 2010 outside Malaysia, CA 2010 applies to any commercial activity transacted outside Malaysia which has an effect on competition in any market in Malaysia.
• “Commercial activity” – means any activity of a commercial nature but does not include:
• (a) any activity, directly or indirectly in the exercise of governmental authority;
• (b) any activity conducted based on the principle of solidarity; and
• (c) any purchase of goods or services not for the purposes of offering goods and services as part of an economic activity.

Request for Information on Renewal Regulations for Utility Models in Malaysia

The duration of a certificate for a utility innovation (i.e. Utility Model) is protected ten (10) years from the filing date of the application. The utility model may be protected for a further 5 + 5 years from the date of filing subject to use.

Questions regarding the design law / practice in Malaysia

1. Legal Framework / Governing Law

1) What national laws govern design prosecution / registration (e.g., the Design Law)?

The Malaysian Industrial Designs Act 1996 and Industrial Designs Regulations 1999 governs design prosecution and registration in Malaysia.

2) Please let us know the amendment history of the governing laws.

The Malaysian Industrial Designs Act 1996 came into force on 1 September 1999.The enactment of the Malaysian Industrial Designs Act 1996 replaces prior laws which provides automatic extension for all UK Registered Designs in Malaysia.

3) Please let us know the name and location of the governing body for design in your jurisdiction (e.g., Japan Patent Office).

Intellectual Property Corporation of Malaysia (MyIPO), located at Kuala Lumpur, Malaysia.

Enquiry on Applying Foreign Filing License (Waiver) in Malaysia

1. The application can be filed in the name of the inventor(s)
2. No physical document is required to identify Assignment.

Therefore, the application can still be filed in the name of the applicant (company) as the inventor(s) does not need to sign any documents to identify the Assignment.

Once the foreign filing license has been applied and subsequently approved, there is no need to file a Malaysian application. The applicant can straight away file the foreign application. If the applicant decides later on to file the corresponding application in Malaysia, the applicant can do so without any restriction as the foreign filing license has already been approved.

Contact us for more information on applying for foreign filing licence in Malaysia

Patent Filing requirement for the formalities in Malaysia

1. We need to know the patent filing requirement for the formalities in your country; i.e. Malaysia.

1. Applicant’s particulars

1.1 Individual
Name
Citizenship
Address
1.2 Corporate Entity
Name
Type of entity, state whether private limited, public listed or others
Registered address
Country of incorporation
State of incorporation, where applicant is a US Corporation

1.3 Applicant who is not the inventor, provide how right to patent is derived from inventor

Expedited Examination in Malaysia

Whether expedited examination is available, and by how much this reduces timing to:

i) receiving an examination report and
ii) registration purpose.

Please also let us know the costs if it is available.

A new Regulation has recently been introduced in Malaysia by the Intellectual Property Corporation of Malaysia, with effect from 15 February 2011, which allows for the expedited examination of trademark applications. An application for expedited examination has to be supported by Statutory Declaration setting out the reasons for the request.
Accepted reasons for an expedited examination are as below:

I) the expedited examination is for national or public interest
II) there are infringement proceedings taking place or evidence showing potential infringement with regard to the trademark applied for;
III) registration of the trademark is a condition for obtaining funding from the government or institutions recognised by the Registrar; or
IV) there are other reasonable grounds which support the request.

This option allows for a trademark application to be registered 7 months from the date of filing, assuming that the request for approval of expedited examination is filed within one month from the date of filing, and there are no adverse examination reports or opposition proceedings. Assuming if the Registrar raises any objections during the examination, the application will be removed from the expedited track and the normal examination process would apply to the case.

For more information, contact us : malaysia@mirandah.com

Correction procedures for granted Patents in Malaysia

1. Is it possible to file a request to correct a granted patent?

Yes it is possible to file a Request for Post-Grant Amendments to correct a granted/issued patent.

2. What is the general procedure?

We need to file a Statutory Declaration with the amendments and an Official form (Form 16A).

3. What specifically can be corrected in a granted patent? What may not be corrected?

Amendments can be done on the patent specification as long as the amendments shall not go beyond the disclosure in the initial application.

4. Is there a fee for filing a request to correct?

Yes, there is an official fees for filing the amendments as well as our professional fees for filing and submitting Statutory Declaration.

5. Does the fee change based on the cause of the error? (i.e., publication error by the Patent Office or an error on our part)

There will be no fees incurred if the error is caused by the Patent Offfice.

6. Are there any other costs?

There will be no other costs incurred.

7. Is there a delineated or stated time-line in which to file? If not, can you provide me with a rough estimate of when a request may be filed?

A request may be filed upon grant of the patent as long as the issued patent is not pending before any court proceedings.

8. What is required to correct the patent? For example, would simple instructions of how to fix the error be sufficient or would the applicant need to send the issued patent back?

Please let us have the amendment sand, we will able to prepare the rest at our end.

9. Is a form required? If so, please provide the form.

We will be able to submit the forms at our end.

10. At the end of the process, does an actual corrected sealed patent get issued or does the patent office just issue a certificate that can be attached to the original patent?

The Patent Office will issue a Certificate that can be attached to the Original Patent.

For more information, contact us : malaysia@mirandah.com

TOPIC : REQUEST FOR INFORMATION ON PATENT PROCEDURES IN MALAYSIA

Question 1
When are Power off Attorney documents due?

Answer 1
Power of Attorney documents are required to be submitted to enable us to act for the Applicant before the MyIPO (Intellectual Property Corporation of Malaysia). The PoA can still be filed on a later date if you are unable to provide the same at the time of filing of the application. However, it is advisable to submit the PoA within two (2) months of the filing date of the Malaysian application to complete the formalities procedure. Apart from submitting the PoA for filing of new applications, PoA needs to be submitted for Recordal purposes (i.e. Recordal Of Assignment as we are required to submit the PoA to enable us to act for the Assignee). As for Recordal of Assignment, PoA needs to be submitted at the time of filing the said recordal.

Question 2
When are Assignment documents due?

Answer 2
In Malaysia, it is not required for Assignment documents to be submitted for filing of a new patent application.

Question 3
Are copies of the Assignments as recoded in the US Patent Office acceptable?

Answer 3
Copies of Assignments as recorded in the USPTO is not required to be submitted for filing of a new patent application. However, for purposes of Recordal of Assignment, if the said assignment has been recorded with the USPTO, a copy of the same can be filed for Recordal of Assignment on Malaysia.

Question 4
When are annuities due?

Answer 4
A Malaysian patent shall expire 20 years from the date of filing of the application. In order to maintain the patent, annual renewal fees are payable.
Malaysian Patents Act provides that the 1st annuity is to be paid 12 months before the expiration of the second payment term.
For example, if a patent is granted on 30 March 2007, the first year of protection of this patent starts from 30 March 2007 until 30 March 2008 whereas the second year is from 30 March 2008 until 30 March 2009. The due date for the 1st annuity payment for a patent that is granted on 30 March 2007 would be on 30 March 2008.

Question 5
When are examination request due?

Answer 5

a) For Malaysian National Phase applications, the term for requesting a full or modified substantive examination or deferment of the said examination in Malaysia is within 48 months (4 years) from the filing date of the PCT application.
b) Subject to the Patents (Amendments) Regulations 2011 which came into force on 15 February 2011, a request for substantive examination is to be made within 18 months from the filing date of the application for all Paris Convention filings (non-National Phase Application).

TOPIC : PLANT PROTECTION FOR NON-TRANSGENIC PLANTS IN INDONESIA, MALAYSIA & THAILAND

Question 1
According to our understanding is that :

a) in Malaysia, plant varieties and essentially biological processes for the production of plants are excluded from patentability;

b) in Indonesia, living creatures (except for micro-organisms, but including plants) and essentially biological processes for the production of plants are excluded from patentability, and that

c) in Thailand, naturally occurring plants are excluded from patentability.

We need confirmation from you in order to provide client with the required information. We also seeking information on the following aspects of Patent Law in Indonesia, Malaysia and Thailand :

i.) Are non transgenic plants which are not plant varieties (e.g. certain types of hybrids or plants which can not be stably reproduced) patentable, in particular in Indonesia and Thailand?

ii.) Can plant parts (in particular plant seeds) or plant cells be patented?

iii.) Which are the criteria which must be fulfilled in order that a process for the production of non-transgenic plants be considered non “essentially biological” and thus be patentable.

iv.) If patent protection cannot be obtained, is plant variety protection (PVP) a good alternative? Can PVP protection be obtained for plants which cannot be stably reproduced, in particular in Indonesia and Thailand?

Answer 1
We provide herewith our reply to your enquiry for Malaysia, Indonesia and Thailand as follows :

a) Malaysia : Plant varieties (including hybrids) and essentially biological processes are not patentable under Section 13(1) (b).

b) Indonesia : Article 7 (d) (i) excludes all living creatures (expect microorganisms from patentability and (ii) excludes the biological processes producing plants from patentability.

c) Thailand : Section 9 (1) excludes patentability of plants. Currently in Thailand, it is accepted that the Act exclude plant whether occur naturally or by human (including hybrid). However, section 9 (1) excludes product, but does not exclude the process or use.

We further confirm that Plant Variety Protection (PVP) is an alternative. Our response with regards to (PVP) as an alternative as an alternative as follows :

i.) Malaysia : According to the PVP regulations in Malaysia, a plant variety that is new, distinct, uniform and stable may be protected under PVP. According to the definition of stable in Section 14 of the Act, a plant variety is stable if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each particular cycle.

ii.) Indonesia : Pursuant to PVP Law No. 29 of 2000 Article 2, varieties that may be issued PVP include those plants or species that are new, distinct, uniform and stable and given a denomination. A variety is regarded as stable when its characteristics do not experience any change after repeated cultivation or when multiplied in large quantities through specific reproductions cycles do not undergo change at the end of each reproduction cycle. In view of the above, the PVP office confirms that the hybrids or plants which cannot be stably reproduced can not be protected under PVP.

iii.) Thailand : Similar to Indonesia and Malaysia, plants which cannot be stably reproduced cannot be protected under PVP. Thus in order to obtain protection, the plant must be stably reproduced, wherein the subsequent reproduction must be the same as original in the sense that the plant must show the same essence (main character, primary essences) as recited in Section 11(2) of Act.

Conclusion
The PVP legislations in Malaysia, Indonesia and Thailand requires “Distinctness, Uniformity and Stability (DUS)”. Since stability is a clear criterion, stable reproduction is a requirement. Therefore, if the plant cannot be stably reproduced, the same cannot be protected under PVP in Malaysia, Indonesia and Thailand.

TOPIC : GENERAL QUESTIONS ON FILING PROCEDURE IN INDONESIA

Question 1
Kindly let us know what is the deadline for requesting examination (patents) if the national phase of a PCT application is entered?
(Example of fictive response: 5 years from the PCT filing date)

Answer 1
3 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 will be considered withdrawn.

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

Answer 3
Yes.

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

Answer 3 (a)
A small entity is an enterprise with a capital below USD 500.

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 (Word), Assignment document (Word) in English and your national language, forms P3&P26 (Word) …)

Answer 4
Documents required are as follows:
(a) Power of Attorney (POA)
(b) Deed of Assignment (DOA)
(c) Declaration of Entitlement (DOE)

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 (Word), Assignment document (Word) in English and your national language, forms P3&P26 (Word) …)

Answer 5
Documents required are as follows:
(a) Power of Attorney (POA)
(b) Deed of Assignment (DOA)
(c) Statement of Industrial Design Owner (SIDO)

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
Item 4 (patent)
(a) A copy of the POA must be submitted at the time of national phase entry followed by submission of the original within 3 months from actual filing date in Indonesia
(b) DOA must be submitted within 3 months from actual filing date in Indonesia
(c) DOE must be submitted within 3 months from actual filing date in Indonesia

Item 5 (design)
(a) A copy of the POA must be submitted at the time of filing the design application followed by submission of the original within 3 months from actual filing date in Indonesia
(b) DOA must be submitted within 3 months from actual filing date in Indonesia
(c) SIDO must be submitted within 3 months from actual filing date in Indonesia

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
Both the patent and design applications cannot be filed without a copy of the POA.

For patents, if the original POA, DOA and DOE are not available within 3 months from the actual filing date, the same may be submitted after a 2-month extension without official fee. After the 2-month extension, a further 1-month extension with official fee can be obtained to submit the required documents.

For designs, if the original POA, DOA and SIDO are not available within 3 months from the actual filing date, a 1-month extension without official fee can be obtained to submit the required documents.

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
The application will be considered withdrawn.

Question 9
If it is possible to file a General Power of attorney, please provide us with such document in a MICROSOFT WORD format only (to enable us to fill in documents ourselves).

Answer 9
No.

Question 10
Should an assignment document be notarized?

Answer 10
If the specially drafted assignment form is available, a duly signed assignment form in original is sufficient. If a global or existing assignment is available, the same must be notarized.

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
If possible, please provide us with a copy (in PDF format) of any General Power of Attorney form duly signed, we sent you in the past
(Example of fictive response: General POA for Total Petrochemicals… in PDF format attached)

Answer 12
N/A.

Question 13
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 13
All original documents must be submitted.

Question 14
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 14
Yes, a verified English translation of the priority document, i.e. duly verified by the translator will be required.

Question 14 (a)
If yes, what is the deadline for filing such translation with your PTO?

Answer 14 (a)
Within 3 months from the actual filing date of the patent or design application.

Question 14 (b)
What is the legal consequence if the priority document is not filed within the deadline? (Example of fictive response: loss of priority date).

Answer 14 (b)
Loss of priority date.

Question 15
What is/are the official language(s) for filing a patent application?
(Example of fictive response: English or French only)

Answer 15
Indonesian Language only.

Question 16
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 16
Indonesian Language only.

Question 17
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 17
No.

Question 17 (a)
If yes, mention the countries/organization(s) (example of fictive response: US, AU, EP)

Answer 17 (a)
N/A.

Question 17 (b)
If yes, is there a deadline for filing these particulars?

Answer 17 (b)
N/A.

Question 17 (c)
If yes, what is the legal consequence if we do not file such particulars despite corresponding foreign patent application(s)/ patents exist?

Answer 17 (c)
N/A.

TOPIC : GENERAL QUESTIONS ON FILING PROCEDURE IN SINGAPORE

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
39 months from the earliest priority date, or where there is no priority date, the date of filing the application (international 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
Upon expiry of the 39 months deadline, Applicant may have up a period not exceeding 3 months to file the examination request. Over and above the 3 months extension, the Registrar may allow a further extension on such terms as he may direct and subject to the furnishing of a statutory declaration or affidavit setting out the grounds for the extension request.

The application may not be deemed lapsed even if no request for examination has been filed at all, since the Applicant may rely on the International Preliminary Report on Patentability (IPRP) or results of a foreign corresponding application for eventual grant of the Singapore patent.

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

Answer 3
No.

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

Answer 3 (a)
N/A.

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 (Word), Assignment document (Word) in English and your national language, forms P3&P26 (Word) …)

Answer 4
In Singapore, there are no documents required such as POA, assignments etc for National Phase entry. The POA is filed online by the representing counsel.

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 (Word), Assignment document (Word) in English and your national language, forms P3&P26 (Word) …)

Answer 5
In Singapore, there are no documents such as POA, assignments etc for filing a Design application.

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
N/A.

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
N/A.

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
N/A.

Question 9
If it is possible to file a General Power of attorney, please provide us with such document.

Answer 9
No provision for POA as mentioned, thus no provision for General Power of Attorney.

Question 10
Should an assignment document be notarized?

Answer 10
NA, but we would have to submit a Statement of Inventorship online, which lets the Registry know how the Applicant derives its rights from the Inventors (e.g. assignment, employment, etc). No supporting documents are required for submission.

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
N/A.

Question 12
If possible, please provide us with a copy (in PDF format) of any General Power of Attorney form duly signed, we sent you in the past
(Example of fictive response: General POA for Total Petrochemicals… in PDF format attached)

Answer 12
N/A.

Question 13
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 13
N/A.

Question 14
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 14
No, for all applications filed after 1 July 2004, it is no longer necessary to submit a certified copy of the priority document with its translation unless the Registrar explicitly calls for it.

Question 14 (a)
If yes, what is the deadline for filing such translation with your PTO?

Answer 14 (a)
N/A.

Question 14 (b)
What is the legal consequence if the priority document is not filed within the deadline? (Example of fictive response: loss of priority date).

Answer 14 (b)
N/A.

Question 15
What is/are the official language(s) for filing a patent application?
(Example of fictive response: English or French only)

Answer 15
English only.

Question 16
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 16
English only.

Question 17
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 17
No, not at the time of filing. However, they are needed when the Applicant chooses to rely on a corresponding application for GRANT of the Singapore patent.

Question 17 (a)
If yes, mention the countries/organization(s) (example of fictive response: US, AU, EP)

Answer 17 (a)
The patent offices prescribed in Singapore for the purposes of the definitions of “corresponding application” are —

(a) those of Australia, Canada (in respect of applications for a Canadian patent filed in the English language), Japan, New Zealand, Republic of Korea, the United Kingdom and the United States of America; and

(b) the European Patent Office (in respect of applications for a European patent filed in the English language).

Question 17 (b)
If yes, is there a deadline for filing these particulars?

Answer 17 (b)
At the time of requesting GRANT of the patent, i.e. either by 42 months or 60 months from the earliest priority date.

Question 17 (c)
If yes, what is the legal consequence if we do not file such particulars despite corresponding foreign patent application(s)/ patents exist?

Answer 17 (c)
Application considered withdrawn, if the Applicant wishes to secure grant by reliance on allowed corresponding applications, and yet Applicant fails to furnish the particulars.