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).



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.

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.