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).