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