Inquiry on Patent Marking and Design Registration Marking in Malaysia

A. Patent Marking


1) Is there any advantage (benefit) for putting a mark of patent or patent number on the patented article (product)?

No, in Malaysia there is no advantage for Patent Marking on the patented product.

If patented product are appropriately marked then patentee may use it to obtain damages resulting from infringement based on the patented product. However, if the patented product is falsely represented the patentee may be liable for legal action. Section 64 of Malaysian Patent Act states as below:
 
“Section 64. Unauthorised claim or patent.

(1) Any person who falsely represents that anything disposed of by him for value is a patented product or process commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

 (2) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

 (3) Subsection (1) does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has, expired or been invalidated and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.

 (4) In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.”


2) Is there any disadvantage for not putting a mark of patent on the patented article (product)?

There is no disadvantage by not marking a patent number on a patented product.


3) Is it mandatory to put a mark of patent on the patented article (product)?

It is not mandatory as there are no requirements for patent marking in Malaysia.


B. Design Registration Marking

1) Is there any advantage (benefit) for putting a mark of registered design or design registration number on the design-registered article (product)?

No, in Malaysia there is no advantage for marking of a design registration number on a registered article.


If registered article are appropriately marked then patentee may use it to obtain damages resulting from infringement based on the registered article. However, if the registered article is falsely represented the patentee may be liable for legal action. Section 37 of Malaysian Industrial Design Act states as below:

“Section 37. False representation of registration.
 (1) Any person who falsely represents that anything disposed of by him for value is an article protected by an industrial design registration commits an offence and shall be liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

(2) For the purposes of subsection (1), a person who for value disposes of any article having stamped, engraved or impressed thereon or otherwise applied thereto the words "registered industrial design" or any other word or words expressing or implying that the article is one to which a registered industrial design has been applied, shall be taken to represent that the article is one protected by an industrial design registration.

(3) Subsection (1) does not apply where the representation is made in respect of an industrial design after the registration in respect of that industrial design has expired or been revoked and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.

(4) In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.

(5) This section shall have effect in relation to a right to apply for the registration of an industrial design as they have effect in relation to a registered industrial design, and references to a registered industrial design shall include references to a right to apply for the registration of an industrial design.”


2) Is there any disadvantage for not putting a mark of registered design or design registration number on the design-registered article (product)?

There is no disadvantage by not marking design registration number on a registered article.

3) Is it mandatory to put a mark of registered design or design registration number on the design-registered article (product)?

It is not mandatory as there are no requirements for registered design marking in Malaysia.


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

Divisional Application

1. Is it possible to file divisional application after a clear report is issued?


Divisional application can only be filed within 3 months from receiving the first examination report. If the first report is a clear report, then the applicant can file divisional application within the prescribed timeline.

However, if the applicant did not file divisional application in response to the first examination report, and subsequently the application is issued clear report, then the applicant cannot file divisional application.


2. Alternatively, upon receiving clear report and if the applicant wants to file divisional application; then the following route can be taken:


          a).File post-grant amendment incorporating the allowed claims and intended divisional claims      (divisional claims shall not go beyond initial disclosure and does not add new subject matter)

          b).The Examiner will conduct further examination on the post-grant amendment and can come out with 2 possible outcomes:

               (i) issue amended clear report and all the claims will be allowed

               (ii) issue another adverse report and cite objection on unity of invention. Now, the applicant can divide the application based on the examination report.


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