Enquiry Related to Obtaining Extension of Time to Respond to Office Actions

1. Pursuant to Malaysia law, how far in advance of the official office action response due date does the patent office require Malaysian firm to request an extension of time?

The request for extension of time (EOT) can be filed until the last date of the deadline. For example, if the Office Action is dated 20 January 2013, then the response for the Office Action must be filed by 20 March 2013 (two-month deadline system). Request for EOT can be filed at any time since the issuance of the Office Action (20 January 2013) until the last date of 20 March 2013. The extended period will start from initial deadline regardless of when the request for EOT was filed; which means that requesting EOT for 3 months will automatically extend the deadline to 20 June 2013 (does not matter if the request for EOT was filed on 10 March 2013; or the last date 20 March 2013). Malaysian Patents Act does not allow for retrospective application for filing EOT i.e. the request for EOT cannot be filed after the deadline is over.

2. How far in advance of the official office action response due date does your firm currently request extensions of time for GPO matters?

Our firm practices strict code of conduct in requesting for EOT. We will only file request for EOT on the last date of the deadline if we do not hear from the client. In our reminders prior to the deadline, we will remind the instructing client that we will file request for EOT if we do not hear from them until the last date of the deadline in order to keep the application pending. We will file the request for EOT at the last date of the deadline to ensure that the instructing client has ample time to prepare the response; and EOT is only filed if the client did not revert with their instruction until the last day of the deadline. We will only file request for EOT in advance of the deadline if the instructing client gives us the instruction to do so.

3. How far in advance of the deadline does your firm need to receive GPO instructions in order to timely file a response (i.e. no extension of time taken)?

We accept the response to be filed until the last day of the deadline i.e. we will file the response (without requesting EOT) if we receive the instruction in the morning of our time on the last day of the deadline date. However, please note that time zone difference must be taken into consideration. We humbly request that the response shall be sent to us at least 1 day before the deadline date in order to avoid requesting for EOT.

ADDITIONAL NOTE: Request for EOT in Malaysia can only be applied once i.e. if the request for EOT was filed for 2 months, then the response must be compulsorily filed by the end of the 2 months of EOT. No further extension will be allowed.

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