Malaysia National Phase Application

Question
Our client has a PCT application which will enter into Malaysia phase, however, the priority application has just rejected as being failed to comply with the enablement requirement.
The specification describes a test result, namely, recites that “it is verified by clinical test that the total ratio of therapeutic effectiveness is up to 80%”. Then, the examiner contends that the specification discloses only the test result (80%) but no test method or process and the test was not described in such a way as to enable one skilled in the art to know how to obtain the result and be sure of the 80% effectiveness.
Accordingly, the specification fails to comply with the enablement requirement. In this situation, according to your patent application practice, please give us your determination that, if we file the application in Japan, whether the application might substantially be rejected under the same reason as set forth above.
If so, could you give us some suggestions to successfully avoid the above question?


Answer

We recommend the following steps to be taken with regards to the Malaysian national phase application:

Step 1: File the national phase application in Malaysia.

Step 2: Allow the priority application to be abandoned (assuming this is what your clients' wish).

Step 3: Request for a full substantive examination under Section 29(A) of the Malaysian Patents Act, which means that the Malaysian national phase application will be examined on its own merit.

Step 4: Await the Malaysian Examiner's report to evaluate next action vis-avis the Malaysian national phase application.