Claiming priority of US provisional application and PCT application in a Malaysian application

Question 1
Our client would like to know whether it is possible to obtain patent protection in Malaysia for invention X under the following facts:
• April 2005 - US provisional application filed on invention X
• April 2006 - US utility application filed on invention X (claiming priority to provisional application of invention X)
• April 2006 - PCT application filed on invention X (claiming priority to provisional application of invention X)
• September 2006 - US provisional application filed on invention X+Y (not claiming priority to invention X, but disclosing invention X entirely)
• October 2006 - publication of application for invention X
• September 2007 - US utility application filed on invention X +Y (claiming priority to provisional application of invention X + Y)
• September 2007 - PCT application filed on invention X + Y (claiming priority to provisional application of invention X + Y)

I am hoping that we may be able to add claims to invention X in the application of X + Y, as it fully supports X. However, I am concerned that the previous applications for invention X, which did not enter the national stage in Malaysia could be a problem.

Does it matter that there was no publication of invention X prior to the filing of an application on X + Y?

Answer 1
Based on the Malaysian Patents Act, prior art consist of:
(a) everything disclosed to the public worldwide by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application
(b) the contents of a Malaysian patent application having an earlier priority date that the patent application referred to in (a), to the extent that such contents are included in the patent granted on the basis of the Malaysian patent application.

Since the priority application of invention X+Y was filed in Sept 2006, which is prior to invention X being published in October 2006, invention X will not be considered to defeat novelty of invention X+Y.

Question 2
Does Malaysia allow claim amendment after entry into the national stage?

Answer 2
Yes. However, the amendments made to the claims should not go beyond the disclosure as originally filled, since Malaysia has no provision of adding subject matter after filing a request to enter national phase in Malaysia.

Question 3
Does Malaysia allow inventorship amendment after entry into the national stage?

Answer 3
If the amendments to inventors was requested for the PCT application, the same can be done for the national phase Malaysian application.

However, if the amendments to inventors was not requested for the PCT application, the said amendments can be made for the national phase Malaysian application with the relevant documents evidencing the change of inventorship.

Question 4
Would it be possible to file an application in Malaysia for invention X claiming priority to the April 2005 US provisional application for invention X?

Answer 4
The answer to your question is No.

Based on the Malaysian Patents Act, the right to claim priority is:
(a) within 12 months preceding the filing date of the first foreign application (by way of filing a request for a conventional application), or
(b) within a 30 month deadline from the priority date of the PCT application (by way of filing a request to enter national phase) provided the PCT application was filed on or after 16th August 2006 (the date of Malaysia acceding PCT)

Since this case does not comply with either condition, (a or b), it will NOT be possible to file an application in Malaysia for invention X claiming priority of the April 2005 US provisional application for the same.