Question 1
What type of examination does your patent office employ (full substantive examination, formalities only, etc.)? If examination is substantive, how experienced/ trained are the examiners?
Answer 1
The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined to substance and an applicant has a choice of either filing a request for a full or modified substantive examination.
Preliminary examination commences soon after the patent application has been filed at MyIPO. Substantive examination on the other hand commences after the applicant files a request for substantive examination and this request has to be made within a prescribed period as prescribed by the Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.
In the preliminary examination stage, the Registrar examines the application and determines whether it complies with formal requirements designated by the regulations of the Patents Act. In the substantive examination stage, if the applicant requests for a full substantive examination, the examiner will examine the application for patentability on its own merit. If the applicant requests for a modified substantive examination, the Malaysian application must be amended to conform to a corresponding patent granted in the prescribed countries i.e. EPO, USA, UK, AU, JP or KR. In such a situation, the examiner will examine the application for formalities only as the substantive examination has already been conducted in the patent office which grants the corresponding foreign application.
There are currently about 70 to 80 patent examiners, appointed after the corporatisation of the Patent Office in 2004. Most of the senior examiners have been trained in EPO and some in USPTO and JPO.
Question 2
In the past year, about how many patent infringement suits have been filed in your country? In the past five years? We’re looking for an order of magnitude response, e.g., 10, 100, 1000?
Answer 2
We would estimate that there might be about 60 patent infringement suits filed in Malaysia last year. Up to 35 of these may have been settled at the pre-trial stages. In the last 5 years we estimate about 170 suits would have been filed and about 40 would have gone through a full hearing. Our Firm is currently undertaking 6 litigation suits on patents in Malaysia.
Question 3
Overall, how experienced is your court system with patent infringement matters? Are judges technically competent? Are judges required to have experience before being seated (can they come directly from law school to the bench)?
Answer 3
The courts in Malaysia rely on precedent case laws and if not available, the court will rely on English Laws as well. The judges are competent in interpretation of the law but on their own, they may not be very competent. Having said that, there have been a few decisions that were sound and rational.
Question 4
Do you have a special IP court? If so, what cases does it handle?
Answer 4
Yes. In year 2007, the Intellectual Property Court in Malaysia was established and it consists of 15 Sessions Courts in every state to handle intellectual property cases and 6 High Courts in the 6 states with the most number of intellectual property infringement cases. For more details on this matter, please visit www.myipo.gov.my
Question 5
Do your courts rely on technical experts? If so, what is the extent of the role of the technical experts – do they just provide expert advice to judges who render the final decision, or do the experts in effect render the court’s decision, also?
Answer 5
Yes, courts in Malaysia do rely on technical experts to provide expert advice to judges who render the final decision.
Question 6
Do your courts treat all parties equally or is there a bias toward infringers or patent holders, local or foreign entities, plaintiffs or defendants, etc.?
Answer 6
In our view the courts treat all parties equally with no special bias towards any party.
Question 7
Is invalidity a defense to infringement?
Answer 7
Yes, however the burden of proof will be heavier on the party alleging invalidity. The court can close request patentees to limit their claim scope.
Question 8
Is a speedy trial possible? Is it easy to obtain? Does the outlook for a speedy trial change if invalidity is invoked?
Answer 8
A speedy trial is possible and a judge could be requested for an early hearing date. It is not easy to obtain a speedy trial, as the judge has to be convinced of the urgency of the matter especially where damages are irreparable etc.
Question 9
What is the average duration of a patent suit in your country? Again, we’re looking for an order of magnitude response, e.g., 1 year, 5 years, 10 years?
Answer 9
The average duration of a patent infringement suit in Malaysia is about 12 to 24 months if heard in the IP court.
Question 10
What is the average cost of filing and trying a patent infringement suit? This is another question where an order of magnitude response is sufficient, e.g., 10,000USD, 100,000USD, or 1,000,000 USD.
Answer 10
It depends on the complexity of the case and the amount of work and time involved.
Question 11
What are the maximum damages that can be awarded to a patent holder? Again, order of magnitude response is sufficient, e.g., 10,000 USD, 100,000 USD, or 1,000,000 USD, etc.
Answer 11
There are no maximum limits to damages that can be awarded, as the court will compensate the plaintiff to the amount of loss he has managed to prove.
Question 12
Does your patent system allow for provisional rights? If so, on what basis?
Answer 12
As of now, patent applications filed in Malaysia are not published in printed form. After 18 months from the priority date, the bibliographic details of the application are open for public inspection. This public inspection of a pending application is a form of provisional protection, wherein, upon grant, the patent owner may claim damages from parties that have used of the invention prior to grant without authorization from the patent owner. The international publication of a PCT application that designates Malaysia has an equivalent effect in terms of provisional protection. For more information, please visit the patent office website at www.myipo.gov.my
Question 13
What is the predictability of court decisions?
Answer 13
The court decisions are reasonably predictable in respect of clear cases. It is equivalent to the English courts (as a comparison).
Question 14
Are court decisions easy to enforce?
Answer 14
The decisions are easy to enforce within jurisdiction of Malaysia.
Question 15
Are preliminary injunctions and/or seizure actions available? Easy to obtain? Easy to enforce?
Answer 15
Preliminary injunctions and/or seizure (known as Anton pillar orders) are available. There are not easily obtainable but the court would grant them if the criteria is satisfied such as an arguable case is shown and the balance of convenience favours the party applying (for an injunction) or the party can show that the infringing articles are likely to be taken out of jurisdiction (for seizure). Once granted, the orders are easy to enforce, as a party can be cited for contempt if there is any breach.
Question 16
What measures are in place to prevent importation or exportation of infringing goods? Similarly, what measures are in place to prevent infringing goods in transit from passing through the country? Have these measures been utilized, and if so, to what degree of success?
Answer 16
Pursuant to border measure provisions in Malaysia, there is a provision to restrict importation and entry of infringing goods into Malaysia. However, Border Measure only applies to goods imported and brought into Malaysia for trade and does not apply to goods in transit to another country.
Question 17
Does the system allow discovery, meaning a court sanctioned detailed examination of the other parties’ files?
Answer 17
Discovery can be an essential prayer of the preliminary injunctions discussed above.
Question 18
Does your patent law include a theory or doctrine of equivalents, meaning that inventions that are just outside of the claimed invention are considered to be covered by the claims?
Answer 18
The doctrine of equivalents is not being adapted in Malaysia. The closest equivalent to this doctrine as being adapted by the courts in Malaysia is the “purposive construction”. Otherwise a strict literal interpretation of claims is used.
Question 19
What remedies are available? Are there compensatory damages? Punitive damages? Restraining orders? Other remedies?
Answer 19
The remedies that are available are compensatory damages or an account of profits. Punitive damages are rarely awarded. The court can also grant restraining orders such as a permanent injunction.
Question 20
Does your law provide for compulsory licenses? If so, is your law compatible with GATT/TRIPS? If not, how does it differ?
Answer 20
Sections 48 until 54 of the Patents Act provide provision on compulsory licenses. The provisions in the Malaysian law are compatible with GATT/TRIPS. Kindly refer to www.wto.org or www.wikipedia.org for more information.
Question 21
What is the date of latest substantive amendments to the Patent Law.
Answer 21
The latest substantive amendments to the Malaysian Patents Act 1983 came into force on 16th August 2006. For more clarifications visit the Patent Office website at www.myipo.gov.my
Question 22
Is an English translation of the latest version of the Patent Law available?
Answer 22
Yes.
Question 23
Is there likely to be a change in Patent Law in the near future?
Answer 23
Yes, the Patents Act 1983 will be amended in the near future to include clearer provisions on biotechnology and a depository library for micro-organisms. For more clarifications visit the Patent Office website at www.myipo.gov.my
Question 24
Does your patent law allow patents for business methods or software?
Answer 24
Business method or software inventions, per se, are not patentable. However, if a business method or software invention is provided with a technical solution to solve a technical problem, the invention is patentable subject to the novelty, inventiveness and industrial applicability requirements.
Monday
Question 1
Whether the following subject matters can be patented in Malaysia or not.
Answer 1
Computer related inventions.
With regards to computer related inventions, assuming if the same is related to hardware inventions and technical features of the product or hardware are claimed, hence these types of inventions should be patentable. As for software related inventions where the technical features of the software are claimed as method of performing a function (except for method for doing business, performing mental acts or playing games) hence these types of inventions should be patentable. However, one should refrain from using phrases such as “computer program”, “software”, “source codes” and anything of the like.
Biological Inventions.
With regards to biological inventions,
(a) methods of treatment are not allowed
(b) all patents against public order (e.g. cloning) is not allowed.
Additionally you may also can check the MyIPO link at www.myipo.gov.my and also visit www.epo.org.
Question 2
Are there any Non-Patentable Inventions which cannot be registered even
if the inventions comply with the other requirements? Can PMC assist us on this matter?
Answer 2
Yes, assuming the invention contains information, which might be prejudicial to the interest or security of the nation.
Question 3
Exception of lack of novelty.
Please explain the procedural requirements to be eligible for the exception. For example, in Japan, the applicant must submit the document to prove the related facts within 30 days from the application date.
Answer 3
Under section 14(3) of the Malaysian Patents Act, should there be a disclosure made prior to the priority date of the patent application, this disclosure may be disregarded if
(a) such disclosure occurred within one year preceding the date of the patent application and was by reason or in consequence of acts committed by the applicant or predecessor in title;
(b) such disclosure occurred within one year preceding the date of the patent application and was by reason or in consequence of any abuse of the rights of the applicant or predecessor in title;
(c) such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act.
The Applicant may at any time state any disclosure, which he is aware of and which in his opinion should be disregarded for priori art purposes under the above-mentioned Section 14(3).
You may also check on the www.myipo.gov.my
Question 4
Double patents prevention.
Please let me know number of the Section or the Rule to regulate the double patents prevention.
Answer 4
The Malaysian Patents Act does not specify a Section or a Rule to regulate / prevent the double patenting. However, it is the practice that when an application is divided, the matter claimed in the parent and divisional should be clearly distinct.
Question 5
Application language.
It is described in your draft that "The Malaysian Patent Act requires all applications to be filed in either the national language, Bahasa Malaysia or English. Should an application be in a foreign language, the applicant may provide a certified English translation of the same for the purpose of filing." Does this mean that the applicant can file the application in a foreign language other than Bahasa Malaysia or English on the condition that the applicant also submit the certified English translation thereof?
Answer 5
Yes.
Question 6
If so, the English translation must be filed at the same time of the application?
Or, it can be filed later?
Answer 6
The English translation must be filed at the same time of the application.
Question 7
Enter PCT applications into your country.
What documents must be submitted to enter PCT applications into Malaysia?
What is the full list of necessary documents?
Answer 7
(1) Request for Entering the National Phase
(2) Specification
(3) Copy of the Published PCT Application
(4) Copy of the PCT Request
(5) Copy of the International Search Report
(6) Copy of the Notification Concerning Submission or Transmittal of Priority Document
(7) Copy of the First Notice Informing the Applicant of the Communication of the International Application
(8) Copy of the Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration
(9) Statement Justifying the Applicant’s right to apply
(10) Appointment of Patent Agent.
Question 8
Dependent claims.
Whether multi-dependent claims or multi-multi-dependent claims are acceptable or not?
Answer 8
Yes multi-dependent claims or multi-multi-dependent claims are acceptable.
Question 9
Abstract.
It is described in your draft that "The abstract generally has no legal effect on the application containing it; for instance, it cannot be used interpret the scope of protection claimed."
Answer 9
The Malaysian Patents Act does not specify a Section or a Rule to regulate this matter. However, Regulation 16 of the Malaysian Patent Act indicates that the abstract shall contain a summary of the disclosure in which the said summary indicates the technical field of the invention that allows for clear understanding of the technical problem, the gist of the solution and the principal use(s) of the invention.
Question 10
Maintenance fees for patent application.
I understand that the patent owner must pay annuities to maintain its patent right more than two years after the patent is registered. How about maintenance fees for a patent application rather than patent right? For example, in China, the applicant must may the maintenance fees to maintain the application after predetermined term has lapsed during pendency of the application.
Answer 10
In Malaysia, the maintenance or renewal of a patent application is only required after the patent application has been granted and continues through the life of the patent until expiration.
Question 11
Special type application.
Please confirm as to whether the following type of application can be admitted in Malaysia or not.
Answer 11
(a) Domestic priority application (e.g. Malaysia patent application claiming priority based on the other previous Malaysia patent application)
(a) Yes, domestic priority applications can be admitted in Malaysia.
(b) Foreign language application
(b) Yes, foreign language applications can be admitted in Malaysia provided the English translation must be filed at the same time of the application.
(c) Provisional application
(c) No, provisional applications cannot be admitted in Malaysia.
(d) Secret patent
(d) No, secret patents cannot be admitted in Malaysia.
Question 12
Laid-open and file wrapper.
It is described in your draft that "Patent applications are available for public inspection after 18 months from the priority date or filing date..." Please let me know number of the Section or the Rule to regulate this matter.
Answer 12
Malaysian Patents Act Section 34 ‘Public Inspection’ specifies that “The Registrar shall make available for public inspection after eighteen months from the priority date or filing date of a patent application …”
Question 13
Modified substantive examination.
Please let me confirm countries or treaties whose examination results to be submitted when the application requests the modified substantive examination. Under Rule 27A(5) which was implemented on August 1, 2001, it seems that the examination results only by Australia, Great Britain, United States or European Patent Convention can be acceptable. Is my understanding correct? What if the examination results only by the Japan Patent Office is submitted?
Answer 13
Your understanding is correct with regards to the Malaysian Patents Act Rule 27A(5) which was implemented on August 1, 2001 that only examination results only by Australia, Great Britain, United States or European Patent Convention are acceptable. However, the Act has been amended in since July 1, 2002, examination results from Japan are acceptable and thereafter since June 19, 2003, examination results from the Republic of Korea are acceptable. Therefore, to date, the Malaysian Patents Act Rule 27A(5) states that examination results by Australia, Great Britain, United States, Japan, the Republic of Korea or European Patent Convention are acceptable.
Should you require more information, visit at www.jpo.go.jp and www.kipo.go.kr
Question 14
Appeal against the rejection.
14.1) It is described in your draft that "In Malaysia there is provision whereby an applicant can appeal against the decision of the Examiner/Registrar to the Patent Office." Please let me know number of the Section or the Rule to regulate this matter.
Answer 14
14.1) Under Section 88 of the Malaysian Patents Act, any person aggrieved by any decision or order of the Registrar or the Patent Office, may appeal to the Court.
14.2) It is described in your draft that "In fact there are no quasi judicial or contentious proceedings conducted by the Patent Office." What does this explanation mean? How is the appeal processed by Patent Office?
14.2) This means that the Patent Office does not conduct any quasi-judicial or contentious proceedings. These proceeding are conducted by the Court.
Question 15
Basis to determine the scope of patent.
In Japan, the scope of patent is determined based on claims, and specification and figures can be referred in interpreting claims. How about in Malaysia? Which Section of Malaysia Patent law does regulate this?
Answer 15
Regulation 13(5) of the Malaysian Patents Act specifies “The claims shall define the invention in terms of the technical features of the invention”.
Question 16
Infringement.
Is "indirect infringement" may be admitted in Malaysia? For example, in Japan, if the third party is producing only a part of a certain invented product and the part can be used only to produce the invented product, the act by the third party constitutes the infringement of a patent even if the third party does not produce the invented product as a whole.
Answer 16
Section 59(2) of the Malaysian Patents Act specifies that “The owner of the patent shall have the same right against any person who has performed acts, which make it likely that an infringement will occur. The acts are referred as imminent infringement". This means that if components A+B+C = Patent and if A or B or C is an essential integer of the patent, then it will be an infringing act if any preparations which in the end, will result in infringement of the patent will be liable as an imminent (contributory) infringer under Section 59(2).
Whether the following subject matters can be patented in Malaysia or not.
Answer 1
Computer related inventions.
With regards to computer related inventions, assuming if the same is related to hardware inventions and technical features of the product or hardware are claimed, hence these types of inventions should be patentable. As for software related inventions where the technical features of the software are claimed as method of performing a function (except for method for doing business, performing mental acts or playing games) hence these types of inventions should be patentable. However, one should refrain from using phrases such as “computer program”, “software”, “source codes” and anything of the like.
Biological Inventions.
With regards to biological inventions,
(a) methods of treatment are not allowed
(b) all patents against public order (e.g. cloning) is not allowed.
Additionally you may also can check the MyIPO link at www.myipo.gov.my and also visit www.epo.org.
Question 2
Are there any Non-Patentable Inventions which cannot be registered even
if the inventions comply with the other requirements? Can PMC assist us on this matter?
Answer 2
Yes, assuming the invention contains information, which might be prejudicial to the interest or security of the nation.
Question 3
Exception of lack of novelty.
Please explain the procedural requirements to be eligible for the exception. For example, in Japan, the applicant must submit the document to prove the related facts within 30 days from the application date.
Answer 3
Under section 14(3) of the Malaysian Patents Act, should there be a disclosure made prior to the priority date of the patent application, this disclosure may be disregarded if
(a) such disclosure occurred within one year preceding the date of the patent application and was by reason or in consequence of acts committed by the applicant or predecessor in title;
(b) such disclosure occurred within one year preceding the date of the patent application and was by reason or in consequence of any abuse of the rights of the applicant or predecessor in title;
(c) such disclosure is by way of a pending application to register the patent in the United Kingdom Patent Office as at the date of coming into force of this Act.
The Applicant may at any time state any disclosure, which he is aware of and which in his opinion should be disregarded for priori art purposes under the above-mentioned Section 14(3).
You may also check on the www.myipo.gov.my
Question 4
Double patents prevention.
Please let me know number of the Section or the Rule to regulate the double patents prevention.
Answer 4
The Malaysian Patents Act does not specify a Section or a Rule to regulate / prevent the double patenting. However, it is the practice that when an application is divided, the matter claimed in the parent and divisional should be clearly distinct.
Question 5
Application language.
It is described in your draft that "The Malaysian Patent Act requires all applications to be filed in either the national language, Bahasa Malaysia or English. Should an application be in a foreign language, the applicant may provide a certified English translation of the same for the purpose of filing." Does this mean that the applicant can file the application in a foreign language other than Bahasa Malaysia or English on the condition that the applicant also submit the certified English translation thereof?
Answer 5
Yes.
Question 6
If so, the English translation must be filed at the same time of the application?
Or, it can be filed later?
Answer 6
The English translation must be filed at the same time of the application.
Question 7
Enter PCT applications into your country.
What documents must be submitted to enter PCT applications into Malaysia?
What is the full list of necessary documents?
Answer 7
(1) Request for Entering the National Phase
(2) Specification
(3) Copy of the Published PCT Application
(4) Copy of the PCT Request
(5) Copy of the International Search Report
(6) Copy of the Notification Concerning Submission or Transmittal of Priority Document
(7) Copy of the First Notice Informing the Applicant of the Communication of the International Application
(8) Copy of the Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration
(9) Statement Justifying the Applicant’s right to apply
(10) Appointment of Patent Agent.
Question 8
Dependent claims.
Whether multi-dependent claims or multi-multi-dependent claims are acceptable or not?
Answer 8
Yes multi-dependent claims or multi-multi-dependent claims are acceptable.
Question 9
Abstract.
It is described in your draft that "The abstract generally has no legal effect on the application containing it; for instance, it cannot be used interpret the scope of protection claimed."
Answer 9
The Malaysian Patents Act does not specify a Section or a Rule to regulate this matter. However, Regulation 16 of the Malaysian Patent Act indicates that the abstract shall contain a summary of the disclosure in which the said summary indicates the technical field of the invention that allows for clear understanding of the technical problem, the gist of the solution and the principal use(s) of the invention.
Question 10
Maintenance fees for patent application.
I understand that the patent owner must pay annuities to maintain its patent right more than two years after the patent is registered. How about maintenance fees for a patent application rather than patent right? For example, in China, the applicant must may the maintenance fees to maintain the application after predetermined term has lapsed during pendency of the application.
Answer 10
In Malaysia, the maintenance or renewal of a patent application is only required after the patent application has been granted and continues through the life of the patent until expiration.
Question 11
Special type application.
Please confirm as to whether the following type of application can be admitted in Malaysia or not.
Answer 11
(a) Domestic priority application (e.g. Malaysia patent application claiming priority based on the other previous Malaysia patent application)
(a) Yes, domestic priority applications can be admitted in Malaysia.
(b) Foreign language application
(b) Yes, foreign language applications can be admitted in Malaysia provided the English translation must be filed at the same time of the application.
(c) Provisional application
(c) No, provisional applications cannot be admitted in Malaysia.
(d) Secret patent
(d) No, secret patents cannot be admitted in Malaysia.
Question 12
Laid-open and file wrapper.
It is described in your draft that "Patent applications are available for public inspection after 18 months from the priority date or filing date..." Please let me know number of the Section or the Rule to regulate this matter.
Answer 12
Malaysian Patents Act Section 34 ‘Public Inspection’ specifies that “The Registrar shall make available for public inspection after eighteen months from the priority date or filing date of a patent application …”
Question 13
Modified substantive examination.
Please let me confirm countries or treaties whose examination results to be submitted when the application requests the modified substantive examination. Under Rule 27A(5) which was implemented on August 1, 2001, it seems that the examination results only by Australia, Great Britain, United States or European Patent Convention can be acceptable. Is my understanding correct? What if the examination results only by the Japan Patent Office is submitted?
Answer 13
Your understanding is correct with regards to the Malaysian Patents Act Rule 27A(5) which was implemented on August 1, 2001 that only examination results only by Australia, Great Britain, United States or European Patent Convention are acceptable. However, the Act has been amended in since July 1, 2002, examination results from Japan are acceptable and thereafter since June 19, 2003, examination results from the Republic of Korea are acceptable. Therefore, to date, the Malaysian Patents Act Rule 27A(5) states that examination results by Australia, Great Britain, United States, Japan, the Republic of Korea or European Patent Convention are acceptable.
Should you require more information, visit at www.jpo.go.jp and www.kipo.go.kr
Question 14
Appeal against the rejection.
14.1) It is described in your draft that "In Malaysia there is provision whereby an applicant can appeal against the decision of the Examiner/Registrar to the Patent Office." Please let me know number of the Section or the Rule to regulate this matter.
Answer 14
14.1) Under Section 88 of the Malaysian Patents Act, any person aggrieved by any decision or order of the Registrar or the Patent Office, may appeal to the Court.
14.2) It is described in your draft that "In fact there are no quasi judicial or contentious proceedings conducted by the Patent Office." What does this explanation mean? How is the appeal processed by Patent Office?
14.2) This means that the Patent Office does not conduct any quasi-judicial or contentious proceedings. These proceeding are conducted by the Court.
Question 15
Basis to determine the scope of patent.
In Japan, the scope of patent is determined based on claims, and specification and figures can be referred in interpreting claims. How about in Malaysia? Which Section of Malaysia Patent law does regulate this?
Answer 15
Regulation 13(5) of the Malaysian Patents Act specifies “The claims shall define the invention in terms of the technical features of the invention”.
Question 16
Infringement.
Is "indirect infringement" may be admitted in Malaysia? For example, in Japan, if the third party is producing only a part of a certain invented product and the part can be used only to produce the invented product, the act by the third party constitutes the infringement of a patent even if the third party does not produce the invented product as a whole.
Answer 16
Section 59(2) of the Malaysian Patents Act specifies that “The owner of the patent shall have the same right against any person who has performed acts, which make it likely that an infringement will occur. The acts are referred as imminent infringement". This means that if components A+B+C = Patent and if A or B or C is an essential integer of the patent, then it will be an infringing act if any preparations which in the end, will result in infringement of the patent will be liable as an imminent (contributory) infringer under Section 59(2).
Tuesday
Converting Patent Applications
Question 5
Does the Malaysian Patents Act have the provision for converting patent applications to other kinds of applications?
Answer 5
An application for a patent may be converted into an application for a certificate for a utility innovation and vice versa. An application that has been converted shall be deemed to have been filed at the time the initial application was filed. A request for the said conversions should be filed no later that six months from the date of mailing of the Examiner’s report pursuant to the applicant’s request for either a full or modified substantive examination.
The said request should be made to the Registrar with a prescribed form and with the payment of a prescribed fee. It is to be noted that the prescribed fee paid for the initial application is not refundable. Where the conversion was made out of the satisfaction of the Registrar, the applicant will be notified of the same in writing.
Does the Malaysian Patents Act have the provision for converting patent applications to other kinds of applications?
Answer 5
An application for a patent may be converted into an application for a certificate for a utility innovation and vice versa. An application that has been converted shall be deemed to have been filed at the time the initial application was filed. A request for the said conversions should be filed no later that six months from the date of mailing of the Examiner’s report pursuant to the applicant’s request for either a full or modified substantive examination.
The said request should be made to the Registrar with a prescribed form and with the payment of a prescribed fee. It is to be noted that the prescribed fee paid for the initial application is not refundable. Where the conversion was made out of the satisfaction of the Registrar, the applicant will be notified of the same in writing.
Patent Examination Procedure In Malaysia
Question 3
We are seeking your assistance to provide us with a general overview of the patent examination procedure in Malaysia? Can PMC assist us?
Answer 3
The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined as to substance. During the substantive examination stage, an applicant has a choice of either filing a request for a full or modified substantive examination.
Preliminary examination commences soon after the patent application has been filed at MyIPO. Substantive examination on the other hand commences after the applicant files a request for substantive examination and this request has to be made within a prescribed period as provided by the Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.
Based on Regulations in Section 27(5) and 27A(5) of the Malaysian Patents Act 1983, should the applicant fail to file a request for substantive examination within the prescribed period and fail to file a request for deferment before the expiration of the prescribed period or fail to file a request for substantive examination within the extended prescribed period, the application will be deemed withdrawn by the Registrar. In this case, the Registrar would issue a notification of the same to the applicant.
Question 4
Does the Malaysian Patents Act have the provision for accelerated examination?
Answer 4
The Malaysian Patents Act does not have a provision for filing a request for accelerated examination. However, an applicant may in writing, inform the Registrar to expedite the examination should there be a substantial need for the same. This substantial need often relates to a litigation action taken up by the applicant against a third party.
We are seeking your assistance to provide us with a general overview of the patent examination procedure in Malaysia? Can PMC assist us?
Answer 3
The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined as to substance. During the substantive examination stage, an applicant has a choice of either filing a request for a full or modified substantive examination.
Preliminary examination commences soon after the patent application has been filed at MyIPO. Substantive examination on the other hand commences after the applicant files a request for substantive examination and this request has to be made within a prescribed period as provided by the Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.
Based on Regulations in Section 27(5) and 27A(5) of the Malaysian Patents Act 1983, should the applicant fail to file a request for substantive examination within the prescribed period and fail to file a request for deferment before the expiration of the prescribed period or fail to file a request for substantive examination within the extended prescribed period, the application will be deemed withdrawn by the Registrar. In this case, the Registrar would issue a notification of the same to the applicant.
Question 4
Does the Malaysian Patents Act have the provision for accelerated examination?
Answer 4
The Malaysian Patents Act does not have a provision for filing a request for accelerated examination. However, an applicant may in writing, inform the Registrar to expedite the examination should there be a substantial need for the same. This substantial need often relates to a litigation action taken up by the applicant against a third party.
Non-Infringement Declaration In Singapore
Question 1
A brief explanation/ introduction to Non-Infringement Declaration in Singapore?
Answer 1
Under Section 78 of the Singapore Patents Act, a person could apply to the Registrar or the court for a declaration that an act or proposed act would not constitute an infringement of a patent. However, the following conditions must be satisfied:
(a) that the person had applied in writing to the proprietor for a written acknowledgement to the effect of the declaration claimed, and had furnished him with full particulars in writing of the act in question; and
(b) that the proprietor had refused or failed to give such acknowledgement.
A declaration made by the Registrar shall have the same effect as a declaration made in court.
Section 78 recites that:-
(1) Without prejudice to the jurisdiction of the court to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the Registrar in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown —
(a) that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
(b) that the proprietor has refused or failed to give any such acknowledgment.
(2) A declaration made by the Registrar under this section shall have the same effect as a declaration made by the court.
Question 2
What are the procedures and timelines involved in filing an application for a Non-Infringement Declaration in Singapore?
Answer 2
A) An application to the Registrar under Section 78 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made on Patents Form 33 (Official Fee 290Sing) and shall be accompanied by a copy thereof and a statement setting out fully the facts upon which the applicant relies as showing that Section 78 (1) (a) and (b) have been complied with and the relief which he seeks.
B) The Registrar shall send a copy of the statement to the proprietor of the patent who shall, if he wishes to contest the application, within 2 months from the date of the Registrar’s letter forwarding such copy to him, file a counter-statement on Patents Form 3 (Official Fee 50Sing) setting out fully the grounds on which he contests the applicant’s case and shall at the same time send a copy thereof to the applicant.
C) Subject to such directions as the Registrar may think fit to give, the applicant may, within 2 months from the date of receipt of the copy of the counter-statement, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.
D) Within 2 months from the date of receipt of the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within 2 months from the date of receipt of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
E) No further evidence shall be filed by either party except by leave or direction of the Registrar.
F) The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
A brief explanation/ introduction to Non-Infringement Declaration in Singapore?
Answer 1
Under Section 78 of the Singapore Patents Act, a person could apply to the Registrar or the court for a declaration that an act or proposed act would not constitute an infringement of a patent. However, the following conditions must be satisfied:
(a) that the person had applied in writing to the proprietor for a written acknowledgement to the effect of the declaration claimed, and had furnished him with full particulars in writing of the act in question; and
(b) that the proprietor had refused or failed to give such acknowledgement.
A declaration made by the Registrar shall have the same effect as a declaration made in court.
Section 78 recites that:-
(1) Without prejudice to the jurisdiction of the court to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the Registrar in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown —
(a) that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
(b) that the proprietor has refused or failed to give any such acknowledgment.
(2) A declaration made by the Registrar under this section shall have the same effect as a declaration made by the court.
Question 2
What are the procedures and timelines involved in filing an application for a Non-Infringement Declaration in Singapore?
Answer 2
A) An application to the Registrar under Section 78 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made on Patents Form 33 (Official Fee 290Sing) and shall be accompanied by a copy thereof and a statement setting out fully the facts upon which the applicant relies as showing that Section 78 (1) (a) and (b) have been complied with and the relief which he seeks.
B) The Registrar shall send a copy of the statement to the proprietor of the patent who shall, if he wishes to contest the application, within 2 months from the date of the Registrar’s letter forwarding such copy to him, file a counter-statement on Patents Form 3 (Official Fee 50Sing) setting out fully the grounds on which he contests the applicant’s case and shall at the same time send a copy thereof to the applicant.
C) Subject to such directions as the Registrar may think fit to give, the applicant may, within 2 months from the date of receipt of the copy of the counter-statement, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.
D) Within 2 months from the date of receipt of the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within 2 months from the date of receipt of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
E) No further evidence shall be filed by either party except by leave or direction of the Registrar.
F) The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Subscribe to:
Posts (Atom)