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to file a request for substantive examination within the extended prescribed period, the application will be deemed withdrawn by the Registrar.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.