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).