Industrial Design Process

Question 1
How would you characterize the quality of design examination in your country. Is there only a formality examination (automatic registration)? If there is novelty examination is it thorough or only cursory?

Answer 1
Only formalities examination is employed in Malaysia. The Design Department of the Intellectual Property Corporation of Malaysia (MyIPO) will conduct a formalities examination to conform with procedural requirements and sufficiency.

Question 2
How is design patent protection structured in your country? Is there more than one type of design? What is considered patentable matter regarding designs? If an article is functional can coverage still be obtained?

Answer 2
Design protection in Malaysia allows for single application and multiple applications. Multiple application covers several closely related designs, which fall, in the same class of the International Classification for Industrial Designs or to the same set or composition of articles.

Question 3
Can several closely related designs (multiples) be protected in the same application? If so, is there an additional cost for each related design or are the fees the same regardless of how many designs are included? Is there any other way to expand/broaden design coverage in your country without incurring the expense of a completely new application?

Answer 3
Yes, several closely related designs, which are known as multiple application of a design, can be protected in the same application. Separate payment is required for each design wherein the official fee of the second design of a multiple application would be half the amount of the total fee of the first design.



Question 4
How is color valued with regard to designs? Are black and white renditions considered to be broadest? Are color variations allowed further protection or are they rejected as anticipated by or already protected by a previous or concurrent filing? Is there a type of design protection, which covers colors? For instance, in Mexico, Industrial Models can cover color in a design, but Industrial Models do not.

Answer 4
Black and white renditions are considered to be the broadest protection for design as it covers all colors. There is no specific deign protection which covers colors.

Question 5
Please discuss what protection is available for “partial designs”, i.e., portions of objects, Is this done by a separate type of application? Is the use of dashed lines to disclaim (and thus broaden) a portion of the article claimed by the design application acceptable in your country? How are dashed lines interpreted.

Answer 5
Dashed lines/broken lines are disclaimed as it is considered for illustrative purposes only.

Question 6
Is there a mechanism such as “similar design” applications to cover adjustments to a design, which arise following the initial application? Can Patrick Mirnadah Co. help us on this matter?

Answer 6
There is no similar design application in Malaysia.

Question 7
Is it possible to “conform” a design application based on a grant by an examining country, such as the ECD or US, etc.?

Answer 7
No, it is not possible to conform a design application based on a grant by an examining country.

Question 8
Are any changes in your intellectual property laws or practice anticipated for the future? Is there any indication of interest in the Hague Agreement on Designs?

Answer 8
No.

Question 9
What is the average time from application date to grant date?

Answer 9
Average time from application date to grant date is 1 year.

Question 10
Is it possible to defer publication of an application or keep an application secret for a period of time?

Answer 10
It is not possible to defer publication in Malaysia and the applicant is not allowed to keep an application secret for a period of time as all design applications are required to be published at the Government Gazette in Malaysia. For more details, please visit www.myipo.gov.my

Question 11
Is there a “grace period” for exposure of designs in your country? Is so, what are the requirements following an exposure?

Answer 11
There is no grace period for exposure of design in Malaysia.

Question 12
What type of shading (if any) is acceptable in your country?

Answer 12
Shading in any form is not accepted, as it is not a form of protection.