Re-Correcting Biologic Sequence Information

Question 1
Can a patent application be amended to correct a nucleic acid or amino acid/protein sequence?

Answer 1
As far as the Malaysian Patents Act 1983 is concerned, it is possible to amend patent application or a granted patent provided that the amendment shall not go beyond the disclosure in the initial application by virtue of Section 26A of the Patents Act 1983.

The procedure to amend the patent application or granted patent is by filing appropriate amendment form together with the written description that shows which claims need to be amended.

In the case of use of microorganism in initial patent application, as Malaysia is not a signatory to the Budapest Treaty which determines the Rules for depositing microorganisms in a recognized collection, and for access to samples from that collection, the microorganism will not be available to the public in Malaysia, after the grant of a patent on the present application, unless the patentee authorizes release of cultures of the microorganism to interested parties.

Further, if the initial application requires for its performance the use of a microorganism which is defined by reference to a culture collection and the accession number of the deposit of the microorganism therein, the applicant/patentee needs to provide any requester [that is any person requesting a sample of the relevant microorganism] with a declaration, addressed to the depositing authority, authorizing the depositing authority to furnish a sample of the relevant microorganism to the requester, provided that the requester undertakes not to make the deposited culture or any culture derived therefrom available to any third party before the expiry of the patent.


Question 2
Can a patent be corrected to correct a nucleic acid or amino acid/protein sequence?

Answer 2
Yes, it is possible.

Question 3
Can a biologic deposit serve as the basis for the amendment/ correction?

Answer 3
Yes, it is possible.

Question 4
If possible, what is the procedure?

Answer 4
The procedure is by way of executing statutory declaration stating that the disclosure contains the sequence as corrected.

Question 5
If possible, would you advise making the amendment/correction? Under what circumstances?

Answer 5
We would advise in favour of making the amendment if it would broaden the protection of the claims of the initial application.