Wednesday

Practices and Procedures on withdrawal of Patent Application in Malaysia


Can you please let us know what are the practices and procedures on withdrawal of Patent Application in Malaysia. Please advise us whether discontinuing prosecution of an application without express abandonment or withdrawal may be prejudicial to a related patent or application under Malaysian patent practice?

Discontinuing prosecution of an application without express abandonment or withdrawal will not be prejudicial to a related patent or application under Malaysian patent practice. A Notice of Refusal will be issued by MyIPO (Intellectual Property Corporation of Malaysia) if the applicant fails to respond to an office action on given deadline. This will cause the related patent or application to be refused.

However, the applicant may also withdraw the application by submitting an official declaration to withdraw the said application, as provided in the Malaysian Patents Act. For sake of clarity, we provide herewith Section 25 of the Malaysian Patents Act for your perusal.

"Section 25 
Withdrawal of application
An applicant may withdraw his application at any time during its pendency by submitting a declaration in the prescribed form to the Registrar, and such "

For more information, contact us at: malaysia@mirandah.com

Saturday

Information Needed on Abandonment or Lapse Procedures

  1. Does your country’s local patent office issue an official notice of abandonment?  If applicable, please differentiate between filing an official notice of withdrawal and simply allowing the case to lapse without filing a withdrawal.

    Yes, MyIPO (Intellectual Property Corporation of Malaysia) issues a Notice of Refusal (Abandonment) if the said application/ patent was abandon/ lapsed. The application/ patent can be abandon by filing a form with an authorized signature to file a withdrawal officially. However we practice by allowing the application/ patent to be lapsed.

  2. If your local patent office does issue an official notice of abandonment, how long does it typically take for it to issue?

    The Notice of abandonment will be issued within 3 months from the date of filing an official notice of abandonment or if the application/ patent lapsed.

  3. Do you report to US counsel the official notice of abandonment once received?

    We do not report or send the official notice of abandonment, however if requested we will be able to provide the said notice.

  4. If you have received official instructions from us to allow a case to lapse when there are no outstanding deadlines in said case, do you report to us any newly issued office actions?

    Yes, but we will just forward a copy of the issued office action for your record without accompanied reporting letter.

    For more information, contact us at: malaysia@mirandah.com