Please advise on the “working” of a patent and the necessity for the patentee to prepare an appropriate submission to prove “working” of a patent.

It is not required for the patentee to prove or submit evidences regarding “working” of the patent. It is the responsibility of any third party if they are interested to obtain the compulsory license on a granted patent.

Compulsory license can only be applied, after the expiration of three years from grant date (i.e. after 15 January 2013) by any third party on the following circumstances:

·     there is no production of the patented product or application of the patented product or the patented process in Malaysia without any legitimate reason; [ refers to “non-working” of a patent] or
 

·     there is no production of the patented product in Malaysia for sale in any domestic market, or there are some but they are sold at unreasonably high prices or do not meet the public demand without any legitimate reason.

 

However, prior to making an application for a compulsory license, the applicant must have made efforts to obtain authorisation from the owner of the patent on reasonable commercial terms and conditions, within a reasonable period of time of six months (from the initial efforts made) but such efforts have failed. Evidence of such efforts need to be submitted with the application.

The responsibility to prove the “non-working” of a patent in Malaysia is at the hand of the third party who intends to apply for the compulsory licence. The patentee, on the other hand, is not required to submit any evidence for “working” of the patent in Malaysia.

 

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