Enquiry on Requirement of Absolute Novelty in Malaysia

Question:

1.    I understand that absolute novelty is required in Malaysia, yet a 1 year grace period preceding the filing date applies.  Does this grace period apply to publication, use, or both?

 

2.     Is the grace period worldwide or only in Malaysia?

 

3.    Is the grace period only granted for use by the owner of the patent or the inventor?

 

SECTION 14. NOVELTY

(1) An invention is new if it is not anticipated by prior art.

(2) Prior art shall consist of-

            (a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;

            (b) The contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic patent application.

(3) A disclosure made under paragraph (2) (a) shall be disregarded –

            (a) if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title;

            (b) if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;

            (c) if 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.

Answer:   

1.    Yes, the grace period of one year is allowable. As stated in Para (2) above, the grace period applies to any kind of disclosure; either publication or use; or both.

 

2.     World-wide novelty (including Malaysia) will apply. 
 

3.     From Para (3) above, the grace period applies to all kinds of disclosure which can include use, written or publications; both applicant and/or the predecessor (inventor).

          

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

Enquiry Concerning Patent Co-ownership in Malaysia

Question: 
 
X & Y: Co-owner

Z: Joint Applicant 

Z, registered as a joint applicant, will be co-owner of a respective patent. In such a case, can X & Y limit Z’s rights as a joint applicant?

Answer:

X & Y, as the current applicants can limit Z’s rights as a joint applicant by filing an agreement to the contrary between the parties (X & Y with Z) by reference to section 40 of the Malaysian Patent Act as stated below:

Section 40: Joint ownership of patent applications or patents

In the absence of any agreement to the contrary between the parties, joint owners of a patent application or patent may, separately, assign or transmit their rights in the patent application or patent, exploit the patented invention and take action against any person exploiting the patented invention without their consent, but may only jointly withdraw the patent application, surrender the patent or conclude a license contract.

          
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Enquiry Related to Obtaining Extension of Time to Respond to Office Actions

1. Pursuant to Malaysia law, how far in advance of the official office action response due date does the patent office require Malaysian firm to request an extension of time?

The request for extension of time (EOT) can be filed until the last date of the deadline. For example, if the Office Action is dated 20 January 2013, then the response for the Office Action must be filed by 20 March 2013 (two-month deadline system). Request for EOT can be filed at any time since the issuance of the Office Action (20 January 2013) until the last date of 20 March 2013. The extended period will start from initial deadline regardless of when the request for EOT was filed; which means that requesting EOT for 3 months will automatically extend the deadline to 20 June 2013 (does not matter if the request for EOT was filed on 10 March 2013; or the last date 20 March 2013). Malaysian Patents Act does not allow for retrospective application for filing EOT i.e. the request for EOT cannot be filed after the deadline is over.

2. How far in advance of the official office action response due date does your firm currently request extensions of time for GPO matters?

Our firm practices strict code of conduct in requesting for EOT. We will only file request for EOT on the last date of the deadline if we do not hear from the client. In our reminders prior to the deadline, we will remind the instructing client that we will file request for EOT if we do not hear from them until the last date of the deadline in order to keep the application pending. We will file the request for EOT at the last date of the deadline to ensure that the instructing client has ample time to prepare the response; and EOT is only filed if the client did not revert with their instruction until the last day of the deadline. We will only file request for EOT in advance of the deadline if the instructing client gives us the instruction to do so.

3. How far in advance of the deadline does your firm need to receive GPO instructions in order to timely file a response (i.e. no extension of time taken)?

We accept the response to be filed until the last day of the deadline i.e. we will file the response (without requesting EOT) if we receive the instruction in the morning of our time on the last day of the deadline date. However, please note that time zone difference must be taken into consideration. We humbly request that the response shall be sent to us at least 1 day before the deadline date in order to avoid requesting for EOT.

ADDITIONAL NOTE: Request for EOT in Malaysia can only be applied once i.e. if the request for EOT was filed for 2 months, then the response must be compulsorily filed by the end of the 2 months of EOT. No further extension will be allowed.

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

Questions on requirement of filing recordal of assignment and license agreement

Question:

Please advice on the requirements of filing recordal of assignment and License Agreement for (1) design registrations and (2) trademarks registrations.

Answer:

	DESIGN	TRADEMARK
1.) Is recording the assignment agreement and / or the license agreement optional, or is it required for the agreements to be enforceable and effective in Malaysia.	The recording of the assignment agreement and/or the license agreement is required in order for the agreements to be enforceable and effective in Malaysia.	The recording of the assignment agreement and/or the license agreement is required in order for the agreements to be enforceable and effective in Malaysia.
2.) If it is optional, do you typically recommend clients to record such agreements? Are their particular benefits of recording that making it advisable to do so?	N/A	N/A
3.) What is required to record a license agreement? An assignment?	- A copy of the license/assignment document. - A copy of a power of attorney document (ID Form 10)	- A copy of license agreement; and - A copy of Deed of assignment
4.) Do the agreements need to contain any specific information/ provisions to be recognized, valid, and/or recorded?	No specific information or provision is needed for the agreements to be recognized. However the design application or registration number must be contained in the agreement.	No specific information or provision is needed for the agreement to be recognized. However for the Deed of Assignment, the following requirements must be provided; - Signature of both the Assignor and Assignee must be witnessed - The effective date; - The full name and address of Assignor and Assignee; - To state the value whether the assignment is with goodwill
5.) If the actual agreement must be recorded (as opposed to certain pieces of information from the agreement), is it possible to submit a redacted version?	It is possible to submit a redacted version of agreements as long as the important provisions could be found in such version.	It is possible to submit a redacted version of agreements as long as the important provisions could be found in such version.

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

Questions on requirement for filing design application

Question:

Please advice on questions regarding filing requirements for design applications in Malaysia, Thailand, Indonesia and Vietnam.

Answer:

	MALAYSIA	INDONESIA	THAILAND	VIETNAM
1.) Can a design application claim priority to a utility application? If not, what effect will a utility application have on the design application?	No. It will not have any effect. Designs can only claim priority from another design application.	No, a design application may only claim priority from a design application. Under current practice, the Registry may cross examine an application and there is a possibility that the utility patent may be a bar to the design application. However, the Registry is not consistent with this cross examination system and the design application will be independently examined.	No. A design application cannot claim priority to a utility application. A utility application has no effect on the design application.	No, a design application cannot claim priority to a utility application. The design application will lack novelty if the drawings/ photos of the utility application have been disclosed.
2.) When a design application is filed, what is the filing fees based upon (per application or per embodiment included in the application)?	Per embodiment. In Malaysia, we practice a multiple design filing system, whereby designs with many embodiments can be filed as multiple applications within the same Locarno classification.	The filing fees are based on per application filed. However, if there are many embodiments which with different design views, the examiner will advise us to file divisional applications for those different embodiments.	The filing fees are pee application, on a one product one application basis.	The filing fees based upon the number of embodiment included in the application (number of drawings) and other items.
3.) Can dashed line be used to exclude elements from the design (e.g., “The broken-line disclosure in the views is generally understood to form part of the environment in which the claimed design is embodied, but forms no part of the claimed design.”)	Yes, dotted/dashed lines can be used to exclude elements from a design. Only straight/solid lines will be protected.	Dashed lines can be used to exclude elements from the design	No. Dashed lines cannot be used to exclude elements from the design and only clear lines are required to represent the element of said design.	No. Dashed lines/ broken-lines are always required by the examiner to be excluded from drawings. At present, partial designs are not acceptable by the Vietnamese patent office.
4.) Can dashed-dot-dashed ( . ) be used to show that the number of the element is not limited (e.g., “The dash-dot-dash lines indicate a repeating pattern of _Y_, wherein the _X_ _ may have _Y_ of any shape and number that follow this repeating pattern.”)	N/A	There is no specific stipulation relating to this matter. We are of opinion it can be used.	No. Dashed-dot-dashed ( . ) cannot be used to show that the number of the element is not limited.	Yes. It is possible.
5.) Can/should shading be used on the figures?	Not necessary	Shading can be used.	Shading can be used on the figures if it does not make the figures unclear.	No.
6.) Is there any required number of views? If yes, can further views also be presented?	No. However, we advise providing 8 views, i.e. perspective view, front view, rear view, top view, bottom view, right side view, left side view.	There is no limitation for the number of views. However, Registry recommends that a minimum of eight views should be included in the design application, i.e., Perspective view, front view, back view, left side view, right side view, bottom view and top views.	Yes. The Department of Intellectual Property Thailand (DIP) requires at least 7 views. Further views are also acceptable.	Yes. The 7 required views (for each embodiment) are: perspective, front, back, right side, left side, top, and bottom views. Further views are also acceptable to demonstrate the design (such as a photo/ drawing of a product comprising the part having the design).
7.) Are there any other points/issues that should be considered when preparing or filing a design application?	- Drawings need to be clear and if possible be provided in jpeg or similar formats. - Color cannot be protected in design - A power of attorney (ID Form 10) signed by the applicant must be filed at the time of filing. - Priority documents in languages other than English needs to be accompanied by a certified English translation. - Any application claiming priority shall be filed within six months from the priority date.	- At least a signed POA shall be available at the time of filing, information on inventor & its nationality is required. - Any application claiming priority shall be filed within six months from the priority date. - The design protection covers configuration, lines and shape, if there is any required colors to be protected, the application shall be filed based on the intended colors. However, we would recommend for black and white filing in order to have broader protection.	When preparing or filing a design application, drawings should be clear and related to all the views.	All the views (7 views) must be similarly proportionate (the same size) and are clear.
8.) Is there any standard of form language that should be included in a design application in any of the listed countries?	English is acceptable	The language shall be in Bahasa Indonesia.	The title of an application should be related to the product. However, in case of the title does not convey the product, the applicant might use the description depicting the product. Therefore, the title will be related to the drawings. The Applications must be filed in Thai and all documents must be translated into Thai.	Please use English.
9.) Are there any traps that we should avoid?	N/A	Protection on color design should be carefully considered.	Title and drawings should communicate to ordinary people in the way what the Applicant wants his design to get protected.	N/A

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National Security Restrictions and Requirements for Foreign Filing License

Under the patent Law, what are the national security restrictions and requirements prior to patent filings by MNC Applicants, what are the national security provisions (in general); national security provisions in China, India and other ASEAN countries?

At this day and age, more and more multi-national companies are expanding their businesses and R&D operations overseas, hoping to take advantage of the accessibility of diverse ideas and experience of the global human capitals through setting up of research facilities and conducting research and development in multiple countries. Management of innovations and IPs derived from these global R&D operations can be quite a challenging task and requires the IP Manager/ attorney to be familiar with the respective national laws governing the protection of the invention created in those countries.

For example, some pertinent issues may arise when it comes to patenting inventions developed in countries remote from the home office and even greater issues when inventions are jointly conceived by inventors in several countries or by non-native inventors residing in the countries. It is absolutely critical to know the laws of those countries having national security restriction and provisions requiring that inventions made within their territory and/or inventions made by residents of their country first file locally or separately obtain a security clearance before filing outside the country.

The consequences of not complying with or contravening all applicable national security requirements can be harsh and severe, ranging from fines, through loss of local patent rights, to criminal penalties, including imprisonment. In this article we will examine national security requirements in general and looking in detail at the requirements in India, China and S.E. Asia, regions which are enjoying the influx of R&D activities from foreign MNC entities.

National Security Provisions - In General 

National security provisions in patent laws are not new. Many countries have similar laws to protect their national security interests. For example, the United States of America has had a requirement for patent applicants to obtain security clearance before filing patents outside the US for many years. 35 U.S.C. 184 states:

"Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country ....” 

The penalty for filing outside the US without obtaining a "foreign filing license" from the USPTO is loss of US patent rights (35 U.S.C. 185):

"Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention .... " 

(If a foreign filing is made without a §184 license in error and without deceptive intent, a retroactive license may be obtained.)

It is interesting to note that the US restriction relates only to inventions "made in this country [i.e. US]." As such, the restriction does not apply if the invention is made overseas by inventor who is a US citizen or resident. China (Article 20.1) and Russia (Article 35) too have similar provisions and only concerned with inventions made within its countries.

Other countries, however, impose their requirements not on where the invention is made, but on the residence of the inventor and/or applicant for a patent. While the residency requirement will generally be applicable for all inventions made in those countries, the laws may also extend to patent applications on inventions made by their residents anywhere in the world.

For example, Section 23 of the UK law provides similar provisions on inventions with military technology or whose publication would be detrimental to national security filed by residents of the UK. However, their statute essentially leaves the decision regarding military technology or detrimental publication to the applicant. Likewise, Article 41 of the Republic of Korea seems similar to the UK. There is no mandatory first filing for a security review required, but there are provisions for a security "hold" to be put on an application as well as procedures for obtaining permission to file abroad for inventions related to national security. The decision on whether such permission is required seems to be left to the applicant. Sections 50, et seq. of the German patent law are parallel to the UK and KR, leaving the decision on whether to first file or seek permission to file abroad to the applicant. The German law does give some non-specific guidance by defining a state secret in Section 93 of the criminal code.

These examples show the wide variety of requirements related to national security provisions in global patent laws. With researchers and inventors easily travelling around the globe in their pursuit of research opportunities and with the ease of collaboration between inventors in various countries leading to a single invention, it is a daunting task to keep track and be in full compliance with the provisions of all the applicable national security requirements.

National Security Provisions in China. India and the ASEAN Countries

China, India and the ASEAN countries are some of the fastest growing areas for R&D activity. Not only are more and more multi-national companies are setting up R&D centers in these countries, personnel who may be considered residents of these countries may find themselves contributing to inventions in countries outside their country of residence. For example, it is now common to find that a company employee resident in India, Singapore or Malaysia is the sole or a joint inventor on an invention made in China or the US. A graduate research student resident in one of these countries may contribute to a patentable invention while doing research at a cooperating foreign university. These practical situations again raise important questions regarding how to best protect the inventions while at the same time be in compliance with national security laws.

Peoples Republic of China:

For inventions developed in China, knowledge of the law regarding national security should provide sufficient guidance to avoid problems. As mentioned above, China has a national security law similar to the US. If the invention was developed in China, clearance to file outside China must be obtained before any foreign filings are made on inventions developed in China. Clearance can be obtained either by filing a domestic patent application along with a request for clearance, or filing an international (PCT) application in the Chinese receiving Office. Additionally, a request for clearance may be made without filing a patent application. A domestic patent application filing and a request for clearance without a domestic patent filing must be made in the Chinese language. An international application can be filed in the ROICN in either Chinese or English. If the applicant is not received notification that the application is undergoing a security examination within four months of the request or filing, then the applicant is free to file outside China. Similarly, if a decision on a security examination is not issued within six months of the request or filing by either a permanent security hold or granting clearance, the applicant is free to file outside China. It generally takes between 2 to 3 months to receive security clearance based on a request for clearance. The penalty for failure to comply with the law is loss of Chinese patent rights. If the application is judged to disclose Chinese State secrets, the penalty ranges from disciplinary sanctions up to criminal prosecution.

India, Malaysia and Singapore:

India, Malaysia and Singapore have national security restrictions based on the residency of the inventor or applicant regardless of where the inventive activity occurred (India, Section 39; Malaysia, Section 23A; Singapore, Section 34). The laws and procedures in all three countries are similar as are the penalties for failure to comply with the security requirements. Security clearance can be obtained by filing a patent application locally and then waiting the specified time period before making any foreign filings. The time period varies by country:

6 weeks in India and 2 months in Malaysia and Singapore. Security clearance can also be obtained by applying for permission to file abroad (foreign filing license) in the absence of filing a local patent application. Following an application, a foreign filing license will be issued in about 21 days in India (although it has been known to take up to a month), 1 to 2 days in Singapore and 3-5 working days in Malaysia. The penalties for failing to comply with the law are a fine and up to 2 years imprisonment in all three countries. India, like China and the US, further considers the patent application for the invention to be abandoned.

Other Countries in S.E. Asia:

Indonesia, Vietnam, Thailand and the Philippines do not have such provisions in their laws and one need not be concerned regarding inventions developed in these countries or with residents of these countries inventing elsewhere.

Discussion

When an applicant has to be in compliance with a number of national security laws, determining how best to proceed can be difficult. Fortunately, each of these countries has provisions for obtaining security clearance without first filing a patent application. Some of these clearance procedures are quick (SG and MY) while others can delay the time needed before the first filing can be made (IN and CN). Careful planning, allowing adequate time, is necessary to insure filings are made in sufficient time to insure that there is no public exposure or other novelty destroying event prior to the actual first filing date.

In addition to planning for the additional time to comply with national requirements (and translation in some cases), the position of each national law regarding seeking security clearance from another country must be determined. Since these laws are designed to keep state secrets from becoming part of the public domain, the applicant must ensure that the act of petitioning for clearance with a full enabling disclosure in one country does not inadvertently put the applicant in violation of the law in another country.

Finally, for countries establishing their requirements on the residency of the inventor(s) or applicant(s), a clear definition on who is considered as a resident is needed. Under Indian law the term "resident" is not defined in the patent law. Some people have turned to the Indian tax statutes for the definition of residency (i.e. person living in India for more than 182 days in the preceding year). This may or may not be acceptable as the patent law itself is silent on the qualification. Under Singapore law, we find the definition of resident is very broad and encompasses people who are residing in Singapore with a valid pass issued under the Immigration Act to enter and remain in Singapore for any purpose regardless of the nature of the stay. Because obtaining a foreign filing license in these countries is relatively easy and quick, taking a very conservative view of whether an inventor or applicant could be considered a resident seems the best practice.

It is always best to work closely with your local agent in each of the relevant countries to help resolve any problems associated with national security clearance and help to set up a standard procedure to keep one in compliance with all national security laws when inventions are made by residents of one of the countries having their requirements on residency and in cases where developments occur in multiple countries. Remember that it is important to do it right, up front, as most countries outside of the US do not have provisions for obtaining a foreign filing license retroactively after a filing has been made. Once the security law has been contravened, the consequences of being in violation can be severe including loss of patent rights, monetary penalty, or jail terms not exceeding 2 years.

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

Please advice according to Malaysian law and regulations: If a product is ‘made in Italy’ or ‘made in Hungary’, but the product is termed as ‘made in EU’ (for European Union), would it be considered as valid?

Product labeling is governed by the Consumer Protection Act 1999 and it will be an offence to misrepresent.

 

The act requires that consumers be fairly and accurately informed of the country of origin of the imported goods into Malaysia and this is to be stated on the product label. Because EU is a community having member states that are independent and autonomous, it will not be possible to make something in Romania and label it as EU MADE. You can however label it as EU compliant in standards like CE.

 

Therefore, the Country of Manufacture must be stated on the product under the Malaysia Law.

 

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

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
 

Under the patent law of Malaysia, is there any circumstance under which Reference A below could be deemed prior art to Application Z below?

	A	Z
Application Type	PCT Application	National Phase Entry in Malaysia
Filing Date	1 January 2009	1 September 2010
Priority Claim	1 January 2008; US Provisional app.	PCT, 1 March 2009. US Provisional app, 1 March 2008.
Publication Date	1 July 2009
Applicant	B	C
Contents of app	Identical	Identical
Contention	Is A deem as prior art to Z?

  Note : B ≠ C 

A. PROSECUTION OF Z’s PATENT APPLICATION IN MALAYSIA

Section 14 (2) of the Malaysian Patents Act 1983 defines the term prior art on what material is taken into account in considering whether an invention is "novel". For sake of clarity, we reproduce the same as follows:

(2) Prior art shall consist of--

(a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;

(b) the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic

            patent application.

In the context of A and Z as outlined above, we opine that A could be deemed as prior art in respect of Novelty during prosecution of Z’s application in Malaysia.

B. LITIGATION OF Z’S PATENT IN MALAYSIA

In any case if Z’s application prevails in Malaysia during prosecution and mature into a granted patent whereby A is not cited against Z and if there is litigation on Z, an example case law as provided below may apply.

In the case of SANOFI- AVENTIS (MALAYSIA) SDN BHD & ANOR v. FRESENIUS KABI (MALAYSIA) SDN BHD;

The Learned  Judge in her Judgment dated 28 June 2011 (see para. 60 below) has pointed out that in considering "novelty" it covers both material which would have been available to the skilled addressee and also material contained within unpublished pending patent applications. Whereas for considering "inventive step" the "prior art"/"state of the art" is limited to material which would have been available to the skilled addressee: unpublished pending patent applications are not to be taken into account.

For sake of clarity, we reproduce para. 60 of the said Judgment:

[60] It is to be noted that the provisions of the two Acts are effectively the same in defining what is the "prior art"/"state of the art". For the purposes of considering "novelty" it covers both material which would have been available to the skilled addressee and also material contained within unpublished pending patent applications. For the purposes of considering "inventive step" the "prior art"/"state of the art" is limited to material which would have been available to the skilled addressee: unpublished pending patent applications are not to be taken into account.

PRIOR ART (NOVELTY)

Therefore, in the context of A which claims priority to US Provisional application dated 1 January 2008; the said US Provisional application is an unpublished patent application on 1 January 2008 which matures into a PCT application on 1 January 2009.  A is with an earlier priority date as compared to Z. Therefore, A is novelty destroying to Z.

PRIOR ART (INVENTIVE STEP)

As discussed above, unpublished patent applications are not considered as prior art in respect of Inventive Step. A was published on 1 July 2009 which was after the priority date of Z (1 March 2008). Therefore, A will not be taken into account in respect of prior art when considering “inventive step”.

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