Requirements
Patent Applications
Documents
1. Text of disclosure or specification typewritten in 1½ spacing, or
preferably double-spaced; numbered every 5th line at the left
margin; page numbered at top-centre of each sheet;
comprising the following parts:
1.1 description of invention
1.2 a claim or claims
1.3 drawings (if any)
1.4 abstract not exceeding 150 words
2. Patent Agent Appointment Form (Form 17).
Particulars
3. Applicant(s): name; address and nationality.
4. Inventor(s): name, address and nationality of each inventor.
5. Statement Justifying Applicant's Right to the Invention if the
applicant is not the inventor. This may be a brief of informal
statement explaining on how the applicant acquired the rights
to the invention. We shall prepare the formal Statement.
6. Priority claim under the Paris Convention: basic application's
number, IPC, filing date, International Patent Classification
and country where filed. Certified copy of the priority
application is NOT required.
Minimum Filing Requirements
These items are not the minimum requirements. The official Certificate of Filing will be issued for applications filed without these items. The abstract, Form 17 and Statement on Applicant's Right may be lodged with the Patent Office within 6 months of the filing date of the application.
Introduction
The Malaysian Patents Act 1983 and the Patents (Amendment) Act 1986 came into force on October 1, 1986 together with the Patents Regulations 1986, and repealed the three separate patent laws covering the three separate territories of Malaysia. Under the repealed laws, the only method of obtaining a patent in Malaysia was by obtaining the grant of a United Kingdom patent, or European patent designating UK, and then re-registering the United Kingdom or European patent in Malaysia.
On January 1, 1989, Malaysia acceded to the Paris Convention. On August 1, 1995, the Patents (Amendment) Act 1993 came into force together with the Patents (Amendment) Regulations 1995. On August 1, 2001, the Patents (Amendment) Act 2000 came into force together with the Patents (Amendment) Regulations 2001. On August 14, 2003, S3 & 6 of the Patents (Amendment) Act 2003 came into force.
1. Requirements of a Patent Application
1.1 Text of Disclosure (Specification).
1.1.1 Physical Requirements: Text should be in A4-size paper on one
side of each sheet with minimum margins of 2 cm on all sides,
typewritten in at least 1½-line spacing, preferably double line
spacing. Page numbers should appear on the top at the centre.
Reference numerals at every 5th line should appear at the left
margin of each sheet.
1.1.2 Language: English language is the only other acceptable language
besides the National Malay language. Measurements should be in
metric, or SI, units.
1.1.3 Arrangement of Text:
1.1.3.1 Description with title of invention on top of first page. The following order of sections is recommended:
a. brief statement on the technical field
b. background or prior art discussion
c. summary of invention
d. brief description of figures (if any)
e. detailed description of the preferred embodiment(s)
f. specific examples
No drawings are allowed in the description although chemical structural formulas and reaction paths are allowed.
1.1.3.2 Claim or claims to begin on a fresh page. Each claim be
numbered consecutively and cannot contain any drawings.
Claims may not refer to the description, examples or
drawings in respect of any technical features (i.e. omnibus
claims are not allowable).
1.1.3.3 Drawings must be clear and drawn in well-defined lines.
Formal drawings on bristol board are not necessary.
1.1.3.4 Abstract must commence with the title of invention and the
text must not exceed 150 words. The most illustrative
drawing should be indicated.
1.2 Inventor(s): Full name, address and nationality of each inventor.
Important:
An applicant or inventor resident in Malaysia must obtain prior written permission from the Malaysian Registrar of Patents to file or cause to be filed overseas in respect of a patent application unless it has been filed with the Malaysian Patent Office and a period of two months has elapsed without receiving any official directive prohibiting filing overseas. Contravention of this restriction is an offence punishable by a fine up to RM15,000.00 (approx. US$5600.00) or a prison term up to two years, or both.
1.3 Applicant(s): Full name, address and nationality of the applicant.
Applications may be filed jointly by two or more co-applicants.
Upon grant, the patent will be jointly owned.
1.4 Priority Claim: In accordance with the provisions of Article 4 C
of the Paris Convention, the Malaysian patent application may
claim the priority of a basic patent application by indicating the
latter's application number, filing date and country. More than
one priority may be claimed. Certified copies of the basic application
are NOT required, however.
1.5 Statement Justifying Applicant's Right: If the applicant is not the
inventor, a brief or informal explanation on how the applicant is
entitled to the invention is required, i.e. whether the rights have
been obtained by virtue of employment contract, assignment,
consultancy agreement or commission. We shall prepare the
formal bona fide Statement for lodgment with the Patent Office.
1.6 Patent Agent Appointment form (Form 17): Non-resident applicants
must appoint a registered patent agent to act on their behalf in all
proceedings before the Malaysian Patent Office. The Form must be
signed by the applicant's director, company secretary, principal
officer or a person duly authorized by the applicant. The name
and capacity of the signatory must appear beneath his signature in
the said Form.
2. Official Filing Certificate
The official filing date and the official Certificate of Filing is issued to applications which have fulfilled the minimum filing requirements, i.e. the above requirements except for items 1.1.3.4 (Abstract); 1.4 (Priority claim); 1.5 (Statement Justifying Applicant's Right); and 1.6 (Patent Agent Appointment Form).
3. Prosecution of the Patent Application
After the filing of an application, there are two major stages of prosecution, i.e. the Preliminary Examination and Substantive Examination.
3.1 Preliminary Examination on the application is performed
automatically upon filing of the patent application and the
Report is usually issued together with the Certificate of
Filing. The Preliminary Examination Report contains
observations made by the Examiner on the formal and
documentation compliance of the application. Any
deficiency noted in the Report must be rectified within
3 months of the date of issuance of the Preliminary
Examination Report.
3.2 Substantive Examination must be requested within 24 months of the
filing date. Upon filing the request the patent application will be
examined with regard to its patentability of the subject matter and
validity of the claims. The applicant must now decide which of the
two types of substantive examination he would like his application
to proceed under: (i) normal examination or (ii) modified
examination.
3.2.1 Normal or full examination. Upon making the request, the applicant
needs to provide certain examination assistance, where possible,
such as information, where appropriate or available, the application
number,patent number, search result or examination result of
corresponding patent application filed in one of the following
countries known for their rigorous examination standards:
- Australia
- United Kingdom
- United States of America
- European Patent Office
Deferment: The applicant may defer requesting examination for up to one (1) year if none of the above-mentioned information or search results are available yet.
3.2.2 Modified Examination is available to the applicant if he has a
corresponding patent granted in any one of the territories
listed above and the applicant agrees to amend his Malaysian
application to conform to the text of the said foreign patent.
At the time of requesting for examination, the required
documents are:
- a certified copy of the said foreign granted patent, together with
- the pages of the description and claims of the Malaysian application which have been amended to conform to the text of the said foreign patent.
Deferment: The applicant may defer requesting examination for up to two (2) years to await the availability of any one of the said foreign granted patents.
3.2.3 Responding to Examination Reports. Upon the issuance of the
Substantive Examination Report, the applicant is given 3
months to reply and/or make amendments to overcome the
Examiner's objections. Only one further extension of 3 months
upon the expiry of the initial 3-month period may be requested
for by the applicant to respond to the issues raised in the Report.
3.2.4 Amendment of Specification: The specification may be amended
at any time before grant, preferably before the request for
substantive examination is made. The amendments must not go
beyond the disclosure in the initial application.
3.2.5 Publication of Application: There is no publication of the subject
matter during the pendency of the application. Only upon grant is
the subject matter made available to the public and the patent's
particulars together with an abstract of the invention published in
the Government Gazette.
3.2.6 Withdrawal or Abandonment: An application may be abandoned
or withdrawn at any time. The subject matter of an abandoned
or withdrawn application will not be published.
Withdrawal is a formal procedure wherein a request and declaration is filed with Patent Office requesting for the withdrawal of the application. Such withdrawal is irreversible and has immediate effect upon lodgment with the Patent Office.
Abandonment of an application is merely inaction to official actions, e.g. by not replying or responding to outstanding Examination Reports, etc. The application will remain pending until the period prescribed for responding or taking action expires.
4. Patentability
4.1 Unpatentable Inventions:
i. discovery, scientific theory or mathematical method;
ii. plant or animal variety or essentially biological process
for the production of plants or animals, other than
man-made living microbes, microbiological process and
the products of such microbes;
iii. scheme, rule or method for doing business, performing
purely mental acts or playing games;
iv. method for the treatment of human or animal body by
surgery or therapy, and diagnostic method practiced on
the human or animal body; however, products used in
any such method is patentable.
4.2 Patentable Inventions
An invention is defined as an idea of an inventor that
permits in practice the solution to a specific problem in
the field of technology. A patentable invention is an
invention that is novel, has inventive step and is
industrially applicable, i.e. able to solve a specific
technological problem, and does not fall within one of the
above categories of unpatentable inventions. It may be
or relate to a product or process.
4.2.1 Novelty
An invention is new if it is not anticipated by prior art,
which consists of
(a) public disclosures that occur prior to the filing date or, where priority
is claimed, prior to the priority date of the patent application claiming
the invention.
(b) contents of a domestic patent application having an earlier filing date
or, where appropriate, an earlier priority date than the patent
application referred to in paragraph (a) above to the extent that such
contents are included in the patent granted on the basis of the said
domestic patent application.
4.2.2 Inventive Step. An invention is considered to have inventive step if,
having regard to any matter which forms part of the prior art under
paragraph 4.2.1(a) above, such inventive step would not have been
obvious to a person having ordinary skill in the art.
4.2.3 Industrial Application. An invention is considered industrially
applicable if it can be made or used in any kind of industry.
5. Divisional Applications
Unity of Invention Requirements
5.1 Unity of Invention. An application should relate to one invention only
or to a group of inventions so linked as to form a single general
inventive concept. The same application may, however, include:
5.1.1 in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the
manufacture of the product, and an independent claim for a use
of the product; or
5.1.2 in addition to an independent claim for a given process, an
independent claim for an apparatus or means specifically designed
for carrying out the process; or
5.1.3 in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the
manufacture of the product, and an independent claim for an
apparatus or means specifically designed for carrying out the
process.
5.1.4 Subject to the "one invention one application" rule of paragraph
5.1 above, an application may contain two or more independent
claims of the same category which cannot be covered readily by
a single generic claim.
5.2 Divisional Applications. A pending application may be divided into
two or more divisional applications provided that each divisional
application does not go beyond the disclosure in the initial
application. Each divisional application is entitled to the filing
date and, where appropriate, the priority date of the initial
application.
6. Terms and Rights
6.1 Term of a patent is 20 years from the date of filing in Malaysia
(for patent applications filed on or after 1st August 2001). Term of
patent filed in Malaysia prior to 1st August 2001 and was pending
on that date, is 20 years from date of filing in Malaysia or 15 years
from date of grant, whichever is longer. Term of a patent granted in
Malaysia prior to 1st August 2001 and was still in force on that date,
is 20 years from date of filing in Malaysia or 15 years from date of
grant, whichever is longer.
6.2 Exclusive Rights. The owner of a patent has the exclusive rights to
exploit, assign or transmit, and conclude license contracts in relation
to the patent. Exploitation of a patented invention includes:
6.2.1 (when a patent is granted for a product) making, importing,
offering for sale, selling, or using; or stocking the product for
sale or offer to sell, selling or using.
6.2.2 (when a patent is granted for a process) using the process, or
doing any of the acts referred to in paragraph 6.2.1 in respect
of a product obtained directly by means of the patented process.
6.3 Infringement. Unauthorized performance of any acts referred to
above, subject to other provisions of the Patents Act, is an
infringement of the rights of the owner. However, infringement
proceedings may not be instituted after 5 years from the
infringing act.
6.4 Patent Licenses
The patentee may grant to another person a license to do any or all
of the acts referred to in paragraph 6.2 "Exclusive Rights" above.
6.4.1 Compulsory License. A third party's right to a compulsory license
arise when a patent is not exploited for more than 3 years from
the grant of a patent, or four years from the filing date of the
patent application (whichever is the later) without legitimate
reason, or when products are produced under a patent for sale
in Malaysia at unreasonable prices or do not meet public
demand.
Compulsory licenses are also granted in the case where a later patent cannot be worked without infringing an earlier patent.
6.4.2 Voluntary Endorsement of License. A patentee may make an entry
in the Register of Patents to the effect that any person may apply
for a license through the Registrar of Patents.
7. Utility Models
7.1 Inventions that do not meet the patent's requirements of novelty,
inventive step and industrial application may be protected as a
utility model (called "utility innovation" under our Patents Act
1983). The requirements of a utility model are as follows:
7.1.2 Novelty. A utility model is considered new if it has not been
disclosed to the public by written or oral disclosure, use, or
other ways prior to the filing date.
7.1.3 Utility. The requirements of inventive step and industrial application
are reduced to that of utility.
"Utility innovation" is thus defined as any innovation which creates a new product or process, or any new improvement of a known product or process, which can be made or used in any kind of industry, and includes an invention.
7.2 Procedure and Format. The documentation and procedure of a utility
model application are the same as those of a patent except that only
a single claim is allowed in the former.
7.3 Term and Rights
7.3.1 Term. For utility model applications filed in Malaysia on or after 1st
August 2001, an initial term granted is 10 years. It may be
extended for another 2 consecutive terms of 5 years each if the
proprietor of a utility model can show to the satisfaction of the
Patents Board at the end of each term that the said utility model
is still in commercial or industrial use in Malaysia. (For utility
model applications filed in Malaysia prior to 1st August 2001,
an initial term granted is 5 years. It may be extended for another
2 consecutive terms of 5 years each if the proprietor of a utility
model can show to the satisfaction of the Patents Board at the
end of each term that the said utility model is still in commercial
or industrial use in Malaysia.)
7.3.2 Exclusive Rights. The exclusive rights of a utility model are similar
to those of a patent. The statutory time bar for instituting
infringement proceedings is, however, 2 years from the date of
infringement.
7.3.3 Licenses. Utility model owners may grant licenses to others.
Compulsory licenses do not apply.
8. Change of Ownership
8.1 Patents, utility models and their respective applications may be
assigned or transmitted. The requirements are as follows:-
8.1.1 Assignment document signed by or on behalf of the contracting
parties or, in the case of transmission, documents evidencing the
transfer of title to the new owner. Copies of the documents should
be notarized if executed outside Malaysia. No legalization is
required.
8.1.2 Name, address and nationality of both the assignor and assignee
or, in the case of transmission, the beneficiary.
8.1.3 Patent agent appointment forms (Form 17) duly signed by both the
assignor and assignee or, in the case of a transmission, the
beneficiary.
8.2 The assignment or transmission will only be effective against third
parties upon recordation in the Register of Patents.
9. Searches
The Malaysian Patent and Trademark Offices are equipped with the Patents and Trademarks Automated System (PANTAS) for computer searches of Malaysian granted patents and/or Utility Innovations. We provide the following patent search services:
9.1 Equivalent Patent Search
This mode of search is conducted to locate and identify all Malaysian granted patents and/or Utility Innovations and/or pending patent and/or utility innovation applications which correspond to any foreign patens and/or pending patent applications.
9.2 Subject Matter Search
This mode of search is conducted to ascertain state-of-the-art, technology update; novelty of an invention; infringement and non-infringement search; competitors' watch, etc. Please note that during the pendency of the patent and/or Utility Innovation applications, only the following information are divulged by the Malaysian Patent Office to the public:
a. name, address and nationality of the applicant;
b. name and address of the local patent agent;
c. patent application number and filing date;
d. priority data (if claimed);
e. title of invention;
f. any change in ownership of the application; references to license contract relating to the patent application.