Marks & Clerk Malaysia
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IP in Malaysia

Patents and utility innovations

An invention relates to an idea of an inventor that permits in practice the solution to a specific problem in a field of technology. The solution may relate to a product or a process.

The invention is patentable if it is:

  • new;
  • involves an inventive step; and
  • industrially applicable

In Malaysia, novelty of the invention is assessed on a worldwide level and this comprises anything that is publicly disclosed before the filing or priority date of a patent application under a first-to-file system. However, disclosures committed in consequence to acts done by, or in abuse of the rights of, the applicant or his predecessor in title during the one-year period preceding the filing date of the application is disregarded.

Non-patentable inventions

Under the Malaysia Patents Act 1983, the following are not patentable in Malaysia even though they may be considered as 'inventions':

  • discoveries, scientific theories and mathematic models;
  • plant or animal varieties or essentially biological processes for the production of plant or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
  • schemes, rules or methods for doing business, performing purely mental acts or playing games;
  • methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body, provided that these shall not apply to products used in any such methods.

First filing requirement

No resident in Malaysia must file any patent application or application for a certificate for a utility innovation overseas without written authority from the Registrar, unless a patent application for the same invention has been filed at the Malaysian Patent Office for at least two months before the overseas patent application has been filed and no directions restricting publication of the Malaysian patent application have been issued by the Registrar or all such directions have been revoked. Contravention carries a heavy penalty of a fine not exceeding RM15,000 and/or a jail term not exceeding two years.

Preliminary Examination

After an application has been accorded a filing date, it will be examined for compliance with the formal requirements. In the event of non-compliance, an applicant will be given an opportunity to file his observation and amend his application within a specified time period.

Substantive Examination

There are prescribed deadlines within which the applicant must request substantive examination of his application.

Direct national applications

For a direct national application, a request for full or modified substantive examination must be filed within two years from the filing date of the application. Modified substantive examination may be requested if a corresponding patent has been granted for the same or essentially the same invention as the invention claimed in the application in suit by any of the following patent offices:

  • Australian Patent Office (APO);
  • UK Intellectual Property Office (UKIPO);
  • Japanese Patent Office (JPO);
  • Korean Intellectual Property Office (KIPO);
  • US Patent Office (USPTO); and
  • European Patent Office (EPO).

It is possible to defer making a decision regarding full or modified substantive examination by requesting deferment of examination before the examination deadline noted above. The deferred deadline for requesting full or modified substantive examination is five years from the filing date (this is longer than the deferment previously allowed for requests made before 16 August 2006). It is interesting to note that if the applicant is unable to request modified examination by the five year deadline, it is possible to request full substantive examination within 3 months after the expiry of the five year deadline.

International (PCT) applications

For an international application that has entered the national phase in Malaysia, a request for full or modified substantive examination must be filed within four years from the filing date of the international application. If the applicant wishes to defer substantive examination of the application, such a request must also be made within four years from the international filing date. The maximum deferment period, for requesting either full or modified substantive examination, is five years from the international filing date. If the applicant is unable to request modified examination by the five year deadline, it is possible to request full substantive examination within 3 months after the expiry of the five year deadline.

ASEAN Patent Examination Co-operation ("ASPEC") Programme

The ASEAN Patent Examination Cooperation Programme was introduced on 15 June 2009. Under this programme, if full substantive examination is requested for a Malaysia patent application, and if the applicant has filed a corresponding application (one with a priority link with the Malaysia application) in a participating ASEAN country, it is possible to submit search and examination results from the corresponding application to assist with examination of the Malaysia patent application. This could lead to better examination and/or quicker allowance of the Malaysia application. The search and examination results from the corresponding application should be submitted at time of requesting full substantive examination or when replying to a written opinion. The 8 patent offices participating in this programme are those of Singapore, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Thailand and Vietnam (not Brunei and Myanmar).

Special requirements for certificates for utility innovations

Unlike patents, there is no requirement for a utility innovation to involve an inventive step for an application for a certificate for the utility innovation to be granted. Also, only a single claim for defining a utility innovation is allowed in the application.

A request may be made by an applicant to convert his patent application to an application for a certificate for a utility innovation, and vice versa, provided such request is made within six months from the date on which the Registrar makes known the examination report.

Duration and renewal of patents

The term of a patent in Malaysia depends on its filing date.

A patent that is filed before 1 August 2001 and is at present in force has a term of twenty years from its filing date or fifteen years from the grant date, whichever is the longer.

A patent that is filed on or after 1 August 2001 and is at present in force has a term of twenty years from its filing date.

To keep a patent in force, annual fees are payable from the second year of the grant date. The first of the annual fees is payable before the end of the first anniversary of the grant date. Consequently, there is no payment of back fees following grant of a patent.

Duration and renewals of certificates for utility innovations

The term of a certificate for utility innovation is ten years. This initial ten-year term may be extended twice, each time by an additional five years, provided the owner shows that the utility innovation is in commercial or industrial use in Malaysia, or satisfactorily explains its non-use.

To keep a certificate of utility innovation in force, annual fees are payable from the third year of the grant date. The first of the annual fees is payable before the end of the second anniversary of the grant date. There is no payment of back fees following issue of a certificate for utility innovation.

Invalidation

Any aggrieved person may institute Court proceedings to invalidate a patent or certificate for utility innovation, based on any of the following grounds:

  • that what is claimed:
    • does not provide a solution to a specific problem in a field of technology;
    • lies within the scope of excluded subject matter;
    • is not novel;
    • does not involve an inventive step (only for patents); or
    • does not have industrial applicability;
  • that the description or the claims do not comply with the patents regulations;
  • that any drawings which are necessary for the understanding of the claimed invention have not been furnished;
  • that incomplete or incorrect information has been deliberately provided, or caused to be provided, to the Registrar in relation to a request for substantive examination.

Infringement

Where a patent is granted for a product, the owner of the patent has the exclusive right to stop others from making, importing, offering for sale, selling or using the patented product; or stocking such a product for the purpose of offering for sale, selling or using. Where a patent is granted for a process, the owner of the patent has the exclusive right to stop others from using the patented process; or making, importing, offering for sale, selling or using a product obtained directly by means of the patented process, or stocking such a product for the purpose of offering for sale, selling or using.

The right under the patent extends only to acts done for industrial or commercial purposes and does not extend to acts done only for scientific research. Further, it is not an infringement to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority that regulates the manufacture, use or sale of drugs. Use of a patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia is not an infringement. A patent owner cannot stop the import of or sale of patent products which have been put on the market by the patent owner or his licensee. A person who, at the priority date of the patent application, was in good faith in Malaysia making the product or using the process related to the claimed invention; or had in good faith in Malaysia made serious preparations towards the making of the product or using the process related to that claimed invention will have the right to exploit the patented invention despite the grant of the patent.