3 March 2021
On 1 January 2021, the Patents (Waiver of Fee) Regulations 2020 came into operation in Malaysia. The Government of Malaysia enacted these Regulations as part of efforts to ease the burden on owners of patents and/or Utility Innovations (“UI”) affected by the control and prevention measures prescribed, made and taken under the Prevention and Control of Infectious Diseases Act 1988 (Act 342) intended to control or prevent the spread of the COVID-19 virus.
Under Section 35 of the Patents Act 1983, and the modifications to Section 35 in the Second Schedule of the Act applicable to UIs, a grace period of six months is available for payment of the annual renewal fee if the deadline for payment has been missed. During this grace period, the annual renewal fee can still be paid but a prescribed surcharge must also be paid. The surcharge is prescribed in item 18, Part II, Schedule 1 to the Patents Regulations 1986.
The above-mentioned new Regulations provide a waiver of the surcharge for late payment of annual renewal fees, for both patents and UI, subject to certain requirements being fulfilled.
Requirements to apply
The owner of a patent or a certificate for a UI may seek a waiver to the surcharge if the following applies:
a) The term of the patent or certificate for a UI expires between 1 January 2021 and 30 June 2021; and
b) an application for the waiver of the surcharge is made to the Patents Registrar and accompanied by the payment of the annual renewal fee; the application and payment of the annual renewal fee have to be made within the grace period of six months after the date of expiration for the annual renewal fee due for the given year during the duration of the patent/UI.
Prerequisites for patent/UI owners
An owner who is an individual would have to satisfy the Registrar that he isfrom the B40 group who receives Bantuan Sara Hidup or Bantuan Prihatin Nasional, or that he has lost his job and income, or that his income has been affected by the control and prevention measures that were implemented in the country.
If the owner of the patent/UI is a body corporate or unincorporated body, then the said entity would have to show evidence of obtaining approval for moratorium extension or a flexible repayment programme from a financial institution, and that as a result of the control and prevention measures, said body has cash flow problems or has trouble resolving its debts.
Clarity required
Where there is more than one owner of the patent/UI, only one owner needs to satisfy the conditions above. However, the Regulations do not state whether a refund is available to owners who are eligible for waiver of the surcharge but have already paid the surcharge.
For further information, please contact:
Dhinesh Bhaskaran, Managing Partner, Shearn Delamore & Co
dhinesh@shearndelamore.com
