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On 18 March 2022, the Patent (Amendment) Act 2022 [Act A1649] (“Amending Act”) came into force in Malaysia. This Amending Act brings about a significant revamp of the Patents
Act 1983. However, there are several sections and paragraphs within the Amending Act that will only come into operation later.

The operation of the Amending Act coincides with the coming into force of the Regional Comprehensive Economic Partnership (“RCEP”) agreement in Malaysia. Part of the conditions for signing up to the RCEP required ratifying nations to strengthen their laws and regulations on intellectual property (“IP”) rights.

This Amending Act is the result of Malaysia’s endeavour to bring the country’s patents law up to date. Other IP-related laws that have undergone amendments because of Malaysia’s
ratification of RCEP are the Copyright (Amendment) Act 2022 and the Geographical Indications Act 2022.

New Provisions in the Patent (Amendment) Act 2022.

Whilst the Amending Act brings about an almost comprehensive revamp of the Patents Act 1983, here are three of the numerous new provisions that are of particular interest.

(i) Accension to Budapest Treaty

In accordance with the Budapest Treaty, which governs the deposit of microorganisms, the Amending Act allows for a patent applicant to deposit a sample of a microorganism with
a National or International Depository Authority when filing a patent application.

(ii) Third Party Observation

The Amending Act now allows third parties to make observations on the patentability of a patent application.

(iii) Opposition Proceedings

Under the Amending Act, any interested person may commence opposition proceedings against the owner of a granted patent. A decision will then be made by the Registrar
on whether to maintain the patent as it is, to maintain the patent with amendments, or to invalidate the patent.

It should be noted that while the Amending Act came into force on 18 March 2022, several sections and paragraphs of the Act will only come into operation at a yet-to-be appointed date.

Potential to Increase Patenting

The Amending Act not only brings Malaysia’s patents laws to relatively conformity with other RCEP nations, but it also provides a long-awaited makeover of the Patents Act 1983. It has the potential to invigorate the patent landscape in Malaysia, especially in terms of empowering parties to protect their rights to their inventions and enforcing those rights.

Contact Us For Further Information Regarding Intellectual Property Matters.


WRITTEN BY

For further information, please contact:

Karen Abraham – Shearn Delamore & Co,
karen@shearndelamore.com

Karen Abraham is the Head of the Intellectual Property department of Messrs Shearn Delamore & Co. Her practice covers all aspects of Intellectual Property, Technology, Media & Telecommunications, Data Protection and Competition Law. She has more than 30 years of litigation experience in Intellectual Property matters, appearing in the Apex Courts in Malaysia. The Malaysian law journals bear testimony of how she has been instrumental in setting precedent in IP jurisprudence thereby establishing and evolving IP infrastructure in Malaysia over 3 decades. Abraham regularly provides legal counsel on all allied IP rights and advises on compliance and regulatory matters relating to food and drugs, domain name disputes, licensing, franchising, merchandising, commercial sales contracts, sponsorship, advertising and entertainment, and media broadcasting laws. Abraham is also experienced in all aspects of Information Technology (IT), e-commerce, and telecommunications related matters and cyber laws.

Abraham also works very closely with the Malaysian Ministry of Domestic Trade and Consumer Affairs (MDTCA) who are vested with the powers of enforcing IP rights under the existing IP legal regime including under Trademarks and Copyright, Consumer Protection and Trade Description legislations. Her enforcement practice focuses on crafting anti-piracy and anti-counterfeiting programmes for leading companies in the global market, as well as crafting innovative strategies and brand management schemes for global and local IP brands.

Abraham is the first woman in Malaysia to hold a position as Board Member of the International Trademark Association (INTA). Abraham was the Assistant Secretary General of the International Association for the Protection of Intellectual Property (AIPPI) and was the first Malaysian to sit on the Bureau of AIPPI. She also sits as Council member of ASEAN IP Association (AIPA) and in 2021, she was appointed the Asia Pacific Regional Forum Liaison Officer, IBA Intellectual Property and Entertainment Law Committee. Karen is an active committee member of the Asian Patent Attorneys Association, AIPPI and Marques.

Abraham is a Panellist on the Domain Name Dispute panel of the Asian International Arbitration Centre (AIAC) and a Panel member of the Malaysian Mediation Centre. She is also serves the IP Committee and the Disciplinary Board of the Malaysian Bar Council.

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