In this article, Pravind Chandra looks at the new section 55A of the Patents (Amendment) Act 2022.
Introduction
The Patents (Amendment) Act 2022 (“the Amendment Act”) came into force in Malaysia on 18 March 20221. Together with the Patents (Amendment) Regulations 2022, this Amendment Act brought a wave of changes through the existing Patents Act 1983 (“PA1983”) and the Patents Regulations 1986 (“PR1986”).
The Amendment Act introduces into the PA1983 a new section 55A which provides for an interested party to be able to commence opposition proceedings to challenge the validity of a granted patent. The introduction of section 55A now places the Intellectual Property Corporation of Malaysia (“MYIPO”) on par with its peers such as the Intellectual Property Office of Singapore (“IPOS”) and the European Patent Office (“EPO”) in terms of providing an avenue to challenge and revoke a granted patent.
However, it must be noted that the new section 55A, as well as several other amendments, will only come into force at a date later than 18 March 2022. As of 31 May 2022, there has been no official announcement on when section 55A would take effect.
Initiating opposition proceedings
Section 55A of the Amendment Act allows any interested person to commence opposition proceedings at MYIPO. It should be noted that the interested person includes the Federal Government and any State Government. One main prerequisite to do so is that the patent in dispute must not be the subject of Court proceedings or any other proceedings under the PA1983 read together with the Amendment Act.
The deadline to commence these proceedings is “within the prescribed period from the date of publication of the grant of the patent”. However, the prescribed period has not been defined in the Amendment Act or any regulation yet.
An interested person who has commenced opposition proceedings may not, at any time during those proceedings, initiate any Court proceedings to invalidate the patent in question, unless both parties agree to the commencement of Court proceedings, or if the interested person is defending an infringement lawsuit.
Grounds for opposition
The three grounds on which a party may mount a challenge under section 55A of the Amendment Act pursuant to section 56(2) of the PA1983 are summarised as follows:
• The invention in the patent does not fall within the meaning of “invention” as defined in section 12 of the PA1983, or is contrary to public order or morality, or is not patentable because it is not novel, it lacks an inventive step, or is not industrially applicable; or
• that the description or the claim does not comply with the requirements of the PA 1983 or PR1986; or
• any drawings which are necessary for the understanding of the claimed invention have not been furnished by the patent owner.
Decision of the Registrar
Upon assessing the notice of opposition and any supporting documents submitted by the interested person or by the patent owner, the Registrar of MYIPO shall then make one of the following determinations:
• to maintain the patent in question; or
• to maintain the patent with amendments; or
• to invalidate the patent.
In the event the Registrar decides to maintain the granted patent or maintain the patent with amendments, the interested person can not then make an application under section 56 of the PA1983 to invalidate the patent unless the person is a defendant in an infringement lawsuit.
However, it should be noted that the interested person would still be able to file an appeal to the Court, pursuant to section 88 of the PA1983.
Conclusion
The amendments under the Amendment Act to the PA1983 have long been overdue. Malaysia’s patent laws are now on similar footing with the laws in neighbouring countries. Malaysia’s commitments to the Regional Comprehensive Economic Partnership (“RCEP”) Agreement have no doubt been a catalyst and driving force for the need to update the PA1983 via the Amendment Act. One aspect of that commitment to the RCEP Agreement is having robust and up-to-date patent laws which allow parties to
test and challenge the validity of a granted patent.
Once it comes into force, the new section 55A of the Amendment Act would provide a faster and less costly channel for a party to invalidate a granted patent. As things stand, a party would have to file an invalidation suit at Court to have a patent revoked. This new provision now enables parties to challenge the validity of a granted patent on substantive matters at the MYIPO level, thus minimising costs and indirectly reducing the burden on the Court.
For further information, please contact:
Karen Abraham, Partner, Shearn Delamore & Co.
karen@shearndelamore.com
1. PU(B) 168/2022 — in exercise of the powers conferred by subsection 1(2) of the Patents (Amendment) Act 2022 [Act A1649], the Minister appoints 18 March 2022 as the date on which the Act comes into operation except section 14, paragraph 26(a), sections 45 and 47, paragraph 48(a), section 55 and paragraph 57(b).
