Patents And Utility Models In Malaysia.

6 April, 2016

 

In Malaysia, as in Europe, a patent is an invention that is new, involves an inventive step, and is industrially applicable. Essentially, a patent is what you use to protect inventions—creative and novel solutions to technical problems. The Patent Division of the Malaysia Intellectual Property Corporation handles registration of Malaysian patents by two methods: national phases of Patent Cooperation Treaty applications, or direct national applications. Utility models are referred to as Utility Innovation (Certificates) in Malaysia and are processed similarly to patents, except do not require an inventive step and can only cover a single claim per application. All applications may be filed in either English or Malay (Bahasa Malaysia), although the majority are filed in English. Additionally, the basic filing fee for patent registration in Malaysia starts from RM 1,490, or approximately EUR 330.

 

In today’s article we explore the different types of patent available in Malaysia, how and where to register them, and the enforcement options available.

 

What you can and cannot patent

 

In Malaysia, an invention is only patentable if it is novel, contains an inventive step, and is industrially applicable. Many of the rules governing patentability will be familiar to those already familiar with TRIPS.

 

• Inventions are novel if they are not part of “prior art;” essentially, if they have not been disclosed to the public in any way, at any place, and at any time prior to the filing of the application (or prior to the priority date; see below for more on priority). If the invention was disclosed by the applicant or in contravention of the applicant’s rights, then there is a 12-month grace period in which the application may be filed despite this disclosure. So, if you disclose your own patent, you have twelve months to file it before it is considered ineligible for patent protection.
• Inventions have an inventive step if they are judged to be sufficiently innovative in the eyes of a person with ordinary skill in the art.
• Inventions are industrially applicable if they can be used in an industry.

 

Additionally, in Malaysia, the following cannot be patented: 

 

• Discoveries, scientific theories and mathematical methods
• Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes 
• Schemes, rules or methods f or 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 practised on the human or animal body (except for in cases such as drugs, where substances are used in novel ways)

 

Malaysia has a strictly-enforced first-to-file system. While SMEs may be familiar with such systems from similar jurisdictions, they often underestimate how important an early filing date is in Malaysia. The company that files for a patent application first will almost certainly be granted the patent. An exception to this is priority. An application can claim priority based on an earlier application filed certain other countries or international organisations. An application with a priority date is treated as though it was filed on the same day as the earlier application and thus offers additional protection to companies’ IPR. For example, if an SME files a patent in France, a Malaysian company may read the details of that patent and try to copy that patent in Malaysia. Claiming priority would allow the SME to be treated as though it had filed its Malaysian patent at the same time as its French patent, giving it a leg up over the local Malaysian company in Malaysia’s first-to-file system.

 

Filing requirements

 

The following are required for a complete application for a patent in Malaysia, although only items 1-3 are necessary to obtain a filing date:

 

1. The name and address of the applicant and of the inventor
2. A specification, with claims and any drawings necessary for illustrating the claims
3. The country and filing date of an earlier application for which priority is claimed
4. The serial number and related materials from an International Patent Classification (IPC), if applicable (within three months of the Malysian filing date)
5. The nationality and the legal status (i.e. individual or corporation) of the applicant
6. An abstract of the invention
7. An appointment of agent form signed by the applicant
8. (optional) Proof that the applicant has the right to apply for a patent (if the applicant is not the inventor)

 

If patent applications pass a preliminary examination (an examination to make sure that the application has all of the required elements), then they are made available for public inspection 18 months after the priority date or filing date. During this period (after publication but before grant of a patent), patent applicants can prevent others from using technology contained within the application.

 

Within 18 months of the Malaysian filing date (or within four years of the PCT filing date for PCT national phase applications), the applicant must request a normal substantive examination, a modified substantive examination, or a deferred substantive examination. Failure to do so will cause the application to lapse and the process will need to be started over again. During a normal substantive examination, MyIPO will assess whether the invention is patentable based on its own research and any similar searches conducted by the US, Australian, European, Japanese, Korean, or UK patent offices and with the PCT. As such, requests for normal substantive examinations must contain:

 

• The filing details for applications to those offices
• Serial numbers for those applications
• Any search and examination reports relevant to those examinations and conducted under the PCT
• (for documents not in English) An English translation

 

For a modified substantive examination, a patent must have been granted for the same invention from one of the patent offices listed above. The patent materials must be supplied (in English) and must match those of the Malaysian application. These examinations must be based on a single foreign patent and undergo a simpler review process. 

 

Whether or not you request a modified examination based on an earlier international filing, you should try to align your Malaysian application and your international applications as closely as possible. During the examination process, an examiner may request that you undertake this step for ease of examination.

 

Finally, a request for deferment of substantive examination defers the deadline for examination up to five years from the date of filing the application. Therefore, a request for deferment would act as an extension of time to request an examination from the initial two-year deadline. This is particularly useful in situations where your business has a foreign patent application that is pending grant and intends to request a modified substantive examination once the foreign patent is granted. 

 

Examinations and protection

 

Substantive examinations are conducted and a response is issued within two months of requesting an examination. These examinations will focus on whether the application actually meets the requirements for patentability. Common causes for application failure are if the invention is not sufficiently novel (if it has been previously disclosed), if it does not contain an adequate inventive step (if the “innovation” would be fairly obvious to anyone skilled in the prior art), or if the patent covers too broad of a subject area (in which case divisional patent applications may be issued within three months to essentially split up the original application into smaller, more narrowly-defined applications). Patents are examined in order of filing number, so rarely does quickly requesting a substantive examination lead to a faster examination. Should an application be refused, you can request a hearing to reassess the application. 

 

MyIPO allows for requests for expedited examination to be filed once the application has been made open to public inspection. Expedited inspections can be granted if:

 

• If there is evidence of infringement
• If registration is necessary for obtaining monetary grants from government institutions
• If the invention will be commercialised within two years of the request for expedited examination
• It is in the national or public interest
• If the invention is in the domain of green technology or environmental conservation

 

After a successful substantive examination, an examination report will be issued and the patent will be granted. Malaysian patents provide protection for 20 years, calculated from the filing date of the national application. Maintaining a patent requires payment of an annual renewal fee due every year on the date of the granting of the patent (starting one year after the patent is granted and not retroactively applied). Should the fee not be paid, the patent will lapse, although it can be recovered within two years.

 

Utility models (known as Utility Innovation Certificates) follow virtually the same procedure as patents, but their protection lasts for ten years (renewable twice for up to a maximum of 20 years of protection). Renewals of utility models require proof of use within Malaysia.

 

Enforcement

 

Holding a patent allows you to exclusively exploit the patent for commercial gain, transfer patent rights, and sign contracts regarding use of the patent technology. Any other party infringing on these rights, including by producing, selling, importing, or stocking the patented materials, is liable for administrative or civil action by Malaysian authorities.

 

Any actions taken against infringement must be taken within five years (for a patent) or within two years (for a utility model) against the infringer. If you wish to invalidate a patent, you may take action with the Malaysian High Court and bring a case to argue that the patent should not be patentable, that the patent does not belong to the person to whom it was granted, that misinformation was supplied during substantive examination, etc.

 

Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.

 

Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of your ownership of the IP in question and proof of infringement.

 

In criminal enforcement with the Enforcement Division (ED), counterfeiting and piracy cases can quickly yield goods seizures, injunctions, and prosecutions. To prepare for such actions, you should provide proof of infringement and a letter of complaint. After raids or product seizures, SMEs should assist the ED by providing identification and analysis of seized goods to prove infringement.

 

In litigation through IP courts, IP owners can bring cases before specialised Malaysian IP courts. These courts are empowered to issue injunctions which immediately halt infringement and to assign unlimited damages to be paid to the rights owners. Nine months is the proscribed maximum waiting time for these cases between filing and their day in court, offering a reasonable expectation of timely resolution. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines.