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Amendments to Malaysia's Patent Law

Malaysia's Patents (Amendment) Bill 2021: What you should know

05 January 2022

On 22 December 2021, the Patent (Amendment) Bill 2021 (“the Bill”) was passed at the upper house of the Parliament, and is now pending Royal assent.  The Bill encompasses amendments to the Patents Act 1983 (“the Act”), in line of Malaysia’s ratification to the Regional Comprehensive Economic Partnership (RCEP) and to comply with the obligation under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement). The amendments are anticipated to come into force within the next 1 to 2 months.

 

Some of the pertinent changes under the amendments are highlighted as follows:-

Malaysia’s Accession to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

The Budapest Treaty is an international treaty that allows “deposits of microorganisms at an International Depositary Authority (IDA) to be recognized for the purposes of patent procedure”. To meet legal requirements, patent applications, including the description of the inventions must be disclosed to the public, to allow any person skilled in the art to carry out inspection, should the subject matter be of interest to them. When an invention is in relation to microorganisms, describing them in words in the description of the patent would not be sufficient for inspection to be carried out. Hence, a deposit of the biological material must be made in a recognised institution. The Budapest Treaty ensures that a patent applicant need only deposit the biological material at one recognized institution, an IDA, and this deposit will be recognized in all countries (85 countries at the time of writing) which are party to the Budapest Treaty.

 

With Malaysia’s accession to the Budapest Treaty, patent applications which involves microorganisms do not require a statutory declaration in support of the application.

Additional information and documentations required from Applicant for the patent application:-

  1. Description with information on the characteristic of the microorganism

  2. Name and address of the International Depository Authority which the deposit was made

  3. Date of deposit

  4. Accession number provided by the International Depository Authority

  5. If deposit was done by a person other than the applicant, name and address of the depositor as well as a declaration of authorization is required
     

The information and documentations required above must be submitted to the patent office following the timeline below (whichever earlier):-

  • Within 16 months from the filing date or priority date (whichever earlier), or

  • By the date the request for early publication
     

Any person can request for a sample of the deposited microorganism from the IDA, with payment of prescribed fee. Applicants are required to submit a Request for Certification to the patent office, which can be made after the end of 10 months from the filing date or priority date and/or after the date of early publication.

New Deposit of Microorganisms concerns the deposit of organisms after the patent application has been filed. The following documentations are required:-

  • All information and documentations as above.

  • The information and documentations are required to be submitted within 3 months from the date of deposit.
     

Division of Application

  • Extension of time are not allowed for the purpose of filing a divisional application.

  • Applicants are allowed to waive the request for divisional application, resulting in faster grant of the patent.

  • Immediate grant is allowed if Applicants choose to waive the request for divisional application.
     

Deferment of Examination

  • Deferment of examination is no longer allowed.

  • An exception is being made – applicants are allowed to defer the filing of a request for a modified substantive examination if the patent has not been granted or is not available by the expiration date to file a request for modified substantive examination

  • Request for Deferment of Examination can be submitted to the Patent Office with a prescribed fee.
     

Request for Early Publication

  • Applicants can now request for early publication before 18 months of the filing date, with a prescribed fee.
     

Third Party Observation

  • With the amendment of the Act, any third party is allowed to make observation on the patent application, limited to novelty and inventiveness.

  • Request for third party observation can be filed at the Patent Office within 3 months from the publication of the application, with a prescribed fee.
     

Post-grant Opposition

  • With the amendment of the Act, any third party can now oppose the grant of the patent under post-grant opposition.

  • Applicants have 6 months from the publication date of the grant of patent to file a Notice of Opposition to the Patent Office.
     

Increase in Official fees

Official fees have increased for the following:-

  1. Filing of patent application and utility innovation application

  2. Additional claims after the 10th claim

  3. Appointment or change of patent agent

  4. Statement Justifying the applicant’s rights to the patent

  5. Request for substantive examination

  6. Request for modified substantive examination

  7. Request for deferment of examination (no charges before the amendment of the Act)

  8. Amendment of patent application

  9. Annuity fees

 

Extended time in Filing Response to Substantive Examination Report

  • Applicants are allowed to submit a response to the Patent Office’s Substantive Examination Adverse Report and Modified Substantive Examination Adverse Report within 3 months from the date the report is made available to the applicant, instead of 2 months before the amendment of the Act.
     

Restoration of Priority Date

  • Applicants can now request to restore the priority date of the application, provided the failure of filing the patent application within the priority period is unintentional, with a prescribed fee.

  • For national patent applications, restoration of priority date can be requested within 2 months from the expiry date of the priority date, provided the filing date is within 2 months from the expiry date of the priority date.

  • For international applications, restoration of priority date can be requested within 1 month from the expiration of 30 months from the priority date, or within 1 month after requesting for early examination.
     

Security Interest

Patents can be subject of security interest and recorded into the Register of Patent, upon submission of a form as may be determined by the Patent Office along with prescribed fees.

Compulsory Licenses

Article 31bis of the TRIPS Agreement is incorporated – Production of pharmaceutical product in Malaysia and exportation of that pharmaceutical product to an eligible importing country without the agreement of the patent owner is allowed to address its public health problem.

Annuity

Applicants can now renew their patents for a maximum period of 5 years at once.

 

We anticipate further details will be revealed in the weeks to come, and will provide an update as soon as they are made available to us.

In the meantime, should you have any questions or would like to know more about any provisions in the Bill, feel free to contact us at info@advanz.com.my.