Patent Laws of Malaysia

Malaysia is a common law country and is governed by the doctrine of judicial precedent (stare decisis). The intellectual property rights that apply in Malaysia today are similar to those of other Commonwealth countries. In general, Malaysia's intellectual property rights are in line with recognized international standards. The main laws relating to patents in Malaysia are the Patents Act 1983 (PA 1983) and the Patents Regulations 1986, both of which came into force on 1^st  October 1986. Malaysian patent law is WTO/TRIPS compliant and Malaysia is a member of the Paris Convention and the Patent Treaty cooperation (PCT). It is not currently a member of the Budapest Treaty, but its accession to the Budapest Treaty is likely to be in the near future. Patent registration is done by the Intellectual Property Corporation of Malaysia (MyIPO).

Patent:

A patent is an exclusive right granted by the patent office to an inventor to use his invention in accordance with the provisions of the law for a limited period of time. During this time, the inventor is entitled to exclude anyone else from commercial exploitation of his invention.. The person to whom a patent is granted is called the Patentee. The Patent Law of Malaysia covers all the criteria for patentability, the duration of patents, the rights of the patent holder, the procedure for applying patents, etc. The patent holder's invention provides a solution to a specific problem in the field of technology as defined in Section 12 of the Patents Act 1983. Not all inventions that fall under under the definition of "invention" are patentable. An invention must be published before a patent can be granted. Disclosure of the invention provides useful information to the public, which helps to avoid unnecessary duplication of effort and multiplication of costs that can result from research aimed at finding solutions to technical problems. The grant of a patent not only recognizes and rewards the creativity of the inventor, but also acts as an inspiration for other inventors that ultimately contribute to the technological development of the nation.

There are 2 types of Patents are granted by the Malaysian government:

1. Standard Patent: The invention must be novel, have an inventive step and be industrially applicable. Duration of protection is for 20 years from date of filing of application.
2. Certificate of Utility Innovation: Generally the same as standard patent except no inventive step is required.

Is it mandatory to get a Patent?

It is not mandatory for inventors to apply for a patent for their invention. It is up to the inventor whether he wants to keep his invention a secret or make it available to the public. If he keeps his invention secret, he runs the risk that his invention will be disclosed to his competitors or the general public either through reverse engineering or by communicating such information to someone who has such information and is under no duty to keep it secret or by independent discovery. In this case, another person can start using the invention. In this case, the inventor will not be entitled to a remedy.

Requirements for Patent to be Patentable:

If the patentor wants his invention to be patentable he has to fulful the following requirements:

• It must be new or novel:

In order for the invention to be patentable, it should be either new or new in the sense that, on the date of filing the patent application, as defined in Section 14(2)(a) of the Patent Act from 1983, should not form part of the current state of the art. Prior art includes all material available to the public prior to the priority date of the invention by written or oral description, use in any other way. This means that in order for an invention to be patentable, it should not be found in any matter, be it a product, a process, information about one or anything else that has ever been made available to the public anywhere in the world in writing. or by oral description, use or any other means.

• It must invlove an inventive step:

An inventive step means a feature of an invention that involves a technical advance over existing knowledge or is of economic importance or both and makes the invention not obvious to a person skilled in the art. To meet the inventive step criterion, the patentee will either have to demonstrate that the invention involves technical progress or is of economic importance, or both, together with the necessary factor that such invention should not be obvious to one skilled in the art.

• Capabale of Industrial Application:

It means that an invention is capable of being made or used in any industry defined in Section 16 of the Act. Mere usefulness is not sufficient to get a patent.

• It must not be excluded by the Act:

Inventions consisting of any of the following are expressly excluded from patentability under the Act defined in Section 13(1) (a)-(d).

1. Discoveries, scientific theories and mathematical records.
2. Varieties of plants or animals or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, microbiological processes and the products of such microorganism processes;
3. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
4. Methods for the treatment of a human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Nevertheless, the exclusion (d) above does not extend to products used in any of those methods such as drugs.

The Malaysian Patent Statute also regulates Utility Innovations (which are also known as petty patents or petty patents). The requirement for a useful innovation is only that the innovation is new and that it is industrially applicable (without the need for an inventive step). In India, the first 3 steps are required for a patent to be patentable.

How to get a Patent?

To obtain a patent, an inventor must file an application with the Malaysian Intellectual Property Corporation (MyIPO). The inventor must list all the specifications of the invention, which include the description of the invention and the claims of the invention.

A patent application should be filed as soon as possible as most countries including the Malaysian government grant patents to applicants on a first-come, first-served basis. The date of submission is added to the date of receipt of the application if the application contains all of the following information:

• Name and address of the applicant;
• Name and address of the inventor;
• Description and all drawings (if any) in duplicate, drawings can be informal drawings;
• Claim or claims; and
• Prescribed fee.

All documents can be in the English language. Translation into the Malay language is not mandatory.

After the preliminary examination, a substantive examination of the patent application will be carried out. Substantive examination takes place only on the basis of the submission of a formal application for substantive examination (S.E.) or modified substantive examination (M.S.E.), which must be submitted within 2 years from the date of submission.

Duration of Patent:

Patent is granted for a period of 20 years from filing the date of the application, subject to the timely payment of prescribed annual fees as defined in Section 35(1) of Patent Act 1983.

A patent is considered granted and becomes effective on the date of issuance of the patent grant certificate. However, if the patent application was filed before August 1, 2001 and was pending on that date, the term of the patent granted on that application will be 20 years from the date of filing or 15 years from the date of grant, whichever is longer.

Similarly, if the term of a patent granted before August 1, 2001 and still valid on that date, the term of the patent will be 20 years from the date of application or 15 years from the date of grant, whichever is longer, as defined in Section 35 (1B) and (1C). The patent holder must pay an annual fee when the patent is granted starting from the second year. Unlike some jurisdictions, there are no fees for pending applications. A grace period of 6 months is allowed for late payment of annual fees with an additional surcharge.

In the event of non-payment of the prescribed annual fees, the patent shall lapse and notice of the lapse of the patent for non-payment shall be published in the Government Gazette. To remedy the expiration of a patent, the owner must, within 2 years of its expiration, request the registrar to remedy said expiration, as defined in Section 35 A (1).

Rights of a Patent Holder (Section 36):

1. To exploit the patented invention.
2. To assign or transmit the patent.
3. To conclude license contracts.

Infringement of Patents:

A person infringes a patent when he uses the patentee's invention for which the patent has been granted without his consent, as defined in section 58 of the Patents Act 1983. A patent can sometimes be infringed by using only part of the invention. which is new. A patent owner has the right to initiate infringement proceedings against a person who has violated the patent holder's right as defined in Section 59(1). When the patent holder proves that an infringement has occurred or is being committed, the Court will award damages and an injunction to prevent further infringement and grant any other legal remedy that may be deemed appropriate as defined in Section 60 of the Patents Act 1983.

Amendment Act of 2022:

The Patents (Amendment) Bill 2021, which substantively amends Malaysia's existing Patents Act 1983, was passed into law by Parliament in December 2021 followed by Royal Assent on 04 March 2022 and enforcement on 18 March 2022.

Some of the important changes made under the Act are as follows:

1. Recognition of Patents as a form of security interest:

A patent is now considered as a form of security interest.

2. Post grant opposition of Patent:

Any interested person can file an objection against the patent owner with the registrar. If a notice of opposition is filed and the objection is pending before the registrar, court proceedings for the invalidity of the patent in question cannot be commenced unless (i) both parties to the opposition proceedings agree to commence invalidity proceedings before the Court, or (ii) the person involved is a defendant in the proceedings about infringement of the law.

3. Compulsory Licenses:

The bill empowers the registrar to grant compulsory licenses regardless of the conclusion of pre-existing exclusive license agreements. The new provision also exempts the licensor from any action for breach of contract by the licensee arising from the grant of a compulsory license by the registrar.

4. No obligation to disclose manufacturing or commercial secret

If a patent is granted with respect to a process for obtaining a product, a person (other than the patentee or its licensee) who has manufactured the same product will be presumed to have obtained the product through the patented process unless proven otherwise. The Bill now exempts such a person from disclosing any trade or trade secret if he states otherwise, if the court is satisfied that it is unreasonable or unnecessary or that it is prejudicial to that person's trade or trade secret.

5. Recognition of micro-biological processes:

Products of micro-biological processes also come under the purview of patentable inventions.

6. Third party observation on patentability:

Any person may provide observations in writing to the Registrar on the patentability of a patent application within a stipulated time period.

7. Restoration of right of priority:

An applicant may request for restoration of right of priority where the applicant fails to claim a right of priority under 12 months from the filing date, provided certain conditions are fulfilled.

8. Request for divisional application:

The Registrar will not grant an application for a divisional application if, prior to the application, the original application or the immediately preceding application has been granted a patent, refused, deemed withdrawn, withdrawn or abandoned. Furthermore, the prescribed period for filing such a request for division cannot be extended.

9. Early publication of application:

Applicants may request for earlier publication of their patent application before the expiry of 18 months from the filing date.

10. Reinstatement of lapsed patent:

The time limit to request for a reinstatement of a lapsed patent has been shortened to 12 months (previously it was 2 years) from the date of publication of the notice of lapsing of patent.

11. Limitation period of judicial assignments:

The limitation period for judicial assignment and court proceedings has been extended to 6 years previously it was 5 years.

12. Power of registrar to award costs:

The Registrar is now given power to award costs.

Malaysia has amended its Patent Act to ensure that its patent protection laws are in line with international standards. The amendments incorporate Malaysia’s commitments to various international treaties. The changes embedded in the Patent Act of Malaysia will definitely consolidate the patent laws of the country thereby bringing more stringent provisions to protect the inventions of the inventor against the misuse of their patents without their consent

Author:      Jatin Chaddha – a student of Vivekananda Institute of Professional Studies, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.