PATENT - APPLICATIONS
National Patent Application or Malaysian National Phase of a PCT Application
1. Filing Requirements and Information
- Applicant’s name, address, nationality (or in the case of a corporate body, the place of incorporation) and passport or identity card
- number (where applicant is a person);
- Inventor’s name, address and nationality;
- Patent specification in English, comprising description, claims, abstract and drawings, if any.
- Patent Form No. 17 (Power of Attorney) executed by the applicant to effect our appointment as patent agents (no legalization or notarization required). This form may be lodged at a later date if not available at the time of filing.
- Applicant’s entitlement to own the patent from the inventor, e.g. by virtue of employment, commission, agreement, assignment, etc. This information may be provided at a later date if not available at the time of filing.
- Priority data if claimed, i.e. filing date, country and application number.
- The term for entering the national phase in Malaysia is 30 months from the priority date regardless of whether the International Preliminary Examination has been requested. When entering the Malaysian national phase, it is best to forward us a copy of the cover page of the WIPO publication of the corresponding PCT application and a copy of Form PCT/RO/101.
2. Certificate of Filing and Preliminary Examination Report
Upon submitting the requisite forms and documentations for filing of a patent application, the Malaysian Intellectual Property Office (MyIPO) will issue a Certificate of Filing or Filing Receipt and a Preliminary Examination Report (formalities report). In the Preliminary Examination Report, the MyIPO observes whether the application complies with formal requirements of the Act and Regulations. Any deficiencies are given a period of three (3) months to be rectified.
A request for examination must be filed within eighteen (18) months from the filing date in case of a national patent application OR within four (4) years from the international filing date in case of a Malaysian national phase of a PCT application. Failure to timely file the request will result in the application to be deemed to be withdrawn. Applicant may opt for substantive examination or modified substantive examination.
Substantive examination shall be accompanied with the following information relating to corresponding foreign applications in any prescribed industrial property office. Information not available at the time of filing may be submitted at a later date when becomes available.
(i) Application number and filing date of corresponding application(s) filed with any prescribed industrial property office, i.e. the Australian Patent Office, the United Kingdom Patent Office, the United States Patent Office, the European Patent Office, the Japanese Patent Office, or the Republic of Korea Patent Office, or with an International Searching Authority under the Patent Cooperation Treaty (PCT).
(ii) Search and/or examination results carried out by any of the prescribed industrial property office or the International Searching Authority under the Patent Cooperation Treaty (PCT). For results that are not in the English language, a certified translation in English is required.
Modified substantive examination
Modified substantive examination may be requested if a corresponding patent has been granted to the applicant or his predecessor in title in a prescribed country outside Malaysia, i.e. UK, US, Australia, Japan or Korea, or under a prescribed treaty or convention, i.e. European Patent Convention for an invention which is the same or essentially the same as the invention claimed in the application. This examination is considered “simplified” because the Malaysian application is considered to have fulfilled the requirements of novelty, inventive step and industrial applicability by virtue of the similarities with the granted foreign application. The advantage of filing a request for modified substantive examination is that it would provide a faster route (approximately 1-2 years from date of request) to obtain a grant of patent as it is supported by the granted corresponding patent. A request shall be accompanied by the following:
(i) A certified true copy of the patent granted in the prescribed country or under the prescribed treaty or convention. A certified translation in the English language is required if the patent is not in English.
(ii) Amendments of the description, claims or drawings of the invention claimed in the application so as to be in substantial conformity with the granted patent.
4. Deferment of Examination
If applicant does not wish to request for an examination yet and at the same time does not intend to abandon the application, a request for deferment of examination must be filed within eighteen (18) months from the filing date in case of a national patent application OR within four (4) years from the international filing date in case of a Malaysian national phase of a PCT application to prevent withdrawal of the application. Upon filing a request for deferment, the MyIPO grants the deferment of substantive examination and modified substantive examination until five (5) years from the filing date in case of a national patent application or until five (5) years from the international filing date in case of a Malaysian national phase of a PCT application.
5. Public Inspection
A patent application is made available for public inspection after eighteen (18) months from the priority date or filing date. There is no laying open for public inspection if a patent application is withdrawn or refused before the expiry period of eighteen months from the priority date or filing date.
6. Office Action
Once examination is requested, we would expect to receive the first Office Action within about one to three years following the date of the request for examination. The cost of preparing and filing a response to an Office Action is based on work hours spent in accordance with the complexity of objections raised in the Office Action.
7. Allowance and Grant
A patent application that has been examined and allowed will be issued with a clear examination report and shall proceed to grant. A patent shall be deemed to be granted and shall take effect on the date the certificate of grant of the patent was issued.
Duration of a Malaysian patent is twenty (20) years from the filing date. A granted patent is subject to payment of the requisite annual renewal fee, which is payable before the anniversary of the date of grant.