Malaysia's Patents (Amendment) Act & Regulations 2022: What You Should Know

The Patents (Amendment) Act & Regulations 2022, along with the Directive of Patents Act 1983 and Patents Regulations 1986 has come into force in Malaysia on 18 March 2022. Notably, there are a number of sections within the Act that will only come into force at a later date.

In this note, we would like to share some of the pertinent changes under the amendments to the Malaysian Patents law:-

Increase in Official Fees

All official fees have been revised. It is of note to mention that excess claim charges will now follow a tiered set of charges (the more excess claims, the more charges it will attract) - these will be due at the point of filing the application.

Online Filing System

In view of the amendments to the Act, the online filing system for patents will remain unavailable for the time being until the system is upgraded to reflect the new provisions. All filings are to be done manually at the Patent Office in the meantime.

Publication of Application

• All applications (with the exception of international PCT applications) will now be published in the Official Journal eighteen (18) months from the filing/priority date, unless it is withdrawn before this period. Under the previous law, the applications are only made available for public inspection, and are not published.

• Early publication is available, with the payment of the prescribed fees.

Third Party Observations

Third parties are allowed to make observations on the patent application, limited to novelty and inventiveness. There is a formal timeline to do so, which is calculated as follows:-

• for national/Paris Convention applications, three (3) months from the publication of the application in Malaysia; OR

• for international applications, three (3) months from the date of the international application entering national phase in Malaysia.

Substantive Examination Requirements

• The requirement to submit corresponding applications, search reports and office actions from prescribed countries when requesting examination is now optional.

• When requesting Modified Substantive Examination (conforming to a patent granted in a prescribed country), the chosen country is final, and no changes will be allowed.

• Deferment of examination is now only available for Modified Substantive Examination (on the basis that the corresponding patent has yet to be granted), and will now require a payment of fee.

Divisional Applications

• Extensions of time to file divisional applications is no longer allowed.

• If the first Examination Report is a Substantive Examination – Clear Report, applicants are allowed to specifically waive the timeline to file a divisional application (three months from the first Examination Report), in order not to delay the grant of the patent.

Deferment of Examination

• Deferment of examination is no longer generally available.

• There is an exception – deferment will be allowed where there is a request for Modified Substantive Examination and the corresponding patent from the prescribed country has not been granted or is not available by the expiration date to file a request for Modified Substantive Examination.

• Deferment of examination will now attract an official fee.

Sequence Listing

Where the application discloses a sequence, the sequence listings shall be submitted and shall form part of the description.

3 month time limit to file a Response to Substantive Examination – Adverse Report

• Applicants now have three (3) months (rather than 2) to respond to the Patent Office’s Substantive Examination Adverse Report and Modified Substantive Examination Adverse Report.

Annuity Payments for a 5 Year Period

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

Restoration of Priority Date

• Applicants can now request restoration of the priority date of the application, provided the failure to file 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 date on which the right of priority period expires.

• 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.

Requirement for Written Authority for first filing outside of Malaysia

There is now clarification on the definition of “resident”, which is now defined as including:-

1. a citizen of Malaysia who is residing in Malaysia;

2. a non-citizen of Malaysia who:-

• has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia; or

• is residing in Malaysia by virtue of a valid pass to enter and remain in Malaysia

3. a body corporate incorporated, established or registered under the laws in Malaysia

4. an unincorporated body established or registered under the laws in Malaysia

In addition, the prescribed form and official fees will now apply for any requests for written authority to file outside of Malaysia first.

Disclosure of Information to the National Competent Authority

In line with the Access to Biological Resources and Benefit Sharing Act 2017, the Registrar shall be entitled to disclose information to the National Competent Authority for the purposes of the Patent Registration Office acting as a checkpoint under that Act.

Security Interests

Patents can be subject of a security interest which is recordable into the Register of Patents, upon submission of the prescribed form and fees.

Compulsory Licenses

In line with Article 31bis of the TRIPS agreement, the compulsory license provisions will allow for the production of a pharmaceutical product in Malaysia and exportation of that pharmaceutical product to an eligible importing country, to address its public health problem.

Restoration of Lapsed Patents

The timeline to restore a lapsed patent has now been reduced to twelve (12) months from the date on which a notice of lapsing of a patent is published in the Official Journal (as compared to two years under the previous law).

The following provisions are included in the Patents (Amendment) Act, but will only come into force at a later date:-

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

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 documentation on the deposit will however be required from the applicant.

Public Inspection

Where a patent has been published, search and examination reports, communications and literature citations submitted to the Patent Office (by the applicant/third parties) will now be available for public inspection, upon the payment of the prescribed fee.

Post-Grant Opposition

With the amended Act, third parties can now oppose the patent post-grant within a prescribed time from the publication date of the grant of patent.

We will provide further updates as soon as they are made available to us. In the meantime, if you have any questions, please do not hesitate to contact us.