In June the Intellectual Property Corporation of Malaysia (MyIPO) issued a Practice Direction providing some clarity on amendments to patent applications.
The Practice Direction clarifies that amendments to the patent specification are allowable after issuance of a “Substantive/Modified Examination - Clear Report” (clear examination report) in a ‘clear cut’ case and that a request to amend the patent application can be made within two months from the date of issuance of a clear report.
A ‘clear cut’ case is defined in the Practice Direction as “cases that have fulfilled the conditions where there is no objection for substantive examination”, that is, an application where no “Substantive/Modified Examination - Adverse Report” (adverse examination report) is issued and the first examination report that issues is a clear examination report.
In Malaysia, there are two options for substantive examination of a patent application: (a) full substantive examination, and (b) modified substantive examination. Full substantive examination can also be accelerated under the “expedited examination” procedure, provided certain conditions are met. If the application is found to meet the formality and patentability requirements in Malaysia, a clear examination report will be issued. After the issuance of a clear examination report, a Notice of Grant (NOG) and a Certificate of Grant (COG) will be issued.
Section 26A of the Patents Act 1983 (Act 291) (the “Act”) allows the applicant to amend the application provided that the amendment does not go beyond the disclosure of the initial application.
In practice, voluntary amendments are typically made prior to (or at the time of) requesting substantive examination, or when responding to an adverse examination report. Until now where a clear examination report was issued after the request for substantive examination had been filed, without the issuance of any adverse examination report, it has been unclear whether the applicant would still have the opportunity to amend the application. Additionally, even if amendment was possible, there were no guidelines on the allowable timeframe during which the amendment must be made prior to issuance of the NOG and COG since there are no statutory provisions or guidelines as to when the NOG and COG will be issued after issuance of a clear examination report.
The Practice Direction provides some clarity on the above issue. For a ‘clear cut’ case, a request to amend the patent application can still be made within two months from the date of issuance of a clear examination report. The Practice Direction does not differentiate between ‘clear cut’ cases where full substantive examination has been requested and those where modified substantive examination has been requested, and therefore it appears to apply to all ‘clear cut’ cases that meet the definition above.
Upon clarification with the MyIPO, it is our understanding that even if an amendment has been filed before requesting for substantive examination, a further amendment can still be made after the issuance of the clear examination report of a ‘clear cut’ case.
The amendments can include formalities or substantive amendments, with the only requirement being that the amendments do not add matter that extends beyond the application as filed. For example, it is our understanding that the applicant can amend the claims to change the scope of the claims or add new claims, provided these do not add matter that extends beyond the application as filed.
If amendments are made within the stipulated two-month period, the application will be subjected to further examination and a new examination report (whether adverse or clear report) will be issued. If no amendments are made by the end of the two-month period, the MyIPO will proceed to grant the application.
The applicant also has the option of notifying the MyIPO that no amendments will be made and request the MyIPO to grant the application without waiting until the two month period ends.
Recommendation for patentees
The opportunity to amend the application provided by the Practice Direction allows the applicant to address various issues that the applicant may have become aware of after receiving a clear examination report for a ‘clear cut’ case, and before grant. For example, the applicant may wish to amend the application due to a change in their commercial embodiment, to address prior art cited in a corresponding application, or to correct obvious mistakes in the patent application.
Although post-grant amendment is possible under Section 79A of the Act, post-grant amendment has the additional requirement that the amendment must not have the effect of extending the protection conferred at the time of grant of the patent.
Therefore, if any amendments are to be made after issuance of a clear examination report in a ‘clear cut’ case, particularly those which may result in a broader or different scope due to a change in applicant’s commercial embodiment, we would recommend that the amendments be made during the allowable two-month period provided by the Practice Direction.