On 15 February 2011, the Intellectual Property Corporation of Malaysia amended the Patent Regulations 1986 to introduce Expedited Substantive Examination of patent applications in Malaysia. Under the previous regulations, an applicant could only request for Substantive Examination or Modified Examination of a patent application. The amendments aim to reduce the backlog of pending Malaysian patent applications. The Expedited Examination option is available for patent applications filed after 15 February 2011 under the Paris Convention. The Expedited Examination option does not apply to international applications filed under the Patent Cooperation Treaty (PCT) entering national phase in Malaysia. In addition, the amendments also reduce the time line for requesting all forms of examination (Modified or Substantive) from 2 years to 18 months from the priority date.
Under the amended regulations, an applicant may select one of the following examination options within 18 months from the priority date of the application:
- Substantive Examination;
- Modified Examination (only available if a corresponding patent has been granted in Australia, United Kingdom, United States of America, Japan, Korea or the European Patent Office); or
- Expedited Substantive Examination
The advantage of requesting Expedited Substantive Examination is that a patent may be granted within 2 months from filing the request provided no adverse substantive examination report is issued. By contrast, under the previous regulations, a patent application may take approximately 3 years to grant from the date of filing the request for Substantive Examination. However, a request for Expedited Substantive Examination is subject to the approval of the Registrar of Patents and must be accompanied by a declaration setting out the grounds for the request. Acceptable grounds for expedited examination of a patent application include national or public interest, infringement proceedings (actual or prospective) and disbursement of governmental or institutional funds where the registration or grant of the respective right is a prerequisite.
The Expedited Examination Option provides applicants with a faster way of obtain a patent in Malaysia. However, to take advantage of this option, applicants would have to file directly in Malaysia, i.e. within 12 months from the priority date instead of relying on filing a PCT application designating Malaysia as one of the PCT Contracting States. Therefore, since the Expedited Examination Option enables expedited grant of a Malaysian Patent, applicants may wish to consider obtaining patent protection in Malaysia directly instead of under the PCT.