In brief: patent prosecution in Malaysia

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

An invention is only patentable if it is new, involves an inventive step and is industrially applicable (see section 11 PA). An invention is regarded as ‘new’ if it is not anticipated by ‘prior art’ and ‘prior art’ is defined to mean everything disclosed to the public anywhere in the world by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention.

However, the following are excluded as patentable subject matters:

• discoveries, scientific theories and mathematical methods;
• plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living microorganisms, microbiological processes and the products of such microorganism processes;
• schemes, rules or methods for doing business, performing purely mental acts or playing games; and
• methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.

This does not include products used on any such methods (see section 13 PA). Based on the above, business methods and medical procedures are not patentable subject matters. Although software is not specifically mentioned, the Guidelines for Patent Examination Manual issued by the Intellectual Property Corporation of Malaysia state that a computer program by itself or as a record on a carrier is not patentable, irrespective of its contents. The situation does not change when the computer program is loaded into a known computer. The computer program will, however, qualify for patentability when the subject matter as claimed makes a technical contribution to the prior art.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

An invention made by an employee or pursuant to a commission shall be deemed to accrue to the employer or the person who commissioned the work in the absence of any provisions to the contrary in the contract of employment or for the execution of the work (see section 20 PA). Thus, if an independent contractor is engaged to research and come up with a new invention, and there is no express reservation of rights, the rights to the invention will be deemed accrued to the person engaging him or her.

Generally, the rights to a patent shall belong to the inventor. Where there are multiple inventors, the rights to the patent shall belong to them jointly (see section 18 PA).

A patent may be assigned or transmitted. Such assignment or transmission must be officially recorded and no such assignment or transmission shall have effect against third parties unless so recorded in the Register of Patents. Application to record an assignment or transmission must be effected by way of an application to the Registrar in the prescribed manner together with the payment of the prescribed fee. Further, in the case of an assignment, the application to record it must be accompanied by an assignment agreement signed by or on behalf of the contracting parties (see section 39 PA).

With regard to joint ownership of patents, it is clearly provided in the PA that in the absence of any agreement to the contrary between parties, such joint owners may separately assign or transmit their rights in the patent application or patent, among others (see section 40 PA).

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

The timeline for securing a patent in Malaysian is dependent on the type of application filed. A straightforward local patent application or a Patent Cooperation Treaty national phase entry application with no objection will typically take four to six years from the Malaysian filing date to be granted.

The total estimated legal cost to obtain a straightforward local patent (with less than 10 claims) would be within the range of 5,000 to 7,000 ringgit.

The official filing fees to obtain a straightforward local patent (with less than 10 claims) from filing through to registration would be 1,550 ringgit (excluding professional fees service tax and disbursements). The official filing fees are provided on the MyIPO website at the following link: www.myipo.gov.my/en/patent-form-fees/?lang=en.

Are there any procedures to expedite patent prosecution?

There are provisions for filing a request for an expedited examination of a patent application based on any of the following grounds:

• it is in the national or public interest;
• there are infringement proceedings taking place or evidence showing potential infringement with regard to the patent being applied;
• the applicant has already commercialised the invention or plans to commercialise the invention within two years from the filing date of a request for expedited examination;
• application for grant of the patent is a condition to obtain monetary benefits from the government or institutions recognised by the Registrar of Patents;
• the invention relates to green technologies that will enhance the quality of the environment or conservation of energy resources; or
• there are other reasonable grounds that support the request.

In addition, MyIPO has also launched a Patent Prosecution Highway (PPH) pilot programme with the cooperation of the Japan Patent Office (JPO), European Patent Office (EPO), China National Intellectual Property Administration (CNIPA) and the Korean Intellectual Property Office (KIPO). PPH is an initiative which provides a means to accelerate the examination of the application if the examination work has already been conducted by the above-mentioned patent offices. If the applicant has a corresponding application that has been found to be acceptable by the JPO, EPO, CNIPA or KIPO, he or she may proceed to request for an accelerated examination under the PPH. There is no official fee prescribed for a PPH request.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application shall contain: a request for the grant of a patent; a description; a claim or claims; a drawing or drawings as required; and an abstract. It is further clearly provided that the descriptions shall, among other things, disclose the invention in such terms that it can be understood, and in a manner sufficiently clear and complete, for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any advantageous effects of the invention with reference to the background art.

In addition, the claims of the patent shall be clear and concise and fully supported by the description; and the number of the claims shall be reasonable taking into consideration the nature of the invention. Where the application contains drawings, the technical features mentioned in the claims shall, wherever possible, be followed by Arabic numerals to such features and placed between parentheses.

There are a number of standard application requirements, such as all application documents must be of a high enough quality as to allow direct reproduction by photography, electrostatic processes, photo offset and microfilming and shall be on white, matte, durable A4 paper (measuring 29.7cm x 21cm).

There is also, however, a requirement imposed by the Malaysian Patents Regulations, that in the application, every fifth line of each sheet of the description and the claims shall be numbered in Arabic numerals placed to the left of the relevant lines but to the right of the margin.

Must an inventor disclose prior art to the patent office examiner?

There is no legal obligation to disclose the prior art to the patent office. However, it is a requirement imposed by the Regulations that the description of the patent shall indicate the background art, as far as is known to the applicant, which can be regarded as useful for the understanding, searching and examination of the invention; and, wherever possible, cite the document reflecting such art. It is understood that these requirements are merely advisory.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It is permissible for an applicant to file one or more ‘divisional applications’ to pursue additional claims to an invention disclosed in its earlier filed application provided that each divisional application shall not go beyond the disclosure in the initial application. This is the ‘no added new matter’ limitation. Procedurally, in accordance with Regulation 19A of the Patents Regulations 1986, a voluntary request for divisional application must be filed within three months from the date of the mailing of the Examiner’s first report.

Is it possible to appeal an adverse decision by the patent office in a court of law?

Any person aggrieved by any decision or order of the Registrar may appeal to the court (see section 88 PA).

Does the patent office provide any mechanism for opposing the grant of a patent?

The Patent Office does not provide for any mechanism for opposing the grant of a patent in Malaysia. However, the Patent Office does accept observations made by any third parties.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The Patent Office does not provide any mechanism for resolving priority disputes between different applicants for the same invention. The Malaysian Patent Office recognises the ‘first to file’ principle. The only way to resolve such disputes would be to file a civil suit seeking a declaration of right in the High Court or through voluntary arbitration proceedings between the parties.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Registrar may, upon an application made by the owner of a patent, amend the description, the claim or claims or the drawings of the patent, or amend any other document associated with the patent for the purpose of correcting a clerical error or an obvious mistake, or for any other reason acceptable to the Registrar. However, no amendment should be allowed if the amendment would have the effect of disclosing a matter that extends beyond that disclosed before the amendment or if the amendment would have the effect of extending the protection conferred at the time of the grant.

The Malaysian Patents Act does not have similar provisions to that in the UK, which allows a court to amend the patent claims during a lawsuit. It has, however, recently decided in the Federal Court case of Merck Sharp & Dohme Corp & Anor v Hovid Bhd [2019] 12 MLJ 66; [2019] 9 CLJ 1 that in the event of partial invalidity, an application to amend a dependent claim may be permitted during court proceedings, and made after proceedings. In another words, the Federal Court has in the Merck case overruled its previous decision of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 9 CLJ 406, which ruled that amendments of patent claims during a lawsuit were prohibited under PA.

How is the duration of patent protection determined?

The duration of the 20-year patent protection is determined from the filing date.

Law stated date

Give the date on which the information above is accurate.

30 March 2021.