Malaysia’s Patents Act 1983 provides a different rules & requirements in respect of the conferment of protection upon minor inventions: utility innovations. An advantage of utility innovations in contrast with regular patents is that they have a lower threshold for patentability.
Section 17 of the Act defines a utility innovation as: “any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application and includes an invention”.
Utility innovations need only be “new” and “industrially applicable” and unlike patents there is no requirement for an inventive step. This relaxed provision reflects the fact this different breed of patents is only applicable to minor inventions, and is generally confined to improvements of a known product or process.
The Act provides for a 20-year term of protection for all granted utility innovations with an initial term of 10 years that can be extended for two further periods of five years each, subject to commercial or industrial use being shown. The first application for an extension of 5 years is made before the expiration of the fifth year, with the extension commencing after the expiration of the 10-year period. The second extension for a further five years is subsequently applied for before expiration of the fifteenth year.
Together with payment of the prescribed fees, these applications for extensions of the term of protection are to be accompanied by an affidavit of the utility innovation’s owner, certifying that the utility innovation is in commercial or industrial use in Malaysia.
It is prudent for the utility innovation owners to keep track of these timelines so as to not lose track of the terms of protection of their intellectual property, and to ensure that the necessary applications for extensions are filed punctually.
The extension periods are also at the discretion of the Registrar, based on the grounds stated in the owner’s affidavit. But failure to prove commercial or industrial use may be saved by satisfactory explanation.
Understandably, these are minimal safeguards to offset the more relaxed requirements. The utility innovation track provides a plausible avenue for patenting minor inventions, with a more accommodating procedural and substantive structure.
Indeed, the extra steps are trivial in light of the substantial benefits derived from this IP right, so long as there is proper management of timelines.
This article was first published in Managing Intellectual Property magazine, Issue 216, February 2012, pp127-128.