Malaysia


Patents

International Agreements Patent Cooperation Treaty (PCT) (from 16 August 2006).
Paris Convention (from 1 January 1989).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Patent Authority Intellectual Property Corporation of Malaysia (MyIPO)
Types of Patents/Applications Available

  • Standard Patent.
      • Convention.
      • Non-Convention.
      • National Phase PCT Application.
      • Divisional Patent.

  • Utility Innovation Patent.
PCT National Phase Entry Deadline: Thirty (30) months from the earliest claimed priority date.
Patentability Requirements

  • Absolute novelty: the invention has not been publicly disclosed in any form, anywhere in the world.
  • Involves an inventive step, i.e. the invention must not be obvious to someone with knowledge and experience in the technological field of the invention. However, a Utility Innovation Patent is an exclusive right granted for a “minor” invention which is not required to satisfy the test of inventiveness.
  • Industrially applicable, i.e. it can be mass produced.
Non-Patentable Subject Matter

  • 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 micro-organisms, micro-biological processes and the products of such micro-organism 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 practiced on the human or animal body.
  • However, these exclusions do not apply to the products used in any of these methods.
Filing Requirements

  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Inventor’s Name, Address and Nationality;
  • Specification in English or a verified translation of the PCT publication if not in English;
  • Convention Priority details (if relevant);
  • Power of Attorney;
  • Statement justifying the Applicant’s Rights; and
  • Government filing fee.
Grace Period for Disclosure Twelve (12) months if the disclosure was by the Applicant, or as a consequence of the any abuse of the rights of the Applicant.
Patent Term

  • A Standard Patent is protected for twenty (20) years from the date of filing.
  • A Utility Innovation Patent is protected for ten (10) years, extendible twice for a further five (5) years, for a total of twenty (20) years from the date of filing subject to use.
Search and Examination

  • Examination of a Patent Application is compulsory.
  • The Examination process has three (3) stages: (1) Determination of a Filing Date which is automatically conducted by the Patent Registration Office upon receipt of the Application; (2) Preliminary Examination which is conducted automatically by the Patent Registration Office if the Application is accorded a filing date; and (3) Substantive Examination or Modified Examination which is only conducted following Preliminary Examination and following a Request for Examination by the Applicant, accompanied by the appropriate Government fee.
  • A Request for Examination must be filed within four (4) years from the International filing date of a PCT Application or from eighteen (18) months from a Convention or Non-Convention Application filing date, and may be deferred by eighteen (18) months.
  • MyIPO will conduct Searches and Examination directly. However, Search and Examination Reports from prescribed countries such as Australia, the UK, the US, Japan, South Korea and the European Patent Office (EPO) are favoured.
  • There are two types of examination available:
    Substantive Examination:

  • Involves an examination of the Patent Application for novelty, inventive step, unity and patentable subject matter considerations. If an adverse Report issues, the Applicant has two (2) months (extendible by three (3) months) from the date of the Report to respond to the objections.
    Modified Examination:

  • Can only be requested if a Patent has been granted for the same invention in Australia, the US, Japan, South Korea, the UK or by the EPO.
  • The Specification must be amended to be substantially the same as the Specification and Claims of the granted Patent and a certified copy of the corresponding overseas granted Patent along with a certified English translation (if applicable) must be filed.
  • The Application will be examined for novelty and patentable subject matter and whether any amendments made go beyond the scope of the original disclosure.
Third Party Observations and Oppositions Not available.
Patent Term Extension Provisions Not available.
Restoration Provisions Available provided the request for restoration is filed within twenty-four (24) months of the date of lapsing.
Work Sharing Programs Patent Prosecution Highway (PPH)

    • Available with the Japan Patent Office (JPO).

ASEAN program:

    • Search and examination results are shared between the participating ASEAN offices to allow Applicants in participating countries to obtain corresponding Patents faster and more efficiently.

Renewals

  • Renewal fees fall due one (1) year from the date of grant with no accumulated annuities.
  • Renewal fees are then due each year on the anniversary of the grant date until the Patent ceases.
  • There is a six (6) month grace period to pay any outstanding renewal fees, which incurs a fine.

Trade Marks

International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on 28 September 1979)
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (28 September 2007).
Trade Mark Authority Intellectual Property Corporation of Malaysia (MyIPO)
Types of Trade Marks available

  • Standard.
  • Series.
  • Certification.
Non-Traditional Trade Marks Available

  • Non-traditional Trade Marks are generally not registrable, however:
      • A Trade Mark may be limited in whole or in part to one or more specified colours for the purpose of determining whether the Trade Mark is distinctive; and
      • Non-functional three-dimensional (3D) shape Trade Marks may be registrable.

Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
Provisions for Filing of Multi-Class Applications No.
Excess Goods/Services Fee No.
Registrable Trade Marks

  • The Name and Address of the Applicant (an individual, company or firm represented in a special or particular manner);
  • The signature of the Applicant for registration or of some predecessor in his/its business;
  • An invented word or words;
  • A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
  • Any other distinctive Mark.
Non-Registrable Trade Marks

  • Trade Marks where use is likely to deceive or cause confusion to the public or would be contrary to law;
  • Trade Marks that contain or comprise any scandalous or offensive matter or that would otherwise not be entitled to protection by any Court of law;
  • Trade Marks that contain matter which, in the opinion of the Registrar, is or might be prejudicial to the interest or security of the nation;
  • Trade Marks that are identical with or so nearly resemble Mark(s) which are well-known in Malaysia for the same goods or services of another proprietor;
  • Trade Marks that are well-known and registered in Malaysia for goods or services that are not the same as to those in respect of which registration is applied for, provided that the use of the Mark(s) in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known Mark(s), and the interests of the proprietor of the well-known Mark(s) are likely to be damaged by such use;
  • A Trade Mark that contains or consists of a Geographical Indication with respect to goods not originating in the territory indicated, if use of the indication in the Mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods;
  • Trade Marks for wines which contain or consist of a Geographical Indication identifying wines, or which are Marks for spirits which contain or consist of a Geographical Indication identifying spirits, not originating in the place indicated by the Geographical Indication in question; and
  • Trade Marks which contain or consist of any of the following Marks or a Mark so nearly resembling any of those Marks as is likely to be taken for that Mark: the word or words “Patent”, “Patented”, “By Royal Letters Patent”, “Registered”, “Registered Design” and “Copyright” or a word or words to the like effect in any language whatsoever; and
  • Any Mark which is specifically declared by the Minister in any Regulations made under Malaysian Trade Mark Law to be a prohibited Mark.
Filing Requirements

  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Specification of the goods and/or services in relevant Nice classes;
  • A clear representation of the Trade Mark;
  • A Statutory Declaration from the Applicant affirming that it is the bona fide proprietor of the Mark and that the Application is made in good faith, signed before a Commissioner of Oaths or Notary Public;
  • For Marks containing non-English words, a certified transliteration and translation;
  • If Convention Priority is claimed, the Number, Date, Country and details of the Basic Application;
  • If Convention Priority is claimed, a certified copy of the priority Application with a certified translation accompanying documents that are not in English, must be filed within one (1) month of the filing date; and
  • Government filing fee.
Initial Trade Mark Term A Trade Mark is protected for ten (10) years from the date of filing, and is renewable every ten (10) years thereafter.
Search and Examination

  • Examination of a Trade Mark Application is automatic
  • A Trade Mark Application is generally examined around twelve (12) months from the date of filing
  • Expedited Examination is available, provided the request is filed within four (4) months from the filing date of the Application in the form of a reasoned request and the payment of Government fees. Examination may be expedited on the following grounds:
      • National or public interest;
      • Evidence of potential infringement or ongoing infringement proceedings;
      • Registration as a condition to obtaining monetary benefits from the Government or institutions recognized by the Registrar; or
      • Other reasonable grounds.

  • If no objections are raised against the Application, the Mark will proceed to advertisement (for Opposition) and subsequently to registration, if no Opposition is filed.
  • If an objection is raised, an initial objection letter will issue, to which the Applicant must respond within two (2) months. An extension of time in which to reply to the objection letter may be requested on payment of extension fees, but the grant of any extension is not automatic and is subject to the Registrar’s discretion.
  • If, after filing responding submissions, the objection is maintained, the Applicant may request a Hearing before the Registrar. Any decision of the Registrar is appealable to the High Court.
Amendment of Goods and Services

  • Amendments are allowed to:
      • Correct an error or enter any change in the Name, Address or description of the Registered Proprietor of a Trade Mark;
      • Cancel the entry of a Trade Mark in the Register;
      • Change the Specification of the goods or services in respect of which the Trade Mark is registered, or to enter a disclaimer or memorandum relating to the Trade Mark, without extending in any way the rights given by the existing registration of the Trade Mark, and
      • Make any consequential amendment or alteration in the Certificate of Registration.

Third Party Oppositions and Applications

  • Opposition to registration of a Trade Mark.
  • Application to remove a Trade Mark from the Register because it has not been used.
Restoration Provisions Restoration may be allowed at the discretion of the Registrar if the request is filed within one (1) year from the date of expiration of the Registration, and on payment of a restoration fee and a penalty fee.
Renewals

  • Renewal fees fall due from the tenth (10th) anniversary of the filing date.
  • Renewal fees are then due each tenth (10th) anniversary thereafter.
  • If the renewal date lapses, an Application for late renewal payment may be filed within six (6) months with payment of an additional fee.

General

  • Multiple Class filings are not available in Malaysia.
  • There is no need for a Power of Attorney to support the filing of an Application.

Designs

International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Locarno Agreement Establishing an International Classification for Industrial Designs (as amended on 28 September 1979).
Design Authority Intellectual Property Corporation of Malaysia (MyIPO)
Types of Designs Available

  • Single Designs;
  • Single Designs for a set of articles (provided that the articles are of the same general character and are ordinarily on sale together or intended to be used together, and the same Design is applied to each article); and
  • Multiple Designs (provided that the Designs belong to the same Class according to the Locarno Classification system; and have the same Applicant.)

Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
Registrability Requirements The Design must be new and must be applied to an article by an industrial process.
Non-Registrable Designs

  • Designs where the aesthetic appearance of the article is not significant or the Design features differ from the prior art only in immaterial details;
  • Methods or principles of construction;
  • Designs that are solely functional;
  • Designs that are contrary to public order or morality;
  • Designs that are integral parts of other articles and whose features are dependent upon the appearance of the other article (“must-match Designs”).
Filing Requirements

  • The Class(es) according to the Locarno Classification System;
  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Designer’s Name, Address and Nationality;
  • Entitlement of the Applicant: i.e. how the Applicant has derived the right to the Design from the Designer (Assignment, Employment or other Agreement);
  • A Statement of Novelty;
  • Name of the Article in relation to which the Design is sought to be protected;
  • One set of representation(s) of the Design (drawings or photographs not exceeding 12.5 cm by 9 cm);
  • The Designation of the representation(s) or view(s) to be published upon Registration (a Government fee is payable for each view to be published);
  • Appointment of Agent (no notarisation or legalisation required);
  • Optionally: Any Convention claim and the details (Date, Number and Country) of the Basic Application from which Convention Priority is claimed, a copy of the Basic Application and its verified English translation (if relevant); and
  • Government filing fee.
Initial Design Term Five (5) years.
Full Term (if all renewals are paid timeously) Twenty-five (25) years.
Search and Examination

  • Upon filing, the Application is assigned a Design Application Number (or series of Numbers for a Multiple Design Application) and a filing date.
  • The Design automatically undergoes Formalities Examination.
  • No Substantive Examination is carried out. However, the Registrar may raise an objection of a substantive nature, such as whether the Design is within the legal definition.
  • If the Application fails to comply with the formal requirements, such that registration cannot be effected within twelve (12) months of the filing date of the Application, the Application will be refused. However, the Applicant will be given an opportunity to be heard before final refusal.
  • If the Application complies with the formal requirements, the Design proceeds to registration and a Registration Certificate will issue within six (6) to twelve (12) months of the filing date. The Design will be published in the Official Journal of MyIPO shortly thereafter.
Amendment

  • Amendments are permitted on request and payment of Government fees, provided that the amendment does not increase the scope of the Application by the inclusion of matter that was not in substance disclosed in the Application as filed.
  • Where amendment of a Multiple Design Application is requested, a separate Government fee for each Design requiring amendment must be paid.
  • An Application can be amended to exclude one or more of the Designs filed in it.
Third Party Oppositions and Applications

  • Rectification Proceedings by third parties: Any aggrieved or interested person may apply to the Court for an order for rectification of the Register, including, making, expunging or varying any entry in the Register in relation to a Design or for the correcting of an error or defect in the Register.
  • Rectification Proceedings by Registrar: In case of fraud in a Design Registration, assignment or transmission of a Design Registration or if in the Registrar’s opinion it is in the public interest to do so, the Registrar may himself apply to the Court for rectification of the Register.
  • Revocation/Cancellation proceedings: Any person may apply to the Court for the Revocation of the Registration of a Design on the ground that the Design was disclosed to the public prior to the priority date of the Application for Registration of the Design, that the Registration of the Design was procured by unlawful means, or for the grant of a compulsory licence in respect of the industrial Design on the ground that the Design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case.
Restoration Provisions

  • An Owner, or his/her successor in title, may apply for the restoration of a lapsed Design Registration, which lapsed unintentionally (due to accident or mistake) within one (1) year of the publication of the Notice of Lapse in the Official Journal, upon payment of Government fees. A statement must be filed setting out the circumstances that led to the failure to extend the Registration of the Design. The Registrar will only restore the Registration of a Design if he/she is satisfied that the failure to extend the Registration was due to an accident or mistake.
  • An interested party may oppose a request for restoration of a lapsed Design Registration within three (3) months of its publication in the Official Journal.
  • If the restoration of the Design Registration is opposed, the Registrar shall, after giving the Opponent and the Applicant for restoration an opportunity to be heard, decide the matter. If the Registrar decides to restore the Registration, the Registration will have effect as if it had not lapsed, and a notice will be published in the Official Journal that the Registration has been so restored. Any person aggrieved by the Registrar’s decision on the grant or refusal of restoration may appeal to the Court.
Renewals

  • The Registration term and the renewal dates of a Registered Design are calculated from the priority date of the Application.
  • A Design Application may be renewed four times, each renewal being for a further five (5) years.
  • Renewal fees may be paid at any time prior to the expiry date of the current period of Registration.
  • Renewal fees must be paid within six (6) months of the expiry of the renewal date, together with the payment of a late payment penalty fee, or the Registration will lapse.
General

  • A novelty grace period is provided under Malaysian Design Law where public disclosure of a Design has occurred six (6) months prior to the filing date of the Application, provided that the disclosure was made at an officially recognized exhibition or by a person other than the Applicant or his predecessor in title as a result of an unlawful act committed by that other person.
  • Applications with a filing date prior to 1 July 2013 are subject to a local novelty standard only, in that the Design must not have been prior disclosed to the public anywhere in Malaysia.
  • There are no provisions for partial Design Registration and Registration should generally be sought in respect of the whole article. If novelty resides in a part of the article, then this may be reflected in the Statement of Novelty.
  • In the case of a Multiple Design Application, separate Registration numbers will be allocated for each Design, each of which is treated as a separate Application during prosecution. A separate Certificate of Registration will issue for each Design.
  • Representation(s) in the form of drawings are usually preferable, as photographs tend to attract a formality objection.
  • A UK Registered Design that was granted and in force in Malaysia prior to 1 September 1999 may be renewed from the priority date of the UK Design Registration, for the full twenty-five (25) year term.
  • A Basic Application that is not in English must be accompanied by a verified translation into English.