Malaysia considers two types of patents: Patents and Utility Innovation
Patent Grants are exclusive rights given for an invention, which is a product or a process that provides a new way of doing something, a new process or a new technical solution to solve a problem. It is required to have an inventiveness or an inventive step. Patent grants can have multiple claims.
An Utility Innovation Certificate is an exclusive right granted for a "minor" invention which does not require to satisfy the test of inventiveness as required of a patent. utility Innovation can have only one claim.
What is patentable under the Malaysian Patent Act 1983?
It is patentable if:-
* it has NOVELTY (newness)
* it incorporates an INVENTIVE step (which is not obvious to thos skilled in the arts)
* it is applicable in INDUSTRY
It is not patentable if:-
a) it is a mathematical models, a discovery or it is a scientific theory;
b) is a plant or animal variety or essentially biological process for the production of plant or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
c) is a scheme, rule or method for doing business (including internet business methods), performing purely mental acts or playing games;
d) is a method for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body, provided that these shall not apply to products used in any such methods.
Malaysian Patent Grant confers the right to the owner to exclude others from using the invention and:-
a) a exclusive right to exploit the invention;
b) assign the patent to a third party;
c) to license out
A Malaysian Patent is protected for 20 years from the date of filing and a Malaysian Utility Innovation is protected 10 years( extendable twice by 5 years each) from the date of filing and subject to commercial usage.
Under the "National Security (Section 23A and 62A ) Enactment Law", Malaysian citizens are required to first file in Malaysia before filing in other countries. However, for those who deem it fit to file first in other countries, they must first seek written authority from the Registrar of Patents.
Filing Process and Timeframe
Filing in Malysia requires:-
* application forms (including appointing agnet form where relevant)
* specifications and drawings
* required fees
Examination will then be carried out for:-
* Formatting and completeness of documents (about 5 weeks)
* Substantive Examination (about 4 to 5 years)
Substantive examination can only proceed when permission is granted and the required fees paid. There is also a new expedited process for substantive examination. Again, a request has to be filed to get permission and an additional fee to be paid. Expedited process cuts short the period of prosecution by six months.
A patent Grant will be issued when the examiners find that the requirements are fulfilled.
File under the Patent Co-operation Treaty (PCT)
For international applications that has entered the national phase in Malaysia, a request for substantive examination must be filed within 20 months from the filing date of the first application in a national phase country.
However, a PCT application has to be lodged and amount of fees paid in the host country within 12 months of first filing to enjoy priority claims. You may want to take a look at the PCT pathway here
For ASEAN Patent Examination Co-operation ("ASPEC") Programme:-
If full substantive examination is requested for a Malaysia patent application, and if the applicant has filed a corresponding application in a participating ASEAN country, it is possible to submit search and examination results from the corresponding application to assist with examination of the Malaysia patent application. Countries like Cambodia, Indonesia, Lao PDR, Singapore, Thailand, Vietnam, Philippines and Malaysia are members of this grouping.