Patent - Application Procedures (Malaysia)

General Information

What is Patent?

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

What is Utility Innovation?

A utility innovation is an exclusive right granted for a "minor" invention which does not require to satisfy the test of inventiveness as required of a patent.

Who May Apply?

Any person may make an application for a patent or for a utility innovation either alone or jointly with another person. The word "person" is not limited to natural persons and thus also includes, for example, a company.

How can a patent or utility innovation be protected?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of Malaysia which will assess whether it meets the requirements of the Patents Act 1983.

Why Protect an Invention?

A patent or utility innovation protection gives the owner of the patent/utility innovation the exclusive right to stop others from manufacturing, using and/or selling the owner's invention in Malaysia without the owner's consent or permission.

Term of protection

A patent is protected 20 years from the date of filing and a utility innovation is protected 10 + 5 + 5 years from the date of filing subject to use.

Where to Apply?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of Malaysia (MyIPO), in Kuala Lumpur or at one of the branch offices located in Sabah and Sarawak.

Applications, correspondence and enquiries should be directed to:

The Registrar
The Patent Registration Office
Intellectual Property Corporation of Malaysia
32nd Floor, Menara Dayabumi
Jalan Sultan Hishamuddin
50623 Kuala Lumpur

Tel : 603-2263 2100
Fax : 603-2274 1332



National Security (Section 23A and 62A )

For reasons of national interest and security, any Malaysian resident wishing to apply for a patent or certificate protection outside Malaysia must first seek written authority from the Registrar. However, written authority is not required if a corresponding Malaysian patent/certificate has been applied for, and a period of at least two months has elapsed since filing.

Section 62A : Contravention of Section 23A is an offence and is punishable (upon conviction) by a fine not exceeding 15,000 ringgit or imprisonment for a term not exceeding two years, or both.

Non-Patentable Inventions

* 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;
* Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.

Patentable Inventions

For a patent to be granted an invention must be:

* new, which means that the invention has not been publicly disclosed in any form, anywhere in the world;
* involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and
* industrially applicable, meaning it can be mass produced.

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Patent - Application Procedures (Malaysia)



The applicant is required to file Form 1 together with the patent specification and fee of RM 200.00 when making an application. Within TWO years from the filing date, the applicant is required to file Form 5 together with the fee of RM 700.00 to request for a substantive examination of the application



A guide on how to fill in Form 1 (Sections I-IX):



• Section I: Title of Invention

The applicant is required to state the title of the invention.



• Section II: Applicant

The applicant is required to state the applicant’s name. The name could either be a company’s or an individual’s or both.



• Section III: Inventor

The applicant is required to state the inventor’s name. A company’s or an association’s name cannot be used as an inventor’s name. If the applicant is not the inventor, the Statement Justifying the Applicant’s Right to the Patent will have to be submitted.



• Section IV: Agent or Representative

A local applicant is required to state the appointed agent if he is represented by one. For a foreign applicant, a registered Malaysian patent agent is required for all applications.



• Section V: Divisional Application

If there is more than one invention in the application, the applicant is required to divide the application into two or more applications. Each divisional application shall be entitled to the priority date of the initial application.



• Section VI: Disclosure to be Disregarded for Prior Art Purposes

The applicant could request for a disclosure to be disregarded for prior art purposes in an accompanying statement. This provision is applicable only when the disclosure of the same invention occurred within one year preceding the date of the patent application in Malaysia.



• Section VII: Priority Claim

The applicant could claim the right of priority of the date of filing of an earlier application. The earlier application must be filed not more than 12 months before the filing date of the application in Malaysia.



• Section VIII: Check List

The applicant has to complete the check list provided I this section.



• Section IX: Signature

The applicant or appointed agent has to sign and state the individual’s name (not the company’s or association’s name).



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Flowchart of Patent Application and Granting Procedure

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Source: http://www.my-hut.com/default2.asp?tree=581

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