Malaysia’s Patent Act Amendments: Key Points
Malaysia has amended its Patent Act to bring it into compliance with international laws for patent protection. The modifications reflect Malaysia’s compliance with a number of international treaties, including the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the Regional Comprehensive Economic Partnership (RCEP), the Agreement on Trade-Related Aspects of Intellectual Property Rights, and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (TRIPS).
The Patent (Amendment) Act 2022 (the “Act”) and related implementing rules took effect on March 18, 2022, modernizing the 1983-era legislation. The Act, which was approved by Malaysia’s upper parliament in December 2021, consolidates the nation’s patent laws with a number of international agreements to which Malaysia is a signatory.
The Comprehensive and Progressive Trans-Pacific Partnership (CPTPP), the Regional Comprehensive Economic Partnership (RCEP), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure are significant international agreements that are reflected in the Act (the Budapest Treaty).
Here are a few of the most significant amendments to Malaysia’s Patent Act.
Malaysian resident
In Section 3 of the amended Act, a new definition of “resident” is provided. A resident is in accordance with the new definition:
- A citizen of Malaysia who is residing in Malaysia;
- A non-citizen of Malaysia who—
- has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia; or
- is residing in Malaysia by virtue of a valid pass lawfully issued to him under the Immigration Act 1959/63 to enter and remain in Malaysia;
- A body corporate incorporated, established, or registered under any written law in Malaysia other than a foreign company; or
- An unincorporated body is established or registered under any written law in Malaysia.
The national language text of Section 23A specifies the conditions for persons who are deemed to be “residents.” The most significant requirement is that residents must first file a patent application in Malaysia before filing one internationally.
Restoration of the priority right
The Act includes a new provision that gives applicants more flexibility than before regarding the restoration of the right of priority. The term “right of priority” describes the time-limited advantage granted to patent applicants who have already filed for the same patent in another country. Restoring the right of priority to a patent applicant who has lost it is referred to as priority restoration.
In accordance with the new Section 27 (1B), in the event that the applicant fails to claim the right of priority within the 12-month timeframe mentioned in the subsection, the right of priority may be restored if:
- A request for restoration of the right of priority is made by the applicant to the Registrar in the form as determined by the Registrar together with the payment of the prescribed fee; and
- A such request under paragraph (a) fulfills the conditions as prescribed.
The restoration of a patent that has expired owing to non-payment of the renewal fee can now be requested sooner thanks to the amended Act. The reinstatement term for a lapsed patent is now 12 months, instead of two years, according to amendments to section 35A (1).
Patent opposition
The Act adds a comprehensive new Section 55A on how to challenge a patent. According to 55A, any interested party may begin opposition proceedings by submitting a notice of opposition to the Registrar in connection to the patent grant against the patent owner.
From the date of publication of the patent grant, the person must file the notice of opposition within the required time frame and pay the specified fee. Any of the grounds listed in Section 56(2)(a), (b), or (c) may be used by the person to initiate opposition proceedings.
After opposition processes are over, the Registrar may choose to either keep the patent, maintain the patent with any modifications, or invalidate the patent, in accordance with Section 55A. If someone wants to appeal, they can do so in accordance with Section 88’s provisions, which are specified in Section 55A.
The Act also makes several more amendments in addition to those already mentioned. These include, among others, restrictions on divisional applications, guidelines for post-grant amendments, and regulations for postponing requests for examination.
Businesses having patents and other intellectual property registered in Malaysia should thoroughly evaluate the effects of the new Act due to the scope of amendments.
*** Other Articles***
– You could visit here to see Trademark Registration in Malaysia.
– You could visit here to check 04 Notable Questions About Filing Trademark In Malaysia here.
– You could read Procedure of Trademark in Malaysia here.
– You could visit here to see Required documents of filing trademark in Malaysia here.
– You could read 07 Notes To Malaysia Trademark Registration You Should Know here
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