The New Patents Act 2022 (Amendment) in Malaysia

The Patents Act Amendment (PAA) amends the Patents Act of 1983, which was approved by the House of Representatives on December 15, 2021, and the Senate on December 22, 2021. The PAA went into effect on March 18, 2022, with the following features:

• the depositing of microorganisms with the relevant authorities;
• the inspection of certain documents by the public; and
• opposition proceedings against a granted patent before the Registrar.

The PAA takes into consideration Malaysia’s obligations under the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership, the Regional Comprehensive Economic Partnership, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“CPTPP”).

Amendments to Malaysia’s Patents Act

The PAA adds the following to the definition of “resident”:

• a Malaysian citizen residing in Malaysia;
• a non-Malaysian citizen who has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia, or is residing in Malaysia by virtue of a valid and lawful pass;
• a body corporate incorporated, established, or registered under the laws of Malaysia; or
• an unincorporated body, established or registered under the laws of Malaysia.

The addition of the aforementioned definition clarifies section 23A of the PA 1983, which states that anybody or anything that satisfies the criteria for “resident” must first file a patent application in Malaysia unless they have met the requirements for doing so outside of Malaysia.

Additionally, the PAA allows any resident or Malaysian citizen residing outside of Malaysia to submit a PCT international application to the MyIPO.

The same as other personal or movable property, a patent is today recognized as a type of security interest. Prior to being enforceable against other parties, a security interest transaction relating to a patent must be filed on the Malaysian Patents, Register.

A forced license may now be granted by the Registrar of Patents (“Registrar”) despite any pre-existing contractual commitments (for example, an exclusive license contract between a licensor and licensee). Following the Registrar’s issuance of a compulsory license, the appropriate clause protects the licensor from any claims of contractual violation by the licensee.

Before the Registrar, the PAA establishes a post-grant opposition process. Any interested party may begin objection proceedings against a patent owner in connection to the grant of the patent before the Registrar within the required publication time. If an interested party files an opposition but the Registrar has not yet made a decision, the interested party is not allowed to initiate any legal actions to invalidate the relevant patent unless:

•  parties to the opposition proceedings agree for the invalidation proceedings to be instituted before the court, or
• the interested person is a defendant in an infringement proceeding.

The time restriction to begin a judicial assignment of the patent application, a patent application, and legal actions for patent infringement has been increased from five to six years.

The PAA has reduced the time frame for requesting the restoration of an expired patent from two years to twelve months from the day when the notice of the patent’s expiration was published.

Previously, the PA 1983 allowed an applicant to delay the request for both a normal substantive examination (“SE”) and a modified substantive examination (“MSE”) by up to five years from the filing date for a variety of reasons, such as when specific details or supporting documentation are still pending. The PAA removed the ability to delay a request for standard SE on the grounds that a patent or other form of industrial property protection would not be available by the end of the specified term, although this option still exists for requests for MSE.

*** 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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