MALAYSIA: LATEST UPDATES ON PATENT PROSECUTION MATTERS

June 14th, 2016

 

On 1 June 2016, the Intellectual Property Corporation of Malaysia (MyIPO) has issued three practice directions on amendments to patent applications, divisional applications and recording a filing date for patent applications.

Amendments to patent applications that receive clear substantive examination report as the first office action

For patent applications that have fulfilled the substantive requirements without receiving any objections from MyIPO, any amendments must be filed within two months from the date of clear substantive examination report or clear modified substantive examination report. The Registrar has reiterated that any request for amendments made after the two-month deadline will not be entertained.

If there are no amendments to be made, the applicant may inform MyIPO that they wish to have their patent application granted without having to wait for the expiry of the two months period. We suppose that this may expedite the grant of the application and the issuance of Certificate of Grant.

Divisional application for applications that receive clear substantive examination report as the first office action
According to Regulation 19A of the Patent Regulations 1986, any voluntary request for division of the application must be filed within three months from the date of first substantive examination report or modified substantive examination report. Therefore, if an applicant receives a clear substantive examination report or modified substantive examination report without receiving any objections from MyIPO, it has three months from the date of the clear report to file a request for divisional application. The Registrar has reiterated that any request for divisional application made after the three-month deadline will not be entertained.

Filing date for patent applications

The Malaysian patent laws require applicants to pay the prescribed fees before the patent applications can be accorded a filing date. The applicants must ensure that the prescribed fees are paid in full including fees for excess claims* at the time of filing the application.

In the event that the prescribed fees are not paid in full, MyIPO will issue a notification to the applicant to pay the outstanding fees. The applicant must take necessary steps to pay the outstanding fees after being notified by MyIPO.

Upon receiving the outstanding payment, MyIPO will record the date of receipt of payment for the outstanding amount as the filing date of the application pursuant to Section 28(3) of the Patents Act 1983.

*Each claim in addition to the first ten claims in a specification will incur a fee of MYR20.00 each.

We are of the opinion that it is imperative for all of our clients who have filed and potential clients who are looking into filing patent applications in Malaysia to take note of these directions as these will have big implications on their patent filing strategies.

We look forward to receiving any question that our clients and potential clients may have on these issues. We can be contacted at info@adipven.com