CN 
EN 
In Malaysia, patent protection is obtainable by way of either entering the national phase of a Patent Cooperation Treaty (PCT) application or filing a direct national application.
1. Legislations:
Patents Act 1983 (Act 291).
2. Patentability Criteria:
A patent has to fulfil the following conditions in order to claim protection.
it is new
it involves an inventive step
it is industrially applicable
Non-Patentable Subject Matter:
An invention is not patentable if it contains the following:
discoveries, scientific theories and mathematical methods,
plant or animal varieties or essentially biological processes for the production of plant or animals,
schemes, rules or methods for doing business, performing mental acts, and
methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.
3. Utility Innovations:
The Patent Malaysia system also provides for the grant of utility innovation certificates. A utility innovation must fulfil the criteria of novelty and industrial applicability (but not inventiveness). A utility innovation certificate may only have one claim and subject to evidence of commercial/industrial use in Malaysia, enjoys the same duration of protection like a patent.
4. Membership:
√ – Paris Convention
√ – PCT
Malaysia is a member of the Paris Convention since 1989, whereby applications from convention countries will be subject to the same priority date in Malaysia. The application for priority has to be made within six months of the first application in a convention country.
Malaysia is also a member of the PCT since 2006. An applicant who has made an international patent application may file and/or prosecute the patent application during its national phase entry into Malaysia within 30 months from the filing date of the international application or from the earliest priority date of the application if a priority is claimed.
5. Rule of Priority:
Unless requested by an Examiner, there is no requirement to file a certified copy of any priority application. In determining the priority of patents, “first to file” is the rule for Patent Malaysia.
6. Duration:
Under Patent Malaysia, patents filed prior to 1st August 2001 are awarded protection up to 15 years from the date of grant or 20 years calculated from the filing date, whichever expires later. For patents filed on or after 1st August 2001, the duration is 20 years calculated from the filing date (for a direct national application) and from the international filing date (for a PCT national phase application)
In Malaysia, patent protection is obtainable by way of either entering the national phase of a Patent Cooperation Treaty (PCT) application or filing a direct national application.
1. Legislations:
Patents Act 1983 (Act 291).
2. Patentability Criteria:
A patent has to fulfil the following conditions in order to claim protection.
it is new
it involves an inventive step
it is industrially applicable
Non-Patentable Subject Matter:
An invention is not patentable if it contains the following:
discoveries, scientific theories and mathematical methods,
plant or animal varieties or essentially biological processes for the production of plant or animals,
schemes, rules or methods for doing business, performing mental acts, and
methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.
3. Utility Innovations:
The Patent Malaysia system also provides for the grant of utility innovation certificates. A utility innovation must fulfil the criteria of novelty and industrial applicability (but not inventiveness). A utility innovation certificate may only have one claim and subject to evidence of commercial/industrial use in Malaysia, enjoys the same duration of protection like a patent.
4. Membership:
√ – Paris Convention
√ – PCT
Malaysia is a member of the Paris Convention since 1989, whereby applications from convention countries will be subject to the same priority date in Malaysia. The application for priority has to be made within six months of the first application in a convention country.
Malaysia is also a member of the PCT since 2006. An applicant who has made an international patent application may file and/or prosecute the patent application during its national phase entry into Malaysia within 30 months from the filing date of the international application or from the earliest priority date of the application if a priority is claimed.
5. Rule of Priority:
Unless requested by an Examiner, there is no requirement to file a certified copy of any priority application. In determining the priority of patents, “first to file” is the rule for Patent Malaysia.
6. Duration:
Under Patent Malaysia, patents filed prior to 1st August 2001 are awarded protection up to 15 years from the date of grant or 20 years calculated from the filing date, whichever expires later. For patents filed on or after 1st August 2001, the duration is 20 years calculated from the filing date (for a direct national application) and from the international filing date (for a PCT national phase application)
1. Filing of Patent Application
Every applicant is required to submit an application to the registrar of patents within 12 months of priority date.
2. Publication
Details of the application, including the specification are made available for public inspection after 18 months from the patent Malaysia filing date. Once published, the application will enjoy provisional protection under which, upon grant, the patentee may claim compensation for unauthorized use of the invention prior to grant.
3. Substantive Examination
Every applicant has to file a request for a substantive or modified substantive examination within 18months (for filing made before 15 February 2011, it was 24months) from the patent filing date (for a non-PCT patent filing into Malaysia) and within 48 months from the international filing date (for a PCT national entry into Malaysia), wherein the registrar will refer the application to the examiner. The examiner will then submit a report after examining the application for compliance of regulations. Once the applicant makes observations on the report or amendments as the case may be the examiner will again report to the registrar who will then process the application.
4. Registration
Once registered, a patent Malaysia is valid for a term of 20 years and will be subject to protection upon payment of annual renewal fees. Annuity is payable upon grant.
The following information and/or documents are required to file an application for a patent Malaysia:-
Direct National Application:-
1. Request for the grant of a patent Malaysia (PF 1):-
a) the name and address of the applicant;
b) the name and address of the inventor;
c) a specification comprising a description, claims and any necessary drawings; and
d) the country and filing particulars of basic application whose priority is claimed.
2. Appointment of Patent Malaysia Agent (PF 10)
3. If the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.
4. There is no requirement for the filing of an assignment from inventor to applicant.
PCT National Phase Application
1. Form 2A ;
2. A copy of the PCT application in English language ( i.e. request form PCT/RO/101);
3. The details of the PCT application (suitably, the bibliographic page as published by WIPO);
4. One copy of the PCT specification as originally filed (in or translated to English);
5. One copy of any amendments filed in the international phase (in or translated to English);
6. An Appointment of Agent form signed by the applicant; and
7. If the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.
Application Fees
ITEMS | OFFICIAL FEES (USD) | PROFESSIONAL FEES (USD) | |
|---|---|---|---|
1. Filing Patent Application – each claim in excess of 10 claims – USD 7 | 150 | 270 | |
2. Examination | 370 | 240 | Due 18 months from the date of filing |
3. Issuance Fee | 50 | 100 |
Maintenance Fees
ITEMS | OFFICIAL FEES (USD) | PROFESSIONAL FEES (USD) |
|---|---|---|
2nd annuity | 100 | 140 |
3rd annuity | 120 | 140 |
4th annuity | 140 | 140 |
5th annuity | 170 | 140 |
6th annuity | 190 | 140 |
7th annuity | 220 | 140 |
8th annuity | 230 | 140 |
9th annuity | 260 | 140 |
10th annuity | 280 | 140 |
11th annuity | 300 | 170 |
12th annuity | 320 | 170 |
13th annuity | 370 | 170 |
14th annuity | 420 | 170 |
15th annuity | 450 | 170 |
16th annuity | 560 | 190 |
17th annuity | 640 | 190 |
18th annuity | 740 | 190 |
19th annuity | 840 | 190 |
20th annuity | 900 | 190 |
Basic Requirements
DOCUMENTS | REMARKS | TIME OF FILING |
|---|---|---|
Patent specification, claims and abstract in English | no legalization requirement | On filing date |
Drawings | (if any) | On filing date |
Additional Documents for Convention Patent Application
DOCUMENTS | REMARKS | TIME OF FILING |
|---|---|---|
Priority documents | Certified copy of the basic patent application | Within 2 months from request by the Examiner |
Appointment of Agent (PF10) | Within 2 months from request by the Examiner |
Additional Documents for Entry of PCT National Phase in Malaysia
DOCUMENTS | TIME OF FILING |
|---|---|
International Preliminary Report on Patentability based on International Preliminary Search Report (Chapter 1); or | On filing date |
International Preliminary Report on Patentability based on International Preliminary Examination Report (Chapter II) | On filing date |
