Overview of Southeast Asia Patent

singapore
新加坡
马来西亚
汶莱
缅甸
泰国
寮国
印度尼西亚
菲律宾
越南
柬埔寨

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)

Summary

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

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