The Intellectual Property Corporation of Malaysia (MyIPO) has recently announced a Patents (Amendment) Act 2022 which was read and passed by the Upper House (Dewan Negara) of Parliament on the 22nd December 2021, in which the Act received the Royal Assent on the 4th March 2022. The Patents (Amendment) Act 2022 then came into force together with the implementing Regulations on the 18th March 2022. The amendments take into account Malaysia’s commitments in various international treaties and agreements such as the TRIPS Agreement on public health, the Regional Comprehensive Economic Partnership Agreement (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), as well as to comply with the provisions of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposed of the Patent Procedure.
With the enforcement of the Act, several notable provisions come into play for Malaysian patents for the first time. Here are some of the key changes under the amended Act:
- The deferment of substantive examination is no longer available, only deferment of modified substantive examination is available on the basis that the prescribed corresponding patent to be used for modified substantive examination has not been granted;
- The Registrar may require the patentee to file a request for re-examination of the amendment post-grant, or the patentee may make such a request on his own accord;
- Third party observation which entails that any person may, within the prescribed period, make observations on any matter relating to patentability of a patent application;
- Certain deadlines may no longer be extended;
- A divisional application cannot be filed once an application is granted, refused, deemed to be withdrawn, withdrawn or abandoned;
- A reduced period for reinstatement of lapsed patents (due to non-payment of renewal fee), is now 12 months instead of 2 years from the date on which a notice of the lapsing of a patent is published;
- Any interested person may now initiate opposition proceedings within the prescribed period from the date of publication of the grant of a patent by filing a notice of opposition;
- Publication of patent applications to be direct applications only;
- Patents are now recognised as personal property or movable property capable of being the subject of security interest and security interest transactions may now be recorded with the Patents Office; and
- A notice of trust or a beneficiary of an express trust may now be accepted by the Registrar and entered into the Register. A notice of implied or constructive trust is still not allowed to be entered in the Register.
The amendments for the Patent Act are mainly to comply with Malaysia’s obligations under the respective treaties to which Malaysia is a signatory. Besides the above notable changes in law and practice, the Act results in a substantial increase in official fees for all patent submissions to the Intellectual Property Corporation of Malaysia (MyIPO). Businesses and enterprises alike should be wary of changes to the law concerning intellectual properties as this may directly or indirectly affect their assets as a whole.
This article is only intended to provide general information regarding the latest changes to the patent law in Malaysia. If you wish to learn more about your IP rights, do not hesitate to consult us.