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MALAYSIAN BIOTECHNOLOGY CORPORATION SDN BHD (Company No. 691431-D)

PATENT REGISTRATION PROCEDURE IN MALAYSIA

<GP/CSSD/FAC/IP001>

10 JULY 2009

AUTHOR:

SUMAH RAMACHANDRAN

Please note that the information contained herein is intended to be used for guidance and knowledge only. Whilst every effort has been taken to ensure the accuracy and completeness of the contents at

the time this Guidance Paper is issued, inaccuracies may exist due to several reasons including changes in circumstances and/or amendments brought about due to a change in the policy (s) or

prevailing rules or regulations.

BiotechCorp does not hold out, warrant or guarantee that reliance on the information contained herein will result in the granting or approval of the matters applied for. BiotechCorp welcomes feedback and comments on this document. Feedback and comments can be sent to [email protected]

and by stating clearly in the subject line the document title and document Reference No.

BiotechCorp Version 1.0 Patent Registration Procedure in Malaysia 10 July 2009

<GP/CSSD/FAC/IP001> 2

TABLE OF CONTENTS PAGES

1. OBJECTIVES................................................................................................................ 4

2. INTRODUCTION: BASIC FACTS................................................................................ 4

2.1 Definition of patent....................................................................................... 4 2.2 The need to register a patent....................................................................... 4 2.3 Legislation governing patent protection....................................................... 4

3. PATENTABILITY REQUIREMENTS........................................................................... 4-5 3.1 Eligibility criteria for patentable inventions................................................... 4

3.2 Non-patentable inventions........................................................................... 4

4. PRE-APPLICATION STAGE........................................................................................ 5-7 4.1 Ascertaining patentability............................................................................. 5

4.2 Meaning of prior art...................................................................................... 5 4.3 Prior art search............................................................................................. 5 4.4 Conducting a search.................................................................................... 6 4.5 Patent search resources.............................................................................. 6

5. APPLICATION PROCEDURE....................................................................................... 7-8 5.1 Eligibility of applicant.................................................................................... 7 5.2 Governing body............................................................................................ 7 5.3 Information and documents required........................................................... 7 5.4 Appointment of patent agent........................................................................ 8

6. OUTLINE OF A PATENT SPECIFICATION................................................................ 9-10

6.1 Meaning of patent specification.................................................................... 9 6.2 Layout of a patent specification.................................................................... 9

7. INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA............................... 10-13

7.1 Role of the Intellectual Property Corporation of Malaysia............................ 10 7.2 Services of MYIPO....................................................................................... 11 7.3 Location and contact details......................................................................... 12 7.4 Business hours............................................................................................. 13

8. STAGES OF PROSECUTION OF APPLICATION....................................................... 13-14 8.1 Filing of application...................................................................................... 13 8.2 Preliminary examination............................................................................... 13 8.3 Public inspection.......................................................................................... 13 8.4 Substantive examination.............................................................................. 14 8.5 Registration.................................................................................................. 14

9. DURATION OF PROTECTION..................................................................................... 16 9.1 Duration of patent......................................................................................... 16 9.2 Expiry of patent............................................................................................ 16

10. ENFORCEMENT........................................................................................................... 16 10.1 Remedy for infringement.............................................................................. 16



10.2 Territorial rights............................................................................................ 16

11. PATENT PROTECTION ABROAD.............................................................................. 16-19 11.1 The need to patent abroad........................................................................... 16 11.2 Avenues for patenting abroad...................................................................... 16 11.3 Patent Cooperation Treaty........................................................................... 17

12. APPENDIX.................................................................................................................... 20-40 12.1 Appendix I – Schedule of Forms and Fees.................................................. 21 12.2 Appendix II - Sample of Patent Specification............................................... 26 12.3 Appendix III - List of Registered Patent Agents in Malaysia........................ 33 12.4 Appendix IV - Location Maps of Offices of MyIPO...................................... 38



1. OBJECTIVES

The objective of this paper is to provide a guide on the patent registration procedure in Malaysia. This paper outlines the basic requirements and the different stages involved in the filing and prosecution of a Malaysian patent application.

2. INTRODUCTION: BASIC FACTS 2.1 Definition of patent

What is a patent? A patent is a grant issued to the owner of an invention which gives him exclusive rights to exploit and control the patented invention for a limited period of time, in return for the disclosure of his invention.

2.2 The need to register a patent

Must a patent be registered? A patent must be registered in order to acquire monopoly rights to exploit the invention.

2.3 Legislation governing patent protection

Which Malaysian legislation governs patent protection? Patents are governed by the following:- i. The Patents Act 1983 ii. The Patents Regulations 1986

3. PATENTABILITY REQUIREMENTS

3.1 Eligibility criteria for patentable inventions

What are the criteria for an invention to qualify for a patent? An invention is patentable if it:- i. is new or novel - this means that the invention has not been publicly

disclosed (made known to the public) in any form, anywhere in the world;

ii. involves an inventive step - this means that the invention must not be obvious to someone with knowledge and experience in the technological field of invention;

iii. is industrially applicable - this means that the invention is capable of being made or used in any industry; and

iv. does not fall within the scope of non-patentable inventions as stipulated by Malaysian patent law (please refer to Section 3.2 below for further information).

3.2 Non-patentable inventions

Which inventions are not patentable? In Malaysia, the following inventions are not patentable:-

i. discoveries, scientific theories and mathematical methods; ii. plant or animal varieties or essentially biological processes for the

production of plants or animals not including man-made living micro-organisms, micro-biological processes and products thereof;



iii. schemes, rules or methods for doing business, performing purely mental acts or playing games; and

iv. methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.

In addition to the above, Malaysian patent law also prohibits the patenting of any invention that would be contrary to public order or morality, or prejudicial to the interest or security of the nation.

4. PRE-APPLICATION STAGE

4.1 Ascertaining patentability

How to ascertain if an invention is patentable? In deciding whether to obtain patent protection for an invention, it is crucial to first establish whether the invention qualifies for a patent. This may be done by conducting a prior art search.

4.2 Meaning of prior art

What is prior art? Prior art refers to all relevant information or technical knowledge which are

available to the public anywhere in the world before the priority date or first filing date of the patent application for the subject invention.

Prior art is not limited to just patents and patent applications, but also includes

literature of all kinds.

4.3 Prior art search

What is a prior art search? Why conduct a prior art search? Basically, a prior art search refers to a review of prior art materials available from public sources. For the purpose of patent protection, a prior art search, also known as a patentability search, is conducted before a patent application is filed. This is to determine whether the invention is patentable, that is, if the invention is new and inventive over existing prior art. Should the search uncover relevant prior art references which are detrimental and likely to render the invention as not new or obvious, the applicant need not proceed further. On the other hand, if no relevant prior art references are discovered, the applicant may decide to move ahead with a patent filing. It is however important to understand that conducting a prior art search does not guarantee the successful grant of a patent but at the very least it assists in making a preliminary assessment of patentability and minimises unnecessary patenting costs. Apart from patentability searches, there are various other types of searches which cater to different needs and objectives. For instance, a state of the art search is a broad based search covering all that has been done in a given art and serves many purposes. Some regard it



as a market survey as it may be used to analyse the current state and trend of a technology, either in relation to a finished product or one which is being developed, or for future research and developmental works or in any other circumstances. Another type of search which is commonly carried out is a freedom to operate (FTO) or right to use search. This search is usually conducted to identify if there are any potential barriers to the commercialisation of a product or a technology, in other words, whether the commercial activity may be carried out without infringing the rights of a third party. A FTO search is typically conducted as a preventive measure to avoid potential infringement. Other types of searches include infringement and validity searches. An infringement search is performed to determine if an invention infringes an existing patent or the claims of a particular patent infringe any other patent. A validity search is performed after a patent is granted to verify whether the same is valid or otherwise. The validity search is also useful in a defence against a patent infringement suit whereby it would attempt to uncover issued patents or other prior art that may render the subject patent partially or completely invalid.

4.4 Conducting a search

How to conduct a search?

A prior art search can be carried out by searching patent databases and relevant non-patent literature including scientific journals, magazines, brochures, newspapers etc. using keywords relevant to the invention or technical field of the same, patent classification, a competitor’s name or any other search criteria as deemed appropriate. The search may be carried out either by the applicant himself or an experienced professional may be engaged for this purpose. For an untrained or inexperienced person, the patent search process may be a complex and tedious affair. In such instances, it is advisable to seek professional assistance.

4.5 Patent search resources

Where to search for patents? There are some online patent databases made available by patent offices around the world, which allow for free patent searches. Listed below are web page links of some of them:- i. World Intellectual Property Organization (WIPO)

http://www.wipo.int/pctdb/en

ii. European Patent Office (EPO) http://ep.espacenet.com

iii. IP Australia http://www.ipaustralia.gov.au/patents/search_index.shtml

iv. United Kingdom Intellectual Property Office (UK IPO)



http://www.ipo.gov.uk/types/patent/p-os/p-find.htm

v. United States Patent and Trademark Office (USPTO) http://patft.uspto.gov

Some other patent databases and search engines will require payment for use such as:-

vi. Delphion

http://www.delphion.com/research

vii. MicroPatent http://www.micropat.com

In Malaysia, the Intellectual Corporation of Malaysia (MyIPO) provides an on-line search facility known as PANTAS. For more information, please refer to Section 7.2.

5. APPLICATION PROCEDURE

5.1 Eligibility of applicant

Who may apply? The owner of the invention is eligible to apply for a patent. The owner may be an individual or a company.

5.2 Governing Body

Where to file? An application for a patent in Malaysia must be filed with the Patent Registration Office of the Intellectual Property Corporation of Malaysia (MyIPO). The Patent Registration Office is responsible for the administration, processing and registration of patents and certificate for utility innovations. The application may be submitted to the Patent Registration Office by hand or mail. The location and contact details of the offices are provided in Section 7.3. Alternatively, the application may be submitted through an online filing system at https://pantas.myipo.gov.my/online/main/. For further information on the Intellectual Property Corporation of Malaysia (MyIPO), please refer to Section 7.

5.3 Information and documents required

What are the information and documents required for filing a patent application in Malaysia? To file an application in Malaysia, the applicant is required to lodge the following with the Patent Registration Office:-

i. Form 1 (for an application for a patent); ii. A patent specification consisting of a description of the invention, a

claim or a set of claims, an abstract and drawings (if any); and iii. Payment of the prescribed filing fee.



The following information must be provided in Form 1:- i. name, address and nationality of the applicant(s);

ii. name and address of the inventor(s); and iii. priority details (if applicable) i.e. the filing date, application number and

country of an earlier application from which priority is claimed (this only applies if the applicant has filed an earlier application for the same invention. The earlier application, which is the first application for the invention, is called the priority application, and it must have been filed not more than 12 months before the filing date of the application in Malaysia).

Additionally, the following documents are also required to be submitted to the Patent Registration Office, if applicable:- i. Form 17 (Appointment of Patent Agent), if a patent agent is appointed;

and ii. The Statement Justifying the Applicant’s Right to a Patent, if the

applicant is not the inventor of the invention.

For more information on the patent specification, please refer to Section 6.

5.4 Appointment of Patent Agent

Who is a patent agent? A patent agent is a qualified professional who specialises in patent work. Generally, a patent agent advises on the patentability of an invention, conducts patent searches, prepares the patent specification and handles the filing and prosecution of patent applications amongst others. Is it necessary to appoint a patent agent? An applicant who is either a domicile or resident in Malaysia may file an application on his own behalf or choose to appoint a registered patent agent to handle the filing and prosecution of his application. Although it is not a requirement for a local applicant to appoint a patent agent, given the complexities of the patenting process, it is advisable for the applicant to consider seeking the services of a registered patent agent to assist him with his application, especially with the drafting of the patent specification. It is also important for the applicant to understand that the patent prosecution process is lengthy and involves several steps which require appropriate actions to be taken in a timely manner. Failure to do so may result in unfavourable consequences for the applicant, even leading to the refusal of the patent application. Engaging an experienced patent agent may reduce such risks or burden for the applicant. A foreign applicant however is required to appoint a local patent agent to act on his behalf. A list of registered patent agents in Malaysia is available at the MyIPO website at http://www.myipo.gov.my. For easy reference, please refer to Section 12.3 (Appendix III).



6. OUTLINE OF A PATENT SPECIFICATION

6.1 Meaning of patent specification

What is a patent specification? A patent specification is a technical document containing a detailed description of an invention for which patent protection is sought. The document also sets out the scope of protection of the patent. As such, it is very important for the patent specification to be prepared carefully, preferably with the assistance of an expert, to ensure that the invention is protected adequately.

6.2 Layout of a Patent Specification

A patent specification basically contains a description of the invention, a claim or set of claims and drawings (if any), and is accompanied by an abstract.

6.2.1 Description

The description, in essence, is a disclosure of the invention. The description generally includes several parts as listed below and is prepared according to the following order:- i. Title of the invention

• The title is required to indicate the subject matter of the invention in a clear and concise manner.

ii. Technical field of the invention

• A general statement which specifies the technical field to which the invention relates.

iii. Background art

• An indication of any relevant background art known to the applicant, which can be regarded as useful to the understanding, search and examination of the invention.

• Any known published documents reflecting such art may also be cited, where possible.

iv. Disclosure of the invention

• This section provides an explanation of the invention in a manner sufficiently clear and complete for the invention to be evaluated and carried out by a person having ordinary skill in the art.

• Also, any advantageous effects of the invention with reference to background art must be stated.

v. Description of the drawings

• Where drawings are included, a brief description of each figure of the drawings is required to be provided in this part.

vi. Best mode or preferred embodiment of the invention



• This part is a description of the best mode of the invention contemplated by the applicant for carrying out the invention, with reference to examples where appropriate and drawings, if any.

• The best mode or preferred embodiment of the invention basically refers to the best way known to the applicant to carry out the invention.

vii. Industrial application

• When it is not obvious from the description or nature of the invention, it is advisable to indicate explicitly, the way in which the invention is industrially applicable, in other words, the way in which the invention can be made or used.

6.2.2 Claims

The claims, which define the invention in terms of its technical features, must be clear and concise and also fully supported by the description. The claims are the most important part of a patent specification as they define the scope of protection for the invention. It is therefore crucial to ensure that the claims are drafted with great care to provide the invention adequate protection.

6.2.3 Drawings

Drawings are required to be included when they are necessary for the

understanding of the invention. Drawings may be in the form of flow sheets and diagrams.

6.2.4 Abstract

The abstract is basically a summary or concise description of the invention in about 150 words or less, which gives a general overview of the invention. In a nutshell, the abstract should indicate the technical field of the invention, the existing technical problem, the gist of the solution to the problem through the invention and the principal use or uses of the invention. The abstract also serves as an efficient tool for the purpose of searching in a particular technical field. For a sample of a patent specification, please refer to Section 12.2 (Appendix ll).

7. INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA

7.1 Role of the Intellectual Property Corporation of Malaysia

The Intellectual Property Corporation of Malaysia, also known as MyIPO, is the organisation responsible for the development and management of the intellectual property (IP) system in Malaysia, which includes patents, trade



marks, industrial designs, copyright, layout designs of integrated circuits and geographical indications. The functions of MyIPO include:-

i. ensuring the provisions of the IP Legislation are administered and enforced accordingly;

ii. administering, collecting and enforcing payments of prescribed fees or any other charges under the IP Legislation;

iii. regulating and supervising issues or matters relating to IP in relation to the IP Legislation;

iv. advising on the review and updating of the IP Legislation;

v. encouraging and promoting the training and the dissemination of information on IP;

vi. promoting and organising cooperation programmes at national or international level;

vii. safeguarding the interest of Malaysia in respect of any agreement or international convention to which Malaysia is a party;

viii. advising the Government on developments at international level on issues or matters relating to IP; and

ix. carrying out research and studies on IP issues.

Besides its objectives to strengthen IP laws in the country and establish a strong and effective administration, MyIPO also aims to promote public awareness on the importance of IP and provide advisory services, comprehensive and user-friendly information on IP.

7.2 Services of MyIPO

The services offered by MyIPO are as follows:- i. Registration of patents (and certificate for utility innovations), trade

marks, industrial designs and geographical indications; ii. Advisory and consultancy services on IP;

iii. Providing IP information and statistical data; iv. Conducting training and outreach programmes;

v. Conducting patent agent examinations; vi. Providing online services (i.e. online search, filing and checking

application status) through the Patent and Trade Marks Administration System known as PANTAS; and

vii. Helpdesk

Any person who has enquiries regarding IP or intends to use the services/facilities at MyIPO, may contact or visit the MyIPO offices and seek assistance from the helpdesk officers on duty. The PANTAS online search facilities (for patent and trade mark searches) are available to the public at an hourly fee of RM20.00. Please note that the searches need to be conducted by the public themselves as the officers at MyIPO do not perform the searches on behalf of the public. However, assistance may be sought from the helpdesk officers available. The online services are also available for subscription, at a nominal fee.



The helpdesk and the PANTAS on-line search facilities at MyIPO are located on Level 32, Menara Dayabumi. For further details on the location, please refer to Section 7.3. For more information on MyIPO, please visit http://www.myipo.gov.my.

7.3 Location and Contact Details

The head office of MyIPO is situated in Kuala Lumpur, whereas its two branch offices are located in Kota Kinabalu, Sabah and Kuching, Sarawak respectively. The location and contact details of the offices of MyIPO are as follows:-

Offices Contact Details

Head Office: Kuala Lumpur

Patent Registration Office Intellectual Property Corporation of Malaysia (Perbadanan Harta Intelek Malaysia) Level 32, Menara Dayabumi Jalan Sultan Hishamuddin 50623 Kuala Lumpur [For Location Map, please refer to Appendix IV] Phone No: 603-2263 2100 (Operator) / 603-2274 5113 (Helpdesk) Fax No: 603-2274 1332

Branch Office: Kota Kinabalu, Sabah

Patent Registration Office Intellectual Property Corporation of Malaysia (Perbadanan Harta Intelek Malaysia) 6th Floor, Block C Kompleks KUWASA (KWSP) 49, Jalan Karamunsing 88000 Kota Kinabalu Sabah [For Location Map, please refer to Appendix IV] Phone No: 6088-254524 Fax No: 6088-257046

Branch Office: Kuching, Sarawak

Patent Registration Office Intellectual Property Corporation of Malaysia (Perbadanan Harta Intelek Malaysia) Lot 9936, (Sublot 5), 3rd Floor, Queen's Court, Block E Jalan Wan Alwi 93350 Kuching Sarawak [For Location Map, please refer to Appendix IV]



Phone No: 6082-459075/459076 Fax No: 6082-455052

7.4 Business Hours

The business hours are as follows:-

Offices

Registration Counter Payment Counter

Head Office: Kuala Lumpur

8.15 a.m. – 5.15 p.m.

8.15 a.m. – 5.15 p.m.

Branch Office: Kota Kinabalu, Sabah

8.00 a.m. – 4.30 p.m.

8.00 a.m. – 4.30 p.m.

Branch Office: Kuching, Sarawak

8.00 a.m. – 4.30 p.m.

8.00 a.m. – 4.30 p.m.

Note: All counters will be closed on Fridays from 12.15 p.m. – 2.45 p.m.

8. STAGES OF PROSECUTION OF APPLICATION

What are the stages involved in the prosecution of an application? Generally, an application for a patent goes through the following stages as illustrated in the chart below:- 8.1 Filing of Application

After receiving the application and the prescribed payment of the official filing fees, a formalities examiner at the Registry of Patents will check the application to see if the minimum filing requirements have been fulfilled. If so, the Registry will issue / accord the application an official filing date. A Certificate of Filing bearing the official filing date and the allotted patent application number will be issued to the applicant.

8.2 Preliminary Examination

The application will then be subjected to a preliminary examination whereby the application will be examined to see if there is compliance with the formal requirements. If there is any non-compliance, a Preliminary Examination Adverse Report indicating the non-compliances will be issued, giving the applicant a period of three months to address the non-compliance and respond to the same. Failure to respond to the report within the given time frame will result in the application being refused. However, if the formal requirements have been met, or the non-compliances have been addressed, a Preliminary Examination Clear Report will be issued.

8.3 Public Inspection

After 18 months from the filing date or the earliest priority date, details of the pending Malaysian application, including the patent specification are made



available for public inspection. The application however is not published in printed form.

8.4 Substantive Examination

The next step is the filing of the request for substantive examination, either full examination or modified examination, or the request to defer the request for substantive examination, which must be made within two years from the filing date of the application. Failure to do so within the stipulated time frame will result in the application being deemed as withdrawn. The request for full substantive examination is made on Form 5 whereas for modified examination, the request is made on Form 5A. The prescribed official fee must be paid at the time of filing the request. As for the deferment of substantive examination, the request needs to be made on Form 5B. There is however no payment required for the request for deferment.

During the substantive examination stage, the patent examiner will conduct a search and examination of the application to ascertain if the invention is registrable and in compliance with Malaysian patent law. If the examiner has objections, a Substantive Examination Adverse Report indicating the nature of the objections will be issued, giving the applicant a period of three months to respond to the same. Failure to respond to the report within the given time frame will result in the application being refused. In some cases, subsequent Substantive Examination Adverse Reports may be issued if the objections raised in the earlier report have not been addressed to the satisfaction of the examiner. However, if the examiner is satisfied that all requirements have been met, or the objections have been overcome, a Substantive Examination Clear Report will be issued and the applicant will be requested to pay the registration fee within two months.

8.5 Registration

Upon payment of the registration fee, a Certificate of Grant will be issued and details of the same will be recorded in the Register of Patents. Also, the particulars of the patent, together with the abstract will be published in the Government Gazette.



9. DURATION OF PROTECTION

9.1 Duration of patent

What is the duration of a patent? The duration of a patent, upon grant, is twenty years from the filing date of the application, subject to payment of prescribed annual fees.

9.2 Expiry of patent

Preliminary Examination

Filing of Application

Application Laid-Open for Public

Inspection

Request for Substantive Examination

Substantive Examination

Registration (Certificate of Grant

Issued)

Substantive Examination Adverse Report

Advertisement in Government Gazette

Application Accorded Filing Date

Preliminary Examination Adverse

Report

Application Refused

Application Deemed

Withdrawn

Application Refused

FLOWCHART OF PATENT REGISTRATION PROCEDURE IN MALAYSIA

Response filed (Compliance)

Request not filed

Response filed (Compliance) Request filed

Compliance

Compliance



What happens when a patent expires? When a patent expires, the period of protection ends and the owner no longer has exclusive rights over the patented invention. The invention then enters the public domain and the same can be commercially exploited by any person.

10. ENFORCEMENT

10.1 Remedy for Infringement

How are patent rights enforced? What are the remedies available for infringement? The owner of a patent may initiate civil action against any person who has infringed or is infringing the patent. The relief available for infringement includes injunction, damages and an account of profits. The court may also order for forfeiture or destruction of the infringing goods.

10.2 Territorial Rights

Does a patent registered in Malaysia provide protection abroad? A Malaysian patent provides protection only in Malaysia. For protection in other countries, applications need to be made in those countries.

11. PATENT PROTECTION ABROAD

11.1 The need to patent abroad Why apply for patents abroad?

As patent rights are territorial in nature, a patent granted is Malaysia only protects the invention in Malaysia. It does not provide protection outside Malaysia. Thus, if patent protection for the invention is desired in other countries, separate applications for patents must be filed in each of those countries.

11.2 Avenues for patenting abroad

How to obtain patent protection abroad? Basically, there are two ways to obtain patent protection abroad. One way is through national applications while the other is via an international application.

11.2.1 National route

If the national route is chosen, a separate patent application in each of the countries of interest needs to be filed. This option is usually selected if the number of countries in which patent protection is sought is very small. Otherwise, this route may prove to be expensive as well as cumbersome.

11.2.1 International route

For those seeking patent protection in many countries, it is advisable to consider opting for the international route by filing one single international application as provided by the Patent Cooperation Treaty (PCT).



11.3 Patent Cooperation Treaty

What is Patent Cooperation Treaty (PCT)? PCT is an international treaty, which provides a unified and simplified procedure for obtaining patent protection in a large number of countries through filing one single patent application. This single application filed under the PCT system is known as an international application or PCT application. The PCT system however does not grant an international patent. The granting of patents is controlled by the national (and regional) patent offices in accordance with their local patent laws. This option however is only available for nationals or residents of member countries of the Patent Cooperation Treaty. Malaysia is one of the 141 members of the PCT (as at March 19, 2009).

Phases of PCT application

The PCT application procedure, basically, is divided into two phases: international phase and national phase.

11.3.1 International Phase

The international phase, governed by the PCT and its Regulations, starts at the filing of the PCT application and ends when the application enters into each of the countries of interest where protection is sought. There are three stages in this international phase, which are as follows:-

• Filing of PCT application

As with any patent application, the first step for a PCT application is filing a formal request, which consists of the PCT request form, the patent specification and the prescribed fee, with the receiving patent office. At this stage, the applicant also designates the countries of interest in the PCT request form. In Malaysia, PCT applications may be filed at the MyIPO as the receiving office.

• International Search and Publication

The PCT application is then subjected to an international search to identify whether any prior art which would affect the patentability of the invention is available. On completion, an International Search Report and a Written Opinion on the findings will be issued. No official request for search need be made as the search will be conducted as a matter of course.



After 18 months from the priority date or the international filing date (whichever is the earlier), the PCT application together with the International Search Report is published.

• International Preliminary Examination

The International Preliminary Examination is an optional step. If the applicant opts for the same, the request for the examination must be made within 22 months from the priority date or the international filing date (whichever is the earlier). On filing the request, a preliminary examination on the patentability of the invention is conducted and an International Preliminary Examination Report (IPER) on the findings of the examination is issued. This marks the end of the international phase.

11.3.2 National Phase

In order for the PCT patent application to be protected in the designated countries, separate applications need to be filed in each individual country. The entry into the individual countries is the beginning of the national phase, where national patent laws will apply. To enter the national phase in Malaysia, an application must be filed with the MyIPO within 30 months from the priority date of the PCT application. The application consists of a copy of the international application (in the English language) and the prescribed form (Form 2A) together with the prescribed fee. On entry into the national phase in Malaysia, the application will be subjected to Malaysian patent laws and the same will be processed in accordance with the local patent examination and registration procedures.

11.3.3 Flowchart of PCT Application Procedure

The different stages of a PCT application are as illustrated in the flowchart below:-



12. APPENDIX

12.1 Appendix I – Schedule of Forms and Fees

12.2 Appendix II - Sample of Patent Specification

12.3 Appendix III - List of Registered Patent Agents (Active) in Malaysia

12.4 Appendix IV –Location Maps of Offices of MyIPO

Filing of PCT Application

Filing of Priority Application

International Search Report

International Publication

Demand for International Preliminary Examination

International Preliminary Examination Report

National Phase

FLOWCHART OF PATENT COOPERATION TREATY APPLICATION PROCEDURE

16th month

12th month

22nd month

30th month

28th month

0 month

18th month

International Phase



APPENDIX I



APPENDIX I

SCHEDULE OF FORMS AND FEES

PART I

Item No.

Forms Matter/Proceeding

Fee (RM)

1. F1 (a) Request for grant of patent (b) Claims (i) for first ten claims (ii) for every additional claim

200.00

Nil 10.00 per

claim

2. F2 Declaration of withdrawal of application -

3. F2A Entering National Phase (a) for first ten claims (b) for every additional claim

200.00

10.00 per claim

4. F2B

Request for reinstatement (under Section 78OA) 500.00 per

month of delay

5. F5 Request for substantive examination 700.00

6. F5A Request for modified substantive examination 450.00

7. F5B Request for deferment of filing of request for examination or provision of information

-

8. F5C Request for certified copies or extracts 50.00

9. F5D Request to amend Register 50.00

10. F5E Request for reinstatement of lapsed patent 100.00

11. F5F Request for licence to exploit patented invention -

12. F5G

Request to convert application for patent into application for certificate for utility innovation or vice-versa

200.00

13. F6

Application for recording of assignment or transmission

100.00

14. F7 Application for entry in Register that any person may obtain a licence

50.00

15. F8 Application for cancellation of entry in Register that any person may obtain a licence

50.00

16. P9 Request for recording of particulars of licence contract in Register

100.00

17. F10 Request for recording expiry or termination of licence contract in Register

75.00

18. F11 Application for compulsory licence 75.00

19. F12 Request for amendment of decision granting compulsory licence

75.00

20. F13 Request for cancellation of compulsory licence 75.00

21. F14

Application for grant of certificate for utility innovation

100.00

22. F15 Application to extend term of certificate for utility innovation

100.00

23. F16 Request to amend application for grant of patent 50.00

24. F16A Request to amend patent 50.00



25. F17 Appointment or change of patent agent -

26. F18 Application for registration of patent agent 2000.00

27. F18A

Application for registration as candidate for examination

100.00

28. F18B Application to re-sit examination 100.00

29. [deleted] -

30. F19

Application for renewal of registration of patent agent

400.00

31. F20 Furnishment of address for service 100.00

32. F21 Request for extension of time 200.00

33. St.Just. Statement Justfying The Applicants Right To A Patent/Certificate

-



APPENDIX I

SCHEDULE OF FORMS AND FEES

PART II

Item No.

Matter/Proceeding Fee (RM)

1. Copy of patent 30.00

2. Copy of search report 20.00

3. Examination of register 10.00 per hour

4. Certified copies or extract from Register 10.00 per page

5. Copies or extract from Register 2.00 per page

6. Fee for public inspection of information relating to patent application

10.00 per hour

7. Certified copies or extract of any information :- (a) for first five pages (b) for every additional page

100.00 per page

2.00 per page

8. Annual fee for patent : a) for second year b) for third year c) for fourth year d) for fifth year e) for sixth year f) for seventh year g) for eighth year h) for ninth year i) for tenth year j) for eleventh year k) for twelveth year l) for thirteenth year m) for fourteenh year n) for fifteenth year o) for sixteenth year p) for seventeenth year q) for eighteenth year r) for nineteenth year s) for twentieth year

- 200.00 250.00 300.00 350.00 400.00 450.00 500.00 550.00 600.00 650.00 700.00 800.00 900.00

1000.00 1200.00 1400.00 1600.00 1800.00 2000.00

9. Surcharge for reinstatement 100 % of fee for year concerned

10. Surrender of compulsory licence 60.00

11. Surrender of patent 60.00

12. Annual fee for certificate for utility innovation : (a) for third year (b) for fourth year (c) for fifth year (d) for sixth year (e) for seventh year (f) for eighth year (g) for ninth year (h) for tenth year (i) for eleventh year

- 120.00 160.00 160.00 200.00 200.00 240.00 240.00 280.00 400.00



(j) for twelveth year (k) for thirteenth year (l) for fourteenh year (m) for fifteenth year (o) for sixteenth year (p) for seventeenth year (q) for eighteenth year (n) for nineteenth year (r) for twentieth year

600.00 700.00 800.00

1000.00 1100.00 1200.00 1300.00 1400.00 1500.00

13. Holding of hearing 100.00

14. Certificate of grant of a patent 150.00

15. Certificate for a utility innovation 100.00

16. Appeal against examination results 200.00 per subject

17. Extension of time (for every month or part of a month) 50.00 per month

18. Surcharge for late payment of annual fee 100 % of fee for year concerned

19. Public search through computer 20.00 per hour

20. Computer print-out (Bibliography data) 5.00 per page

21.

Permitted information (upon request)

100.00 for less than 10 pages and

5.00 for the subsequent pages

22. Fee for preparing international application 2.00 per page



APPENDIX II



APPENDIX II

SAMPLE OF A PATENT SPECIFICATION (courtesy of the Intellectual Property Corporation of Malaysia)



APPENDIX III



APPENDIX III

LIST OF REGISTERED PATENT AGENTS IN MALAYSIA As at 31 December 2008

(courtesy of the Intellectual Property Corporation of Malaysia)

WILAYAH PERSEKUTUAN KUALA LUMPUR

NO. NAME TELEPHONE NO.

1. EN. LEE TAT BOON TEL : 03-2094 8111

2. EN. WONG SAI FONG TEL : 03-2070 0644

3. EN. PATRICK MIRANDAH TEL : 03 2278 8686

4. CIK KATHERINE LIM SUI HONG TEL : 03-21421355

5. EN. HARIRAM JAYARAM TEL : 03- 2693 1125 / 2693 5123

6. EN. LIM CHONG CHUAN TEL : 03-7982 9887

7. EN. P. KANDIAH TEL : 03-2284 7872

8. EN. TEN YEE PHOR TEL : 03-2770 0088

9. PASUPATHI SITHAMPARAM TEL : 03-2691 9363 / 2691 0418/ 2691 0451

10. PN. ROSHAYATI BT ABD GHANI TEL : 03-2162 2522

11. EN. DARRYL GOON SIEW CHYE TEL : 03-2694 9999

12. EN. TIMOTHY SIAW YEAN HWA TEL : 03 2070 0644

13. CIK HO CHEE KIT TEL : 03-2732 3888

14. MS. YAP TAI LAN TEL : 03-2094 8111

15. MS. CHARMAYNE ONG POH YIN TEL : 03-2548 111

16. EN. V. PARAMASIVAN TEL : 03-2282 9257

17. EN. MICHAEL SOO CHOW MING TEL : 03-2031 1788

18. EN. MICHAEL CHAI WOON CHEW TEL : 03-2166 8662

19. EN. KOO CHIN NAM @ KHO CHIN NAM TEL : 03- 2273 0688 / 2033

20. EN. CHANDRA A/L KUMARAN TEL : 03-2691 8636 / 03-2691 5326

21. BETTY CHEW PHAIK KHIM TEL : 03-2692 7533 / 03-2692 7629

22. P. SHANMUGAM @ S.A. PONMUGAM TEL : 03-2161 6877

23. CIK WONG JIN NEE TEL : 03-2092 3322

24. ZAHARIZAN BT. AHMED MEAH TEL : 03-2162 2522

25. EN. CHEW PHYE KEAT TEL : 03-2694 9999

26. EN. TEO BONG KWANG TEL : 03-2092 3322

27. EN. TAN SENG NGEE TEL : 03-2697-1668

28. MS. FOONG SEET FUN TEL : 03-2162 2522

29. GOH MENG YEW TEL : 03-2732 3888

30. MS. WANG CHAW LING, LINDA TEL : 03-2050 1888

31. EN. DAVID ALAN WYATT TEL : 03-2143 9122

32. MS. TAN CHUI LIN TEL : 03-2163 3233

33. MS. CHEW KHERK YING TEL : 03-2055 1888

34. MR. LOK CHOON HONG TEL : 03-2148 5050

35. BENJAMIN JOHN THOMSON TEL : 03-6203 1318

36. EN. LIM TEE POK TEL : 03-42910255

37. LIM KOCK HOOI TEL : 03-2164 0200



38. CAROLINE ANNE A/P FRANCIS XAVIER MONEY

TEL : 03-2693 1125 / 2693 5123

39. AMBIGA A/P SREENEVASAN TEL : 03 2095 2122

40. TAN ENG CHOONG TEL : 03-2070 1788

41. TAI FOONG LAM TEL : 03-2161 2330

42. HO YING DAT LAWRENCE TEL : 03-2072 5789 / 2072 6789

43. NIK HISHAM BIN NIK ABD. HALIM TEL : 03-2144 0537

44. SUMAH A/P RAMACHANDRAN TEL : 03-2116 5407

45. SALWA BINTI ABDUL SHUKOR TEL : 03-2698 6255

46. JURIYAH @ JURAIYAH JAMALUDIN TEL : 03-2287 6228

47. THYE YAN MEE TEL : 03-2166 8662

48. MAHESWARI A/P KUMARAPPAN TEL : 03-20951593 /1592

49. WENDY LAM MEI KUAN

50. CHEONG YOKE PING TEL : 03-2691 5093

51. GANESHNATHAN A/L RAMANATHAN TEL : 03-2273 9849

52. YIP JIUN HANN TEL : 03- 6274 5352

53. JASON CHEAH YUE MENG TEL : 03-2143 9122

54. ANDREW SIEW ONN THIUN TEL : 03-2143 9122

55. ONN YEN YEN TEL : 03-2143 9122

56. ABDUN NIZAR BIN AHMAD TEL : 03-2143 9122

57. EUGENE ROY JOSEPH TEL : 03-2697 0200

58. YOW TING FONG TEL : 03-7227 8336

59. LEE SWEE SENG TEL : 03-2273 5563

60. ZARAIHAN BINTI SHAARI TEL : 03- 2070 0644

61. SULAIMAN BIN OSMAN TEL : 03-2692 3433

62. SU SIEW LING TEL : 03-2050 1888

63. MOHANA MURALI A/L KODIVEL TEL : 03-4042 2292

64. NIZARULIKRAM B. ABDUL RAHIM TEL : 03-2691 8085

65. YONG CHEE KONG TEL : 03-2691 8085

66. STEPHEN KHAW TIEN CHYE TEL : 03-7728 2896

67. MICHELE YEOH EE LEEN TEL : 03-2710 5555

68. AZLINA AISYAH BINTI KHALID TEL : 03-2143 9122

69. WONG SOOK FUN TEL : 03-2732 3888

70. MANIAM A/L MAHALINGAM TEL : 03-2278 8686

71. EE CHAI HAK TEL : 03-8737 3117

72. PAULINE KHOR HONG PING TEL : 03-2076 2881

73. GOH JOO SEONG TEL : 03-2161 0803

74. LEELA DEVI A/P BASKARAN TEL : 03-2094 8111

75. AINOON BT SHABIRIN TEL : 03- 2092 2781

76. NG CHEE WENG TEL : 03-2697-1668

77. M. ANGELINE RAJ TEL : 03-2697 1668

78. KEVIN KOO SENG KIAT @ KOH SENG KIAT

TEL : 03- 2273 0688 / 2033

79. KUEK PEI YEE TEL : 03-2094 8111

80. YAP KAH HONG TEL : 03-40235978

81. TAN BOON LENG TEL : 03-7783 8826

82. RAMAKRISHNA DAMODHARAN TEL : 03-2278 8686

83. GERALD PETER SAMUEL TEL : 03-2274 2915

84. SOO EE LIN TEL : 03-2697-1668

85. FIONA TERESA JEFFERY TEL : 03-2188688

86. BOEY WENG CHOONG TEL : 03-2188688

87. SURENDRAN A/L S.SUBRANIAM TEL : 03-20311933



88. AMRIL BIN GHAZALI TEL : 03-26988955

89. SUSHIL KAUR D/O N. GURNAM SINGH TEL : 03-92856331 / 016-2215352 / 016-2121095

90. CHUA AI LIANG TEL : 03-2298 7888

91. RATHIMALAR A/P GRANASUNDRAM TEL : 03-2274 5715

92. FOONG CHENG LEONG TEL : 03-2161 2330

93. BAHARI YEOW TIEN HONG TEL : 03-2161 2330

SELANGOR DARUL EHSAN


1. EN. SHAHINUDDIN B. SHARIFF TEL : 03-4270 7555

2. EN. MOHD BUSTAMAN B. ABDULLAH TEL : 03-4270 1819/03-4270 1820

3. EN. ALLAN LOO KEAN HUAT TEL : 03-7957 2790

4. MS. S.T. RANI CHRISTINA A/P SIVAPIRAGASAM

TEL : 55135610/2/3

5. MR. EE TEE GIN TEL : 03-8736 1953

6. EN. MOHAMAD NAWAWI B. HUSSIN TEL : 03-5446127

7. EN. A. RAHMAN ZUHRI TEL : 03-5446135

8. MR. LEE YUKE CHIN TEL : 603 7727 1772

9. DESMOND WEE TIAN PENG TEL : 03-8070 9513

10. TITI DOLAI BTE AB. KAHAR TEL : 03-5544 6130

11. NAIDU A/L APPANAN TEL : 03-58826094 / 03-5882 1054

12. GOH NGE SEUNG TEL : 03-7805 4350

13. SAHANI AHMAD TEL : 03-5544 6131

14. ANGELINE CHIN YOKE FONG TEL : 03-7563115

15. WONG HUEI NIANG TEL : 03-78048755/017-8865115

16. CHUAH JERN ERN TEL : 603-7957 1472

17. NG MAE LIN TEL : 603-7957 1472

18. CLARA YIP CHOON FOONG TEL : 603-7882 0456

19. ONG CHUI KOON TEL : 603-5544 6134

20. AHMAD FAZLI B. AHMAD NORDIN TEL : 03-42703861

21. LAW YEW FOO TEL : 603-7725 5920

22. NORUNNUHA BT. DATUK HJ. NAWAWI TEL : 03- 8922 2518

23. NOR MARHAMAH BT YAHYA TEL : 03-42784580

24. LAW YEW FOO TEL : 603-7725 5920

25. NORHAYATI BT HASSAN TEL : 03-5544 6137

26. RAVIRAJAN A/L NARAYANASAMY TEL : 03-4105 1751

27. TEH TAI YONG TEL : 03-3343 7789

28. LEE WAI SEE TEL : 03-6274 7417

29. TEH CHEE KHENG TEL : +603-80683579

30. LIM KENG MUI TEL : +603-80683579

31. ADHUNA KAMARUL ARIFFIN TEL : 03-4270 1819/03-4270 1820

32. NG SHIH SHING TEL : 012-3061533

33. TAN SIN SU TEL: 03-77253860



PULAU PINANG


1. EN. HUANG PETER TEL : 604-22 6862

2. EN. RICHARD HUANG TEL : 604-22 6862

3. EN. KHAW HANG MENG TEL : 04-227 6862

4. EN. LEONG WENG KHUAN TEL : 604-263 1118

5. LIM SWEE EE TEL : 04-226 1023

JOHOR DARUL TAKZIM


1. EN. MAHADEVAN DAVID DEVARAJA TEL : 07-224 0981/03-3187 1697

2. TAY YEO KING TEL : 016-7459697

3. NORIZAN BTE TARMEZE @ GHAZALI TEL : 07-222 8878

MELAKA


1. EN. HO WAI CHEONG TEL : 06-282 2008

NEGERI SEMBILAN


1. EN. YANG TEK YEH TEL : 06-6322888

PERAK DARUL RIDZUAN


1. OOI SIEW TING @ KONG SIEW TING TEL : +605-5456627



APPENDIX IV



APPENDIX IV

LOCATION MAPS OF OFFICES OF MyIPO

HEAD OFFICE: KUALA LUMPUR



APPENDIX IV

LOCATION MAPS OF OFFICES OF MyIPO

BRANCH OFFICE: KOTA KINABALU, SABAH

BRANCH OFFICE: KUCHING, SARAWAK



CONTACT For further information or clarification, please contact: Vice President Facilitation, Client Support Services Division Malaysian Biotechnology Corporation Sdn Bhd Level 23 Menara Atlan 161 Jalan Ampang 50450 Kuala Lumpur T: 03 2116 5588 F: 03 2116 5528 E: [email protected]



REFERENCE The author acknowledges reference to the following sources in the preparation of this guidance paper:

• Patents Act 1983

• Patents Regulations 1986

• Resources made available by the Intellectual Property Corporation of Malaysia