Malaysia: Amendments to Malaysian Patent and Trade Mark Regulations

Malaysia: Amendments to Malaysian Patent and Trade Mark Regulations

The Malaysian Patents and Trade Marks (Amendment) Regulations 2011 came into effect on 15 February 2011. The main amendments are summarised below.

Official Fees

The official fees for patent and trade mark have generally been increased.

Some of patent's formal documents such as the Power of Attorney (Patents Form 17) and statement justifying the applicant's right (new Patents Form 22) are now each subjected to an official fee. Conversely, the official fee for obtaining a certificate of grant has been abolished.

Patent (Amendment) Regulations

New Formal Requirements

The submission of a statement justifying the applicant's right to the patent and Power of Attorney is now a formal requirement considered during the preliminary examination stage and not during the later substantive examination stage. An adverse preliminary examination report will be issued if the documents have not been submitted at the time of filing the application.

New Deadlines for Substantive Examination and Modified Substantive Examination

For a convention/non-convention application, the request for substantive examination or modified substantive examination, as well as the request for deferment of the same, must now be made within 18 months from the filing date of the application as opposed to within two years under the previous regulations. The term for responding to an adverse substantive examination/modified substantive examination report has also been reduced from three months under the previous regulations to only two months. The period of deferment of 5 years from the filing date as well as the term for requesting substantive examination or modified substantive examination for a PCT national phase application (i.e. 4 years from the international filing date) remain unchanged.

New Expedited Examination Procedure

The amended regulations also include formal provisions for expedited examination. An applicant who requests or has requested substantive examination can now request that the substantive examination be expedited once the application has been made available for public inspection. The request for expedited examination must be accompanied by a prescribed official fee as well as a Statutory Declaration setting out the grounds for the request. Such grounds include national/public interest, on-going or potential infringement proceedings, the applicant has already commercialised the invention or intends to do so within two years, the invention relates to green technologies, and to meet conditions for obtaining monetary funds/benefits from the government or recognised institutions. Once the request for expedited examination is approved, the applicant will have to pay an expedited examination fee, after which an examination report will be issued within 4 weeks. If the examination report is adverse, the applicant will have 3 weeks to respond and address the objections. This response deadline cannot be extended.

If no response is made within 3 weeks, or if the response fails to overcome the examiner's objections, the application for expedited examination is deemed withdrawn. If the examination report is clear, grant of the patent can be expected within one week.

Trade Mark (Amendment) Regulations

The Trade Marks Regulations have been amended with effect from 15 February 2011. The amendments are essentially aimed at ensuring efficient trade mark filings and registrations in Malaysia.

The amendments apply to all registered trade marks as well as new applications filed on and after 15 February 2011. However, the amendments do not apply to pending trade mark applications filed prior to 15 February 2011. The salient amendments include the following:

Series Marks

Additional fees are now applicable from the 3rd and subsequent marks for series marks.

Expedited Examination

A request may be made, within 4 months of filing an application, to expedite the examination of an application by filing the relevant form and paying the prescribed fees, together with an affidavit/statutory declaration setting out the specific circumstances as well as reasons for the request.

Briefly, the Registrar has the discretion to grant a request if it is made on the ground of national or public interest; ongoing infringement proceedings or potential infringement; trade mark registration being a condition to obtaining monetary benefits from the government/recognised institutions; or other reasonable grounds.

Feedback

The Malaysian Intellectual Property Office had not provided any notice on the actual procedural changes that were to come into force until shortly prior to the effective date of the amendments (i.e. 15 February 2011). Several issues arising from said amendments remain to be clarified and fine-tuned for optimum efficiency. We understand that discussions between the Malaysian Intellectual Property Association and the Malaysian Intellectual Property Office to resolve these issues are on-going, and shall keep you posted of the developments. In the meantime, we will take all necessary steps to maintain pendency of all Malaysian patent and trademark applications under our firm's care.

For enquiries on the Patent Amendments Regulation, please contact

Kristian Robinson
krobinson@ecsf-asia.com

Dr. Soo Ee Lin
elsoo@ecsf-asia.com

For enquiries on the Trade Mark Amendments Regulation, please contact

Soh Kar Liang
klsoh@ecsf-asia.com

Angeline Raj
araj@ecsf-asia.com

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