Business brief 2016: Malaysia
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Patent rights in Malaysia are secured nationally by filing a patent with the Intellectual Property Corporation of Malaysia (MyIPO). Since May 16, 2006, individual patent owners and companies have been able to take advantage of the Patent Cooperation Treaty (PCT) filing system to file and prosecute patent applications and protect their inventions internationally. The PCT national phase is a preferred route for foreign applicants as they can make an early assessment of the prospects of registrability of their patents having had the benefit of the international search report and written opinion.
The Trans-Pacific Partnership (TPP) establishes and affirms long-standing standards for patents, based on the TRIPS Agreement and international best practices. The TPP requirements on patentable subject matter, exceptions to patent exclusivity, patent revocation provisions and the 12-month grace period for public disclosure are provisions which are already reflected in existing patent laws in Malaysia.
The TPP also introduces greater transparency in terms of the requirement of publication of a patent, including the publication of search and examination results. Current laws only allow for public inspection of certain information on a patent application without any provision for request for early publication.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
There are various considerations at play when deciding on what patent filing strategy to adopt. Business and marketing strategies, monetary considerations, effectiveness of enforceability and the presence of competition are some of the factors that should be taken into consideration when deciding whether to seek patent protection locally and/or internationally. The current availability of expedited examination in Malaysia is a helpful measure to fast track patent grant.
In addition, the TPP has introduced a requirement where the patent term can be extended if there is an unreasonable delay on the side of the MyIPO’s issuance of a patent. Such measures are welcomed as they will improve the efficiency of MyIPO and compensate the patent owner, which will be able to exploit its patent commercially for the expected life of the patent.
Companies in the field of pharmaceutical or healthcare research that wish to patent their invention should be mindful about the strict regulations on patents related to such drugs. With respect to pharma patents, the TPP raises public policy issues which are hoped to balance public health concerns, particularly in relation to the access of generic medicines, and at the same time protect the interests of pharma manufacturers.
As an example, the TPP requires that undisclosed test or other data submitted for marketing approval of a new pharma product to be protected for a period of five years from the date of such marketing approval. Patent linkage obligations under the TPP would be another new obligation which will require administrative action on the part of the Drug Control Authority (DCA) in Malaysia. This will allow patent owners to be notified by the DCA of applicants requesting marketing approval and hence will facilitate enforcement of patent rights by way of early notification.
Trademarks
Are there any nuances in the trademark law(s) that foreign companies should be aware of?
The recordal of a registered user of a mark is currently provided for under the existing trademark provisions, which serve as a condition of use of a trademark by a licensee. By recording the licensee as a registered user, use of the mark by the licensee will be deemed to constitute use by the owner of the mark. The TPP has done away with such a requirement to record a licence and hence the provision to record the licence may soon become academic.
