Intellectual property is increasingly becoming a crucial catalyst of business growth in globalised and developing economies such as Malaysia. We have seen a steady growth in patent applications filed in Malaysia in the last decade, which is testament to the nation’s growing and evolving IP industry.
Patent prosecution in Malaysia currently takes an average of three to four years from filing to grant. The bulk of the time is attributed to the lengthy examination process. The considerable time for patent prosecution may not be ideal for many patent applicants. In today’s fast-paced and rapidly changing market, it is imperative for companies or individuals to secure competitive advantage to ensure survival. While patience is taught to be a valuable virtue, in the case of securing patent protection patience may be a non-negotiable requirement.
It is not all doom and gloom. In Malaysia, there are several options which applicants can take advantage of to speed up the patent prosecution process, including:
- The Patent Prosecution Highway (PPH);
- The expedited examination programme; and
- Modified substantive examination
The PPH is an initiative between the Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO) which seeks to provide a platform to accelerate patent prosecution in Malaysia. Applicants may request accelerated examination by MyIPO together with a request for normal examination under the PPH on the basis of a corresponding Japanese or Patent Cooperation Treaty (PCT) application which receives favourable examination by the JPO. The Japanese or PCT applications examined by the JPO must correspond and at least one or more claims of the Japanese or PCT application must have been indicated as allowable by the JPO.
For an application undergoing a normal examination track, the average time between filing a request for examination to obtaining grant is two to three years, assuming it is a relatively smooth application. The time may be significantly more if there are multiple objections raised during prosecution.
Under the PPH, the prosecution time is significantly reduced to between four to five months. In addition to the significant time reduction, the PPH offers a very attractive benefit to applicants: there is no official fee payable to MyIPO under the PPH.
In Malaysia, patent applications are generally examined in the order of the filing dates. Under the expedited examination programme, MyIPO will advance an application out of turn if a filed expedited examination request is approved. This is subject to meeting the formal requirements as set out by MyIPO for filing an expedited examination. After approval of an expedited examination request, the application is allowed to skip the regular queue and is examined under a fast track.
"In addition to the significant time reduction, the PPH offers a very attractive benefit to applicants: there is no official fee payable to MyIPO under the PPH."
An application which undergoes normal track examination typically takes up to one year for the issuance of a first examination report. Under the expedited examination programme, it is reduced to only one month for the issuance of a first examination report. The applicant is given three weeks to respond to the first examination report. If the applicant fails to respond to the examination report within this timeframe, the application reverts from fast track to normal track.
Modified substantive examination
Modified substantive examination often provides a more cost-effective alternative to fast-track patent prosecution without the stringent requirements and hefty official fees of the expedited examination option. With this route, a patent is expected to receive a grant within six to 12 months from the date of requesting modified examination. It is considered unusual to receive an examination report under this option, as patentability requirements of novelty and inventive step are normally considered fulfilled by relying on an elected granted patent. This explains the shorter timeframe to receive a clear report indicating whether the patent will be granted.
To qualify for this option, the applicant must have a granted patent in any of the following countries: Australia, UK, US, Japan, Korea, or under the European Patent Convention. In addition, it is required for the specification to be amended to conform to the elected granted patent.
These options available in Malaysia offer attractive benefits to all patent applicants. Picking a quote from 17th century philosopher Francis Bacon: “A wise man will make more opportunities than he finds.” Opportunities for patent applicants in the form of these options are there for the taking. You would be deemed wise to do so.
Alvin Boey is a patent agent at Henry Goh. He can be contacted at: firstname.lastname@example.org
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