Malaysia jurisdiction report: Insights on Malaysia’s patent grant process

01-08-2018

Dave Wyatt

Malaysia jurisdiction report: Insights on Malaysia’s patent grant process

beyhanyazar / iStockphoto.com

The processes for allowance and grant of patents in Malaysia differ significantly from those in many other jurisdictions. Here are a few pointers that should help clarify the local practice.

Clear report

Upon the successful conclusion of the examination of an application, the Malaysian Intellectual Property Office (MyIPO) will issue a substantive examination—clear report. This final report signals the intention to grant a patent and sets out the pages of the specification that will form the basis of the granted patent. It is normally accompanied by a draft bibliographic page of the patent.  

Malaysian patent practice does not provide for the payment of any issue fee. Therefore, once a clear report has been issued on an application, MyIPO will continue to process the application to grant automatically thereafter. Having said that, the clear report contains a request that the applicant review the information and documents that are the basis for grant, and inform MyIPO of any necessary corrections within seven days.

Voluntary amendments

Upon the issuance of a clear report, generally MyIPO’s practice is to treat the examination of the application as closed. Normally MyIPO will not entertain further amendments at this stage of the procedure. As an exception, if an application proceeds to allowance directly, without any prior adverse report (office action) being issued, the applicant is given a non-extendable term of two months from the mailing date of the clear report for the submission of any voluntary amendments. 

Divisional applications

A voluntary divisional application may be filed within a regular term of three months from the mailing date of the first adverse report. The regular term may be extended at the registrar’s discretion and upon payment of official fees. The extension request may be filed together with the late divisional application. 

In other words, it is often possible to file a voluntary divisional application at the clear report stage, albeit at the additional expense of an extension of time. Still, to reduce costs, as well as to avoid being unintentionally squeezed out of the option of filing a divisional application, clients are recommended to review their needs at the latest when the first adverse report is received. At that stage, a voluntary divisional application may be filed without incurring any extension fees.

In the exceptional case where an application proceeds to allowance directly without any prior adverse report being issued, the applicant is given a non-extendable term of three months from the mailing date of the clear report to file a voluntary divisional application. 

Timeframe for grant

The number of patents granted by MyIPO has been increasing year-on-year since 2010, as shown in Table 1.

Table 1: Number of patents granted by MyIPO 2010–2017

Year

2010

2011

2012

2013

2014

2015

2016

2017

Patents

2,177

2,392

2,501

2,691

2,762

2,908

3,353

5,127

The growing productivity has inevitably impacted processing time. The interval between issuance of the clear report and grant of the patent is not readily predictable. It may vary between a minimum of one or two weeks to several months, depending on MyIPO’s workload. 

Patent term and annuities

All Malaysian patents with a filing date on or after August 1, 2001 have a maximum term of 20 years, calculated from the filing date; that means the international filing date in the case of a Patent Cooperation Treaty (PCT) national phase application. There are no maintenance fees payable on a pending application and similarly, upon grant, there will be no back annuities payable. 

The first renewal fee is due one year from the date of grant, and payable at the latest one day before the first anniversary of the date of grant. Each renewal fee may be paid up to six months late, subject to a surcharge.

"The year-on-year growth in the number of Malaysian patents being granted by MyIPO is a product of several factors."

Conclusion

The year-on-year growth in the number of Malaysian patents being granted by MyIPO is a product of several factors: an increase in the numbers of applications being filed; the availability of options such as patent prosecution highway programmes for expediting examination; the streamlined grant procedure introduced in 2011; and commendable efforts in the clearing of earlier backlogs.

These changes are indeed encouraging as early grant is one of the most commonly expressed needs of clients, both locally and internationally.

Dave Wyatt is executive director and head of patent and industrial design at Henry Goh. He can be contacted at: dave@henrygoh.com

Dave Wyatt, jurisdiction report, Malaysia, Henry Goh, Malaysian Intellectual Property Office, patent grant, patent application, annuities

WIPR