What it takes to be a Malaysian patent agent

09-08-2016

Chew Qi-Guang

Patent agents generally have unique educational backgrounds compared to professionals in other legal practice areas. Many patent agents in Malaysia have a tertiary qualification in engineering or sciences.

Aside from having the required technical background necessary for the understanding of technical inventions, patent agents also have legal backgrounds needed for logically and convincingly justifying an outcome.

A patent agent must have strong technical, legal and communication skills that are needed not only for guiding clients through the patent system but ultimately facilitating the client’s business growth through intellectual property.

To become a registered patent agent in Malaysia, one has to first be a candidate of the Malaysian patent agent examination conducted once yearly by the Board of Examiners at the Intellectual Property Corporation of Malaysia (MyIPO). The examination consists of five main subjects, namely technological composition; Malaysian patent law and practice; Malaysian trademark and industrial designs law and practice; foreign IP law and practice; and patent claim drafting. A candidate is allowed a maximum of three attempts to make the grade; in the event of failure he or she will have to re-sit all five subjects once more.

"patent agents are expected to advise clients on the management of their IP portfolios, including directing them on the best possible strategy for obtaining protection outside Malaysia."

Upon passing the examination and a payment of a fee, a person will then be registered as a Malaysian patent agent. Any person who has been convicted of an offence involving fraud or dishonesty will not be qualified to be registered as a patent agent in Malaysia.

Official guidance

MyIPO has published several guidebooks on its website for reference by the public and more specifically patent agents. These guidebooks set forth details of the various procedures undertaken by a patent application from when it is first filed at MyIPO up to grant of the patent. Of particular interest is a guidebook setting forth standards for the substantive examination of patent applications in Malaysia.

The guidebook includes detailed information on formality requirements under the Malaysian patent regulations, the various types of patent claims acceptable under Malaysian patent law and practice, patentability requirement standards and very detailed information on substantive examination procedures, whether it is through the normal examination route or the modified examination route. Patent agents are expected to refer to this guidebook when advising clients on manoeuvring through the Malaysian patent system.

MyIPO tends to follow the European Patent Office’s practices and regularly conducts workshops for practising patent agents to keep up to date with the latest practices and developments, mainly in Europe and other major patent offices. As IP is a relatively new and niche area in Malaysia, patent agents are expected to advise clients on the management of their IP portfolios, including directing them on the best possible strategy for obtaining protection outside Malaysia for their inventions. Such workshops greatly aid the patent agent’s abilities in better advising clients in obtaining protection for their inventions outside Malaysia.

In January 2014, MyIPO released a guidebook titled “IP Agents Good Conduct Guidelines”. It outlines responsibilities expected of a Malaysian patent agent in providing its professional services to clients in the course of business. Malaysian patent agents are expected to uphold the clients’ interests at all times, avoiding conflict of interests, maintaining confidentiality of information and properly managing clients’ funds, among others.

Since 2013, the Malaysian government has been actively promoting the creation and monetisation of IP. An initial budget of RM 200 million ($49.6 million) was allocated in the 2013 federal government budget to oversee the creation of an IP financing scheme. MyIPO has set up a framework for the training, assessment and qualification of IP valuers. The training module includes valuation methods, IP management, negotiation and drafting of valuation reports.

The Malaysian government has been actively promoting IP rights as drivers of economic growth through innovation. As the IP industry in Malaysia develops further, clients will in turn expect more value for services provided by patent agents and it is essential that patent agents continue to develop their skills to keep up with the times.

Chew Qi-Guang is a patent agent at Henry Goh. He can be contacted at: qiguang@henrygoh.com

Chew Qi-Guang, Henry Goh, MyIPO, patent, patent agent, EPO,

WIPR