8 July 2013Patents

Malaysia updates industrial design law

Malaysia has made a number of changes to its design law, including increasing the length of registrations from 15 to 25 years.

The Industrial Designs Act 2013, which came into force on July 1, allows design owners to extend existing and new registrations in four five-year blocks after an initial five-year period, rather than in two blocks.

Another notable change from the Industrial Designs Act 1996 – Malaysia’s first such law – sees national examiners using prior art in foreign jurisdictions to assess novelty, instead of just in Malaysia.

The changes bring the country more into line with international jurisdictions, said Chris Hemingway, partner at Marks & Clerk LLP in Kuala Lumpur.

“It’s part of a harmonisation drive – the UK and EU are both 25 years – and the first designs filed under the existing act (which came into force in 1999) are expiring soon,” he said.

One “wrinkle” the authorities haven’t worked out yet, he said, is that a design’s priority date, not its filing date – which can be up to six months later than the former – will be when the application becomes active.

“Many jurisdictions use the filing date rather than the priority date for the basis of calculating a term. This has not been included in the recent amendment to the act, but may be addressed at a later date for further harmonisation.”

Speaking of the changes to novelty, Hemingway said: “It won’t necessarily be more difficult to apply for a design, as there is not a substantive examination procedure. But when testing validity in court, it may be easier to prove that the design isn’t valid, as there will be a larger pool of prior art.

“In some ways it’s better, in some ways it’s not, depending on your position,” he said.

Other minor changes in the act include allowing rights owners to renew their designs at any time before they are set to expire, rather than six months, which the previous law demanded.

Hemingway said he expects Malaysia to join the Madrid Protocol either later this year or in early 2014, as well as the Hague Convention for the International Registration of Industrial Designs in the same time period.

According to the latest figures, about 1,800 designs were registered in Malaysia last year. In the same period, around 4,000 were registered in the UK and more than 22,500 Community designs in the EU.

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