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Malaysian Patents Act evolves

The Malaysian Patents Act 1983 and Patents Regulations 1986 have recently been subjected to several amendments in view of developments in the nation’s patent scene.

One of the most important amendments to the Act is the amendment to Section 34 pertaining to public inspection of files relating to patent applications. In line with the practices of patent offices worldwide, Malaysia now allows applications to be published 18 months after the filing date (or if a priority is claimed, from the priority date). The Act also specifies information which can be made public such as specifications, drawings, and all the bibliographical details. Patent applications that were withdrawn or refused prematurely (less than 18 months from filing or priority date) will not be made available. This also goes for applications deemed in breach of public order or morality. Provisions were also entered to provide remedies for applicants between the point of public inspection and grant of patent, although demands for compensation may only be exercised after the grant of a patent.

A significant number of revisions have been made to the Act as a provision for international filings following the nation’s recent accession to the Patent Cooperation Treaty on August 16 2006. A new Part XIV A – International Applications under the Patent Cooperation Treaty – was inserted into the principal Act, and deals exclusively with the protocols and technicalities of the PCT in Malaysia. It covers aspects such as international application filing, searching, examination, office designations and national phase applications.

The Regulations have also been amended in view of the PCT accession. Regulation 5A has been introduced, requiring that international applications be filed in triplicate. Likewise, a new section 25A was introduced along with amendments made to preexisting regulations 27 and 27A which cover national phase filing fees, and substantive as well as modified substantive examinations. Amendments to regulation 27B saw a significant change to the timeline for the deferment of filing substantive and modified substantive examinations. In both cases, the maximum period of deferment has been increased to five years. Finally, Schedule I of the principal Regulations has been amended with regards to fees payable under the PCT agreement.