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Amendments to Patents Law in Malaysia

The Malaysia Patent Office recently announced amendments to the Patents Act and Regulations, taking effect from 18 March 2022. Highlights of the key amendments are set out as follows:

1.     New Section giving effect to Budapest Treaty

A new section is introduced to the Patents Act and Regulations giving effect to the Budapest Treaty.  The deposit of micro-organism with a National Depository Authority or an International Depository Authority before filing of the patent application or international application with the Patent Registration Office is recognized as fulfilling the requirement of disclosure in a patent application. This eliminates the need to deposit the micro-organism in each country where protection is being sought.

2.     Public inspection made available

The following will now be made available for public inspection after eighteen (18) months from the priority date of a patent application and upon payment of the prescribed fee:

(i)              Search and examination reports

(ii)            Communication in respect of the patent application from the applicant to the Patent Registration Office as determined by the Registrar

(iii)           Patent and non-patent related literature citations submitted by the applicant or any other person to the Patent Registration Office

3.     Opposition Proceedings

A new section is introduced allowing for post-grant opposition procedures before the Registrar at the Patent Office on similar grounds relating to invalidation of a patent.  Further, while opposition proceedings before the Registrar under this new section is pending, an interested person is precluded from institution any court proceedings against the patentee for invalidation under section 56 unless both parties to the opposition proceedings consent to the same, or if the interested person is a defendant in an infringement proceeding.

4.     Third party observation

A new section 34A allows any third party to make an observation in the form as determined by the Registrar together with payment of the prescribed fee on any matter relating to patentability of a patent application as may be prescribed and shall include the reason for such observations within the prescribed period.

5.     Limitation period for judicial assignment and infringement proceedings

The limitation period for commencing an application for judicial assignment of a patent / application is revised from five (5) years to six (6) years.

The limitation period for commencing court proceedings for patent infringement is similarly revised from five (5) years to six (6) years.

6.     Reinstatement of a lapsed patent

The timeframe for reinstatement of a lapsed patent is revised from two (2) years to twelve (12) months from the date of publication of notice of lapsing of a patent.

7.     New Power of Attorney

A new Power of Attorney as prescribed in the amended Act must be used for all new applications from 18 March 2022.

Consequent to the amended Patents Act, official fees have also been revised.  These recent amendments ensures Malaysia’s compliance with her obligations under various international treaties, and help align Malaysia’s patent provisions with that of international standards.

This article first appeared in the FICPI IP News.