In depth
The amendments introduced by the Bill are driven by Malaysia's commitments under the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), the Regional Comprehensive Economic Partnership (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). These amendments also facilitate compliance with the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure although Malaysia has yet to ratify the same.
Some of the key amendments to the Act are summarised below.
- Recognition of patents as a form of security interest
A patent application or patent is now recognized as a form of security interest, treating them as objects of personal or moveable property. All security interest transactions must be recorded on the Patents Register before they can be enforced.
- Post-grant opposition of patent
The Bill introduces an opposition mechanism in the patent system whereby any interested person may initiate opposition proceedings against a patent owner in relation to the grant of the patent before the Registrar. Where a notice of opposition is filed and the opposition is pending before the Registrar, no Court proceedings may be instituted to invalidate the subject patent unless (i) both parties to the opposition proceedings agree for the invalidation proceedings to be instituted before the Court, or (ii) the interested person is a defendant in infringement proceedings.
- Compulsory licences
The Bill empowers the Registrar to grant compulsory licences notwithstanding any pre-existing exclusive licence contracts being entered into. The new provision also exempts the licensor from any action for breach of contract by the licensee resulting from the granting of the compulsory licence by the Registrar.
- No obligation to disclose manufacturing or commercial secret
Where a patent is granted in respect of a process for obtaining a product, a person (apart from the owner of the patent or his licensee) who has produced the same product will be assumed to have obtained the product by means of the patented process unless the contrary is proved. The Bill now exempts such person from disclosing any manufacturing or commercial secret when providing the contrary if the court is satisfied that it is unreasonable or unnecessary to do so, or prejudicial to the manufacturing or commercial secret of that person.
- Recognition of micro-biological processes
Products of micro-biological processes are now recognized as patentable inventions.
- Third party observations on patentability
Any person may submit observations in writing to the Registrar on the patentability of a patent application within a prescribed period.
- Restoration of right of priority
An applicant may request for restoration of right of priority where the applicant fails to claim a right of priority within 12 months from the filing date, provided certain conditions are fulfilled.
- Request for divisional application
A request for divisional application shall not be allowed by the Registrar if prior to the request, the initial application or immediate preceding application has been granted a patent, refused, deemed to be withdrawn, withdrawn or abandoned. Further, the prescribed period for making such request for divisional application cannot be extended.
- Early publication of application
Applicants may request for earlier publication of their patent application prior to the expiry of 18 months from the filing date, or if right of priority is claimed, the priority date of the patent application.
- Reinstatement of lapsed patent
The deadline to request for a reinstatement of a lapsed patent has been reduced to 12 months (previously 2 years) from the date of publication of the notice of patent lapse.
- Limitation period for judicial assignments
The limitation period for judicial assignment (of patent related matters) and court proceedings (for infringement of patent) has been extended to 6 years (previously 5 years).
- Power of Registrar to award costs
The Registrar is now empowered to award costs, including making assessment of the costs and the manner in which the costs is to be paid against a party to a proceeding before him.
- Micro-organism deposits
Samples of micro-organism must be deposited with the National Depositary Authority or an International Depositary Authority as part of the patent disclosure procedure where the invention involves a micro-organism that is not available to the public and cannot be described in the patent application. The deposit of micro-organism with the National Depositary Authority or the International Depositary Authority, as the case may be, will be recognized as fulfilling the requirement of disclosure in a patent application.
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While there is currently no indication as to the date of coming into force of these amendments, these are welcomed changes to bring Malaysian patent laws more in line with international standards and treaties.
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