Malaysia Patent Agent Drafting cheat sheet

The Patents Act 1983 (Act 291) and the Patents Regulations 1986 govern grant, rights and revocation in Malaysia; the Act was substantially amended in 2000 and 2007.

Patentable invention under s.12: (a) new, (b) involves an inventive step, (c) industrially applicable; s.13 exclusions and s.31 prior art define the tests.

Novelty is assessed against the prior art defined in s.14: everything disclosed to the public anywhere by publication, use or otherwise before the priority date.

Grace period under s.14(2): disclosure within 12 months before filing is disregarded if it was by the inventor, by a person who obtained the information from the inventor, or by an official exhibition/learned-society disclosure.

Term: 20 years from the filing date (s.35), subject to payment of annual renewal fees; a certificate of grant issues under s.30.

The exclusive rights under s.36 are making, disposing of, offering for sale, using, importing or stocking the patented product, and using/offering for use the patented process.

The Registrar of Patents (Intellectual Property Corporation of Malaysia, MyIPO) administers the Act; the Minister may make regulations under s.7.

A patent may be revoked by the court on grounds in s.56, including lack of novelty, lack of inventive step, insufficiency, and fraud.

Novelty is absolute and worldwide: a single prior disclosure anywhere destroys novelty; there is no local-only novelty standard in Malaysia.

Inventive step (s.15) means the invention would not have been obvious to a person having ordinary skill in the art having regard to the prior art; use problem-and-solution reasoning.

Industrial applicability (s.16): the invention can be made or used in any kind of industry, including agriculture; a mere abstract idea fails this test.

Section 13(1) exclusions: discoveries, scientific theories, mathematical methods; aesthetic creations; schemes/rules/methods for performing mental acts, playing games or doing business; presentations of information.

Section 13(2): exclusions do not apply where the invention relates to a product or process consisting of or containing the excluded matter, or to a method of manufacture or use of such a product/process.

Section 13(3): methods of treatment or diagnosis practised on the human or animal body are not patentable, but products (e.g. medicaments) for such use may be.

Section 13(4): plant or animal varieties and essentially biological processes for producing plants or animals are excluded; microbiological processes and their products are not excluded.

Section 13(5): inventions contrary to public order or morality are excluded; s.13(6) excludes the human body and the simple discovery of a human gene sequence.

Section 38 requires the specification to disclose the invention clearly and completely enough for a person skilled in the art to perform it, and to state the best method known to the applicant.

The description should set out the technical field, prior art problems, the solution, embodiments, and at least one way of carrying out the invention; drawings are referred to by figure number.

Claims under s.39 define the matter for which protection is sought; they must be clear, concise and supported by the description.

The abstract under s.40 is for information only and does not affect the scope of protection; it should be a concise summary of the disclosure, typically under 150 words.

Unity of invention (s.41): one application per invention or a group of inventions forming a single general inventive concept; lack of unity triggers a division requirement.

A divisional application may be filed under s.41 for inventions not covered by the parent; it keeps the parent's filing/priority date but claims must not extend beyond the parent's disclosure.

Claim categories: product, process, apparatus, use, and second-medical-use claims; each claim should be a single sentence with a preamble, transitional term and body.

Claims are construed purposively: the description and drawings are the primary aid to interpretation, and the claim must be read in the light of the specification as a whole (s.39).

The scope of protection is determined by the claims (s.39); the description may be used to resolve ambiguity but cannot be used to import unclaimed limitations.

A claim lacks clarity if a skilled person cannot determine its scope; relative terms such as 'about' and 'substantially' are assessed against the disclosure.

Support requires that every claimed feature be disclosed in or derivable from the description; claims that are broader than the disclosure risk insufficiency and lack of support.

Amendment before grant is allowed under s.43 by filing a request; the amendment must not add matter or broaden the claims beyond the original disclosure.

After grant, amendment under s.44 is possible only by court or Registrar permission and only to correct obvious errors or to limit scope; no broadening is permitted.

The person skilled in the art is a legal construct: a hypothetical skilled practitioner with ordinary skill, aware of common general knowledge but not of the patentee's internal documents.

A Malaysian application is filed at MyIPO on Form 1 (or equivalent) with a specification, claims, abstract and drawings; a filing date is allocated under s.17 when the minimum documents are filed.

A priority claim under the Paris Convention must be made within 12 months of the first application and must be claimed on filing or within the prescribed period; a certified copy of the priority document is required.

Malaysia is a PCT contracting state; a PCT application designates Malaysia and enters the national phase within 30 months from the priority date (or 20 months from filing where no priority is claimed).

National phase entry requires translation of the international application into English (or Malay), payment of the national fee, and appointment of a registered Malaysian patent agent.

A Malaysian resident may need a foreign filing licence under s.34 before filing abroad for an invention made in Malaysia; failure can invalidate the foreign filing.

The application number is allocated on filing; publication occurs 18 months from the priority date, and examination must be requested within the prescribed period.

Renewal fees are paid annually from the first anniversary of the filing date; non-payment leads to lapse, with a six-month grace period on surcharge.

Malaysia uses a deferred examination system: substantive examination must be requested, and the applicant may rely on corresponding foreign search/examination results under the modified examination route.

The Registrar issues a substantive examination report; the applicant may amend or respond, and refusal may be appealed to the court under s.87.

There is no pre-grant opposition in Malaysia; third parties may file observations, but revocation is by the court under s.56 or by the Registrar in limited circumstances.

Infringement under s.36 is direct: making, disposing of, offering for sale, using, importing or stocking the patented product, or using the patented process.

Defences include: non-infringement, invalidity, experimental use, use for research, prior use (s.37), use on foreign vessels/aircraft in transit (s.38A), and exhaustion of rights.

The limitation period for infringement proceedings is 5 years from the date the plaintiff knew or ought to have known of the infringement (s.59A).

Remedies include injunction, damages, account of profits, delivery up and declaration; the court may also order a compulsory licence under s.49.

A registered patent agent under the Act must be registered with MyIPO and comply with the Code of Conduct; acting without registration is an offence.

Duty of confidentiality: all client information, including unpublished inventions and business plans, must be kept confidential indefinitely, not just during the engagement.

Conflict of interest: an agent must not act for two clients with competing interests in the same or related technology without informed written consent from both.

The agent must not make misleading claims about the scope or strength of protection, and must advise the client of material risks, including invalidity and freedom-to-operate issues.

Fees must be disclosed and agreed in advance; contingent fees based on grant outcomes can raise ethical concerns and should be handled transparently.

An agent must keep proper records of instructions, deadlines and correspondence, and must not knowingly file a specification that misrepresents the prior art.

Client money must be held in a separate trust account where required; commingling with the agent's own funds is prohibited.

Utility innovations in Malaysia are protected under the Utility Innovations Act 2001; term is 10 years from filing (extendable by 5+5), with a lower inventive-step threshold than patents.

Industrial designs are protected under the Industrial Designs Act 1996; protection is for the appearance of a product (shape, configuration, pattern, ornament), not its technical function.

Trade secrets are protected by contract and the common-law duty of confidence; there is no standalone trade secret statute in Malaysia.

Copyright protects software code as a literary work but not the underlying idea; a patent may protect a technical computer-implemented invention if it solves a technical problem.

A single product can be covered by a patent (function), an industrial design (appearance) and a trade mark (branding); these rights are cumulative and independent.

Layout designs of integrated circuits are protected under the Layout-Designs of Integrated Circuits Act 2000; term is 10 years from first commercial exploitation.

Plant varieties are protected under the Protection of New Plant Varieties Act 2004; a patent may still cover a microbiological process or a genetically modified organism.

Paris Convention (1883): Malaysia acceded in 1989; key principles are national treatment, right of priority (12 months for patents), and independence of patents.

TRIPS Agreement: Malaysia is a WTO member since 1995; TRIPS sets minimum standards for patentability, 20-year term, and effective enforcement.

PCT (1970): Malaysia acceded in 2006; a single international application can designate Malaysia, with international search and optional preliminary examination before national phase.

Budapest Treaty (1977): Malaysia acceded in 2013; deposit of biological material with an International Depositary Authority satisfies the disclosure requirement.

Strasbourg Agreement on International Patent Classification: Malaysia uses the IPC to classify applications.

The ASEAN Patent Examination Co-operation (ASPEC) allows applicants to use search/examination results from other ASEAN IP offices to speed up Malaysian examination.

The TRIPS flexibilities available to Malaysia include compulsory licensing, parallel importation and Bolar-type regulatory review exceptions.