Malaysia Patent Agent Drafting common mistakes
Malaysia Patent Agent Drafting · Understand the traps and how to avoid them.
Treating 'prior art' as everything published anywhere in the world without checking the Malaysian novelty definition and its grace-period exclusions under the Patents Act 1983, so candidates wrongly cite a local sale or a conference disclosure as fatal prior art (or wrongly dismiss it).
Candidates carry over general novelty instincts from other jurisdictions and skim the Act's definition of prior art and the limited non-prejudicial disclosure provisions, then apply a vague 'known anywhere' rule without pinning it to the statutory text.
What to do instead
Memorise the statutory novelty baseline and the specific exceptions (e.g. disclosures at recognised exhibitions, disclosures in breach of confidence, and the prescribed grace period) with their conditions and time limits. For every novelty question, state the statutory test first, then classify each item of prior art as within or outside the definition, citing the provision.
Answering inventive-step questions by listing differences between the claim and the closest prior art and then asserting the differences are 'obvious', without identifying the problem solved or giving a reasoned motivation to combine references.
The problem-solution structure feels like extra work under time pressure, and candidates confuse 'the difference is small' with 'the difference is obvious', which is a conclusion rather than an analysis.
What to do instead
Use a fixed template: closest prior art, distinguishing features, technical effect, objective technical problem, then whether a skilled person would have modified or combined with a reasonable expectation of success. Always state why the skilled person would have done it, not merely that they could have.
Drafting claims that mix categories or use vague functional language ('improved', 'suitable for', 'substantially as described') and then failing to check each claim against clarity, support and the excluded-subject-matter provisions.
Candidates draft claims as a narrative summary of the embodiment rather than as a set of legal boundaries, and they do not run a deliberate checklist after drafting.
What to do instead
After drafting, run a claim audit: one category per claim, antecedent basis for every reference, no relative or subjective terms unless defined, every feature supported in the description, and no claim directed to a method of treatment, discovery or mere presentation of information. Rewrite each problem claim on the spot as practice.
Confusing unity of invention with the number of independent claims, and answering unity objections by counting claims instead of identifying the single general inventive concept linking the claims.
The 'one invention per application' phrasing is misread literally, and candidates do not practise the special-technical-feature analysis that underlies unity.
What to do instead
For any unity question, first identify the shared technical feature or concept, then test whether it makes a technical contribution over the prior art. If it does not, the claims lack unity regardless of how they are grouped. Practise by drafting a short reasoned unity assessment for a multi-independent-claim set.
Amending claims in a way that adds matter or broadens the scope beyond the disclosure as filed, and justifying it by saying the feature is 'implicitly' or 'inherently' supported.
Candidates want to rescue the claim and reach for generalisations from the examples, forgetting that amendment is bounded by the content of the application as filed, not by what the inventor now knows.
What to do instead
Apply the added-matter test literally: is the amended subject matter directly and unambiguously derivable from the application as filed? Prefer narrowing amendments with a literal basis in the description or dependent claims. For each proposed amendment, write the exact passage relied on and check that intermediate generalisations are not being made.
Getting the priority and PCT national-phase timeline wrong: missing the 12-month priority window, the 30/31-month national phase deadline, or the Malaysian filing requirements and fees, and then failing to identify the remedy (e.g. restoration or extension) when a deadline is missed.
Candidates memorise the headline numbers but not the conditions, the applicable Malaysian provisions, or the consequences of missing each deadline, and they conflate Paris priority with PCT priority claims.
What to do instead
Build a one-page timeline table: priority year, PCT filing, national phase entry, and the Malaysian requirements at entry (translation, fees, applicant details, priority documents). For each deadline, note the consequence of missing it and whether any extension or restoration is available. Rehearse with a hypothetical filing date.
Treating examination, opposition and revocation as interchangeable, so candidates describe opposition proceedings when the question asks about ex parte examination, or cite revocation grounds that are not available in the relevant procedure.
The procedures share vocabulary (prior art, clarity, sufficiency) and candidates answer from general memory rather than distinguishing who initiates, before which body, on what grounds, and with what time limits.
What to do instead
Make a comparison grid: examination (substantive, ex parte, examiner-raised objections), opposition (if available, third party, time-limited, specified grounds), revocation (post-grant, grounds and forum). Learn the grounds available in each and the procedural steps and deadlines, and answer by naming the procedure and its statutory basis before discussing merits.
Analysing infringement by comparing the accused product to the commercial embodiment or the drawings rather than to the claims, and then failing to run the defences (e.g. experimental use, prior user rights, exhaustion, licence) once infringement is found.
The specification's examples are more concrete and memorable than the claim language, and candidates stop at 'it looks the same' without completing the legal analysis.
What to do instead
Always construe the claim first, then map each claimed feature to the accused product, feature by feature, and state whether each is present literally or by equivalent. Then, separately, test each available defence and state its elements. Structure answers as: construction, infringement, defences, remedy.
Breaching professional conduct in scenario questions: disclosing client information, acting for two clients with conflicting interests, or taking instructions on a matter outside competence, and then rationalising it as 'the client consented' without checking whether consent is informed and permissible.
Candidates focus on the technical patent issue and treat the ethics dimension as background, so they miss the conflict or confidentiality issue embedded in the facts.
What to do instead
Scan every scenario for confidentiality, conflict of interest, competence, and fee/instruction issues before addressing the technical question. State the duty, identify the breach, and give the correct course of action (decline, obtain informed written consent where permitted, refer on). Learn the practical limits of consent in conflicts.
Conflating patents with utility innovations, industrial designs and trade secrets, e.g. claiming a utility innovation has the same inventive-step threshold as a patent, or assuming a design registration protects functional features, or treating trade-secret protection as lost merely because a product is sold.
The regimes overlap in subject matter and candidates learn them in isolation, so the distinctive thresholds, terms and rights blur under exam pressure.
What to do instead
Build a comparison table across patents, utility innovations, industrial designs, trade secrets, and the international frameworks (Paris, TRIPS, PCT, Budapest), covering subject matter, threshold, term, examination and enforcement. For each scenario, identify which regime fits and why the others do not, citing the distinctive requirement.