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Malaysia Patent Agent Drafting study materials
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Malaysia Patent Agent Drafting practice questions

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Question 1Malaysian patent law and the Patents Act 1983

Under the Patents Act 1983, what is the maximum term of a standard patent granted in Malaysia, counted from the filing date?

  1. 10 years
  2. 15 years
  3. 20 years Correct answer.
  4. 25 years

Explanation

Section 35 of the Patents Act 1983 sets the term of a patent at 20 years from the filing date, subject to payment of the prescribed annual fees. This aligns with the TRIPS minimum term. A shorter term applies only to utility innovations, which are a separate form of protection.

Question 2Malaysian patent law and the Patents Act 1983

Which statutory body is responsible for registering patents and administering the Patents Act 1983 in Malaysia?

  1. The Standards and Industrial Research Institute of Malaysia
  2. The Intellectual Property Corporation of Malaysia (MyIPO) Correct answer.
  3. The Malaysian Intellectual Property Office (MyIP)
  4. The Patents Registry of the High Court

Explanation

The Intellectual Property Corporation of Malaysia, known as MyIPO, is the registrar and administering authority for patents under the Patents Act 1983. It examines applications, maintains the register, and publishes the Intellectual Property Official Journal. Other named bodies either do not exist in this form or have unrelated functions.

Question 3Malaysian patent law and the Patents Act 1983

An applicant files a patent application in Malaysia on 1 March 2024. Within what period must the applicant request substantive examination to avoid the application being treated as withdrawn?

  1. Within eighteen months from the filing date
  2. Within five years from the filing date
  3. Within three years from the priority date
  4. Within two years from the filing date Correct answer.

Explanation

Under the Patents Act 1983 and its implementing regulations, a request for substantive examination (or for modified examination) must be made within two years from the filing date, failing which the application lapses. The period runs from the filing date, not the priority date. Missing the deadline results in the application being deemed withdrawn rather than automatically refused.

Question 4Malaysian patent law and the Patents Act 1983

Which of the following is expressly excluded from patentable subject matter under section 13 of the Patents Act 1983?

  1. A mechanical device for water filtration
  2. A method of treating a disease in humans by surgery Correct answer.
  3. A new industrial chemical compound
  4. A process for manufacturing a semiconductor

Explanation

Section 13 excludes methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the body, from patentability. Chemical compounds, manufacturing processes, and mechanical devices are all capable of industrial application and are not excluded. The exclusion targets medical treatment methods, not medical products.

Question 5Malaysian patent law and the Patents Act 1983

An invention was disclosed in a scientific journal by the inventor twelve months before the Malaysian filing date. Which statement best describes the effect of section 14 of the Patents Act 1983?

  1. The disclosure is excused only if it occurred at an official international exhibition
  2. The disclosure may be disregarded if it occurred within one year before the filing date and was made by the inventor or with the inventor's consent Correct answer.
  3. The disclosure destroys novelty absolutely because Malaysia applies a strict novelty standard
  4. The disclosure is excused only if the inventor files a declaration before publication

Explanation

Section 14 provides a grace period of one year before the filing date for disclosures made by the inventor, by a person who obtained the information from the inventor, or in breach of confidence. Within that window the prior disclosure is disregarded for novelty purposes. The grace period is not limited to exhibitions, although exhibition disclosures also fall within it.

Question 6Malaysian patent law and the Patents Act 1983

Which statement correctly describes the novelty requirement under the Patents Act 1983?

  1. An invention is novel if it has not been previously patented in Malaysia
  2. An invention is novel if it does not form part of the state of the art, which comprises everything made available to the public anywhere by any means before the priority date Correct answer.
  3. An invention is novel if it is not identical to a product currently sold in Malaysia
  4. An invention is novel if it has not been described in a Malaysian registered patent specification

Explanation

Novelty under the Act is assessed against the state of the art, defined broadly as everything made available to the public anywhere in the world by any means before the priority date. Prior patents are only one part of that state of the art. Local sale or prior Malaysian patents alone do not define the standard.

Question 7Malaysian patent law and the Patents Act 1983

How is the requirement of inventive step assessed under the Patents Act 1983?

  1. By asking whether the inventor expended significant research effort
  2. By asking whether the invention would have been obvious to a person having ordinary skill in the art in view of the state of the art Correct answer.
  3. By asking whether the invention is more useful than the closest prior art
  4. By asking whether the invention is commercially successful in Malaysia

Explanation

Section 15 provides that an invention involves an inventive step if, having regard to the state of the art, it would not have been obvious to a person having ordinary skill in the art. Commercial success or research effort are not the statutory test, though they may be secondary indicia. Usefulness relates to industrial application, not inventive step.

Question 8Malaysian patent law and the Patents Act 1983

What does the requirement of industrial application mean under section 16 of the Patents Act 1983?

  1. The invention can be made or used in any kind of industry, including agriculture Correct answer.
  2. The invention must have an existing commercial market
  3. The invention must be capable of mass production
  4. The invention must be manufactured in Malaysia within three years

Explanation

Section 16 states that an invention is industrially applicable if it can be made or used in any kind of industry, including agriculture. The concept is broad and does not require local manufacture, mass production, or an existing market. It excludes only inventions that cannot be practically made or used.

Question 9Malaysian patent law and the Patents Act 1983

A single application discloses and claims both a novel chemical compound and a distinct process for making an unrelated alloy. How should the examiner treat unity of invention?

  1. The application may be objected to for lack of unity, and the applicant may divide the application to pursue the separate inventions Correct answer.
  2. The application must be refused outright because it contains more than one claim
  3. The application must be converted to a utility innovation
  4. The application is automatically accepted because Malaysian law imposes no unity requirement

Explanation

The Patents Act 1983 requires an application to relate to one invention or to a group of inventions forming a single general inventive concept. Where unity is lacking, the examiner raises an objection and the applicant may file divisional applications. Outright refusal is not automatic, and there is no option to convert the application into a utility innovation to cure the defect.

Question 10Malaysian patent law and the Patents Act 1983

When must a patent application be published in Malaysia, and what is the general rule on its contents?

  1. Only after substantive examination has been completed
  2. Promptly after the expiry of eighteen months from the priority date, unless early publication is requested Correct answer.
  3. Only after the patent has been granted
  4. Immediately upon filing, before any formalities check

Explanation

Applications are published in the Intellectual Property Official Journal promptly after eighteen months from the priority date, although the applicant may request earlier publication. Publication occurs before grant and before substantive examination is concluded. Publishing immediately on filing would defeat the purpose of the eighteen-month period.

Question 11Malaysian patent law and the Patents Act 1983

A third party wishes to oppose the grant of a patent in Malaysia. Which statement is correct regarding opposition proceedings under the Patents Act 1983?

  1. Opposition may only be filed by a competitor who has been sued for infringement
  2. Opposition must be filed before publication of the application
  3. Opposition may be filed within the prescribed period after publication of the grant, on grounds such as lack of novelty or lack of inventive step Correct answer.
  4. Opposition is available only on the ground of non-payment of fees

Explanation

Under the Act, any interested person may oppose a granted patent within the prescribed period after the grant is published, relying on substantive grounds such as lack of novelty, lack of inventive step, or excluded subject matter. Opposition is not restricted to parties involved in infringement disputes. Filing before publication of the application is premature because there is no grant to oppose.

Question 12Malaysian patent law and the Patents Act 1983

After a patent is granted, on what basis may a third party apply to the court or Registrar for revocation?

  1. On grounds such as lack of novelty, lack of inventive step, insufficient disclosure, or that the patentee was not entitled to the patent Correct answer.
  2. Only on the ground that the patentee has moved abroad
  3. Only on the ground that the patent has not been worked in Malaysia
  4. Only on the ground that the annual fees were paid late

Explanation

Revocation may be sought on a range of substantive grounds, including want of novelty, want of inventive step, insufficiency of disclosure, and entitlement disputes. Relocation of the patentee or late payment of fees are not revocation grounds. Failure to work a patent is addressed through compulsory licensing, not revocation on that basis alone.

Question 13Malaysian patent law and the Patents Act 1983

Which statement correctly describes the right conferred by a granted Malaysian patent?

  1. The patentee may prevent any publication of the patented invention for academic study
  2. The patentee may exclude others from making, using, offering for sale, selling, or importing the patented product without consent Correct answer.
  3. The patentee may exclude others from using the invention in any country worldwide
  4. The patentee may exclude others from independently developing the same invention for private research

Explanation

A patent confers on the patentee the exclusive right to exploit the invention and to exclude others from making, using, offering for sale, selling, or importing the patented product without consent. The right is territorial and limited to Malaysia. Private, non-commercial research use and certain experimental acts are not caught by the exclusive right.

Question 14Malaysian patent law and the Patents Act 1983

Which act would generally fall within the permitted exceptions to patent rights under the Patents Act 1983?

  1. Importing the patented product for resale without consent
  2. Selling counterfeit copies of the patented product
  3. Manufacturing the patented product for commercial sale without a licence
  4. Using the patented invention privately for non-commercial purposes Correct answer.

Explanation

The Act provides that the rights of the patentee do not extend to acts done privately for non-commercial purposes, and to certain experimental and preparation-related acts. Commercial sale, importation for resale, and commercial manufacture without consent are infringing acts. The private non-commercial exception is narrow and does not cover commercial activity.

Question 15Malaysian patent law and the Patents Act 1983

What is the effect of a compulsory licence granted under the Patents Act 1983?

  1. It authorises the licensee to exploit the patented invention without the patentee's consent, subject to conditions and payment of remuneration Correct answer.
  2. It converts the patent into a utility innovation
  3. It revokes the patent and places it in the public domain
  4. It transfers ownership of the patent to the licensee

Explanation

A compulsory licence authorises a third party to work the patented invention without the patentee's consent, typically subject to conditions and adequate remuneration to the patentee. It does not transfer ownership, revoke the patent, or change the form of protection. The patentee remains the proprietor.

Question 16Malaysian patent law and the Patents Act 1983

An applicant files a Malaysian application claiming priority from an earlier United Kingdom application. What is the maximum priority period available for a patent application under the Patents Act 1983?

  1. Twelve months from the date of the earlier application Correct answer.
  2. Twenty-four months from the date of the earlier application
  3. Eighteen months from the date of the earlier application
  4. Six months from the date of the earlier application

Explanation

The right of priority may be claimed within twelve months from the filing date of the earlier application, consistent with the Paris Convention. Six months applies to certain other industrial property rights such as industrial designs, not patents. Eighteen months is the publication period, and twenty-four months is not a priority period.

Question 17Malaysian patent law and the Patents Act 1983

A patentee wishes to amend the claims of a granted Malaysian patent after grant. Which statement best reflects the Act's approach to post-grant amendment?

  1. Amendment is freely available at any time without any approval
  2. Amendment is never permitted after grant under any circumstances
  3. Amendment is permitted only if the patentee surrenders the patent and refiles
  4. Amendment is permitted subject to the Registrar's or court's approval and must not extend the disclosure or broaden the claims beyond the original scope Correct answer.

Explanation

Post-grant amendment is possible but is controlled: the amendment must not add matter or extend the protection beyond what was originally disclosed and claimed, and it requires approval through the prescribed procedure. Amendment is neither automatic nor absolutely prohibited. Surrender and refiling is not the mechanism for correcting claims.

Question 18Malaysian patent law and the Patents Act 1983

What is the principal difference between a standard patent and a utility innovation under the Patents Act 1983?

  1. A utility innovation is available only to Malaysian citizens
  2. A utility innovation is identical to a standard patent but has a different filing fee
  3. A utility innovation does not require an inventive step but requires a smaller or lesser inventive step, and has a shorter term with possible extension Correct answer.
  4. A utility innovation requires a higher inventive step than a standard patent

Explanation

A utility innovation protects an invention that is new and industrially applicable but does not meet the inventive-step threshold of a standard patent; the Act refers to a smaller inventive step. Its term is shorter, with the possibility of extension, unlike the 20-year standard patent term. It is available to any eligible applicant, not only citizens.

Question 19Malaysian patent law and the Patents Act 1983

Which statement about the disclosure requirement in a Malaysian patent specification is correct?

  1. The specification must disclose the invention clearly and completely enough for a person skilled in the art to carry it out Correct answer.
  2. The specification need only state the title and the claims
  3. The specification may omit working details if a trade secret is retained
  4. The specification must disclose the best mode only if the patentee is a company

Explanation

The Act requires the specification to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The claims define the scope, but the description must support them. Withholding working details undermines sufficiency and can be a ground of revocation.

Question 20Malaysian patent law and the Patents Act 1983

Which document defines the scope of protection conferred by a Malaysian patent?

  1. The abstract
  2. The examiner's search report
  3. The title of the invention
  4. The claims, interpreted in light of the description and drawings Correct answer.

Explanation

The scope of protection is determined by the claims, which are interpreted in the light of the description and drawings. The abstract and title serve identification and searching purposes and do not define scope. A search report is an examination document and does not confer or delimit rights.

Question 21Malaysian patent law and the Patents Act 1983

An applicant files a divisional application in Malaysia. Which statement is correct about its treatment?

  1. The divisional application automatically receives the date on which it is actually filed as its only date
  2. The divisional application must contain entirely new matter not present in the parent
  3. The divisional application cannot proceed to grant until the parent is revoked
  4. The divisional application is treated as a separate application and may retain the filing or priority date of the parent for matter disclosed in the parent Correct answer.

Explanation

A divisional application is a separate application but is entitled to the filing or priority date of the parent application for subject matter disclosed in the parent. It cannot introduce matter beyond the parent disclosure. The parent's fate does not control the divisional's prosecution, and the divisional can proceed independently.

Question 22Malaysian patent law and the Patents Act 1983

Which of the following would most likely be refused as lacking patentable subject matter in Malaysia?

  1. A process for producing a biodegradable polymer
  2. A new pharmaceutical compound with a demonstrated therapeutic effect
  3. A device for detecting water contamination
  4. A mathematical method presented as such, without any technical application Correct answer.

Explanation

Discoveries, scientific theories, and mathematical methods are excluded as such under the Act. A mathematical method claimed purely as an abstract method, without a technical application or technical effect, is not patentable. Pharmaceutical compounds, industrial processes, and detection devices are capable of industrial application and are not excluded.

Question 23Malaysian patent law and the Patents Act 1983

What is the role of the Registrar in Malaysian patent proceedings?

  1. The Registrar acts as legal counsel for applicants
  2. The Registrar administers the Act, receives applications, and may hear certain contested matters, while infringement actions are brought before the court Correct answer.
  3. The Registrar has authority to invalidate patents without any hearing
  4. The Registrar personally examines every application for novelty

Explanation

The Registrar, through MyIPO, administers the registration system, receives and processes applications, and may decide certain matters such as oppositions and compulsory licence requests. Substantive examination is carried out through the examination framework, not personally by the Registrar. Infringement and many validity disputes are litigated in court.

Question 24Malaysian patent law and the Patents Act 1983

A patentee discovers that a competitor is importing a product made by a process patented in Malaysia. Which statement best reflects the Act's treatment of process patents?

  1. The patentee may restrain the importation of products directly obtained by the patented process, and the burden of proof may shift to the alleged infringer in prescribed circumstances Correct answer.
  2. Process patents cannot be enforced against importers under any circumstances
  3. Process patents protect only acts performed inside a laboratory
  4. Process patents are enforceable only if the product itself is also patented

Explanation

The Act extends protection to products directly obtained by a patented process, so importation of such products without consent can infringe. In prescribed circumstances, particularly where the product is new, the burden may shift to the alleged infringer to show the process used was different. Process protection is not confined to laboratory acts, and the product need not be separately patented.

Question 25Malaysian patent law and the Patents Act 1983

An applicant's Malaysian application was deemed withdrawn for failure to respond to an examination report. What is the most appropriate course under the Patents Act 1983?

  1. File a fresh application automatically retaining the original filing date
  2. Apply for restoration or reinstatement within the prescribed period, showing that the failure was unintentional and paying the prescribed fee Correct answer.
  3. Request the Registrar to overlook the deadline as a matter of discretion without any procedure
  4. Appeal directly to the Minister responsible for intellectual property

Explanation

Where an application is deemed withdrawn, the Act provides a restoration or reinstatement procedure with a prescribed time limit, requiring a request, the prescribed fee, and typically a showing that the omission was unintentional. A fresh application would not ordinarily retain the original filing date. There is no free-floating discretion to ignore the deadline without following the procedure.

Question 26Malaysian patent law and the Patents Act 1983

Under the Patents Act 1983, what is the prescribed period within which an applicant must request substantive examination after the filing date of a Malaysian patent application?

  1. Within three years from the filing date Correct answer.
  2. Within eighteen months from the priority date
  3. Within two years from the filing date
  4. Within five years from the filing date

Explanation

The Act requires the applicant to file a request for substantive examination within the prescribed period, which is two years from the filing date, and the application lapses if this is not done. The period runs from the filing date rather than the priority date, so the eighteen-month priority window is not the relevant benchmark.

Question 27Malaysian patent law and the Patents Act 1983

An applicant files a Malaysian patent application on 10 March 2022 and later wishes to add an improved embodiment to the description. Under the Patents Act 1983, which statement best describes the permitted scope for amending the application before grant?

  1. The applicant may add any new matter provided the claims remain unchanged
  2. The applicant may amend only after the patent has been granted and published
  3. The applicant may amend only within the limits of the original disclosure and the amendment must not extend beyond it Correct answer.
  4. The applicant may freely broaden the claims to cover competitors' products before grant

Explanation

Amendments to a patent application are confined to matter disclosed in the original application, and any amendment that extends the disclosure beyond that is not allowable. This reflects the disclosure-based bargain central to the Act.

Question 28Malaysian patent law and the Patents Act 1983

A Malaysian patent application was filed without a priority claim. The applicant now seeks to rely on an earlier foreign application filed eleven months before the Malaysian filing date. Which statement best reflects the position under the Patents Act 1983?

  1. The priority claim may be made only with the Registrar's discretionary approval
  2. The priority claim may be made only if the foreign application was filed in a Convention country
  3. The priority claim may be made because it is within the twelve-month convention period
  4. The priority claim may not be made because the twelve-month period has already expired Correct answer.

Explanation

The right of priority under the Act must be exercised within twelve months of the earlier application's filing date. An earlier application filed eleven months before the Malaysian filing date means the priority period has already run, so the claim cannot now be validly made.

Question 29Malaysian patent law and the Patents Act 1983

A Malaysian patent is granted to a first applicant, but a third party later establishes in revocation proceedings that the invention was in fact developed by the third party and that the first applicant derived it from them. Which statement best reflects the position under the Patents Act 1983?

  1. The patent remains valid because entitlement is not a ground of revocation
  2. The patent may be revoked on the ground that the patentee was not entitled to it Correct answer.
  3. The patent may be revoked only if the third party proves the invention lacks novelty
  4. The patent may be revoked only if the third party was the first to file a Malaysian application

Explanation

Entitlement is a recognised ground on which a granted patent may be revoked. Where the patentee obtained the invention from another person without entitlement, that person may seek revocation. Novelty is a separate requirement and is not the basis described here.

Question 30Malaysian patent law and the Patents Act 1983

A Malaysian patent specification claims a product and describes a process for making it, but the description omits any disclosure of how the process achieves the claimed product. Which statement best reflects the sufficiency requirement under the Patents Act 1983?

  1. Sufficiency requires the specification to disclose the invention clearly enough and completely enough for a person skilled in the art to perform it Correct answer.
  2. Sufficiency is assessed only at the examination stage and cannot affect a granted patent
  3. Sufficiency is satisfied because the product claim itself is clearly defined
  4. Sufficiency requires only that the claims be supported by a working example in the description

Explanation

The specification must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the process is not described, the skilled person cannot perform the claimed invention, so the requirement is not met.

Question 31Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Under the Patents Act 1983 (Malaysia), which combination of conditions must an invention satisfy to be patentable?

  1. It must be new, involve an inventive step and be industrially applicable Correct answer.
  2. It must be new, be capable of industrial application and be commercially profitable
  3. It must be novel, be disclosed in a published document and be licensed
  4. It must involve an inventive step, be registered abroad first and be industrially applicable

Explanation

Section 11 of the Patents Act 1983 sets out three cumulative requirements: novelty, an inventive step and industrial applicability. Commercial profitability and foreign registration are not statutory conditions. All three elements must be met before the other exclusions are considered.

Question 32Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which date defines the prior art that is relevant to assessing novelty of a Malaysian patent application?

  1. The date on which the patent is eventually granted
  2. The date the applicant first conceived the invention
  3. The date the complete specification is published in the Gazette
  4. The filing date of the application, or the priority date where priority is validly claimed Correct answer.

Explanation

Novelty is assessed against the state of the art immediately before the filing date, or the priority date if a valid declaration of priority is made. Grant, publication and conception dates do not fix the relevant prior art. This follows from the priority provisions read with the definition of prior art.

Question 33Patentability: novelty, inventive step, industrial applicability, excluded subject matter

An inventor discloses the invention at a trade exhibition in Kuala Lumpur without any confidentiality obligation, then files a Malaysian application five months later without claiming priority. What is the effect of that disclosure?

  1. The disclosure is disregarded because exhibitions are always privileged
  2. The disclosure destroys novelty only if a third party also disclosed the invention
  3. The disclosure is disregarded only if the inventor files within six months
  4. The disclosure destroys novelty because no grace period applies to such disclosures Correct answer.

Explanation

Malaysian law recognises no general exhibition grace period, so a non-confidential disclosure before the filing date forms part of the state of the art. The invention therefore lacks novelty unless a specific statutory exception applies, which this scenario does not trigger. Third-party disclosure is irrelevant to this point.

Question 34Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which subject matter is expressly excluded from patentability under section 13 of the Patents Act 1983?

  1. A method of manufacturing a semiconductor wafer
  2. A scheme, rule or method for doing business Correct answer.
  3. A device for filtering industrial wastewater
  4. A new chemical compound with a therapeutic use

Explanation

Section 13 excludes discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, and presentations of information, as such. Manufacturing processes, chemical compounds and mechanical devices are generally patentable.

Question 35Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which statement best describes the requirement of industrial applicability in Malaysian patent law?

  1. The invention must already be manufactured commercially at the filing date
  2. The invention must be capable of being made or used in any kind of industry Correct answer.
  3. The invention must be used in heavy manufacturing industry only
  4. The invention must be capable of producing a profit for the patentee

Explanation

An invention is industrially applicable if it can be made or used in any kind of industry, including agriculture. Actual commercial manufacture at filing is not required. The concept is broad and covers most technical fields.

Question 36Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A claimed invention differs from a single prior art document only in features that are conventional and well known to the skilled person. How should inventive step be assessed?

  1. The claim lacks an inventive step because the difference is obvious to the person skilled in the art Correct answer.
  2. The claim is patentable because obviousness is not a ground of examination in Malaysia
  3. The claim lacks novelty but necessarily involves an inventive step
  4. The claim involves an inventive step because it differs from the prior art

Explanation

Inventive step requires that the invention not be obvious to a person having ordinary skill in the art, having regard to the prior art. A difference consisting only of well-known conventional features is normally obvious. Obviousness is a distinct requirement from novelty.

Question 37Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which of the following is a presentation of information that section 13 excludes from patentability?

  1. A method of encoding data for transmission over a network
  2. A method of controlling a machine using sensor data
  3. A printed sheet displaying a layout of text and images with no technical effect Correct answer.
  4. A data compression algorithm producing a technical effect on a modem

Explanation

Section 13 excludes presentations of information as such. A printed sheet whose content is merely displayed without any technical effect falls within that exclusion. Methods producing a technical effect on apparatus are not excluded.

Question 38Patentability: novelty, inventive step, industrial applicability, excluded subject matter

An applicant files a Malaysian application on 10 March 2024 and validly claims priority from a United Kingdom application filed on 10 March 2023. A journal article published on 1 June 2023 discloses the invention. What is the position?

  1. The article is not prior art because it postdates the priority date Correct answer.
  2. The article is prior art because it predates the Malaysian filing date
  3. The article is prior art only if it was published in Malaysia
  4. The article is prior art only if the applicant cited it

Explanation

Where priority is validly claimed, the state of the art is assessed as at the priority date, here 10 March 2023. Material published after that date, such as the June 2023 article, does not form part of the relevant prior art. The place of publication and citation practice do not affect this.

Question 39Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A specification claims a genus defined by a broad functional limitation, while the prior art discloses a single species falling within that genus and capable of performing the same function. What is the most likely novelty finding?

  1. The genus claim lacks novelty because the prior species anticipates it Correct answer.
  2. The genus claim is novel because the prior art discloses only one embodiment
  3. The genus claim is novel because functional language is always disregarded
  4. The genus claim is novel because it covers many embodiments

Explanation

A prior disclosure of a species falling within a claimed genus generally anticipates the genus if the species possesses the claimed characteristics. Novelty is destroyed by an anticipating disclosure even if it is a single embodiment. Functional wording does not rescue a claim from an anticipating species.

Question 40Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which circumstance is most likely to establish that a claimed invention involves an inventive step?

  1. The invention replaces a known material with an equivalent material having the same properties
  2. The invention combines known features that each perform their normal function
  3. The invention combines known features in a way that produces an unexpected technical effect Correct answer.
  4. The invention applies a known technique to an analogous field with predictable results

Explanation

An unexpected technical effect resulting from a combination can support inventive step. Combinations whose components merely perform their normal functions, or substitutions with predictable results, are generally obvious. The assessment focuses on whether the skilled person would have arrived at the invention without inventive effort.

Question 41Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A claim is directed to a computer-implemented method whose only contribution is the automation of a bookkeeping procedure using standard hardware. How should patentability be assessed in Malaysia?

  1. The method is patentable because it is implemented on a computer
  2. The method is excluded only if no hardware is mentioned in the claim
  3. The method is patentable because bookkeeping is an industrial activity
  4. The method is excluded because it is a method of doing business as such, and the automation adds nothing technical Correct answer.

Explanation

Section 13 excludes schemes, rules and methods for doing business as such. Automating a business method on conventional hardware without any further technical contribution does not escape the exclusion. The presence of generic hardware is not by itself sufficient.

Question 42Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A claimed invention is a method of treating a disease in humans by administering a compound. How does Malaysian law treat such a method claim?

  1. It is patentable only if the compound is new
  2. It is excluded as a method for the treatment of the human body by surgery or therapy Correct answer.
  3. It is patentable because it is industrially applicable
  4. It is excluded because pharmaceutical compounds are never patentable

Explanation

Section 13 excludes methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the body. The exclusion concerns the method claim itself, not the compound. A compound, its composition or a second medical use format may be claimed instead.

Question 43Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which statement correctly distinguishes novelty from inventive step?

  1. Novelty asks whether the invention differs from the prior art, while inventive step asks whether that difference is obvious Correct answer.
  2. Novelty and inventive step are assessed against identical prior art and are therefore the same test
  3. Novelty applies only to products, while inventive step applies only to processes
  4. Novelty asks whether the difference is obvious, while inventive step asks whether the invention differs from the prior art

Explanation

Novelty is a comparison of the claimed invention with the prior art to determine whether it is anticipated. Inventive step then considers whether the differences from the prior art would have been obvious to the skilled person. They are distinct and cumulative requirements.

Question 44Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A Malaysian application claims a perpetual motion machine whose operation contradicts established physical principles. What is the most appropriate objection?

  1. The invention lacks novelty because perpetual motion machines are well known
  2. The invention is excluded as a scientific theory
  3. The invention lacks industrial applicability because it cannot be made or used in practice Correct answer.
  4. The invention is excluded as a presentation of information

Explanation

An invention that cannot be made or used in any kind of industry fails the industrial applicability requirement. A machine whose operation is physically impossible cannot be made or used. The objection is not one of novelty or of excluded subject matter.

Question 45Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A prior art document discloses a process using a temperature of 100 degrees Celsius. The claimed process uses a temperature of 100 degrees Celsius plus or minus 5 degrees. What is the correct novelty analysis?

  1. The claim lacks novelty because the prior value falls within the claimed range Correct answer.
  2. The claim lacks novelty only if the prior document states the range explicitly
  3. The claim is novel because ranges are never anticipated by single values
  4. The claim is novel because the range differs from the single value

Explanation

Where a prior disclosure of a specific value falls within a claimed numerical range, the claim is generally anticipated. The prior document need not express the disclosure as a range. The overlap of the specific value with the claimed range destroys novelty.

Question 46Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A claimed invention differs from the closest prior art only in a feature that the prior art document itself identifies as an optional alternative for achieving the same result. How does this affect inventive step?

  1. The claim lacks novelty because the alternative was mentioned
  2. The claim involves an inventive step because the feature is not the preferred option
  3. The claim involves an inventive step because optional features are excluded from prior art
  4. The claim lacks an inventive step because selecting the disclosed alternative is obvious Correct answer.

Explanation

If the prior art expressly discloses an alternative for achieving the same result, choosing that alternative is a routine and obvious step. The skilled person would arrive at the invention without inventive effort. The objection is one of obviousness rather than lack of novelty.

Question 47Patentability: novelty, inventive step, industrial applicability, excluded subject matter

Which of the following is excluded from patentability under section 13 of the Patents Act 1983?

  1. A plant variety and an essentially biological process for its production Correct answer.
  2. A genetically modified microorganism
  3. A microbiological process for producing a chemical
  4. A pharmaceutical composition comprising a novel compound

Explanation

Section 13 excludes plant and animal varieties and essentially biological processes for the production of plants or animals, while expressly preserving the patentability of microbiological processes and their products. The other options fall within the preserved categories.

Question 48Patentability: novelty, inventive step, industrial applicability, excluded subject matter

An applicant discloses the invention in a confidential meeting with a potential licensee, who later files an application in Malaysia. The original applicant files three months after the meeting. How is novelty affected by the confidential meeting?

  1. Novelty is preserved only if the original applicant files within six months
  2. Novelty is not affected because the disclosure was made under an obligation of confidence Correct answer.
  3. Novelty is destroyed because the disclosure was made before the filing date
  4. Novelty is destroyed only if the licensee paid for the information

Explanation

A disclosure made under an obligation of confidence does not place the information in the public domain, so it does not form part of the state of the art. The information remains confidential and cannot be cited against the applicant. Payment and grace periods are irrelevant to this analysis.

Question 49Patentability: novelty, inventive step, industrial applicability, excluded subject matter

A claim defines a product by a parameter that is not measurable by the methods described in the specification, and the skilled person cannot determine whether a given prior art product falls within the claim. What is the principal defect?

  1. The claim is excluded as a scientific theory
  2. The claim lacks clarity, and the ambiguity hinders comparison with the prior art Correct answer.
  3. The claim is novel because the prior art cannot be compared
  4. The claim lacks industrial applicability

Explanation

A claim whose parameters cannot be measured and whose scope cannot be determined lacks clarity. Ambiguity in defining the claimed product also prevents a proper novelty assessment against the prior art. The defect is one of claim clarity, not excluded subject matter.

Question 50Patentability: novelty, inventive step, industrial applicability, excluded subject matter

An invention lies in the discovery that a known compound exhibits an unexpected second therapeutic property. Which claim strategy best avoids the exclusion for methods of treatment in Malaysia?

  1. Claim the method of treating the disease by administering the compound
  2. Claim a diagnostic method practised on the human body
  3. Claim the discovery of the second therapeutic property
  4. Claim the compound for use in the treatment of the disease Correct answer.

Explanation

Malaysia permits claims in the form of a known substance for use in a method of treatment, which avoids the exclusion directed at treatment methods as such. A direct method-of-treatment claim is excluded, and a mere discovery is not an invention. Diagnostic methods practised on the body are also excluded.