patent registration procedure in malaysia

Transcription

MALAYSIAN BIOTECHNOLOGY CORPORATION SDN BHD
(Company No. 691431-D)
PATENT REGISTRATION
PROCEDURE IN MALAYSIA
<GP/CSSD/FAC/IP001>
10 JULY 2009
AUTHOR:
SUMAH RAMACHANDRAN
Please note that the information contained herein is intended to be used for guidance and knowledge
only. Whilst every effort has been taken to ensure the accuracy and completeness of the contents at
the time this Guidance Paper is issued, inaccuracies may exist due to several reasons including
changes in circumstances and/or amendments brought about due to a change in the policy (s) or
prevailing rules or regulations.
BiotechCorp does not hold out, warrant or guarantee that reliance on the information contained herein
will result in the granting or approval of the matters applied for. BiotechCorp welcomes feedback and
comments on this document. Feedback and comments can be sent to [email protected]
and by stating clearly in the subject line the document title and document Reference No.
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Patent Registration Procedure in Malaysia
TABLE OF CONTENTS
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PAGES
1. OBJECTIVES................................................................................................................ 4
2. INTRODUCTION: BASIC FACTS................................................................................ 4
2.1
Definition of patent....................................................................................... 4
2.2
The need to register a patent....................................................................... 4
2.3
Legislation governing patent protection....................................................... 4
3. PATENTABILITY REQUIREMENTS........................................................................... 4-5
3.1
Eligibility criteria for patentable inventions................................................... 4
3.2
Non-patentable inventions........................................................................... 4
4. PRE-APPLICATION STAGE........................................................................................ 5-7
4.1
Ascertaining patentability............................................................................. 5
4.2
Meaning of prior art...................................................................................... 5
4.3
Prior art search............................................................................................. 5
4.4
Conducting a search.................................................................................... 6
4.5
Patent search resources.............................................................................. 6
5. APPLICATION PROCEDURE....................................................................................... 7-8
5.1
Eligibility of applicant.................................................................................... 7
5.2
Governing body............................................................................................ 7
5.3
Information and documents required........................................................... 7
5.4
Appointment of patent agent........................................................................ 8
6. OUTLINE OF A PATENT SPECIFICATION................................................................ 9-10
6.1
Meaning of patent specification.................................................................... 9
6.2
Layout of a patent specification.................................................................... 9
7. INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA............................... 10-13
7.1
Role of the Intellectual Property Corporation of Malaysia............................ 10
7.2
Services of MYIPO....................................................................................... 11
7.3
Location and contact details......................................................................... 12
7.4
Business hours............................................................................................. 13
8. STAGES OF PROSECUTION OF APPLICATION....................................................... 13-14
8.1
Filing of application...................................................................................... 13
8.2
Preliminary examination............................................................................... 13
8.3
Public inspection.......................................................................................... 13
8.4
Substantive examination.............................................................................. 14
8.5
Registration.................................................................................................. 14
9. DURATION OF PROTECTION..................................................................................... 16
9.1
Duration of patent......................................................................................... 16
9.2
Expiry of patent............................................................................................ 16
10. ENFORCEMENT........................................................................................................... 16
10.1 Remedy for infringement.............................................................................. 16
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Territorial rights............................................................................................ 16
11. PATENT PROTECTION ABROAD.............................................................................. 16-19
11.1 The need to patent abroad........................................................................... 16
11.2 Avenues for patenting abroad...................................................................... 16
11.3 Patent Cooperation Treaty........................................................................... 17
12. APPENDIX.................................................................................................................... 20-40
12.1 Appendix I – Schedule of Forms and Fees.................................................. 21
12.2 Appendix II - Sample of Patent Specification............................................... 26
12.3 Appendix III - List of Registered Patent Agents in Malaysia........................ 33
12.4 Appendix IV - Location Maps of Offices of MyIPO...................................... 38
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OBJECTIVES
The objective of this paper is to provide a guide on the patent registration procedure
in Malaysia. This paper outlines the basic requirements and the different stages
involved in the filing and prosecution of a Malaysian patent application.
2.
INTRODUCTION: BASIC FACTS
2.1
Definition of patent
What is a patent?
A patent is a grant issued to the owner of an invention which gives him
exclusive rights to exploit and control the patented invention for a limited
period of time, in return for the disclosure of his invention.
2.2
The need to register a patent
Must a patent be registered?
A patent must be registered in order to acquire monopoly rights to exploit the
invention.
2.3
Legislation governing patent protection
Which Malaysian legislation governs patent protection?
Patents are governed by the following:i.
The Patents Act 1983
ii.
The Patents Regulations 1986
3.
PATENTABILITY REQUIREMENTS
3.1
Eligibility criteria for patentable inventions
What are the criteria for an invention to qualify for a patent?
An invention is patentable if it:i.
is new or novel - this means that the invention has not been publicly
disclosed (made known to the public) in any form, anywhere in the
world;
ii.
involves an inventive step - this means that the invention must not be
obvious to someone with knowledge and experience in the
technological field of invention;
iii.
is industrially applicable - this means that the invention is capable of
being made or used in any industry; and
iv.
does not fall within the scope of non-patentable inventions as
stipulated by Malaysian patent law (please refer to Section 3.2 below
for further information).
3.2
Non-patentable inventions
Which inventions are not patentable?
In Malaysia, the following inventions are not patentable:i.
discoveries, scientific theories and mathematical methods;
ii.
plant or animal varieties or essentially biological processes for the
production of plants or animals not including man-made living microorganisms, micro-biological processes and products thereof;
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iv.
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schemes, rules or methods for doing business, performing purely
mental acts or playing games; and
methods for the treatment of human or animal body by surgery or
therapy, and diagnostic methods practised on the human or animal
body.
In addition to the above, Malaysian patent law also prohibits the patenting of
any invention that would be contrary to public order or morality, or prejudicial
to the interest or security of the nation.
4.
PRE-APPLICATION STAGE
4.1
Ascertaining patentability
How to ascertain if an invention is patentable?
In deciding whether to obtain patent protection for an invention, it is crucial to
first establish whether the invention qualifies for a patent. This may be done
by conducting a prior art search.
4.2
Meaning of prior art
What is prior art?
Prior art refers to all relevant information or technical knowledge which are
available to the public anywhere in the world before the priority date or first
filing date of the patent application for the subject invention.
Prior art is not limited to just patents and patent applications, but also includes
literature of all kinds.
4.3
Prior art search
What is a prior art search? Why conduct a prior art search?
Basically, a prior art search refers to a review of prior art materials available
from public sources.
For the purpose of patent protection, a prior art search, also known as a
patentability search, is conducted before a patent application is filed. This is
to determine whether the invention is patentable, that is, if the invention is
new and inventive over existing prior art. Should the search uncover relevant
prior art references which are detrimental and likely to render the invention as
not new or obvious, the applicant need not proceed further. On the other
hand, if no relevant prior art references are discovered, the applicant may
decide to move ahead with a patent filing.
It is however important to understand that conducting a prior art search does
not guarantee the successful grant of a patent but at the very least it assists
in making a preliminary assessment of patentability and minimises
unnecessary patenting costs.
Apart from patentability searches, there are various other types of searches
which cater to different needs and objectives.
For instance, a state of the art search is a broad based search covering all
that has been done in a given art and serves many purposes. Some regard it
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as a market survey as it may be used to analyse the current state and trend
of a technology, either in relation to a finished product or one which is being
developed, or for future research and developmental works or in any other
circumstances.
Another type of search which is commonly carried out is a freedom to operate
(FTO) or right to use search. This search is usually conducted to identify if
there are any potential barriers to the commercialisation of a product or a
technology, in other words, whether the commercial activity may be carried
out without infringing the rights of a third party. A FTO search is typically
conducted as a preventive measure to avoid potential infringement.
Other types of searches include infringement and validity searches. An
infringement search is performed to determine if an invention infringes an
existing patent or the claims of a particular patent infringe any other patent.
A validity search is performed after a patent is granted to verify whether the
same is valid or otherwise. The validity search is also useful in a defence
against a patent infringement suit whereby it would attempt to uncover issued
patents or other prior art that may render the subject patent partially or
completely invalid.
4.4
Conducting a search
How to conduct a search?
A prior art search can be carried out by searching patent databases and
relevant non-patent literature including scientific journals, magazines,
brochures, newspapers etc. using keywords relevant to the invention or
technical field of the same, patent classification, a competitor’s name or any
other search criteria as deemed appropriate.
The search may be carried out either by the applicant himself or an
experienced professional may be engaged for this purpose. For an untrained
or inexperienced person, the patent search process may be a complex and
tedious affair. In such instances, it is advisable to seek professional
assistance.
4.5
Patent search resources
Where to search for patents?
There are some online patent databases made available by patent offices
around the world, which allow for free patent searches. Listed below are web
page links of some of them:i.
World Intellectual Property Organization (WIPO)
http://www.wipo.int/pctdb/en
ii.
European Patent Office (EPO)
http://ep.espacenet.com
iii.
IP Australia
http://www.ipaustralia.gov.au/patents/search_index.shtml
iv.
United Kingdom Intellectual Property Office (UK IPO)
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http://www.ipo.gov.uk/types/patent/p-os/p-find.htm
v.
United States Patent and Trademark Office (USPTO)
http://patft.uspto.gov
Some other patent databases and search engines will require payment for
use such as:vi.
Delphion
http://www.delphion.com/research
vii.
MicroPatent
http://www.micropat.com
In Malaysia, the Intellectual Corporation of Malaysia (MyIPO) provides an online search facility known as PANTAS. For more information, please refer to
Section 7.2.
5.
APPLICATION PROCEDURE
5.1
Eligibility of applicant
Who may apply?
The owner of the invention is eligible to apply for a patent. The owner may be
an individual or a company.
5.2
Governing Body
Where to file?
An application for a patent in Malaysia must be filed with the Patent
Registration Office of the Intellectual Property Corporation of Malaysia
(MyIPO). The Patent Registration Office is responsible for the administration,
processing and registration of patents and certificate for utility innovations.
The application may be submitted to the Patent Registration Office by hand or
mail. The location and contact details of the offices are provided in Section
7.3.
Alternatively, the application may be submitted through an online filing system
at https://pantas.myipo.gov.my/online/main/.
For further information on the Intellectual Property Corporation of Malaysia
(MyIPO), please refer to Section 7.
5.3
Information and documents required
What are the information and documents required for filing a patent
application in Malaysia?
To file an application in Malaysia, the applicant is required to lodge the
following with the Patent Registration Office:i.
Form 1 (for an application for a patent);
ii.
A patent specification consisting of a description of the invention, a
claim or a set of claims, an abstract and drawings (if any); and
iii.
Payment of the prescribed filing fee.
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The following information must be provided in Form 1:i.
name, address and nationality of the applicant(s);
ii.
name and address of the inventor(s); and
iii.
priority details (if applicable) i.e. the filing date, application number and
country of an earlier application from which priority is claimed (this
only applies if the applicant has filed an earlier application for the
same invention. The earlier application, which is the first application
for the invention, is called the priority application, and it must have
been filed not more than 12 months before the filing date of the
application in Malaysia).
Additionally, the following documents are also required to be submitted to the
Patent Registration Office, if applicable:i.
Form 17 (Appointment of Patent Agent), if a patent agent is appointed;
and
ii.
The Statement Justifying the Applicant’s Right to a Patent, if the
applicant is not the inventor of the invention.
For more information on the patent specification, please refer to Section 6.
5.4
Appointment of Patent Agent
Who is a patent agent?
A patent agent is a qualified professional who specialises in patent work.
Generally, a patent agent advises on the patentability of an invention,
conducts patent searches, prepares the patent specification and handles the
filing and prosecution of patent applications amongst others.
Is it necessary to appoint a patent agent?
An applicant who is either a domicile or resident in Malaysia may file an
application on his own behalf or choose to appoint a registered patent agent
to handle the filing and prosecution of his application.
Although it is not a requirement for a local applicant to appoint a patent agent,
given the complexities of the patenting process, it is advisable for the
applicant to consider seeking the services of a registered patent agent to
assist him with his application, especially with the drafting of the patent
specification.
It is also important for the applicant to understand that the patent prosecution
process is lengthy and involves several steps which require appropriate
actions to be taken in a timely manner. Failure to do so may result in
unfavourable consequences for the applicant, even leading to the refusal of
the patent application. Engaging an experienced patent agent may reduce
such risks or burden for the applicant.
A foreign applicant however is required to appoint a local patent agent to act
on his behalf.
A list of registered patent agents in Malaysia is available at the MyIPO
website at http://www.myipo.gov.my. For easy reference, please refer to
Section 12.3 (Appendix III).
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OUTLINE OF A PATENT SPECIFICATION
6.1
Meaning of patent specification
What is a patent specification?
A patent specification is a technical document containing a detailed
description of an invention for which patent protection is sought. The
document also sets out the scope of protection of the patent. As such, it is
very important for the patent specification to be prepared carefully, preferably
with the assistance of an expert, to ensure that the invention is protected
adequately.
6.2
Layout of a Patent Specification
A patent specification basically contains a description of the invention, a claim
or set of claims and drawings (if any), and is accompanied by an abstract.
6.2.1
Description
The description, in essence, is a disclosure of the invention. The
description generally includes several parts as listed below and is
prepared according to the following order:i.
Title of the invention
• The title is required to indicate the subject matter of the
invention in a clear and concise manner.
ii. Technical field of the invention
• A general statement which specifies the technical field to
which the invention relates.
iii. Background art
• An indication of any relevant background art known to the
applicant, which can be regarded as useful to the
understanding, search and examination of the invention.
• Any known published documents reflecting such art may
also be cited, where possible.
iv. Disclosure of the invention
• This section provides an explanation of the invention in a
manner sufficiently clear and complete for the invention to be
evaluated and carried out by a person having ordinary skill in
the art.
• Also, any advantageous effects of the invention with
reference to background art must be stated.
v. Description of the drawings
• Where drawings are included, a brief description of each
figure of the drawings is required to be provided in this part.
vi. Best mode or preferred embodiment of the invention
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This part is a description of the best mode of the invention
contemplated by the applicant for carrying out the invention,
with reference to examples where appropriate and drawings, if
any.
The best mode or preferred embodiment of the invention
basically refers to the best way known to the applicant to
carry out the invention.
vii. Industrial application
• When it is not obvious from the description or nature of the
invention, it is advisable to indicate explicitly, the way in
which the invention is industrially applicable, in other
words, the way in which the invention can be made or used.
6.2.2
Claims
The claims, which define the invention in terms of its technical
features, must be clear and concise and also fully supported by the
description.
The claims are the most important part of a patent specification as
they define the scope of protection for the invention. It is therefore
crucial to ensure that the claims are drafted with great care to provide
the invention adequate protection.
6.2.3
Drawings
Drawings are required to be included when they are necessary for the
understanding of the invention. Drawings may be in the form of flow
sheets and diagrams.
6.2.4
Abstract
The abstract is basically a summary or concise description of the
invention in about 150 words or less, which gives a general overview
of the invention. In a nutshell, the abstract should indicate the
technical field of the invention, the existing technical problem, the gist
of the solution to the problem through the invention and the principal
use or uses of the invention.
The abstract also serves as an efficient tool for the purpose of
searching in a particular technical field.
For a sample of a patent specification, please refer to Section 12.2
(Appendix ll).
7.
INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA
7.1
Role of the Intellectual Property Corporation of Malaysia
The Intellectual Property Corporation of Malaysia, also known as MyIPO, is
the organisation responsible for the development and management of the
intellectual property (IP) system in Malaysia, which includes patents, trade
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marks, industrial designs, copyright, layout designs of integrated circuits and
geographical indications.
The functions of MyIPO include:i.
ii.
iii.
iv.
v.
vi.
vii.
viii.
ix.
ensuring the provisions of the IP Legislation are administered and
enforced accordingly;
administering, collecting and enforcing payments of prescribed fees or
any other charges under the IP Legislation;
regulating and supervising issues or matters relating to IP in relation to
the IP Legislation;
advising on the review and updating of the IP Legislation;
encouraging and promoting the training and the dissemination of
information on IP;
promoting and organising cooperation programmes at national or
international level;
safeguarding the interest of Malaysia in respect of any agreement or
international convention to which Malaysia is a party;
advising the Government on developments at international level on
issues or matters relating to IP; and
carrying out research and studies on IP issues.
Besides its objectives to strengthen IP laws in the country and establish a
strong and effective administration, MyIPO also aims to promote public
awareness on the importance of IP and provide advisory services,
comprehensive and user-friendly information on IP.
7.2
Services of MyIPO
The services offered by MyIPO are as follows:i.
Registration of patents (and certificate for utility innovations), trade
marks, industrial designs and geographical indications;
ii.
Advisory and consultancy services on IP;
iii.
Providing IP information and statistical data;
iv.
Conducting training and outreach programmes;
v.
Conducting patent agent examinations;
vi.
Providing online services (i.e. online search, filing and checking
application status) through the Patent and Trade Marks Administration
System known as PANTAS; and
vii.
Helpdesk
Any person who has enquiries regarding IP or intends to use the
services/facilities at MyIPO, may contact or visit the MyIPO offices and seek
assistance from the helpdesk officers on duty.
The PANTAS online search facilities (for patent and trade mark searches) are
available to the public at an hourly fee of RM20.00. Please note that the
searches need to be conducted by the public themselves as the officers at
MyIPO do not perform the searches on behalf of the public. However,
assistance may be sought from the helpdesk officers available.
The online services are also available for subscription, at a nominal fee.
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The helpdesk and the PANTAS on-line search facilities at MyIPO are located
on Level 32, Menara Dayabumi. For further details on the location, please
refer to Section 7.3.
For more information on MyIPO, please visit http://www.myipo.gov.my.
7.3
Location and Contact Details
The head office of MyIPO is situated in Kuala Lumpur, whereas its two branch
offices are located in Kota Kinabalu, Sabah and Kuching, Sarawak
respectively.
The location and contact details of the offices of MyIPO are as follows:Offices
Head Office:
Kuala Lumpur
Contact Details
Patent Registration Office
Intellectual Property Corporation of Malaysia
(Perbadanan Harta Intelek Malaysia)
Level 32, Menara Dayabumi
Jalan Sultan Hishamuddin
50623 Kuala Lumpur
[For Location Map, please refer to Appendix IV]
Phone No: 603-2263 2100 (Operator) /
603-2274 5113 (Helpdesk)
Fax No:
603-2274 1332
Branch Office:
Kota
Kinabalu, (Perbadanan Harta Intelek Malaysia)
Sabah
6th Floor, Block C
Kompleks KUWASA (KWSP)
49, Jalan Karamunsing
88000 Kota Kinabalu
Sabah
Phone No: 6088-254524
Fax No:
6088-257046
Branch Office:
Kuching, Sarawak
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(Perbadanan Harta Intelek Malaysia)
Lot 9936, (Sublot 5), 3rd Floor,
Queen's Court, Block E
Jalan Wan Alwi
93350 Kuching
Sarawak
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Phone No: 6082-459075/459076
Fax No:
6082-455052
7.4
Business Hours
The business hours are as follows:Offices
Registration Counter
Payment Counter
Head Office:
8.15 a.m. – 5.15 p.m.
8.15 a.m. – 5.15 p.m.
Kuala Lumpur
Branch Office:
8.00 a.m. – 4.30 p.m.
8.00 a.m. – 4.30 p.m.
Kota Kinabalu, Sabah
Branch Office:
8.00 a.m. – 4.30 p.m.
8.00 a.m. – 4.30 p.m.
Kuching, Sarawak
Note: All counters will be closed on Fridays from 12.15 p.m. – 2.45 p.m.
8.
STAGES OF PROSECUTION OF APPLICATION
What are the stages involved in the prosecution of an application?
Generally, an application for a patent goes through the following stages as illustrated
in the chart below:8.1
Filing of Application
After receiving the application and the prescribed payment of the official filing
fees, a formalities examiner at the Registry of Patents will check the
application to see if the minimum filing requirements have been fulfilled. If so,
the Registry will issue / accord the application an official filing date. A
Certificate of Filing bearing the official filing date and the allotted patent
application number will be issued to the applicant.
8.2
Preliminary Examination
The application will then be subjected to a preliminary examination whereby
the application will be examined to see if there is compliance with the formal
requirements.
If there is any non-compliance, a Preliminary Examination Adverse Report
indicating the non-compliances will be issued, giving the applicant a period of
three months to address the non-compliance and respond to the same.
Failure to respond to the report within the given time frame will result in the
application being refused.
However, if the formal requirements have been met, or the non-compliances
have been addressed, a Preliminary Examination Clear Report will be issued.
8.3
Public Inspection
After 18 months from the filing date or the earliest priority date, details of the
pending Malaysian application, including the patent specification are made
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available for public inspection. The application however is not published in
printed form.
8.4
Substantive Examination
The next step is the filing of the request for substantive examination, either
full examination or modified examination, or the request to defer the request
for substantive examination, which must be made within two years from the
filing date of the application. Failure to do so within the stipulated time frame
will result in the application being deemed as withdrawn.
The request for full substantive examination is made on Form 5 whereas for
modified examination, the request is made on Form 5A. The prescribed
official fee must be paid at the time of filing the request.
As for the deferment of substantive examination, the request needs to be
made on Form 5B. There is however no payment required for the request for
deferment.
During the substantive examination stage, the patent examiner will conduct a
search and examination of the application to ascertain if the invention is
registrable and in compliance with Malaysian patent law.
If the examiner has objections, a Substantive Examination Adverse Report
indicating the nature of the objections will be issued, giving the applicant a
period of three months to respond to the same. Failure to respond to the
report within the given time frame will result in the application being refused.
In some cases, subsequent Substantive Examination Adverse Reports may
be issued if the objections raised in the earlier report have not been
addressed to the satisfaction of the examiner.
However, if the examiner is satisfied that all requirements have been met, or
the objections have been overcome, a Substantive Examination Clear Report
will be issued and the applicant will be requested to pay the registration fee
within two months.
8.5
Registration
Upon payment of the registration fee, a Certificate of Grant will be issued and
details of the same will be recorded in the Register of Patents.
Also, the particulars of the patent, together with the abstract will be published
in the Government Gazette.
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FLOWCHART OF PATENT REGISTRATION PROCEDURE
IN MALAYSIA
Filing of Application
Application
Accorded Filing Date
Response filed (Compliance)
Preliminary
Examination
Preliminary
Examination Adverse
Report
Application
Refused
Compliance
Application LaidOpen for Public
Inspection
Request not filed
Request for
Substantive
Examination
Application
Deemed
Withdrawn
Response filed (Compliance)
Request
filed
Substantive
Examination
Substantive Examination
Adverse Report
Application
Refused
Compliance
9.
Registration
(Certificate
of Grant
DURATION
OF PROTECTION
Issued)
9.1
Duration of patent
What is the duration of a patent?
Advertisement in
The duration of a patent, upon grant, is twenty years from the filing date of the
Government Gazette
application, subject to payment of prescribed annual fees.
9.2
Expiry of patent
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What happens when a patent expires?
When a patent expires, the period of protection ends and the owner no longer
has exclusive rights over the patented invention. The invention then enters
the public domain and the same can be commercially exploited by any
person.
10.
ENFORCEMENT
10.1
Remedy for Infringement
How are patent rights enforced? What are the remedies available for
infringement?
The owner of a patent may initiate civil action against any person who has
infringed or is infringing the patent. The relief available for infringement
includes injunction, damages and an account of profits. The court may also
order for forfeiture or destruction of the infringing goods.
10.2
Territorial Rights
Does a patent registered in Malaysia provide protection abroad?
A Malaysian patent provides protection only in Malaysia. For protection in
other countries, applications need to be made in those countries.
11.
PATENT PROTECTION ABROAD
11.1
The need to patent abroad
Why apply for patents abroad?
As patent rights are territorial in nature, a patent granted is Malaysia only
protects the invention in Malaysia. It does not provide protection outside
Malaysia. Thus, if patent protection for the invention is desired in other
countries, separate applications for patents must be filed in each of those
countries.
11.2
Avenues for patenting abroad
How to obtain patent protection abroad?
Basically, there are two ways to obtain patent protection abroad. One way is
through national applications while the other is via an international
application.
11.2.1 National route
If the national route is chosen, a separate patent application in each of
the countries of interest needs to be filed. This option is usually
selected if the number of countries in which patent protection is sought
is very small. Otherwise, this route may prove to be expensive as well
as cumbersome.
11.2.1 International route
For those seeking patent protection in many countries, it is advisable
to consider opting for the international route by filing one single
international application as provided by the Patent Cooperation Treaty
(PCT).
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11.3
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Patent Cooperation Treaty
What is Patent Cooperation Treaty (PCT)?
PCT is an international treaty, which provides a unified and simplified
procedure for obtaining patent protection in a large number of countries
through filing one single patent application. This single application filed under
the PCT system is known as an international application or PCT application.
The PCT system however does not grant an international patent. The
granting of patents is controlled by the national (and regional) patent offices in
accordance with their local patent laws.
This option however is only available for nationals or residents of member
countries of the Patent Cooperation Treaty. Malaysia is one of the 141
members of the PCT (as at March 19, 2009).
Phases of PCT application
The PCT application procedure, basically, is divided into two phases:
international phase and national phase.
11.3.1 International Phase
The international phase, governed by the PCT and its Regulations,
starts at the filing of the PCT application and ends when the
application enters into each of the countries of interest where
protection is sought.
There are three stages in this international phase, which are as
follows:•
Filing of PCT application
As with any patent application, the first step for a PCT application
is filing a formal request, which consists of the PCT request form,
the patent specification and the prescribed fee, with the receiving
patent office. At this stage, the applicant also designates the
countries of interest in the PCT request form.
In Malaysia, PCT applications may be filed at the MyIPO as the
receiving office.
•
International Search and Publication
The PCT application is then subjected to an international search to
identify whether any prior art which would affect the patentability of
the invention is available. On completion, an International Search
Report and a Written Opinion on the findings will be issued. No
official request for search need be made as the search will be
conducted as a matter of course.
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After 18 months from the priority date or the international filing
date (whichever is the earlier), the PCT application together with
the International Search Report is published.
•
International Preliminary Examination
The International Preliminary Examination is an optional step. If
the applicant opts for the same, the request for the examination
must be made within 22 months from the priority date or the
international filing date (whichever is the earlier). On filing the
request, a preliminary examination on the patentability of the
invention is conducted and an International Preliminary
Examination Report (IPER) on the findings of the examination is
issued.
This marks the end of the international phase.
11.3.2 National Phase
In order for the PCT patent application to be protected in the
designated countries, separate applications need to be filed in each
individual country. The entry into the individual countries is the
beginning of the national phase, where national patent laws will apply.
To enter the national phase in Malaysia, an application must be filed
with the MyIPO within 30 months from the priority date of the PCT
application. The application consists of a copy of the international
application (in the English language) and the prescribed form (Form
2A) together with the prescribed fee.
On entry into the national phase in Malaysia, the application will be
subjected to Malaysian patent laws and the same will be processed in
accordance with the local patent examination and registration
procedures.
11.3.3 Flowchart of PCT Application Procedure
The different stages of a PCT application are as illustrated in the
flowchart below:-
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FLOWCHART OF PATENT COOPERATION TREATY
APPLICATION PROCEDURE
Filing of Priority
Application
0 month
Filing of PCT
Application
12th month
International Search
Report
16th month
International Publication
18th month
Demand for International
Preliminary Examination
22nd month
International Preliminary
Examination Report
28th month
International
Phase
12.
APPENDIX
12.1
Appendix I – Schedule of Forms and Fees
12.2
Appendix II - Sample of Patent Specification
12.3
Appendix III - List of Registered Patent Agents (Active) in Malaysia
12.4
Appendix IV –Location Maps of Offices of MyIPO
National Phase
<GP/CSSD/FAC/IP001>
30th month
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<GP/CSSD/FAC/IP001>
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APPENDIX I
<GP/CSSD/FAC/IP001>
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APPENDIX I
SCHEDULE OF FORMS AND FEES
Item
No.
1.
2.
3.
4.
Forms
F1
F2
F2A
F2B
5.
6.
7.
F5
F5A
F5B
8.
9.
10.
11.
12.
F5C
F5D
F5E
F5F
13.
F5G
F6
14.
F7
15.
F8
16.
P9
17.
F10
18.
19.
F11
F12
20.
21.
F13
22.
F15
23.
24.
F16
F16A
F14
<GP/CSSD/FAC/IP001>
PART I
Matter/Proceeding
(a) Request for grant of patent
(b) Claims
(i) for first ten claims
(ii) for every additional claim
Declaration of withdrawal of application
Entering National Phase
(a) for first ten claims
(b) for every additional claim
Request for reinstatement (under Section 78OA)
Request for substantive examination
Request for modified substantive examination
Request for deferment of filing of request for
examination or provision of information
Request for certified copies or extracts
Request to amend Register
Request for reinstatement of lapsed patent
Request for licence to exploit patented invention
Request to convert application for patent into
application for certificate for utility innovation or
vice-versa
Application for recording of assignment or
transmission
Application for entry in Register that any person
may obtain a licence
Application for cancellation of entry in Register that
any person may obtain a licence
Request for recording of particulars of licence
contract in Register
Request for recording expiry or termination of
licence contract in Register
Application for compulsory licence
Request for amendment of decision granting
compulsory licence
Request for cancellation of compulsory licence
Application for grant of certificate for utility
innovation
Application to extend term of certificate for utility
innovation
Request to amend application for grant of patent
Request to amend patent
Fee (RM)
200.00
Nil
10.00 per
claim
200.00
10.00 per
claim
500.00
per
month of
delay
700.00
450.00
50.00
50.00
100.00
200.00
100.00
50.00
50.00
100.00
75.00
75.00
75.00
75.00
100.00
100.00
50.00
50.00
22
BiotechCorp
25.
26.
27.
F17
F18
28.
29.
30.
F18B
31.
32.
33.
F20
F21
St.Just.
F18A
F19
<GP/CSSD/FAC/IP001>
Appointment or change of patent agent
Application for registration of patent agent
Application for registration as candidate for
examination
Application to re-sit examination
[deleted]
Application for renewal of registration of patent
agent
Furnishment of address for service
Request for extension of time
Statement Justfying The Applicants Right To A
Patent/Certificate
Version 1.0
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2000.00
100.00
100.00
400.00
100.00
200.00
-
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APPENDIX I
SCHEDULE OF FORMS AND FEES
Item
No.
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
PART II
Matter/Proceeding
Copy of patent
Copy of search report
Examination of register
Certified copies or extract from Register
Copies or extract from Register
Fee for public inspection of information relating to
patent application
Certified copies or extract of any information :(a) for first five pages
(b) for every additional page
Annual fee for patent :
a) for second year
b) for third year
c) for fourth year
d) for fifth year
e) for sixth year
f) for seventh year
g) for eighth year
h) for ninth year
i) for tenth year
j) for eleventh year
k) for twelveth year
l) for thirteenth year
m) for fourteenh year
n) for fifteenth year
o) for sixteenth year
p) for seventeenth year
q) for eighteenth year
r) for nineteenth year
s) for twentieth year
Surcharge for reinstatement
Surrender of compulsory licence
Surrender of patent
Annual fee for certificate for utility innovation :
(a) for third year
(b) for fourth year
(c) for fifth year
(d) for sixth year
(e) for seventh year
(f)
for eighth year
(g) for ninth year
(h) for tenth year
(i)
for eleventh year
<GP/CSSD/FAC/IP001>
Fee (RM)
30.00
20.00
10.00 per hour
10.00 per page
2.00 per page
10.00 per hour
100.00 per page
2.00 per page
200.00
250.00
300.00
350.00
400.00
450.00
500.00
550.00
600.00
650.00
700.00
800.00
900.00
1000.00
1200.00
1400.00
1600.00
1800.00
2000.00
100 % of fee for
year concerned
60.00
60.00
120.00
160.00
160.00
200.00
200.00
240.00
240.00
280.00
400.00
24
BiotechCorp
13.
14.
15.
(j)
for twelveth year
(k) for thirteenth year
(l)
for fourteenh year
(m) for fifteenth year
(o) for sixteenth year
(p) for seventeenth year
(q) for eighteenth year
(n) for nineteenth year
(r)
for twentieth year
Holding of hearing
Certificate of grant of a patent
Certificate for a utility innovation
Version 1.0
10 July 2009
600.00
700.00
800.00
1000.00
1100.00
1200.00
1300.00
1400.00
1500.00
100.00
150.00
100.00
16.
Appeal against examination results
200.00 per subject
17.
Extension of time (for every month or part of a month)
50.00 per month
18.
Surcharge for late payment of annual fee
19.
Public search through computer
100 % of fee for
year concerned
20.00 per hour
20.
Computer print-out (Bibliography data)
5.00 per page
21.
Permitted information (upon request)
22.
Fee for preparing international application
<GP/CSSD/FAC/IP001>
100.00 for less
than 10 pages and
5.00 for the
subsequent pages
2.00 per page
25
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APPENDIX II
<GP/CSSD/FAC/IP001>
26
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APPENDIX II
SAMPLE OF A PATENT SPECIFICATION
(courtesy of the Intellectual Property Corporation of Malaysia)
<GP/CSSD/FAC/IP001>
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APPENDIX III
<GP/CSSD/FAC/IP001>
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APPENDIX III
LIST OF REGISTERED PATENT AGENTS IN MALAYSIA
As at 31 December 2008
(courtesy of the Intellectual Property Corporation of Malaysia)
WILAYAH PERSEKUTUAN KUALA LUMPUR
NO.
NAME
1.
2.
3.
4.
5.
6.
7.
8.
9.
EN. LEE TAT BOON
EN. WONG SAI FONG
EN. PATRICK MIRANDAH
CIK KATHERINE LIM SUI HONG
EN. HARIRAM JAYARAM
EN. LIM CHONG CHUAN
EN. P. KANDIAH
EN. TEN YEE PHOR
PASUPATHI SITHAMPARAM
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
PN. ROSHAYATI BT ABD GHANI
EN. DARRYL GOON SIEW CHYE
EN. TIMOTHY SIAW YEAN HWA
CIK HO CHEE KIT
MS. YAP TAI LAN
MS. CHARMAYNE ONG POH YIN
EN. V. PARAMASIVAN
EN. MICHAEL SOO CHOW MING
EN. MICHAEL CHAI WOON CHEW
EN. KOO CHIN NAM @ KHO CHIN NAM
EN. CHANDRA A/L KUMARAN
21.
BETTY CHEW PHAIK KHIM
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
32.
33.
34.
35.
36.
37.
P. SHANMUGAM @ S.A. PONMUGAM
CIK WONG JIN NEE
ZAHARIZAN BT. AHMED MEAH
EN. CHEW PHYE KEAT
EN. TEO BONG KWANG
EN. TAN SENG NGEE
MS. FOONG SEET FUN
GOH MENG YEW
MS. WANG CHAW LING, LINDA
EN. DAVID ALAN WYATT
MS. TAN CHUI LIN
MS. CHEW KHERK YING
MR. LOK CHOON HONG
BENJAMIN JOHN THOMSON
EN. LIM TEE POK
LIM KOCK HOOI
<GP/CSSD/FAC/IP001>
TELEPHONE NO.
TEL : 03-2094 8111
TEL : 03-2070 0644
TEL : 03 2278 8686
TEL : 03-21421355
TEL : 03- 2693 1125 / 2693 5123
TEL : 03-7982 9887
TEL : 03-2284 7872
TEL : 03-2770 0088
TEL : 03-2691 9363 / 2691 0418/
2691 0451
TEL : 03-2162 2522
TEL : 03-2694 9999
TEL : 03 2070 0644
TEL : 03-2732 3888
TEL : 03-2094 8111
TEL : 03-2548 111
TEL : 03-2282 9257
TEL : 03-2031 1788
TEL : 03-2166 8662
TEL : 03- 2273 0688 / 2033
TEL : 03-2691 8636 / 03-2691
5326
TEL : 03-2692 7533 / 03-2692
7629
TEL : 03-2161 6877
TEL : 03-2092 3322
TEL : 03-2162 2522
TEL : 03-2694 9999
TEL : 03-2092 3322
TEL : 03-2697-1668
TEL : 03-2162 2522
TEL : 03-2732 3888
TEL : 03-2050 1888
TEL : 03-2143 9122
TEL : 03-2163 3233
TEL : 03-2055 1888
TEL : 03-2148 5050
TEL : 03-6203 1318
TEL : 03-42910255
TEL : 03-2164 0200
34
BiotechCorp
38.
39.
40.
41.
42.
43.
44.
45.
46.
47.
48.
49.
50.
51.
52.
53.
54.
55.
56.
57.
58.
59.
60.
61.
62.
63.
64.
65.
66.
67.
68.
69.
70.
71.
72.
73.
74.
75.
76.
77.
78.
79.
80.
81.
82.
83.
84.
85.
86.
87.
CAROLINE ANNE A/P FRANCIS XAVIER
MONEY
AMBIGA A/P SREENEVASAN
TAN ENG CHOONG
TAI FOONG LAM
HO YING DAT LAWRENCE
NIK HISHAM BIN NIK ABD. HALIM
SUMAH A/P RAMACHANDRAN
SALWA BINTI ABDUL SHUKOR
JURIYAH @ JURAIYAH JAMALUDIN
THYE YAN MEE
MAHESWARI A/P KUMARAPPAN
WENDY LAM MEI KUAN
CHEONG YOKE PING
GANESHNATHAN A/L RAMANATHAN
YIP JIUN HANN
JASON CHEAH YUE MENG
ANDREW SIEW ONN THIUN
ONN YEN YEN
ABDUN NIZAR BIN AHMAD
EUGENE ROY JOSEPH
YOW TING FONG
LEE SWEE SENG
ZARAIHAN BINTI SHAARI
SULAIMAN BIN OSMAN
SU SIEW LING
MOHANA MURALI A/L KODIVEL
NIZARULIKRAM B. ABDUL RAHIM
YONG CHEE KONG
STEPHEN KHAW TIEN CHYE
MICHELE YEOH EE LEEN
AZLINA AISYAH BINTI KHALID
WONG SOOK FUN
MANIAM A/L MAHALINGAM
EE CHAI HAK
PAULINE KHOR HONG PING
GOH JOO SEONG
LEELA DEVI A/P BASKARAN
AINOON BT SHABIRIN
NG CHEE WENG
M. ANGELINE RAJ
KEVIN KOO SENG KIAT @ KOH SENG
KIAT
KUEK PEI YEE
YAP KAH HONG
TAN BOON LENG
RAMAKRISHNA DAMODHARAN
GERALD PETER SAMUEL
SOO EE LIN
FIONA TERESA JEFFERY
BOEY WENG CHOONG
SURENDRAN A/L S.SUBRANIAM
<GP/CSSD/FAC/IP001>
Version 1.0
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TEL : 03-2693 1125 / 2693 5123
TEL : 03 2095 2122
TEL : 03-2070 1788
TEL : 03-2161 2330
TEL : 03-2072 5789 / 2072 6789
TEL : 03-2144 0537
TEL : 03-2116 5407
TEL : 03-2698 6255
TEL : 03-2287 6228
TEL : 03-2166 8662
TEL : 03-20951593 /1592
TEL : 03-2691 5093
TEL : 03-2273 9849
TEL : 03- 6274 5352
TEL : 03-2143 9122
TEL : 03-2143 9122
TEL : 03-2143 9122
TEL : 03-2143 9122
TEL : 03-2697 0200
TEL : 03-7227 8336
TEL : 03-2273 5563
TEL : 03- 2070 0644
TEL : 03-2692 3433
TEL : 03-2050 1888
TEL : 03-4042 2292
TEL : 03-2691 8085
TEL : 03-2691 8085
TEL : 03-7728 2896
TEL : 03-2710 5555
TEL : 03-2143 9122
TEL : 03-2732 3888
TEL : 03-2278 8686
TEL : 03-8737 3117
TEL : 03-2076 2881
TEL : 03-2161 0803
TEL : 03-2094 8111
TEL : 03- 2092 2781
TEL : 03-2697-1668
TEL : 03-2697 1668
TEL : 03- 2273 0688 / 2033
TEL : 03-2094 8111
TEL : 03-40235978
TEL : 03-7783 8826
TEL : 03-2278 8686
TEL : 03-2274 2915
TEL : 03-2697-1668
TEL : 03-2188688
TEL : 03-2188688
TEL : 03-20311933
35
BiotechCorp
88.
89.
AMRIL BIN GHAZALI
SUSHIL KAUR D/O N. GURNAM SINGH
90.
91.
92.
93.
CHUA AI LIANG
RATHIMALAR A/P GRANASUNDRAM
FOONG CHENG LEONG
BAHARI YEOW TIEN HONG
Version 1.0
10 July 2009
TEL : 03-26988955
TEL : 03-92856331 / 0162215352 / 016-2121095
TEL : 03-2298 7888
TEL : 03-2274 5715
TEL : 03-2161 2330
TEL : 03-2161 2330
SELANGOR DARUL EHSAN
NO. NAME
1.
2.
EN. SHAHINUDDIN B. SHARIFF
EN. MOHD BUSTAMAN B. ABDULLAH
3.
4.
5.
6.
7.
8.
9.
10.
11.
EN. ALLAN LOO KEAN HUAT
MS. S.T. RANI CHRISTINA A/P
SIVAPIRAGASAM
MR. EE TEE GIN
EN. MOHAMAD NAWAWI B. HUSSIN
EN. A. RAHMAN ZUHRI
MR. LEE YUKE CHIN
DESMOND WEE TIAN PENG
TITI DOLAI BTE AB. KAHAR
NAIDU A/L APPANAN
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
GOH NGE SEUNG
SAHANI AHMAD
ANGELINE CHIN YOKE FONG
WONG HUEI NIANG
CHUAH JERN ERN
NG MAE LIN
CLARA YIP CHOON FOONG
ONG CHUI KOON
AHMAD FAZLI B. AHMAD NORDIN
LAW YEW FOO
NORUNNUHA BT. DATUK HJ. NAWAWI
NOR MARHAMAH BT YAHYA
LAW YEW FOO
NORHAYATI BT HASSAN
RAVIRAJAN A/L NARAYANASAMY
TEH TAI YONG
LEE WAI SEE
TEH CHEE KHENG
LIM KENG MUI
ADHUNA KAMARUL ARIFFIN
32.
33.
NG SHIH SHING
TAN SIN SU
<GP/CSSD/FAC/IP001>
TELEPHONE NO.
TEL : 03-4270 7555
TEL : 03-4270 1819/03-4270
1820
TEL : 03-7957 2790
TEL : 55135610/2/3
TEL : 03-8736 1953
TEL : 03-5446127
TEL : 03-5446135
TEL : 603 7727 1772
TEL : 03-8070 9513
TEL : 03-5544 6130
TEL : 03-58826094 / 03-5882
1054
TEL : 03-7805 4350
TEL : 03-5544 6131
TEL : 03-7563115
TEL : 03-78048755/017-8865115
TEL : 603-7957 1472
TEL : 603-7957 1472
TEL : 603-7882 0456
TEL : 603-5544 6134
TEL : 03-42703861
TEL : 603-7725 5920
TEL : 03- 8922 2518
TEL : 03-42784580
TEL : 603-7725 5920
TEL : 03-5544 6137
TEL : 03-4105 1751
TEL : 03-3343 7789
TEL : 03-6274 7417
TEL : +603-80683579
TEL : +603-80683579
TEL : 03-4270 1819/03-4270
1820
TEL : 012-3061533
TEL: 03-77253860
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PULAU PINANG
NO. NAME
1.
2.
3.
4.
5.
TELEPHONE NO.
EN. HUANG PETER
EN. RICHARD HUANG
EN. KHAW HANG MENG
EN. LEONG WENG KHUAN
LIM SWEE EE
TEL : 604-22 6862
TEL : 604-22 6862
TEL : 04-227 6862
TEL : 604-263 1118
TEL : 04-226 1023
JOHOR DARUL TAKZIM
NO. NAME
1.
2.
3.
TELEPHONE NO.
EN. MAHADEVAN DAVID DEVARAJA
TAY YEO KING
NORIZAN BTE TARMEZE @ GHAZALI
TEL : 07-224 0981/03-3187 1697
TEL : 016-7459697
TEL : 07-222 8878
MELAKA
NO. NAME
1.
TELEPHONE NO.
EN. HO WAI CHEONG
TEL : 06-282 2008
NEGERI SEMBILAN
NO. NAME
1.
TELEPHONE NO.
EN. YANG TEK YEH
TEL : 06-6322888
PERAK DARUL RIDZUAN
NO. NAME
1.
OOI SIEW TING @ KONG SIEW TING
<GP/CSSD/FAC/IP001>
TELEPHONE NO.
TEL : +605-5456627
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APPENDIX IV
<GP/CSSD/FAC/IP001>
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APPENDIX IV
LOCATION MAPS OF
OFFICES OF MyIPO
HEAD OFFICE: KUALA LUMPUR
<GP/CSSD/FAC/IP001>
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APPENDIX IV
LOCATION MAPS OF
OFFICES OF MyIPO
BRANCH OFFICE: KOTA KINABALU, SABAH
BRANCH OFFICE: KUCHING, SARAWAK
<GP/CSSD/FAC/IP001>
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CONTACT
For further information or clarification, please contact:
Vice President
Facilitation, Client Support Services Division
Malaysian Biotechnology Corporation Sdn Bhd
Level 23 Menara Atlan
161 Jalan Ampang
50450 Kuala Lumpur
T: 03 2116 5588
F: 03 2116 5528
E: [email protected]
<GP/CSSD/FAC/IP001>
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REFERENCE
The author acknowledges reference to the following sources in the preparation of this
guidance paper:
• Patents Act 1983
• Patents Regulations 1986
• Resources made available by the Intellectual Property Corporation of Malaysia
<GP/CSSD/FAC/IP001>
42

patent registration procedure in malaysia

Transcription

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