Jason Cheah and Alvin Boey of Henry Goh & Co discuss the Patents (Amendment) Act and Regulations 2022 and updates to industrial designs practice in Malaysia.
An exciting 2022 saw the introduction of the Patents (Amendment) Act 2022 on March 18 2022 that ushered in major changes to Malaysian patent law and practice, and Malaysia’s accession on March 31 2022 to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. 2023 was expected to be a year of consolidation, with important incremental changes being introduced. Malaysia is on track to accede to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement).
The Intellectual Property Corporation of Malaysia (MyIPO), which oversees and administers the Malaysian IP system, relocated to new premises in Petaling Jaya, Selangor, on April 10 2023, on the outskirts of the capital city, Kuala Lumpur.
Since the new location will be subject to state holidays which may not be federal gazetted public holidays, it remains to be seen if MyIPO will open or close on such state holidays and how deadlines which fall on these days will be treated. While it is anticipated that the federal calendar will dictate which excluded days will be recognised, a new guideline to provide clarity on the matter is expected to be issued in due course.
Application and registration statistics
Consistent with the slow down being felt in the global economy after the post-pandemic recovery period of 2021-22, the number of Malaysian patent applications filed has seen a slight contraction, although the numbers are still at pre-pandemic levels. The number of Malaysian patents granted also declined. However, the numbers remain high and may merely reflect what will be the new norm.
As with the filing of patent applications, the filing of Malaysian industrial design applications has also experienced a contraction. However, the number of designs registered has increased significantly, indicating that the bottleneck in the processing of design applications at MyIPO is finally being relieved.
Law and practice updates
2022 ended with deferment of the enforcement of two landmark provisions introduced by Malaysia’s Patents (Amendment) Act 2022; i.e., public availability of prosecution documents and post-grant opposition.
The public availability of prosecution documents will potentially allow public inspection of prosecution documents inclusive of the examiner’s search and examination reports and communications between the applicant and Registrar, as well as all prior art (patent and non-patent literature) submitted/cited.
Post-grant opposition will allow for Malaysian patents to be opposed before the Registrar, where any interested person may commence opposition proceedings by filing a notice of opposition with the Registrar, within a prescribed period from the date of grant.
Although enforcement of these remaining provisions was expected to take place by April 2023, it has been delayed and the deferment will continue a while longer.
There are indications that some progress is being made towards the enforcement of these remaining provisions.
For example, after a nearly 13-month suspension of online filing services to bring the patent module of the online platform into compliance with the Patents (Amendment) Act 2022, the electronic filing of patent and utility innovation applications, requests for substantive examination and the payment of renewal fees were restored on April 14 2023.
Further restoration of online services took place on June 6 2023, with MyIPO issuing a practice notice (Practice Notice No. 1/2023) providing for additional electronic filing tasks such as the filing of power of attorney and statement of right forms, requests to deposit micro-organism samples and requests for extensions of time.
It is expected that electronic filing for most other tasks – such as requests for reinstatement, requests for deferment, requests for amendments/corrections and recordal matters – will become available in the upcoming months.
With the restoration of online services on June 6 2023, the handling fees for documents and for physical computer storage devices that were provided for in the Patents (Amendment) Regulations 2022 have begun to be levied by MyIPO for the manual filing of any task that may be filed online. The handling fee for documents will be charged in increments based on the total number of pages contained in the filing, while the handling fee for physical computer storage devices will be charged on a per- device basis.
Another incremental change introduced during 2022 is MyIPO’s adoption of the ‘WIPO Standard ST.26’ format for the submission of sequence listings for international applications filed on or after July 1 2022.
A final but very important practice update is the commencement of a pilot Patent Prosecution Highway (PPH) programme between MyIPO and the USPTO. Under the pilot programme, a PPH request may be filed with MyIPO on the basis of a work product by the USPTO from February 2 2023 to February 1 2026, and a PPH request may be filed with the USPTO on the basis of a work product by MyIPO from March 2 2023 to March 1 2026.
While seemingly small, these changes in practice during 2022 and early 2023 are by no means unimportant ones, with a critical part to play in the larger picture of Malaysia’s patent system’s ongoing development.
Industrial designs practice updates
For industrial designs, 2022 was a relatively quiet year, with no legislative updates.
MyIPO has been actively processing the backlog in pending industrial design applications to address the bottleneck of design applications under examination. This has resulted in a significant increase in the issuance of official letters for pending industrial design applications. It may reflect a shift in prosecution direction as MyIPO adopts a stricter stance in the formal examination process. On the other hand, there is also a significant increase of up to 91% of designs proceeding to registration in the last year.
In early April 2022, MyIPO issued a consultation paper on proposed amendments to the Industrial Designs Act and Regulations, which were last amended in 2013. These proposed amendments signal Malaysia’s expected accession to the Hague Agreement as part of its Association of Southeast Asian Nations (ASEAN) obligation as set out in the ASEAN Intellectual Property Rights Action Plan 2016-2025.
The Hague system provides a mechanism for registering industrial design in multiple countries by means of a single international application filed with the International Bureau of WIPO.
Several key proposed amendments to the Industrial Designs Act and Regulations are briefly outlined below.
At present, industrial design is defined as features of shape, configuration, pattern or ornament applied to an article by an industrial process. In line with international practice, it is proposed that the definition for designs be broadened to include interior design, exterior design, non-physical design and complex products.
Additional requirements for determining registrability with the purpose of facilitating effective registration and enforceability of designs have also been proposed. However, there are currently no details on what these additional requirements could be.
A clarifying amendment has been proposed such that the priority date will no longer be used as the base date for calculating the 25-year term of protection and determination of the renewal deadline of a registered Malaysian design, as per current practice. Under the amendment, the priority date will only be used for the purpose of search and examination, and the Malaysian filing date will instead be used as the base date for calculation of the protection and renewal terms.
Currently, all industrial design applications are only subject to formal examination. The consultation paper highlighted a proposal to introduce substantive examination for industrial design applications. At the same time, it has also been proposed to make it mandatory for applicants to appoint an industrial design agent to request substantive examination. Local applicants presently have the option to file and prosecute industrial design applications to registration without appointing an agent.
It has been proposed to introduce a provision for deferring publication in line with international practice. This will be a useful option for many applicants. Although there has been no indication on the deferred publication term in the consultation paper, the industrial design application form in the revamped designs module on the IP Online portal appears to indicate the possibility of a deferral of publication of up to 36 months from filing. Presently, an industrial design is only published upon registration, which would usually take approximately 9 to 12 months in a straightforward application.
Finally, it has also been proposed that infringement of a registered industrial design be treated as a criminal offence which will be punishable in terms of a monetary penalty, a jail term or both. This new provision is likely to give more ‘teeth’ to the Industrial Design Law to deter potential infringers from outright copying. The suggested introduction of this provision is likely to lead to a more careful approach by designers and more importance being placed on the initiatives to conduct comprehensive searches of the design registers at the start of the design process.
The expected updates in industrial design practice in Malaysia’s intellectual property landscape demonstrate the country’s commitment to fostering innovation and protecting the rights of inventors, designers and businesses. By aligning its laws with international practice and joining the Hague Agreement, Malaysia provides an improved framework for industrial design protection. Local practitioners certainly look forward to more details from MyIPO on the implementation of the proposed amendments outlined in the consultation paper in the next 18 months.
Jason Cheah graduated in 1993 with an honours degree in electronic and electrical engineering from the Queen’s University of Belfast, Northern Ireland. He is a registered Malaysian patent, industrial design and trademark agent. Jason joined Henry Goh in 2002 and has served as a Manager in Patent Department since 2005. As one of the senior Managers in Patent Department, he oversees the Department’s Malaysian patent and industrial design prosecution work to ensure that the Department’s best practices and standards are adhered to and are in-step with the Malaysian IP Office’s latest practice. Jason has been recognized for his technical expertise as a recommended individual for patent prosecution in Malaysia by IAM Patent 1000. He is a member of the Asian Patent Attorneys Association (APAA).
Alvin Boey is a registered Malaysian patent agent, trademark and industrial design agent since 2008. As a Manager (Prosecution) in the Patent Department, he plays a key role in managing overseas prosecution (excluding Brunei) as well as overseeing the Malaysian industrial designs portfolio. Alvin’s experience as a mechanical engineer has provided invaluable technical knowledge in assisting clients in their IP needs related specifically to mechanical inventions. In addition to his extensive prosecution work, Alvin has conducted numerous freedom-to-operate searches and provided infringement and validity opinions. He has appeared before the Kuala Lumpur High Court as an expert witness.