Malaysia is a member of the World Trade Organisation (WTO) as well as the World Intellectual Property Organization (WIPO). Malaysian IP laws are in line with international IP standards established in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
The country is also a party to the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty (PCT), the Berne Convention for the Protection of Literary and Artistic Works, and as of December 2019, the Madrid Protocol. The Intellectual Property Corporation of Malaysia (MyIPO) oversees and administers the Malaysian IP system.
Malaysia’s legal system is fundamentally based on English common law. Historically, Malaysia’s IP laws are closely linked to the development of those in the UK, and are in conformity with international standards, particularly those in relation to TRIPS.
Dedicated IP courts consisting of 15 sessions courts that sit in each state in Malaysia with criminal jurisdictions, and six high courts with both civil and appellate jurisdictions were established in 2007. The purpose of creating a special IP court is to give proper attention to IP cases and to ensure that the judges hearing such cases are equipped to handle IP-related issues. The IP court is considered a great success as it has managed to handle IP cases much quicker than before.
The reduction in the number of applications filed during 2020 was undoubtedly due in part to the global economic climate that was reeling from the impact of the COVID-19 pandemic. However, it is heartening to note that despite the disruptions to operations resulting from the periodic lockdowns which have been enforced to quell the pandemic, MyIPO has to their credit managed to double the number of patents it processed for grant during 2020.
It has also maintained the number of industrial designs that it has processed for registration, both of which are indications of a national office which has coped well to the adverse situation.
Proposed changes to the Patents Act and Regulations
2020 has been a quiet year for IP legislation in Malaysia with the last change taking place on December 27 2019 through the enforcement of the new Trademarks Act 2019, which marks the accession of Malaysia to the Madrid Protocol. There were no changes to any Malaysian IP legislation throughout 2020 due to the pandemic, while various lockdowns imposed by the Malaysian government slowed down and likely halted any public discussions and developments on proposed updates to IP legislation.
On a brighter note, MyIPO has for several years now proposed sweeping changes to the Malaysian Patents Act 1983 that would significantly alter existing Malaysian patent law and practice. As a further step forward, MyIPO has recently issued a consultation paper on proposed amendments to the patent regulations. Several key proposed amendments to the act and regulations will be discussed below.
One of the key amendments would see Malaysia’s accession to the Budapest Treaty. Currently, for affected patent applications, MyIPO requires applicants to submit a statutory declaration attesting that the applicant will furnish a requester with a sample of any microorganism disclosed in the application provided that the requester undertakes not to make the deposited culture, or any culture derived from it available to any third party before the expiry of the patent. MyIPO has also proposed inclusion of provisions to allow the restoration of priority for applications filed under the Paris Convention. Currently, there is no remedy available if the priority deadline is missed.
Other significant proposed amendments include removing the option to defer the request for examination when requesting normal substantive examination. Under the current act, an applicant has the option to defer the request for substantive examination by up to five years from the filing date on grounds that certain information and documents that must accompany the examination request are not available at the time. Noticeably, the option for deferment will still be available for the purpose of requesting modified examination under the proposed amendments.
Aside from that, requests for extensions of time for filing divisional applications may no longer be allowed in the future and the deadline for filing any divisional application will be fixed at three months from the issuance of the first examination report, which will coincide with the newly proposed three-month response term for examination reports.
Another significant change being proposed is the introduction of third-party observations. Currently, Malaysian examiners have no obligation to consider any input from third parties during examination. Introducing third-party observations will allow members of the public the opportunity to submit prior art that might be of relevance for assessing novelty and inventive step along with their observations on relevance to patentability.
Malaysian examiners endeavour to search not only written state of the art in the form of patent documents but also general written documents such as journal articles and web publications. They are also somewhat reliant on search and prosecution results of corresponding applications filed in major patent offices such as the United States, European Patent Office and Japan Patent Office. Third-party observations would help supplement these efforts and accord third parties with an early opportunity to intervene in the prosecution of competitors’ patents of relevance to them.
Third parties may also have an option to oppose granted patents before MyIPO soon. This will be the first time an opposition mechanism is proposed to be provided under Malaysian patent law. Currently, the only way to challenge a granted Malaysian patent is through invalidation proceedings before the high court, which can be a costly and lengthy procedure.
Under the current act, granted Malaysian patents are published in the government gazette. Government gazettes are published periodically but does not have a fixed schedule and this usually results in a delay, sometimes stretching several years, between the changing of legal status of a granted patent and its subsequent publication in the gazette.
MyIPO hopes to eliminate this delay with the proposed electronic IP journal, like what is already being practiced for Malaysian industrial designs. The IP journal is expected to be published and updated monthly by MyIPO and this will eliminate any delays in publishing changes for all granted patents. MyIPO is also proposing to eliminate paper copies of patent certificates and only issue digital certificates in the future.
There is also a proposal to introduce securitisation for patents similar to what was already introduced in the last amendments to the Industrial Designs Act in 2013. Finally, with every major amendment to any IP legislation in Malaysia, official fees are set to substantially increase across the board, increasing the cost for obtaining IP protection in Malaysia. This is the first increase for patent official fees since 2011.
It is important to note that the above are only proposed changes to the Malaysian Patents Act and Regulations by MyIPO. As public consultation is still underway, it remains to be seen whether all of the proposed amendments will be finally adopted in their current form.
Industrial designs practice updates
In the area of industrial designs, while it has been largely a quiet year in passing with no legislative changes introduced throughout 2020, the biggest development of the year would be the introduction of a revamped industrial designs module in MyIPO’s electronic filing platform, IP Online.
The current version of IP Online is known internally as the ‘SPHI’, which is the acronym in Malay for ‘Intellectual Property Management System’, was introduced in stages starting with the patent and trademark modules, followed by the industrial designs module on February 1 2021.
The periodic lockdowns resulting from measures to contain the COVID-19 pandemic has limited MyIPO’s opening hours and forced increasing numbers of IP professionals to work from home, resulting in greater reliance on IP Online to accomplish everything from the filing of applications to its subsequent prosecution, registration and renewal electronically and remotely.
Key amongst the improvements introduced by the revamped industrial designs module are:
Firstly, the seamless filing of a request for an extension of time with a new application. An executed appointment of agent form (i.e. power of attorney) is a filing requirement for a Malaysian industrial design application, and the absence of one requires an extension of time to be filed simultaneously with the application.
The new online application form, which is central to the revamped industrial designs module, now includes the option to request an extension of time. It was previously necessary to file the request for extension of time separately after filing the application and payment of the prescribed official fee for the request for extension of time. Earlier, it could only be made upon submission of a written request, which made for a somewhat cumbersome, if not disjointed application process.
Secondly, the acceptance of electronic copies of a signed appointment of agent form and priority documents. Prior to the introduction of the revamped industrial designs module, it was necessary for hard copies of the signed appointment of agent and the certified copy of the priority application (and a verified English translation if the priority documents is not in English) to be obtained and then submitted manually over the counter (i.e. by hand).
MyIPO has in their push towards becoming a paperless office, dispensed with the submission of hard copies of these documents and now accepts electronic copies which are uploaded via the revamped module. An electronic copy of both of these documents may be uploaded via the online application form if they are available at the time of filing. Alternatively, the late filing of a signed appointment of agent form may be uploaded via the appropriate online request provided in the revamped module.
In the case of the late submission of electronic copies of the priority document, this may be uploaded via the new standalone document upload feature introduced in the revamped module. However, until firm guidelines become available, it is still possible that hard copies of these documents may be requested at the registrar’s or the examiner’s discretion, so the acceptance of electronic copies only extends to the submission of these documents.
Thirdly, the issue of queries (i.e. office actions) electronically. The revamped industrial designs module now allows MyIPO to release any queries raised during the formal examination of an application electronically, and to accept responses to the queries as well. Prior to this all queries were issued manually in paper form, even if an application was filed electronically.
Finally, the option of deferring the publication of an industrial design application. The online application form in the revamped industrial designs module has introduced the option of deferring the publication of an industrial design for up to 36 months from filing. However, Malaysian industrial designs law and practice currently do not provide support for this option and the maximum period of deferment may be subject to change.
Presently, an industrial design is only published upon registration which would usually take approximately nine to 12 months in a straightforward case. Noting that an applicant may wish to delay the publication of an industrial design for their own reasons, the introduction of the option to defer publication is potentially a very useful one.
With the increased reliance on electronic filing during the pandemic, the introduction of the revamped industrial designs module with its enhanced and expanded features is timely and very much a step in the right direction.
Jason Cheah joined Henry Goh & Co in 2002 and is a registered Malaysian patent, industrial design and trademark agent. He is also the design manager and oversees the firm’s industrial design registration work.
Jason’s industrial designs experience is extensive, having handled the filing and prosecution of a large portfolio of design applications, and frequently consulting with officers of the Industrial Designs Registry. In the area of patents, his patent drafting experience includes a number of mechanical and internet-related inventions such as e-commerce and internet security solutions.
Jason graduated from the Queen’s University of Belfast with a degree in electrical and electronics engineering. He is presently a member of the Asian Patent Attorneys Association (APAA).
Chew Qi-Guang is a patent agent at Henry Goh & Co, having joined the firm in 2009. Chew specialises in the fields of engineering and chemistry and has garnered extensive experience in all substantive matters of IP. His experience includes conducting novelty searches, prosecuting patent applications before the Malaysian IP office, drafting patent specifications in various technical fields as well as preparing submissions of arguments and amendments in response to patentability objections during substantive examination.
His academic background in chemical engineering has helped him muster extensive know-how in carrying out freedom-to-operate searches and rendering freedom-to-operate opinions, particularly in the pharmaceutical field. His portfolio includes major multinationals from the automotive, manufacturing and chemical trades. Chew holds a master’s degree in chemical engineering and management from the University of Sheffield and was registered as a Malaysian patent and industrial design agent in 2012-2013.