General Information of Patent

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ARTICLE INDEX

General Information of Patent

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What is Patent?

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offersa new technical solution to a problem.

What is Utility Innovation?

A utility innovation is an exclusive right granted for a "minor" invention which does not require to satisfy the test of inventiveness as required

of a patent.

Who May Apply?

Any person may make an application for a patent or for a utility innovation either alone or jointly with another person. The word "person" isnot limited to natural persons and thus also includes, for example, a company.

How can a patent or utility innovation be protected?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of Malaysia which will assesswhether it meets the requirements of the Patents Act 1983.

Why Protect an Invention?

A patent or utility innovation protection gives the owner of the patent/utility innovation the exclusive right to stop others from manufacturing,using and/or selling the owner's invention in Malaysia without the owner's consent or permission.

Term of protection

A patent is protected 20 years from the date of filing and a utility innovation is protected 10 + 5 + 5 years from the date of filing subject to use.

Where to Apply?

An applicant must file a patent or utility innovation application with the Intellectual Property Corporation of Malaysia (MyIPO), in KualaLumpur or at one of the branch offices located in Sabah and Sarawak.

Applications, correspondence and enquiries should be directed to

The RegistrarThe Patent Registration OfficeIntellectual Property Corporation of Malaysia (MyIPO)

Unit 1-7, Ground Floor, Menara UOA BangsarNo. 5 Jalan Bangsar Utama 159000 Kuala LumpurTel: +603-22998400Fax: +603-22998989

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ARTICLE INDEX

General Information of Patent

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National Security (Section 23A and 62A )

For reasons of national interest and security, any Malaysian resident wishing to apply for a patent or certificate protection outside Malaysiamust first seek written authority from the Registrar. However, written authority is not required if a corresponding Malaysianpatent/certificate has been applied for, and a period of at least two months has elapsed since filing.

Section 62A : Contravention of Section 23A is an offence and is punishable (upon conviction) by a fine not exceeding 15,000 ringgit orimprisonment for a term not exceeding two years, or both.

Non-Patentable Inventions

Discoveries, scientific theories and mathematical methods;

Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living m icro-organisms, micro-biological processes and the products of such micro-organism processes;

Schemes, rules or methods for doing business, performing purely mental acts or playing games;

Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animalbody.

Patentable Inventions

For a patent to be granted an invention must be:

new, which means that the invention has not been publicly disclosed in any form, anywhere in the world;

involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological

field of the invention; andindustrially applicable, meaning it can be mass produced.


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Patent Act 291 1983

Patent Regulations 1986

Patents (Amendment) Act A648 1986

Patents (Amendmend)Act A863 1993






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The applicant is required to file Form 1 together with the patent specification and fee of RM 200.00 when making an application. Within TWOyears from the filing date, the applicant is required to file Form 5 together with the fee of RM 700.00 to request for a substantive examinationof the application

A guide on how to fill in Form 1 (Sections I-IX):

Section I: Title of InventionThe applicant is required to state the title of the invention.

Section II: ApplicantThe applicant is required to state the applicants name. The name could either be a companys or an individuals or both.

Section III: InventorThe applicant is required to state the inventors name. A companys or an associations name cannot be used as an inventors name. If theapplicant is not the inventor, the Statement Justifying the Applicants Right to the Patent will have to be submitted.

Section IV: Agent or RepresentativeA local applicant is required to state the appointed agent if he is represented by one. For a foreign applicant, a registered Malaysian patentagent is required for all applications.

Section V: Divisional ApplicationIf there is more than one invention in the application, the applicant is required to divide the application into two or more applications. Eachdivisional application shall be entitled to the priority date of the initial application.

Section VI: Disclosure to be Disregarded for Prior Art PurposesThe applicant could request for a disclosure to be disregarded for prior art purposes in an accompanying statement. This provision isapplicable only when the disclosure of the same invention occurred within one year preceding the date of the patent application in Malaysia.

Section VII: Priority ClaimThe applicant could claim the right of priority of the date of filing of an earlier application. The earlier application must be filed not more than12 months before the filing date of the application in Malaysia.

Section VIII: Check List

The applicant has to complete the check list provided I this section.

Section IX: SignatureThe applicant or appointed agent has to sign and state the individuals name (not the companys or associations name).


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FormsDescription Fees (RM)

F1 F1

(a) Request for grant of patent

(b) Claims

(i) for first ten claims

(ii) for every additional claim

200.00

Nil

10.00 per claim

F2 F2 Declaration Of Withdrawal Of Application -

F2A F2A

Entering National Phase

(a) for first ten claims

(b) for every additional claim

200.00

10.00 per claim

F2A F2A Request for reinstatement under Section 78OA500.00 per monthof delay

F5 F5 Request For Substantive Examination 700.00

F5A F5A Request For Modified Substantive Examination 450.00

F5B F5BRequest For Deferment Of Filing Of Request ForExamination Or Provision Of Information

-

F5C F5C Request for Certified Copies or Extract 50.00

F5D F5D Request to Amend Register 50.00

F5E F5E Request for Reinstatement of Lapsed Patent 100.00

F5F F5F Request For Licence To Exploit Patented Invention -

F5G F5GRequest to Convert Application for Patent into Application forCertificate for Utility Innovation or Vice Versa

200.00

F6 F6 Application For Recording Of Assignment Or Transmission 100.00

F7 F7Application For Entry In Register That Any Person MayObtain A Licence

50.00

F8 F8Application For Cancellation Of Entry In Register That AnyPerson May Obtain A Licence

50.00

F9 F9Request For Recording Of Particulars Licence Contract InRegister

100.00

F10 F10Request For Recording Expiry Or Termination Of LicenceContractIn Register

75.00

F11 F11 Application for Compulsory Licence 75.00

F12 F12Request For Amendment Of Decision Granting CompulsoryLicence

75.00

F13 F13 Request For Cancellation Of Compulsory Licence 75.00

F14 F14 Request For Grant Of Certificate For Utility Innovation 100.00

F15 F15Application To Extend Term Of Certificate For UtilityInnovation

100.00

F16 F16 Request To Amend Application For Grant Of Patent 50.00


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F16A F16A Request To Amend Patent 50.00

F17 F17 Appointment Or Change Of Patent Agent -

F18 F18 Application For Registration Of Patent Agents 2000.00

F18A F18A Application For Registration As Candidate For Examination 100.00

F18B F18B Application To Re-Sit Examination 100.00

F19 F19 Application For Renewal Of Registration Of Patent Agents 400.00

F20 F20 Furnishment Of Address For Service 100.00F21 F21 Request For Extension Of Time 200.00

St.Just. St.Just.Statement Justfying The Applicants Right To APatent/Certificate

-

PART II

ItemNo.

Matter/Proceeding Fees (RM)

1. Copy of patent 30.00

2. Copy of search report 20.00

3. Examination of register 10.00 per hour

4. Certified copies or extract from Register 10.00 per page

5. Copies or extract from Register 2.00 per page

6. Fee for public inspection of information relatingto patent application

10.00 per hour

7. Certified copies or extract of any information :-

(a) for first five pages

(b) for every additional page

100.00 per page

2.00 per page

8. Annual fee for patent :

a) for second year

b) for third year

c) for fourth year

d) for fifth year

e) for sixth year

200.00

250.00

300.00

350.00

400.00


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f) for seventh year

g) for eighth year

h) for ninth year

i) for tenth year

j) for eleventh year

k) for twelfth year

l) for thirteenth year

m) for fourteenth 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

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

9. Surcharge for reinstatement 100 % of fee for year concerned

10. Surrender of compulsory licence 60.00

11. Surrender of patent 60.00

12. 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

120.00

160.00

160.00

200.00

200.00

240.00

240.00


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(h) for tenth year

(i) for eleventh year

(j) for twelfth year

(k) for thirteenth year

(l) for fourteenth 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

280.00

400.00

600.00

700.00

800.00

1000.00

1100.00

1200.00

1300.00

1400.00

1500.00

13. Holding of hearing 100.00

14. Certificate of grant of a patent 150.00

15. Certificate for a utility innovation 100.00

15A. Examination fee 100.00 per subject

16 Appeal against examination results 200.00 per subject

17 Extension of time (for every month or part of amonth)

50.00 per month

18 Surcharge for late payment of annual fee 100 % of fee for year concerned

19 Public search through computer 20.00 per hour

20 Computer print-out (Bibliography data) 5.00 per page

21 Permitted information (upon request)

100.00 for less than 10 pages and 5.00 forthe subsequent pages

22 Fee for preparing international application 2.00 per page


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PART III

ItemNo.

Matter/Proceeding Fees(RM)

1. Transmittal fee under Rules 14 and 19

of the Regulations under the Treaty :

(a) for the first 30 sheets

(b) for each sheet in excess 30sheets

375.00

45.000 per sheet

2. Fee for the late furnished oftransliteration for the purposes ofinternational search

25% of the international filing fee prescribed underthe Treaty

3. Fee for the late furnished oftransliteration for the purposes ofinternational publication

25% of the international filing fee prescribed underthe Treaty

4. Late payment fee under Rule 16bis.2of the Regulations under the Treaty

(i) 50% of the amount unpaid fees ; or

(ii) an amount equal to the transmittal fee ;

Whichever is the higher provided that the amount oflate payment fees shall not exceed 50% of theinternational filing fee prescribed under the Treaty

5. Fee for complying with Nationalrequirement in response to theinvitation

100.00

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Patent & Utility Innovation Administration and ExaminationManual

Guidelines for Patent Examination

The sample format of a patent specification

description, claims, drawing & abstract)

Patent Specification - Description

The invention/innovation should be clearly and completely described sufficient to enable a person havingordinary skill in the art to carry out the invention. The description should preferably be described using thefollowing sequence of headings:

(i) "Title"

The title must clearly and concisely indicate the subject matter to which the invention/innovation relatesand must be the same as the title on the Request Form and Abstract.

(ii) "Technical Field"

This is a general broad statement describing the art or technology to which the invention/innovationrelates.

(iii) "Background Art"

This should include a summary of any background art known to the applicant which may be useful forunderstanding the invention/innovation.

(iv) "Disclosure of Invention"

This normally includes a statement of the essential and optional features of the invention and anyadvantages of the invention or innovation over the known art.

(v) "Specific Example{s)" including a "Description of 'the Drawings" (if any) This should include adescription of the best mode contemplated by the applicant for carrying out the invention/innovation,using examples where appropriate and referring to the drawings, if any.

(vi) "Industrial Applicability"

This should indicate explicitly, when it is not obvious from the description or nature of the invention, theway in which an invention is industrially applicable. In most cases industrial applicability will be obviousfrom the disclosure of the invention and the specific examples. However, in some cases, e.g. where the

invention is a new chemical compound, its industrial application may not be obvious.

Patent Specification - The Claims

(R13,R14) The major function of the claim or claims is to clearly define the scope of protection granted.The claims must be clear and concise and must be supported by and agree with the invention/innovationdisclosed in the descriptive part of the patent specification.

The claims are probably the most important part of the patent specification and, because of their legalistic


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nature, are probably the most difficult to prepare. For example, it is possible for the patent specification todescribe a commercially successful invention but, because of poor or incorrect drafting, the claim (s) maybe invalidated because they are drafted too broadly resulting in a lack of newness or inventive step or,conversely, the claims may be drafted too narrowly thus making it easy for competitors to benefit from theinvention without infringing the claims.

The claims should commence on a new page and each claim should be written as a single sentence.Whenever appropriate the claim should define the invention/innovation first by indicating the backgroundprior art, followed by a "characterising" portion which defines the features of the invention/innovationwhich, in combination with the prior art features it is desired to protect. Each technical feature mentionedin the claim (s) and illustrated in the drawings should, wherever possible, be followed by its referencenumeral i parenthesis. Only one claim is allowed in a utility innovation specification whereas a plurality ofclaims are allowed in a patent specification. However, the claims of a patent specification must relate tothe same invention. An example of a set of patent claims can be found at Sample of Patent Specification.

Patent Specification - Abstract

(R 16) The abstract is a summary of the disclosure contained in the description and claims and should beso drafted that it constitutes an efficient instrument for the purposes of searching in a particular technicalfield. It should not contain statements on the alleged merits or value of the invention/innovation. An

example of an abstract can be found at Sample of Patent Specification.

The abstract should commence on a new page with the title of the invention and should be as concise asthe disclosure permits (preferably not more than 150 words). The applicant should indicate which figure ofthe drawings (if any) should accompany the abstract, prefelubly ill brackets at the end of the abstract.Each main technical feature mentioned in the abstract and illustrated in the drawing should be allowed byits reference numeral between parenthesis.

NOTE :

Before preparing the description, claims and drawings of an application, potential applicant would be welladvised to conduct a search through previously published patent specifications and technical literature inthe appropriate area of technology for the purpose of obtaining an indication of the newness of the

alleged invention or innovation.

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Physical and Terminology Requirements of Patent Specification.

1. The following is a summary of the physical and terminology requirements relating to the preparation of patent/utility innovation certificateapplication documents:

2. The applicant should use the official forms available from the Patent Registration and Branch Offices. For example, the "Request for Grantof a Patent" should be made on Form 1, and the "Request for a grant of a Certificate for a Utility Innovation" should be made on Form 14.

Physical Requirements

i) Unless provided otherwise, the application and any accompanying statements or documents shall be filed in duplicate, but the Registrarmay require that they be filed in more than two copies.

ii) All documents of the application shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photooffset and microfilming.

iii) All sheets shall be free from cracks, creases and folds and only one side of each sheet contained in the application shall be used.

iv) All documents of the application shall be on A4 paper (29.7cm x 21 cm) which shall be strong, white; smooth, non- shiny and durable.

v) Not with standing sub-regulation (4), the Registrar may accept sheets of sizes other than A4.

vi) The minimum margins of sheets shall be 2 cm.

vii) All sheets shall be numbered at the top of the sheet, in the middle, in consecutive Arabic numerals.

viii) The text matter of the application shall be typed or printed in a dark, indelible color and in at least 1 1/2 line spacing, but graphic symbols,chemical or mathematical formulae and certain characters may, if necessary, be hand writ ten or drawn.

ix) In the application, every fifth line of each sheet of the description and the claims shall be numbered in Arabic numerals placed to the left ofthe relevant lines but to the right of the margin.

x) The application and any associated statement or document shall be filed in the National language or in English

Measures, Terminology and signs:

i) Units of weight and measures shall be expressed in terms of the metric system.

ii) Temperatures shall be expressed in degrees Celsius.

iii) Densities shall be expressed in metric units.

iv) For heat, energy, light, sound, and magnetism, as well as for mathematics formulae and electrical units, the rules of international practiceshall be observed.

v) For chemical formulae, the symbols, atomic weight, and molecular formulae in general use shall be employed.

vi) In general, only such technical terms, signs and symbols as are generally accepted in the field in question should be used.

vii) The terminology and signs shall be consistent throughout the application.

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Physical and Terminology Requirements of Patent Specification.

1. The following is a summary of the physical and terminology requirements relating to the preparation of patent/utility innovation certificateapplication documents:

2. The applicant should use the official forms available from the Patent Registration and Branch Offices. For example, the "Request for Grantof a Patent" should be made on Form 1, and the "Request for a grant of a Certificate for a Utility Innovation" should be made on Form 14.

Physical Requirements

i) Unless provided otherwise, the application and any accompanying statements or documents shall be filed in duplicate, but the Registrarmay require that they be filed in more than two copies.

ii) All documents of the application shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photooffset and microfilming.

iii) All sheets shall be free from cracks, creases and folds and only one side of each sheet contained in the application shall be used.

iv) All documents of the application shall be on A4 paper (29.7cm x 21 cm) which shall be strong, white; smooth, non- shiny and durable.

v) Not with standing sub-regulation (4), the Registrar may accept sheets of sizes other than A4.

vi) The minimum margins of sheets shall be 2 cm.

vii) All sheets shall be numbered at the top of the sheet, in the middle, in consecutive Arabic numerals.

viii) The text matter of the application shall be typed or printed in a dark, indelible color and in at least 1 1/2 line spacing, but graphic symbols,chemical or mathematical formulae and certain characters may, if necessary, be hand writ ten or drawn.

ix) In the application, every fifth line of each sheet of the description and the claims shall be numbered in Arabic numerals placed to the left ofthe relevant lines but to the right of the margin.

x) The application and any associated statement or document shall be filed in the National language or in English

Measures, Terminology and signs:

i) Units of weight and measures shall be expressed in terms of the metric system.

ii) Temperatures shall be expressed in degrees Celsius.

iii) Densities shall be expressed in metric units.

iv) For heat, energy, light, sound, and magnetism, as well as for mathematics formulae and electrical units, the rules of international practiceshall be observed.

v) For chemical formulae, the symbols, atomic weight, and molecular formulae in general use shall be employed.

vi) In general, only such technical terms, signs and symbols as are generally accepted in the field in question should be used.

vii) The terminology and signs shall be consistent throughout the application.

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There are three stages in the examination process:

(i) (S28) Determination of a Filing Date which is automatically conducted by the Patent Registration Office upon receipt of the application.

(ii) (S29) Preliminary Examination which is conducted automatically by the Patent Registration Office if the application is accorded a filingdate.

(iii) (S29A, S30) Substantive Examination which is only conducted following preliminary examination and following a request for examinationby the applicant, accompanied by the appropriate fee, within 2 years of the filing date.

Determination of Filing Date2. It is in the applicant's interest to obtain the earliest possible filing date for the application, because any disclosure, or any other Malaysianpatent application lodged, after the applicant's filing or priority date cannot be used to invalidate the newness of the application.

3. (S28, R25) The application will be accorded the date of receipt of the application as the "filing date" provided that the application contains:

(i) the name and address of the applicant

(ii) the name and address of the inventor

(iii) a description

(iv) a claim or claims; and

(v) that at the time of receipt of the application the prescribed fee has been paid. (Note that an additional fee is required for each claim inexcess of 10).

4. The applicant will be advised of any filing date deficiencies and given 3 months to correct them. Should there be any deficiencies, theapplication will be accorded a filing date of the receipt of acceptable corrections.

5. Upon recordal of a filing date, the Office will forward to the applicant a certificate of filing.

Preliminary Examination6. (S29) As indicated above, preliminary examination is conducted automatically by the Patent Registration Office if the application isaccorded a filing date.

7. (R26) The application will be examined to ensure that it satisfies the formality requirements of the regulations. These are detailed inRegulations 5, 6, 7 (1 ), 8, 9, 11, 18 and 51 and relate principally to non-technical matters such as the correct completion of the Forms, useof correct sized paper, correct margins, and that the documents are suitable for reproduction by printing or microfilming. The applicant will beadvised of any deficiencies and given a period of three months within which to correct them.

Substantive Examination and Modified Substantive

8. (S29A, R27, R27A, R27B) Following preliminary examination an applicant may request substantive examination or, where a foreign patentapplication for essentially the same invention as that of the Malaysian application has been granted in a prescribed foreign country, he mayrequest modified substantive examination.

9. (R27, R27A and R27B) The request for either substantive or modified substantive examination should be made by the applicant on Form 5or 5A respectively, together with the prescribed fee, within 2 years from the filing date of the application.

10. [S29A (4)] A substantive examination request must be accompanied by information relating t o the results of any search or examination

carried out on any corresponding prescribed foreign patent application. Informally, the applicant is encouraged to lodge foreign search andexamination results at any time, and also to lodge voluntary amendments which take into account the Malaysian legislation and any foreignsearch or examination results.

11. [R27A(3)] A modified substantive examination request should be accompanied by a certified copy of any granted prescribed foreignpatent for essentially the same invention as that of the Malaysian application. I t should also be accompanied by amendments to bring theMalaysian application into substantial conformity (apart from matters of form) with the foreign granted patent.

12. It is important to note that in accordance with Section 29A(8) of the Act this 2 year period within which to file the substantive examinationrequest cannot be extended under Section 82. However, upon a request made by the applicant before the expiration of the 2 year period,the time for requesting examination or providing corresponding foreign search/examination information may be deferred under section 29A(6)


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of the Act on the ground that:

(a) a corresponding prescribed foreign patent has not been granted or is not available by the expiration of the 2 year period, and/ or

(b) prescribed foreign search and/or examination results are not available by the expiration of the 2 year period.

[R27B(2)] The prescribed period of maximum deferment is:

(i) 3 years from the filing date for requesting substantive examination;

(ii) 4 years from the filing date for requesting modified substantive examination;

(iii) 3 years from the filing date for providing corresponding foreign search/examination results.

According to subsection 29A(7), no deferment may be sought nor granted for a period greater than the 3 and 4 year periods referred toabove.

13. (S30, R27C) Under substantive examination the patent/certificate application will be examined with a view to reporting whether or not theapplication complies with certain requirements of the Patents Act and Regulations. In particular, a prior art search report will be made and theapplication will be examined for, amongst other things, compliance with the requirements for newness, inventive step, sufficiency of thedescription and clarity of the claims.

14. The search by the Malaysian examiner will be made of previously published technical literature available to the examiner e.g. Malaysian,

United States, Japan, Great Britain, Patent Cooperation Treaty and European patent documents available in the patent Registration Officelibrary. The purpose of the search is to identify any documents published before the filing (priority) date of the application under examination,which may be useful to the examiner in determining newness and/or inventive step of the alleged invention defined by the patent applicationclaims.

15. (S30, R27D) Modified substantive examination to some extent formalizes the above informal practice under substantive examination forthe examiner to make use of any search and examination already carried out by a foreign Patent Office on a corresponding foreign patentapplication. Under modified substantive examination the Malaysian examiner principally reports on the conformity between the Malaysianpatent/certificate application and the foreign granted patent and is not required to conduct a prior art search (except in special circumstances)or examine the application for compliance with, for example, the requirements for inventive step, plurality of invention, sufficiency of thedescription or clarity of the claims.

16. [R27C (4) and (6); R27D(5) and (7)]. Should the Examiner find that the application is not in order for grant following substantive ormodified substantive examination, then the applicant will be provided with an adverse report setting out what requirements have not beencomplied with. The applicant will be given a period of three months within which to respond to the report, either by argument or by amendingthe application. The application must finally comply with the requirements of the Act and regulations within five years from the filing date ofthe application.

GRANT

1. (S31 to S35) When the application complies with the requirements of the Act and Regulations, the Registrar will grant the patent, or willissue a certificate for the utility innovation in the case of a utility innovation.

2. After grant, any person may obtain a copy of the patent specification from the Patent Registration Office and may also inspect the Registerand the patent/certificate application file.

3. A patent or certificate gives the owner thereof the right to exclude all others from using the invention or innovation in Malaysia for a periodof 20 years from the date of filing in the case of a patent or 10 years (extendable to 10 + 5 + 5 years subject to use) in the case of acertificate. To keep the patent/ certificate in force the owner is required to pay annual renewal fees.

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The following patent gazette by categories.

Granted

Lapsed

InvalidErrata

Reinstatementof Lapse Patent

Surrender

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To issue the Certificate of Filing within 7 days from the date of receipt of complete application.

To issue the substantive examination report within 4 years from the date of fili ng of application.

To issue the Certificate of Grant of Patent / Utility Innovation within 45 days from the date of receipt of payment.

To issue notice of renewal for patent and utility innovation 14 days from the date of receipt of payment.

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APPLICATION AND GRANTED PATENTS AND UTILITY INNOVATIONS FROM 1986 - 2010

YEARAPPLICATION GRANTED

Malaysia Foreign Total Malaysia Foreign Total

1986 29 233 262 - - -1987 71 3,195 3,266 - - -

1988 73 1,547 1,620 0 6 6

1989 84 1,803 1,887 11 121 132

1990 92 2,213 2,305 20 498 518

1991 106 2,321 2,427 29 1,021 1,050

1992 151 2,260 2,411 10 1,124 1,134

1993 198 2,684 2,882 14 1,270 1,284

1994 223 3,364 3,587 21 1,608 1,629

1995 185 3,992 4,177 29 1,724 1,753

1996 221 5,354 5,575 79 1,722 1,801

1997 179 6,278 6,457 52 741 793

1998 193 5,770 5,963 21 545 566

1999 218 5,624 5,842 39 683 722

2000 206 6,021 6,227 24 381 405

2001 271 5,663 5,934 18 1,452 1,470

2002 322 4,615 4,937 32 1,460 1,4922003 376 4,686 5,062 31 1,547 1,578

2004 522 4,920 5,442 24 2,323 2,347

2005 522 5,764 6,286 37 2,471 2,508

2006 531 4,269 4,800 187 6,562 6,749

2007 670 1,702 2,372 338 6,645 6,983

2008 864 4,539 5,403 198 2,044 2,242

2009 1,234 4,503 5,737 270 3,198 3,468

OCT2010 813 4,398 5,211 137 1,445 1,582

Total 8,354 97,718 106,072 1,621 40,591 42,212

Patent and Utility Innovations Grants only start from 1988

PCT APPLICATIONS RECEIVED FROM AUGUST 2006 - 2010

YEAR

MONTH

TOTALJan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec2006 - - - - - - - 7 7 10 6 4 34

2007 9 4 4 9 9 10 5 12 3 5 16 7 93

2008 5 11 5 15 13 13 15 15 26 7 43 32 200

2009 21 14 12 12 6 24 21 20 32 19 19 24 224

2010 19 7 22 18 23 25 19 22 43 45 243

TOTAL 794

PATENTS GRANTED BASED ON FIELD OF TECHNOLOGY

YEARSECTION

TOTALA B C D E F G H

1993 215 169 503 15 37 52 155 138 1,284

1994 260 267 505 12 71 79 192 243 1,629

1995 336 268 542 27 48 61 194 277 1,753

1996 285 323 483 31 76 103 178 322 1,801

1997 151 138 196 13 32 45 82 132 789

1998 104 98 141 4 18 31 64 106 566

1999 132 112 191 9 21 49 68 139 721

2000 61 59 110 8 19 42 36 70 405

2001 155 233 288 18 44 102 231 399 1,470

2002 206 236 334 19 42 104 228 323 1,492

2003 224 242 396 28 38 119 190 341 1,578

2004 325 377 625 25 50 132 321 492 2,347

2005 333 452 600 30 82 164 316 531 2,508

2006 948 1,155 1,275 101 197 448 1,042 1,583 6,749

2007 1,179 1,213 1,748 109 221 407 883 1,223 6,983


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2008 423 421 451 33 98 159 293 364 2,242

2009 656 633 837 53 119 185 488 497 3,468

OCT2010 271 282 432 17 58 95 195 232 1,582

TOTAL 6,256 6,678 9,657 552 1,271 2,377 5,156 7,412 39,246

Note : International Patents Classification (IPC)

Section A : Human Necessities

Section B : Performing Operations; TransportingSection C : Chemistry ; Metallurgy

Section D : Textiles ; Paper

Section E : Fixed Constructions

Section F : Mechanical Engineering; Lighting; Heating; Weapons; Blasting

Section G : Physics

Section H : Electricity

TOP TEN COUNTRIES FOR PATENT AND UTILITY INNOVATION APPLICATIONS, 2009

COUNTRY 2009

USA 1,474

Malaysia 1,234

Japan 749

Germany 375

Switzerland 265

UnitedKingdom

237

France 203

Netherlands 182

Sweden 123

SouthKorea

113

Click here forTop Ten Countries for Patent and Certificates of Utility Innovation Applications, 2008 and Top Ten Countries for Patentand Certificates of Utility Innovation Applications, 2000-2007

TOP TEN COUNTRIES FOR PATENT AND CERTIFICATES OF UTILITY INNOVATION GRANTED, 2009

COUNTRY 2009

USA 907

Japan 719

Malaysia 270

Germany 269

Switzerland 183

France 168

UnitedKingdom

165

Netherlands 153

SouthKorea

112

Taiwan 61

Click here forTop Ten Countries for Patent and Certificates of Utility Innovation Granted, 2008 and Top Ten Countries for Patent andCertificates of Utility Innovation Granted, 2000-2007


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Singapore, Cambodia, Indonesia, Malaysia, the Philippines, Lao PDR, Thailand, and Vietnam as ASEAN

Member States have launched an ASEAN Patent Examination Co-operation (ASPEC) programme. It is

the first regional patent cooperation programme.

The purpose of this programme is to share search and examination results between the participating

offices to allow applicants in participating countries to obtain corresponding patents faster and more

efficiently. The project will potentially reduce duplication for the search and examination work done,

thereby saving time and effort. Additionally, search and examination work done on corresponding

applications will serve as a useful reference in producing quality reports.

The programme commences on 15 June 2009.

Guidelines

ASPEC Request Form

Links to other participating ASEAN Member States:

Indonesia: http://www.dgip.go.id

Malaysia: http://www.myipo.gov.my

Philippines: http://www.ipophil.gov.ph

Lao PDR: http://www.nast.gov.la

Thailand: http://www.ipthailand.org

Viet Nam: http://www.noip.gov.vn

Cambodia: http://www.mime.gov.kh

(Singapore: http://www.ipos.gov.sg)

For enquiries relating to the ASPEC project, please contact Mrs Shamsiah Kamaruddin, Head, Patent

Formality Section via telephone 603 2263 2100/2108 or email [email protected] with the subject

heading ASPEC Project.


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Accession by Malaysia

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs andhas the honor to notify him of the deposit by the Government of Malaysia, on May 16, 2006, of its instrument of accession to the PatentCooperation Treaty (PCT), done at Washington on June 19, 1970, amended on September 28, 1979, modified on February 3, 1984, and onOctober 3, 2001.

The said instrument of accession contains the declaration that, pursuant to Article 64(5) of the said Treaty, Malaysia does not consider itselfbound by Article 59 of the said Treaty. The said Treaty will enter into force, wi th respect to Malaysia, on August 16, 2006.

Patent Cooperation Treaty ("PCT")

The PCT was concluded in 1970, amended in 1979, and modified in 1984 and 2001. It is open to States party to the Paris Convention for theProtection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.

The Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an"international" patent application. Such an application may be filed by anyone who is a national or resident of a Contracting State. It maygenerally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant'soption, with the International Bureau of WIPO in Geneva.

If the applicant is a national or resident of a Contracting State which is party to the European Patent Convention, the Harare Protocol onPatents and Industrial Designs (Harare Protocol), the revised Bangui Agreement Relating to the Creation of an African Intellectual PropertyOrganization or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), theAfrican Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI) or the Eurasian PatentOffice (EAPO), respectively.

The international application is then subjected to what is called an "international search." That search is carried out by one of the majorpatent offices appointed by the PCT Assembly as an International Searching Authority (ISA). The said search results in an "internationalsearch report," that is, a listing of the citations of such published documents that might affect the patentability of the invention claimed in theinternational application. At the same time, the ISA prepares a written opinion on patentability.

The international search report and the writt en opinion are communicated by the ISA to the applicant who may decide to withdraw hisapplication, in particular where the said report or opinion makes the granting of patents unlikely.If the international application is not withdrawn, it is, together with the international search report, published by the International Bureau. Thewritten opinion is not published.

The procedure under the PCThas great advantages for the applicant, the patent offices and the general public:

(i) the applicanthas up to 18 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection inforeign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees;he is assured that, ifhis international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by anydesignated Office during the national phase of the processing of the application; on the basis of the international search report or the writtenopinion, he can evaluate with reasonable probability the chances ofhis invention being patented; and the applicanthas the possibility duringthe international preliminary examination to amend the international application to put it in order before processing by the designated Offices;

(ii) the search and examination work of patent offices can be considerably reduced or virtually eliminated thanks to the international searchreport, the written opinion and, where applicable, the international preliminary examination report that accompany the internationalapplication;

(iii) since each international application is published together with an international search report, third parties are in a better position toformulate a well-founded opinion about the patentability of the claimed invention.

The PCT created a Union. The Union has an Assembly. Every State party to the PCT is a member of the Assembly.Among the most important tasks of the Assembly are the amendment of the Regulations issued under the Treaty, the adoption of the biennialprogram and budget of the Union and the fixing of certain fees connected with the use of the PCT system.

Details concerning the PCT can be most simply obtained by consulting the Protecting your Inventions Abroad: Frequently Asked Questionsabout the Patent Cooperation Treaty, the PCT Applicant's Guide and the PCT Newsletter, published by WIPO.


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FILING OF AN INTERNATIONAL APPLICATION (PCT) :-INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MYIPO) AS RECEIVING OFFICE

1.Can I file an international application in Malaysia ?Yes, any Malaysian national or resident can file an international application in Malaysia attheIntellectual Property Corporation of Malaysia (MyIPO) as a receiving office.

2.What are the contents of the international application ?An international application shall contain:

i.a request (Form PCT/RO/101)ii.a descriptioniii.one or more claims,iv.one or more drawings (if any)v.and an abstract

3.What are the requirement to obtain an international filing date ?The requirement to obtain an international filing date are as following :a.The applicant must be a national or a resident of Malaysia,b. The language of the international application must be in English,c.The international application must contain:i.an indication that it is intended as an international application,ii.a request which has the effect of making all possible designation,iii.the name of the applicant,iv.a description of the invention,v.a claim or claims

4.What are the fees payable ?The following fees are payable for an international application filed at MyIPO:a.Transmittal Fee (MyIPO)b.International Filing Fee (International Bureau)c.Search Fee (International Searching Authority)

5.Which International Searching Authorities can be specified/chosen by the applicant toconduct the international search for international application?

a.Korean Intellectual Property Officeb.Australian Patent Officec.European Patent Office

6.Beside MyIPO, is there any other office where a Malaysian national or resident can file hisinternational application?

A Malaysian national or resident can file his international application with the International Bureau ofWIPO which acts as a receiving office for nationals and residents of all PCT Contracting States.


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7.How can I file my international application (PCT) ?PCT application can be filed directly to MyIPO or via postal delivery.

8.Where can I obtain additional information on PCT ?For further information on PCT, you can visit the WIPO web site at : http://www.wipo.int/pct/en/

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PCT Procedure

There are two ways in which an invention can be protected abroad. It can either apply directly to those countries of interest, or use thePatent Cooperation Treaty (PCT international application).

The PCT is an agreement between countries that they will co-operate in order to ease the process of applying for patents in a number ofcountries around the world. The system is administered by the World Intellectual Property Organization (WIPO) from its headquarters inGeneva, Switzerland.

The PCT system enables the applicant to make a single application in Malaysia (the international application) and then designate as manyother countries that are involved in the PCT. The PCT system is a patent filing system, not a patent granting system. There is no PCTpatent or international patent.

PCT International Application

The Intellectual Property Corporation of Malaysia (MyIPO) acts as a Receiving Office. The PCT application should contain the following :

a PCT Request form (PCT/RO/101) a description of the invention with claims, an abstract and drawings (if any) the appropriate fees.

All international applications file with MyIPO must be in the English language; as either a paper based application (in 3 copies) ; or anelectronic application (using WIPO's PCT-SAFE software).

Please visit the WIPO website for further information about WIPO's PCT-SAFE software (http://www.wipo.int/pct/en/).

The application form may be posted directly to us or hand delivery at ourHead Office in Kuala Lumpur ; or lodge them at any branch Officesin Sabah or Sarawak.

Fees

There are three main fees that must accompany the application. These are the transmittal fee, the international filing fee and the search fee.The transmittal fee covers the work completed by MyIPO, the international filing fee covers the work completed by WIPO and the searchfee covers the work completed by an International Searching Authority (ISA).

MyIPO collects the transmittal fee but the two other fees are sent to the WIPO and ISA respectively. All fees must be paid in MalaysianRinggit (RM).

International Search ReportAn International Searching Authority (ISA) is to undertake an international search, that is, to identify any prior art or written material indetermining whether or not the invention is new. The results of the international search can help the applicant to evaluate his chances of


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getting a patent in the countries that he designates.

The following ISAs specify by MyIPO that will undertake the international search :

Korean Intellectual Property Office (KIPO) IP Australia (Australian Patent Office) European Patent Office (EPO)

PublicationAll applications are published usually eighteen months after the application date or priority date if the applicant claiming priority. WIPOproduces a journal called the PCT Gazette, which is published every week. It contains the summary page of all applications. The PCTGazette is also available on the WIPO Internet site.

International Preliminary ExaminationIf the applicant choose to have an international preliminary examination, an International Preliminary Examining Authority (IPEA) willundertake it. The applicant must make a specific demand , and should be submitted directly to the IPEA. The IPEA will examine theapplication and send an international preliminary examination report which will give the applicant an opinion on whether his inventionsuitable for a patent to be granted.

The following IPEAs specify by MyIPO that will undertake the international preliminary examination :

Korean Intellectual Property Office (KIPO) IP Australia (Australian Patent Office) European Patent Office (EPO)

The National PhaseThe applicant has to enter the national phase in order his international application to proceed separately in any or all of the countries whichare party to the PCT. The applicant has up to 30 months after his priority date to enter the national phase in Malaysia.

The applicant should notify MyIPO by : submit a copy of the international application in the English language pay the prescribed fee using Form 2AApplications which entered the national phase shall comply with the requirements of the Malaysian Patents Act. The decision on grantingpatents is taken exclusively by MyIPO in the national phase.


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years.

WHO MAY APPLY?

Any person, whether Malaysian citizen or not, who is the owner of the trade mark used, or proposed to beused, by him in the Malaysia, may apply for the registration of a trademark in this country.

HOW TO APPLY?

Before Applying -Applicants are advised to make search before submitting applications to avoidapplying for identical or similar to trade marks filed earlier. All searches can be done at Public SearchRoom, MyIPO. A fee rate of RM10 per hour will be charged.

Application Form (TM5) - All applications must be made in Form TM5. Five copies of the completedTM5 must be submitted together with the prescribed fee. For different marks, separate applications mustbe filed.


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What is an industrial design?An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as theshape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must beapplied to an article by any industrial process or means of which the features in the finished article appeal to eye.

When should one file for registration?As claims are based on a "first-to-file" rule basis, filing of an industrial design should be made at the earliest possible time or before anarticle is disclosed to the public. Prior disclosure will destroy the novelty of the design. So extreme care should be exercised to ensuresecrecy of the design.

What rights does a registered design confer?A registered industrial design confers the owner of a registered design the exclusive right to make, import or sell or hire out any article towhich the design has been applied. Other users should obtain the consent of the rightful owner before using the design. The owner of aregistered design has the right to take legal action against an infringer within 5 years from the act of infringement.

How long is the period of protection?A registered industrial design is given an initial protection period of 5 years from the date of filing and is renewable for a further twoconsecutive terms of 5 years each.

How extensive is industrial design protection?An industrial design registered in Malaysia is only protected in Malaysia . In order to have your designs protected in other countries,applications for registration will have to be filed within six month from the earliest date when it was first filed in any of the Paris Conventionmember countries.

How soon can one manufacture and sell articles made to design?Anytime after the application has been filed. Applicants wishing to exploit the design in foreign markets may well wish t o obtaincorresponding protection abroad.

Are registered designs made public?Registered designs are open to public inspection and the details of the registration and the details of the registration are recorded in theRegister of Industrial Designs and published in the Government Gazette.

What is a registrable industrial design?To be registrable an industrial design must be new at the date an application for its registration is filed. A design is considered be newonly if it has not been made available or disclosed to the public in any way whatsoever in Malaysia before the filing date of the applicationand it is not on the record the Register of Designs.

What sort of designs is excluded from registration?The designs of certain types of article are specifically excluded from design registration. An industrial design is not registrable if: theaesthetic appearance of an articles is not signi ficant or the design features differs only in immaterial details;

it is a method or principle of construction;

the designs are contrary to public order or morality;

the designs of the articles concern exclusively with how an article functions; and

the designs of articles that are integral parts of other articles and whose features are dependent upon the appearance of otherarticle.

Who can apply for design registration?Only the owner of a design may apply to register the design, though an agent can be authorized to make application.Where an applicant's ordinary residence or principal place of business is outside Malaysia, the applicant shall appoint an agent registeredin the Register of Industrial Designs Agent.

How to file an application for the registration of an industrial design?Filing an application to register a design requires:-

A completed application form (ID Form 1) in Malay or English;


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Six set of representations of the article to which the design is applied (drawings or photograph);

A statement of novelty in respect of the industrial designs to which the design is applied. (However a statement of novelty is notrequired when registering wallpaper, lace or textile articles); and

Payment, in full, of the appropriate filing fee.

Where to lodge your application?All application for the registration of industrial design must be lodge at the Industrial Designs Registry, Intellectual Property Corporation ofMalaysia.


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What Is Copyright?

Copyright is the exclusive right given to the owner of a copyright for a specific period. Copyright protection in Malaysia is governed by theCopyright Act 1987. There is no system of registration for copyright in Malaysia. A work that is eligible is protected automatically uponfulfillment of the following conditions:-

sufficient effort has been expected to make the work original in character;

the work has been written down, recorded or reduced to a material form;

the author is qualified person or the work is made in Malaysia or the workis first published in Malaysia

What Does Copyright Protect?

Works eligible for protection are;

literary works;

musical works;

artistic works;

films;

sound recordings;

broadcasts; and

derivative works

These works shall be protected irrespective of their quality and purpose for which they were created.

However, the copyright protection shall only extend to expression and not ideas, procedures, methods of operation or mathematical conceptsas such.

Who Owns Copyright?

Copyrights in a work vests initially in the author (writer, composer, maker of the work, etc). However, where the making of a work is made byan employee in the course of his employment, unless there is any contrary agreement, the copyright in the work shall be deemed to vest inthe person who commissioned the work or the employer. The author's right is transferable by assignment, testamentary disposition or byoperation of law, in which case the assignee shall be the owner.

How long does copyright last?

Literary, Musical or Artistic Works

Generally, copyright in any literary, musical or artistic work shall subsist during the life of the author plus 50 years after his death. However, ifa work has not been published during the li fetime of the author, copyright in the work continues to subsist until the expiration of 50 years,following the year in which the work was first published. In the case of a work with joint authorship, the life of the author who dies last is usedfor the purpose of calculating the copyright duration of the work.

Sound Recordings

The copyright in sound recordings shall subsist until the expiry of a period of 50 years computed from the beginning of the calendar year nextfollowing the year in which the recording was first published or, if the sound recording has not been published, from the beginning of thecalendar year following the year of fixation.

Broadcasts

For the copyright in broadcasts, the duration shall continue to subsist until the expiry of a period of fifty years computed from the beginning ofthe calendar year next following the year in which the broadcasts was first made.

Films

The duration of the copyright in films shall continue to subsist for a period of fifty years computed from the beginning of the calendar yearnext following the year in which the film was first published or first made available to the public or made, whichever is the last.

Government Works

Copyright in works of Government, Government organizations and international bodies shall continue to subsist until the expiry of a period offifty years computed from the beginning of the calendar year next following the year in which the work was first published.

What Are The Legal Rights Of Copyright Owners?


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Generally, owners of copyright works in literary, musical or artistic works, films and sound recordings have the exclusive rights to control:

the reproduction of the works in any form (including photocopying, recording etc);

the performing, showing or playing to the public;

the communication to the public;

the distribution of copies to the public by sale or other transfer of ownership; and

the commercial rental to the public.

These exclusive rights apply irrespective of whether the works are copied partly or wholly. Thus, infringement of copyright occurs if theperson claiming can show that the defendant has done such an act. In other words, the burden of proof lies on the person claiming thathis/her work has been infringed.

Copyright in Broadcasts

For the copyright in a broadcast, there shall be exclusive rights to control the recording, the reproduction, and the rebroadcasting of thewhole or a substantial part of the broadcast. The show or the play must be made in public and in a place where an admission fee is chargedfor the whole or a substantial part of the broadcast either in its original form or in any way recognizably derived from the original. Thecopyright in a television broadcast shall include the right to control the taking of still photographs from such broadcasts.

Economic Rights

Economic rights are exercised during the period of protection. These rights are exercised by the owners while alive, and upon death, for aperiod of 50 years by their heirs.

Moral Rights

Besides the economic rights, copyright protection also includes moral rights. The moral rights are basically the rights to oppose changes inthe copyright that could harm the reputation of the creator.

What Constitutes Copyright Infringement?

The copyright in a work infringed when a person who, not being owner of the copyright, and without license from the owner, does orauthorizes any of the following acts:-

reproduces in any material form, performs, shows or plays or distributes to the public,

communicates by cable or broadcast of the whole work or a substantial part thereof either in its original or derivative form;

imports any article into Malaysia for the purpose of trade or financial gains;

makes for sale or hire any infringing copy;

sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing copy;

distributes infringing copies;

possesses, otherwise than for his private and domestic use, any infringing copy;by way of trade, exhibits in public any infringing copy;

imports into Malaysia, otherwise than for his private and domestic use, an infringing copy;

makes or has in his possession any contrivance used or intended to be used for the purpose of making infringing copies; or

causes the work to be performed in public

What Is Copyright Tribunal?

The Malaysian Copyright Act provides for a Copyright Tribunal whose function is to grant licenses to produce and publish in the NationalLanguage a translation of a literary work written in any other language and arbitration of disputes relating to use of copyright works.

General Information of Patent

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