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PATENT

HANDBOOK

Copyright Reserved

Pintas IP Group

www.pintas-ip.com

http://www.pintas-ip.com/



1. PATENT NOVELTY SEARCH

This is the first step before an application is made for the registration of a patent. Although a prior search is optional, it helps in

determining the patentability of an invention and its possible scope of protection to be covered.

Job Scope (PATENT AGENT):

(i) Evaluating invention’s novelty and patentability;

(ii)Conducting patent search in the US, Japan, WIPO, Europe Patent Databases (English specifications);

(iii) Reporting (Novelty Search Report);

To Do List (CLIENT):

(i) Invention Fact Sheet (Appendix 1)

Fee: RM 1,100

Estimated Timeline: 2 weeks

2. DRAFTING OF PATENT SPECIFICATION

The invention/innovation should be clearly and completely described in a patent document that which is sufficient to enable a person

having ordinary skill in the art to carry out the invention. The description should preferably be described using the following

sequence of headings:

(i) field to which the invention belongs;

(ii) background stating problems to solve;

(iii) summary of the invention;

(iv) description of a preferred embodiment;

(v) exclusive right that the applicant intends to claim;

(vi) abstract providing an overview of the invention; and

(vii) drawings in regard to the preferred embodiment.


(i) Gathering maximum amount of information concerning the invention;

(ii) Preparing the specification;

(iii) Amending the drawings to comply with the patent regulation;


(i) Provide drawings of the invention to the agent;

(ii) Check the draft and communicate with the agent to make sure that the specification covers the intended scope of protection;

Fee: RM 6,000~RM 8,000

Estimated Timeline: 1~2 months

STAGE 1

STAGE 2



STAGE 2

APPLYING PATENT IN MALAYSIA

To protect and obtain the monopoly rights of the

invention in Malaysia.

APPLYING PATENT OVERSEAS

1. Security Clearance

A person resident in Malaysia must file the

patent application in Malaysia unless a written

authority (security clearance) is granted by the

registrar, under section 23A of Malaysia Patent

Act.


(i) Preparing a letter with reasoning to request

for the security clearance;

(ii) Follow up closely with the registrar;

Fee: RM 1000

Estimated Timeline: 2 weeks~1 month

MALAYSIA PATENT APPLICATION

PROCEDURES

OVERSEAS PATENT APPLICATION

PROCEDURES

OR



1. MALAYSIA

PATENT APPLICATION IN MALAYSIA

1. Legislation:

Patents Act 1983 (Act 291).

2. Patentability Criteria:

A patent has to fulfill the following conditions in order to claim protection.

it is new

it involves an inventive step

it is industrially applicable

Non-Patentable Subject Matter:

An invention is not patentable if it contains the following:

discoveries, scientific theories and mathematical methods,

plant or animal varieties or essentially biological processes for the production of plant or animals,

schemes, rules or methods for doing business, performing mental acts, and

methods for the treatment of the human or animal body by surgery or therapy, and diagnostic

methods practiced on the human or animal body.

3. Utility Innovations

The Malaysian patent system also provides for the grant of utility innovation certificates. A utility innovation

must fulfill the criteria of novelty and industrial applicability (but not inventiveness). A utility innovation

certificate may only have one claim and subject to evidence of commercial/industrial use in Malaysia, enjoys

the same duration of protection like a patent.

4. Membership:

√ - Paris Convention

√ - PCT

Malaysia is a member of the Paris Convention since 1989, whereby applications from convention countries

will be subject to the same priority date in Malaysia. The application for priority has to be made within 12

months of the first application in a convention country.

Malaysia is also a member of the PCT since 2006. An applicant who has made an international patent

application may file and/or prosecute the patent application during its national phase entry into Malaysia

within 30 months from the filing date of the international application or from the earliest priority date of the

application if a priority is claimed.

5. Rule of Priority:

Unless requested by an Examiner, there is no requirement to file a certified copy of any priority application.

“First to Apply” is the rule followed by Malaysia in determining priority of patents.

6. Duration

For patent filed prior to 1st August 2001, the duration of protection is 15 years from the date of grant or 20

years calculated from the filing date, whichever expires later. For patents filed on or after 1st August 2001,

the duration is 20 years calculated from the filing date (for a direct national application) and from the

international filing date (for a PCT national phase application).



MALAYSIA PATENT

APPLICATION PROCEDURES

1. FILING OF PATENT APPLICATION

Every applicant is required to submit an application to the registrar

of patents within 12 months of priority date. An application number

shall be provided upon the completion of filing.


(i) Prepare and submit the followings:

(a) Form 1- Request for the Grant of a Patent

(b) Form 17 – Appointment of Patent Agent

(c) Patent Specification


(i) Provide the following details:

(a) the name and address of the applicant;

(b) the name, address and nationality of the inventor;

(c) a statement explaining how the applicant derives

its right to the patent from the inventor if the

applicant is not the inventor. [Normally by virtue of

assignment or employment]

(ii) Sign and send the agent a digital copy of Form 17.

Fee: RM 1,400

Estimated Timeline: 1~2 days

2. PRELIMINARY EXAMINATION

Where an application for a patent has a filing date and is not withdrawn,

the registrar shall examine the application and determine whether it

complies with the formality requirement and regulations. (by PATENT

OFFICE) Estimated Timeline: at least 2 months

5. PUBLIC INSPECTION

The registrar shall make available for public inspection after eighteen

months from the priority date or filing date of a patent application. (by

PATENT OFFICE)

Timeline: 18 months after the filing date

4. REQUEST FOR SUBSTANTIVE EXAMINATION

Every applicant has to file a request for a substantive examination and

the examiner will then submit a report after examining the application

for compliance of regulations.

Deadline: within 18 months from the filing date.


(i) Remain the client about the deadline;

(ii) File form 5 – Request for Substantive Examination;


(i) Settlement of Payment

Fee: RM 1,800

Estimated Timeline: 6 months ~ 2 years

3. FILING PATENT INTERNATIONALLY

If the first filing is done in Malaysia, the applicant in this stage may

want to extend the patent protection to overseas jurisdictions. There

are several path ways to file patent internationally and two of the most

commonly used path ways are as follows:

(a) Paris Convention (Direct Filing)

(b) Patent Cooperation Treaty (PCT)

Deadline: within 12 months from the filing date

Job Scope (PATENT ANGENT):

(i) Advise client the best/cost effective path way;

(ii) Liaise with overseas agents for the necessary information and

updates;


(i) Provide the necessary documents requested by the overseas agents.

7. RESPONSE TO OFFICE ACTION

For most cases, the applicant is given 2~3 months to response to the

office action. Although there are several ways to response to the office

action, it is highly recommended by the registrar to submit the

responses in the form of letter.

Deadline: 2~3 months from the date of mailing.


(i) Study the office action and provide appropriate advisory;

(ii) Discuss the possible strategies with the client;

(iii) Construct a response letter;

Fee: RM 500~2000

Estimated Timeline: 1 month

6. EXAMINATION REPORT

An examination report of each application will be issued by the registrar.

Positive report shall result to the grant of patent whereas negative report

shall result in the issuance of office action to notify the applicant about

issues with his/her application. This type of action will include the reason

why registration is being refused or what requirements must be satisfied.

8. CERTIFICATE OF GRANT

Once the application has fulfilled all the requirements, the registrar shall

issue to the applicant a certificate of grant of the patent.


(i) Check and forwarding the certificate of Grant;



Fee: RM 400

9. RENEWAL FEE

Fees for maintaining the patent in Malaysia is on a yearly basis. The

renewal fee structure are as follows:

a) for second year after grant of patent: RM 820

b) for third year after grant of patent RM 895

c) for fourth year after grant of patent RM 960

d) for fifth year after grant of patent RM 1030

e) for sixth year after grant of patent RM 1110

f) for seventh year after grant of patent RM 1190

g) for eighth year after grant of patent RM 1245

h) for ninth year after grant of patent RM 1320

i) for tenth year after grant of patent RM 1380

j) for eleventh year after grant of patent RM 1560

k) for twelfth year after grant of patent RM 1620

l) for thirteenth year after grant of patent RM 1785

m) for fourteenth year after grant of patent RM 1940

n) for fifteenth year after grant of patent RM 2050

o) for sixteenth year after grant of patent RM 2430

p) for seventeenth year after grant of patent RM 2690

q) for eighteenth year after grant of patent RM 3000

r) for nineteenth year after grant of patent RM 3320

s) for twentieth year after grant of patent RM 3530


(i) Send remainder to the client



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Negative Report



2. UNITED STATES

PATENT APPLICATION IN UNITED STATES

1. Legislation:

Title 35 of the United States Code (35 U.S.C. § 1 et seq.) is the primary federal utility patent statute of law in

the United States. Title 37 of the United States Code of Federal Regulations (“CFR”) contains several

regulations related to U.S. utility patent practice.

2. Patentability Criteria:

An invention has to fulfill the following conditions in order to be eligible for utility patent protection:

Patentable subject matter;

Utility;

Novelty;

Nonobviousness; and

Enablement.

Non-Patentable Subject Matter:

An invention is not patentable if it contains the following:

Laws of nature;

Natural phenomena;

Abstract ideas; and

Humans themselves.

3. Provisional Patent Applications:

Under United States patent law, a provisional application is a legal document filed in the USPTO that

establishes an early filing date, but which does not mature into an issued patent unless the applicant files a

regular non-provisional utility patent application within one year. There is no such thing as a “provisional

patent.”

A provisional application includes a specification, i.e., a description, and drawing(s) of an invention

(drawings are required where necessary for the understanding of the subject matter sought to be patented), but

does not require formal patent claims, inventors’ oaths or declarations, or any information disclosure

statement (IDS). Furthermore, because no examination of the patentability of the application in view of the

prior artis performed, the USPTO fee for filing a provisional patent application is significantly lower than the

fee required to file a standard non-provisional utility patent application. A provisional application can

establish an early effective filing date in one or more continuing patent applications later claiming the priority

date of an invention disclosed in earlier provisional applications by one or more of the same inventors.

4. Membership:

√ - Paris Convention

√ - PCT

The United States has been a member of the Paris Convention since 1887, whereby applications from

convention countries will be subject to the same priority date in the United States. The application for priority

has to be made within one year of the first application in a convention country.

The United States has been a member of the PCT since 1978, whereby a national of a treaty member country

that owns a patent application in its home country, can file one PCT patent application with the World

International Property Organization (WIPO), and extend its rights in the patent application to any other

member country of the PCT. Alternatively, a national of a treaty member country also can file a PCT patent

application directly with WIPO without having to first file a patent application in his/her own treaty member

country.



5. Rule of Priority:

Currently, the United States follows a “first to invent” priority rule; however, effective March 16, 2013, the

United States will switch to a “first to file” priority rule in accordance with the Leahy-Smith America Invents

Act (“AIA”).

6. Duration:

For utility patent applications filed on or after June 8, 1995, the patent term is 20 years from the filing date of

the earliest U.S. patent application to which priority is claimed (excluding provisional applications). For

utility patent applications that were pending on and for patents that were still in force on June 8, 1995, the

patent term is either 17 years from the issue date or 20 years from the filing date of the earliest U.S. or

international (PCT) patent application to which priority is claimed (excluding provisional applications), the

longer term applying.

Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the utility

patent. No maintenance fees are due while a utility patent application is pending.



U.S. PATENT APPLICATION

PROCEDURES

1. FILING OF U.S. PATENT APPLICATION

Every applicant is required to submit an application to the registrar

of patents within 12 months of priority date. An application number

shall be provided upon the completion of filing.


(i) Prepare and submit the followings:

(a) Retrieving Priority Doc(if it is not the first filing);

(b) Prepare Information Disclose Statement;

(c) Liaise with US agent;

(d) Prepare Patent Specification Format;


(i) Provide the following:

(a) inventor and applicant details;

(b) sign and send the agent a digital copy of the

following documents:

(1) Power of Attorney;

(2) Ownership Declaration;

(3) Assignments of Patent Rights;

(ii) Check and confirm the patent specification;

Fee: USD 3,000

Estimated Timeline: 1 weeks

4. PUBLIC INSPECTION

The registrar shall make available for public inspection after eighteen

months from the priority date or filing date of a patent application. (by

PATENT OFFICE)

Timeline: 18 months after the filing date

3. EXAMINATION

If the application has an application number and it is not withdrawn, the

registrar shall automatically assign an examiner to examine the application

and determine whether the application complies with the formality

requirement and regulations.

Estimated Timeline: 6months ~ 2 years

2. FILING PATENT INTERNATIONALLY

If the first filing is done in United States, the applicant in this stage

may want to extend the patent protection to overseas jurisdictions.

There are several path ways to file patent internationally and two of the

most commonly used path ways are as follows:

(a) Paris Convention (Direct Filing)

(b) Patent Cooperation Treaty (PCT)

Deadline: within 12 months from the filing date

Job Scope (PATENT ANGENT):

(i) Advise client the best/cost effective path way;

(ii) Liaise with overseas agents for the necessary information and

updates;


(i) Provide the necessary documents requested by the overseas agents.

6. RESPONSE TO OFFICE ACTION

For most cases, the applicant is given 2~3 months to response to the

office action. Although there are several ways to response to the office

action, it is highly recommended by the registrar to submit the

responses in the form of letter.

Deadline: 2~3 months from the date of mailing.


(i) Study the office action and provide appropriate advisory;

(ii) Discuss the possible strategies with the client;

(iii) Construct a response letter;

Fee: at least USD 2000

Estimated Timeline: 1 month

5. EXAMINATION REPORT

An examination report of each application will be issued by the registrar.

Positive report shall result to the grant of patent whereas negative report

shall result in the issuance of office action to notify the applicant about

issues with his/her application. This type of action will include the reason

why registration is being refused or what requirements must be satisfied.

7. CERTIFICATE OF GRANT

Once the application has fulfilled all the requirements, the registrar shall

issue to the applicant a certificate of grant of the patent.


(i) Check and forwarding the certificate of Grant;



Fee: USD 1400

9. RENEWAL FEE

Fees for maintaining the patent in United States is payable on the 3.5

year, 7.5 year, and 11.5 year. The renewal fee structure are as follows:

a) due at third and a half year: USD 1500

b) due at seven and a half year: USD 2800

c) due at eleven and a half year: USD 5300





Negative Report

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8. PUBLICATION AFTER GRANT

A Grant copy of patent shall make available on USPTO for public

inspection.





Fee: USD 600



Appendix 1


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