We advise local and foreign inventors or owners of inventions, and draft, file and prosecute patent applications on their behalf. Our patent team of registered patent agents, technical experts and lawyers help to put our clients at ease by providing comprehensive advice on issues of patent infringement, patentability, prior art searches, and more, even as we regularly update clients on IP-related issues in South East Asia.
Malaysian Patent Law is WTO/TRIPS compliant, and Malaysia is a member of the Paris Convention and the Patent Cooperation Treaty (PCT). At present it is not a member of the Budapest Treaty but its accession to the Budapest Treaty is likely in the near future. The registration of patents is handled by the Intellectual Property Corporation of Malaysia (MyIPO).
What types of protection are there for inventions (in the form of a product, process, machine, manufacture, composition of matter, etc.)?
Two types of patents are granted:
- Standard Patent: The invention must be novel, must have an inventive step and must be industrially applicable. Duration of protection is for 20 years from date of filing of application.
- Certificate of Utility Innovation: Generally same as standard patent except no inventive step is required.
What are the things that cannot be patented?
The following are non-patentable:
- discoveries, scientific theories and mathematical methods.
- plant or animal varieties or essentially biological process for the production of plants or animals, other than man-made living micro-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, and
- methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. Products used in any such methods are patentable. Claims on method of treatment of human or animal body by therapy are not patentable. However claims drafted as use of compounds to treat a medical problem (Swiss type claims) are acceptable.
- claims to computer programs per se.
What is a Patent Search?
Patent Searches are highly effective tools to obtain answers to specific technical questions. Patent Databases contain a huge volume of technology documents, in the form of patent descriptions and drawings. There are several categories of patent descriptions published namely
- patent applications awaiting grant of patent
- granted patents which are still subsisting
- granted patents which have expired or have been abandoned
By conducting a Patent Search, we can help you:
- Find solutions to a technical problem you are facing
- Design around a patented product or process
That’s not all, Patent Searches can also provide useful information to answer your questions on:
- What is the state of art in a particular field of technology?
- What are your competitors doing?
- What is the trend in the technological advancements?
KASS offers quality, customised research with fast turnaround and affordable pricing. We have access and the capability to search the patent database resources of US, UK, Europe, Japan, Hong Kong, China, Malaysia, Korea, Australia and 65 other countries.
KASS provides the following patent search services:
- Equivalent Patent Search: Useful for parties wanting to know the patent portfolio of a particular owner so that a consolidated action can be taken to attack validity of the patents or a part of due diligence exercise to be undertaken prior to assignment or license of patents.
- Prior Art (Patentability / Novelty) Search: Provide patent documents that disclose inventions close to an identified technology.
- Infringement Search (Freedom to Operate Search): Identify subsisting patents that would bar the manufacture, use, or sale of a product, or a product made according to a process. This search is necessary before commencing manufacture or sale of a new product.
- Validity Search: Used to attack the validity of a granted patent or to oppose a pending patent application. Also useful to determine the strength of a patent before taking an assignment or license of the patent.
- Patent File Search: Used to determine whether the patent was prosecuted according to Patent Regulations. Often such searches are done to attack the validity of a granted patent or to oppose pending applications.
- Competitor / Third-Party Search: All patents applied for or granted to a competitor or to any third party can be searched to learn their research strategy, identify key research staff, patent filing activities, etc. This gives a good indication of the technical areas a particular party is concentrating on.
What are the general requirements to file a patent application?
Malaysia adopts a “first to file” system for patents. A filing date is accorded to the date of receipt of the application if the application contains all the following information:
- the name and address of the applicant;
- the name and address of the inventor;
- a description and all drawings (if any) in duplicate, drawings can be informal drawings;
- a claim or claims; and
- the prescribed fee.
The following documents can be filed subsequently without jeopardizing the Filing Date:
- appointment of Patent Agent (Form 17) (no notarization or legislation required);
- abstract; and
- priority documents (only if expressly requested by the Registrar of Patents).
All documents can be in the English language. Translation into the Malay language is not necessary.
What happens after the filing of an application?
After a preliminary examination, a Substantive Examination of the patent application will be conducted. The Substantive Examination proceeds only upon the filing of a formal Request for Substantive Examination (S.E.) or Modified Substantive Examination (M.S.E.), which must be filed within 2 years from the date of filing.
Alternatively, the Request for S.E. or M.S.E. can be deferred for 3 years or 4 years from the filing date respectively on specific grounds. Generally by bringing the application to conformity with a corresponding granted US, UK, EPO or Australian Patent, the application can be expedited.
Can an application be converted from a Patent to a Utility Innovation, or vice versa?
The applicant is given the opportunity to change or convert an application for a patent to an application for a Certificate of Utility Innovation and vice versa. Such conversion is only possible if requested by the applicant within 6 months from the date the Registrar issues the S.E. or M.S.E. report.
How long does a Patent / Certificate for Utility Innovation last?
A patent grants exclusive rights for 20 years starting from the date of filing of application. A Certificate for Utility Innovation provides exclusive rights for a maximum of 4 periods of 5 years each. Both are subject to payment of annuity fees.
Patent offices require the maintenance of granted patents (in some countries even pending applications) by the payment by annuity fees on the anniversary date of grant. Failure to pay by the deadline may result in loss of patent rights in that country.
KASS provides a worry-free patent annuity payment service.
What if I want to file a patent application overseas?
As patents are territorial, which means legal protection is enforceable only in jurisdictions where they are granted, we assist Malaysians to file foreign patent applications in any country in the world through our professional relationships with reputable patent attorneys from established IP firms in other countries. We have developed a global network of strategic alliances with our trusted associates, enabling us to provide clients with total care and convenience with regard to their IP needs anytime, anywhere. We strive to keep our rates competitive and can provide estimates of costs of seeking patent protection in any country which is particularly useful information for applicants to budget their overseas patent filing exercise.
Over the years we have successfully obtained patents in the US, UK, Australia, China, India, Indonesia, Japan, Singapore, Taiwan, Thailand, the European Patent Office, New Zealand, Singapore, South Africa, Korea and in many other countries worldwide on behalf of Malaysian applicants.
As patent filing in overseas countries can be a relatively costly process, we have the expertise and experience to guide clients on the best and most efficient manner of seeking patent rights in overseas countries which are important to the applicant.
What is the Patent Cooperation Treaty (PCT)?
The PCT is a treaty under the World Intellectual Property Organization (WIPO) with 148 member countries. The PCT facilitates the filing of an international patent application for an invention by filing a single application.
A PCT application by itself does not result in the grant of a patent, since there is no such thing as an “international patent”. To obtain a grant of a patent, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards the grant of one or more patents.