MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
1. Patents 1.1 Legal Framework and Patentable Subject Matter Sources of Law The legal frameworks governing patent protection in Malaysia are the Patents Act 1983 and the Patents Regulations 1986. The Patents Act 1983 provides for the substantive aspects of granting, enforcing and regulating patents, whereas the Patents Regulations 1986 govern the procedural aspects of patent appli- cations. In light of the Malaysian Legal System, the Malaysian courts also rely on the principles estab- lished by relevant case law, interpreting and applying the provisions of the Patents Act 1983. The Intellectual Property Corporation of Malaysia (“MyIPO”) is also empowered to issue guidelines and administrative directives to facilitate the patent application process. Patentable Inventions Under Section 11 of the Patents Act 1983, an inven- tion is patentable if it satisfies 3 criteria: • it is new; • it involves an inventive step; and • it is industrially applicable. Accordingly, an invention is eligible for patent protec- tion if: • it has not been publicly disclosed in any form worldwide; • is not obvious to someone with knowledge and expertise in the field; and • can be used/made in any industry. Further, Section 12 of the Patents Act 1983 defines invention to be an idea conceived by an inventor, whether a product or process, that solves a specific technical problem. However, the following types of inventions are not patentable, according to Section 13 of the Patents Act 1983. Discoveries, scientific theories and mathematical methods Developing new mathematical techniques is an exam- ple of fundamental knowledge that is a part of the scientific process rather than an invention.
Plant or animal varieties; biological processes (except microorganisms) Man-made microorganisms or biotechnological pro- cesses can be patented, but genetically modified or naturally occurring plant varieties cannot be patented. Plant variety can, however, be registered for protec- tion subject to the provisions under the Protection of New Plant Varieties Act 2004 in Malaysia. Schemes, rules or methods for doing business, mental acts or playing games Abstract ideas and methods, such as algorithms or business methods, are excluded unless they are tied to a patentable product. Methods for medical treatment or diagnosis In order to avoid restrictions on necessary medical treatments, surgical techniques performed on humans or animals are not patentable; nevertheless, the prod- ucts utilised in such techniques may still be patented. Utility Innovations Apart from patentable inventions, the laws of Malaysia allow the registration of utility innovations, as defined under Section 17 of the Patents Act 1983, to mean any innovation that produces a new product or process or that improves upon an existing product or process. Utility innovation differs from a patentable invention in that it is awarded for a “minor” invention (limited to one claim only) and does not need to meet the inven- tiveness requirements of a patent. 1.2 Patent Granting Procedure The following is the smooth process for obtaining a patent grant in Malaysia. • The patent application is examined for formality once it is filed. • A notice of clearance of formalities will be issued if the application is judged to have satisfied the formal requirements. • After that, the applicant has 18 months from the filing date (or four years from the International filing date for national phase entry applications) to sub- mit the requisite forms along with the prescribed fees to request a substantive examination or a modified substantive examination.
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