MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
• The application will then undergo substantive or modified substantive examination once the allotted 18 months (or four years) have passed. • The application will be granted and published if no adverse report or office action is issued. The authority responsible for examining and grant- ing patents is the Intellectual Property Corporation of Malaysia. Typically, a smooth local patent application takes about two to four years to be granted. The official fees for filing a patent application, depending on the number of claims and the bulk of documents, are in the region of MYR1,500. All foreign applicants must appoint a local patent agent. 1.3 Scope, Term and Maintenance of Patent Rights Under Malaysian law, a patent right is only enforce- able if it is registered. As such, the owner of a granted patent in Malaysia enjoys exclusive rights to prevent others from making, using, selling or distributing the patented invention without authorisation in Malaysia. A patent grant is valid for one year and may be renewed annually for up to 20 years from the filing date. The renewal may be filed 12 months preceding the renewal due date and a six-month grace period is available from the expiry of the renewal due date, during which renewal can still be made, subject to surcharges. If, however, the renewal is not filed within the grace period, the patent owner may still renew the patent via reinstatement within six months after the expiry of the grace period by filing a statutory declaration providing valid reasons for the failure to renew on time and making the necessary payment of surcharges. The reinstatement process typically takes about six to nine months. A notice of reinstatement of the patent will be published. If, in any event dur- ing the reinstatement period, any third parties have acquired rights, such third parties’ rights shall not be prejudiced and shall not be construed as an infringe- ment, subject to certain applicable exceptions on a case-by-case basis.
In Malaysia, there are no supplementary protection certificates or term extensions available in any techni- cal areas. The available extension (renewal) is similar to that for all patent grants. 1.4 Ownership, Assignment and Licensing In Malaysia, an inventor or an employer may apply for and own a patent, depending on their respective arrangements. Generally, an inventor is deemed to be the first owner of the patent, unless in circumstances where the inven- tion was created by the inventor during the course of the inventor’s employment or when the inventor is commissioned for such invention, the employer shall then enjoy being the owner of the patent. In the employment practice, it is not uncommon to see poli- cies or employment contracts specifying the rights to invention to belong to the employer, especially if the invention relates to the employee’s duties or was made using the employer’s resources. For inventions made at universities or other educational institutions, the ownership rule is highly dependent on the arrange- ment between the universities and the inventors. In addition to the Patents Act 1983, which governs the legal framework surrounding patents, the Malaysian Contracts Act 1950 also plays a crucial role in agree- ments, particularly assignment and licensing agree- ments involving patents. Malaysian law generally does not require that assignment and/or licensing agree- ments be in writing. These agreements can be oral, written or by way of conduct, so long as they meet the following essential elements of a valid contract: • offer and acceptance; • consideration; • intention to create legal relations; • capacity to contract; • certainty; and • legality. However, it is highly advisable to enter into proper assignment and licensing agreements to define each party’s obligations, the scope of rights granted and the terms of use, thereby reducing potential disputes.
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