table of contents
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Overview of Malaysia
Malaysia is a country consisting of two territories, the Malay Peninsula and the island of Borneo, and borders countries such as Thailand, Indonesia, and Brunei. It is also a member of ASEAN.
While there are many resort areas such as the world-famous Penang Island, it is also a country that has achieved rapid economic growth in recent years, and the advanced design of the Petronas Twin Towers is a symbol of this.
The capital of Malaysia is Kuala Lumpur, the official language is Malaysian, the currency is Ringgit (MYR), and the country code top-level domain is ".my".
Furthermore, the match in which Japan's national men's soccer team defeated the Iranian national team and qualified for the World Cup finals for the first time is called "Johor Bahru's Joy," but "Johor Bahru" is the name of the city where the match was held. , is one of the major cities in Malaysia.
Malaysia is actively producing agricultural products such as rubber and tin, as well as minerals, but rather than relying solely on these exports and tourism, the country has achieved certain results through economic policies such as infrastructure development and the enhancement of heavy industry. The country has set a goal of becoming a developed country by 2020.
Overview of intellectual property rights in Malaysia
Provide an overview of each jurisdiction.
| Patent | utility model | design | 商標 | |
| The need for a local agent | want | want | want | want |
| Application language | English or Malaysian | |||
| Substantive examination system | will get | will get | No | will get |
| Duration | 20 years since application | 10 years from application (can be extended twice every 5 years) | 5 years from application (can be extended 4 times every 5 years) | 10 years from application (can be extended every 10 years) |
| Objection | No | No | No | February from publication of application |
| Nullity suit (Determined by court) |
will get | will get | will get | will get |
Malaysia is also a party to the Paris Convention, WTO Agreement, Patent Cooperation Treaty (PCT), Nice Agreement, Madrid Protocol, etc.
About patent rights
Duration
It has been 20 years since the application was filed.
Protection target
The targets are those that can be used industrially.
Excludes scientific theories, mathematical methods, plant or animal varieties, biological methods, etc.
application
As it is a member of the Paris Convention, it is possible to claim priority based on Japanese patent applications.
As a member of the PCT, Malaysia can be designated in PCT applications.
Submit the application, specification, claims, necessary drawings, and other prescribed documents.
A prescribed fee and a power of attorney (which can be completed within six months of filing) are required.
A priority certificate must be submitted when a priority certificate is ordered to be submitted by the Malaysian Patent Office.
Examination
First, an examination is conducted to determine whether the formal requirements are met, and then a preliminary examination (checking the format of the specification, paper size, etc.) is conducted.
There are two types of requests for examination: regular requests for substantive examination and modified requests for substantive examination.
(1) Ordinary substantive examination request refers to a form in which the Malaysian Patent Office conducts its own examination. However, in reality, the information and examination results of applications filed with patent offices in countries other than Malaysia will be taken into account in the examination if they are submitted as materials, so we believe that these prescribed documents should be submitted to the examiner at the same time as the request for substantive examination. It is being
(2) Modified Substantive Examination is a request for a Malaysian patent application in which the content of the specification of the Malaysian patent application is made consistent with the content of a foreign application that corresponds to the Malaysian patent application and has been granted a patent by a designated government office. This refers to the form of examination for obtaining a patent.
Therefore, a request for revised substantive examination requires the submission of a patent certificate showing that the corresponding foreign application has been granted a patent by a designated office. Please note that there are cases where the results of the search and examination of the foreign application corresponding to the request for examination cannot be obtained, or the result of a patent has not been obtained. (up to 18 months from date) is possible.
There is no objection system.
Obligation to perform
This must be done within three years from the date of registration or four years from the filing date, whichever is later.
Certification for request for modified substantive examination
When filing a request for amended substantive examination in Malaysia based on a Japanese patent, there is no need to submit a certified translation of the patent publication.
However, the following documents must be submitted.
- Patent publication certified by the Japan Patent Office
- English translation of patent publications
- Declaration by the translator
Online IP search tool
From the URL below, you can access an online search tool that allows you to search for Malaysian IPs using an English UI.
About utility model rights
Duration
The period is 10 years from the date of application, and can be extended twice for 5 years (up to 20 years).
Protection target
A utility model is defined as "a new appliance, tool, object, or method that has practical utility due to its shape, structure, or combination." The inventive step requirements that apply to patents do not apply to utility models.
Examination
There is a substantive examination request system, and a prescribed fee must be paid at the time of request.
There is no objection system.
About design rights
Duration
The period is 5 years from the date of application, and can be extended 4 times for 5 years (up to 25 years).
Protection target
A design is defined as "a shape, pattern, or pattern feature applied to an article in the industrial production process." Designs that violate public order and morals cannot be registered. The design of the set is registrable.
application
Because it is a member of the Paris Convention, it is possible to claim priority based on Japanese design registration applications.
The Hague Agreement has not been concluded. Plans to join the Hague Agreement in 2015.
The application shall state the article to which the design pertains and the international design classification, and submit either photographs or drawings. In addition, a prescribed fee and a power of attorney are required.
In addition to a document indicating the mode of transfer of the right to receive design registration from the creator to the applicant (assignment or work-in-proprietary creation), an explanation regarding novelty is required.
It is possible to file multiple designs in one application.
Examination
Only formal requirements are examined; substantive requirements are not examined.
If it is determined that all formal requirements are met, a certificate of registration will be issued after being registered in the register.
There is no objection system.
About trademark rights
Duration
It is valid for 10 years from the date of application and can be renewed every 10 years.
Protection target
This applies to trademarks related to goods and services. Trademarks that lack distinctiveness and trademarks that are similar to other people's registered trademarks are excluded.
Items that violate public order and morals will be excluded.
Applications for regular trademark registration, new types of trademarks (colors, sounds, holograms, etc.), associated trademark applications, serial trademark applications, defensive mark applications, and certification mark applications are also possible.
application
As it is a member of the Paris Convention, it is possible to claim priority based on Japanese trademark registration applications.
When a foreigner files an application, there is no need for the trademark to have been previously registered in his or her home country.
As Malaysia is a party to the Madrid Protocol, Malaysia can be designated in MadPro applications.
The application must include a trademark sample, classification, goods/services, etc. Additionally, if the applied trademark includes a language other than Roman letters, English, or Malay, it is required to know what language the word is in, and to provide a translation or transliteration of the word.
A single application and multiple classification system is adopted. Multiple categories can be specified in one application.
→In relation to this, division of applications and integration of multiple applications are now permitted.
Examination
After filing an application, a formal examination is followed by a substantive examination.
A third party may file an opposition within two months from the publication of the application.
Do not use
If it is not used for three years, it will be subject to a non-use cancellation trial.
After registration
Only a notice of registration with the seal of the Registrar will be issued at the time of registration and the date of filing shall be the date of registration.
Although a registration certificate will not be issued, it is possible to apply for one by paying a prescribed fee. The certificate of registration has the same value as the notice of registration.
In connection with the approval of multi-class applications, the following are now allowed:
① Division of registration
②Merging multiple registrations
It can be renewed within 6 months after the expiry of the term.
It is possible to update some or all categories.
If the procedures are not completed within the renewal period, the license will be considered cancelled, but it is possible to apply for reinstatement within six months of cancellation.
Latest News
Malaysia: Amendment of Patent Law and Enforcement Regulations (enforced on March 18, 2022)
The Malaysian Patent Law and Enforcement Regulations have been amended. We will provide an overview of the main revised items.
1. power of attorney
The format of the power of attorney has been updated. Powers of attorney filed after the effective date will be required to follow the new format.
2. Sequence list
Submission of a sequence listing is now a requirement for certification of the filing date. Sequence listings must be submitted in two formats: digital format, which is allowed by the PCT, such as text format, and PDF format.
3. PCT national transition
You can enter Malaysia using one of the following:
(i) Specification at the time of PCT application
(ii) Article 19/Article 34 amended PCT specification
(iii) Preliminary amendment/corrected specification
Regarding (iii), it is necessary to submit an application for preliminary amendment/correction along with payment of the prescribed office fees.
4. Restoration of priority
If the right of priority is lost due to negligence, you can request that the right of priority be restored by paying the prescribed fee.
For domestic applications, the deadline for requesting priority restoration is two months after the priority claim deadline. For national phase applications, the deadline for requesting restoration of priority is one month after the national phase deadline or request for accelerated examination.
5. Release
Non-PCT applications are published in the Official Gazette. The publication period is 18 months after the filing date or the earliest priority date. It is also possible to request early publication.
6. Third party information provision
Provision of information by a third party is permitted only on the grounds of novelty and inventive step.
The deadline for submitting information for domestic applications is within three months of publication. The deadline for submitting information for a national phase application is within three months of the national phase.
7. Request for examination
Regarding requests for substantive examination, the provision of examination results of corresponding foreign applications, related documents, etc. is now optional. Requests for extensions of the deadline for requests for substantive examination are no longer accepted. If a substantive examination cannot be requested within the deadline, the application will be automatically abandoned/withdrawn.
For modified substantive examination requests, it is possible to request an extension of the examination request deadline. Such request for extension will be granted only if the examination result of the corresponding foreign application related to the application for which the amended substantive examination request is pending is pending.
If you are unable to request a modified substantive examination within the extension deadline after extending your request for a modified substantive examination, you may file a request for substantive examination within 3 months from the extended deadline.
8. divisional application
The filing deadline for a voluntary divisional application is within three months from the date of service of the first refusal report and cannot be extended.
9. Application change
The deadline for filing a conversion application between a patent and a utility model is three months from the date of delivery of the first examination report and cannot be extended.
10. Deadline for responding to the examination report including reasons for refusal
The deadline for responding to the examination report including reasons for refusal is within three months from the date of service. The response deadline may be extended only once, and may be extended for a maximum of six months.
11. Post-grant corrections
Post-grant corrections can be made not only for obvious errors, but also for substantive corrections by filing a request for reexamination.
12. patent restoration
A request for restoration of an expired patent can only be made within 12 months of publication of the notice of expiration in the Official Gazette.
13. Patent office costs
For more than 10 claims, an excess claim fee will be charged.
RM20 for each item of claims 11 to 20
RM30 for each item of claims 21 to 30
RM40 for each item of claims 31 to 40
RM50 for each item from claim 41
14. Joining the Budapest Treaty
We joined the Budapest Treaty on the Deposit of Microorganisms on March 31, 2022.
reference
Malaysian Revised Patent Law 2022
https://www.myipo.gov.my/wp-content/uploads/2022/03/02-PATENTS-AMENDMENT-ACT-2022.pdf
Malaysia Revised Patent Regulations 2022
https://www.myipo.gov.my/wp-content/uploads/2022/03/PERATURAN-PERATURAN-PATEN-PINDAAN-2022.pdf
Others
Malaysian Patent Office URL:http://www.myipo.gov.my/
Patent attorney specialist Maiko Murahashi