Malaysia- from filing to grant
Our patent attorneys are registered to practice before the Australian and New Zealand Patent Offices and they instruct patent attorneys registered before the Malaysian Intellectual Property Office on all aspects of Malaysian patent prosecution.
Malaysian Patent Office (MYIPO)
The government agency responsible for grant of patent rights in Malaysia is the Malaysian Intellectual Property Office.
Key prosecution events
- Paris Convention filing: 12 months from earliest claimed priority
- PCT National phase entry: 30 months from earliest claimed priority
- Substantive examination request: 48 months from international filing date, (deferrable to 60 months) or 18 months from Convention application filing (deferrable to 60 months)
- Divisional application: if voluntary filing, at any time until 3 months from the mailing date of the first examination report; or within 2 months from the mailing date of the examination report regarding lack of unity
National phase entry
Malaysian national phase applications must be filed by 30 months from the earliest claimed priority date. Late filing is possible in certain circumstances. View filing requirements for a Malaysian National phase application.
Malaysia is a Convention country, meaning that an Malaysian application can be validly filed within 12 months from filing a priority application filed according to the Paris Convention for Protection of Industrial Property. View filing requirements for a Malaysian Convention application.
Utility patents and 2nd tier protection
Utility patents are available in Malaysia and provide a 10 year term from the filing date, subject to a further two 5 year extensions provided that relevant use provisions are complied with. They relate to inventions that are novel and susceptible to industrial application and include products and processes.
Examination, divisional applications and acceptance
If the filing requirements are not met at the date of filing, a formalities report will issue. Outstanding documents must be filed within 3 months of the date of the report.
A Malaysian patent application is not automatically examined. A request for examination must be filed within 4 years from the International filing date of a PCT application or from 18 months from a Convention application filing date. Both due dates may be deferred by 18 months.
There are two types of examination available, namely substantive examination and modified examination.
Substantive examination involves an examination of the patent application on its merits including novelty (absolute), inventive step, unity and patentable subject matter considerations. If the examiner considers that the application does not fulfil the requirements, a report will be issued. The applicant has 2 months (extendable by a three month extension) from the date of the report to respond to the objections.
Modified examination can only be requested if a patent has been granted for the same invention in Australia, USA, Japan, Republic of Korea, the UK or by the European Patent Office. To undergo modified examination, the specification must be amended to be substantially the same as the specification and claims of the granted patent and a certified copy of the granted patent along with a certified English translation (if necessary) must be filed. The examiner will then examine the application on more limited grounds including novelty, patentable subject matter and consideration of whether amendments made go beyond the scope of the original disclosure.
The following subject matter is not patentable:
- discoveries, scientific theories and mathematical methods;
- plant or animal varieties or essentially biological processes for the production of plants or animals (other than manmade 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.
One or more divisional applications can be filed on the condition that the application does not include information that goes beyond the disclosure in the parent application. A divisional application may be filed in response to a unity objection or by voluntary request. The deadline for filing a divisional application is three months after the date of the first examination report.
Once the examiner is satisfied that the patent satisfies the examination requirements, a patent will be granted.
There are no opposition proceedings in Malaysia.
Malaysia is not a party of the Budapest treaty.
There is no express statutory exclusion to patent eligibility of isolated nucleic acid molecules.
For details on the renewal requirements in Malaysia, view South East Asia – Renewal Requirements.