PATENTS COMMITTEE REPORT MALAYSIA By Clara Yip and Caroline Francis. 1. Legislative Changes

Transcription

1 PATENTS COMMITTEE REPORT MALAYSIA By Clara Yip and Caroline Francis 1. Legislative Changes There were no amendments to the Patents Act 1983 nor its 1986 Regulations since the last report submitted in Singapore. 2. Changes in MyIPO s Practice i. Certificate of Filing and Formalities Report Since July 2009, MyIPO has changed its practice concerning the issuance of the application number with the Certificate of Filing and the Preliminary Examination - Clear or Adverse Formalities Report. Prior to this change, the application number was not allocated on the day of receipt of the application but would be endorsed on the Certificate of Filing which was issued simultaneously with the Formalities Report only upon completion of preliminary examination pursuant to Section 29 of the Patents Act In view of the time lag for completion of preliminary examination thereby delaying the issuance of the Certificate of Filing and hence, the application number, MyIPO is now allotting the application number on the day of filing of the application. The Certificate of Filing will be issued by the next working day without the Formalities Report which Report will then be sent to the applicant or its agent in another 1 to 2 weeks time after preliminary examination has been conducted. ii. ASEAN Patent Examination Co-operation (ASPEC) Programme The first regional patent co-operation project named the ASEAN Patent Examination Co-operation (ASPEC) programme, commenced on 15 June The 8 participating IP Offices are from the ASEAN Member States of Singapore, Cambodia, Indonesia, Malaysia, the Philippines, Lao PDR, Thailand and Vietnam. The purpose of this programme is to share search and examination results between the participating offices to allow applicants in participating countries to obtain corresponding patents faster and more efficiently. The project will potentially reduce duplication for the search and examination work done, thereby saving time and effort. Additionally, it is envisaged that search and examination work done on corresponding applications will serve as a useful reference in producing quality reports. The programme may be subject to regular reviews.

2 The Guidelines for the programme are available on MyIPO s website at In brief, the participating IP Office may consider the search and examination documents it receives under ASPEC but is not bound by any of the findings or conclusions reached by the other IP Office(s). It will proceed with and conclude its search and examination work as well as decide on whether to grant the patent in the manner that is in accordance with its national laws. To file an ASPEC Request Form, the patent application in the participating IP Office where the ASPEC Request Form is filed ( 1 st IP Office ) must have a corresponding patent application in the other participating IP Office ( 2 nd IP Office ). The ASPEC Request relies on the search and examination documents of this corresponding application. A patent application in the 2 nd IP Office is a corresponding application if it is linked by a Paris Convention priority claim to the patent application in the first IP Office, and vice-versa. The diagram below (as reproduced from MyIPO s website) shows the types of corresponding patent applications for the purposes of ASPEC, where the ASPEC Request Form is filed with MyIPO: Type 1 SG Type 2 SG Type 3 AU SG = Singapore; = Malaysia, PH = the Philippines, AU = Australia PH

3 The ASPEC Request Form is to be filed at the time of filing the Request for Substantive Examination (Form 5) or a response to a written opinion and it shall be accompanied by the following documents: (a) a copy of the search report and the examination report ( the minimum documents ) of a corresponding application, and (b) a copy of the claims referred to in the minimum documents submitted. The ASPEC Request Form may be accompanied by a copy of the written opinion(s) and the list of prior art, if available ( the additional documents ). A copy of a granted patent, without the minimum documents will not qualify for ASPEC. All subsequent correspondences with MyIPO must be marked with the phrase ASPEC requested. A copy of each of the documents cited in the minimum documents is not required at the time of filing the ASPEC Request Form ( the cited documents ). MyIPO may subsequently require the applicant to furnish a copy of any such cited document. The minimum documents, the claims referred to in the minimum documents and the additional documents must be accompanied by an English translation if they are not originally in English, at the time of filing the ASPEC Request Form. However, the cited documents may be filed in their original language. MyIPO may subsequently request for a certified translation in the English language of a document or a part of a document if a patent family member in English is not available. The aforesaid documents and subsequent correspondences are to be filed in hard copies and submitted either by hand, post, or facsimile transmission. 3. Case law There were no patent cases reported since that of IEV International Pty Ltd v Sadacharamani Govindasamy; Registrar of Patents (Interested Party) [2008] 2 MLJ 754 and Aventis Farma SA (Malaysia) Sdn. Bhd. & Anor v. Rohibul Sabri Abas & Anor [2008] 3 MLJ 451 were detailed in our last report.

4 4. Update on Statistics Based on the statistics made available by the Malaysian Intellectual Property Corporation (MyIPO), it is noted that in the year of 2008 MyIPO received a total of 5403 patent applications, out of which 864 applications were filed by local applicants and the remaining 4,539 applications by foreign applicants. With respect to granted patents in 2008, MyIPO issued certificates of grant for a total of 2,242 patents to 2,044 foreign applicants and 198 local applicants. Compared to the year 2007, there has been a decrease of 32% in the number of patents granted in Chemistry and metallurgy are the fields recording the highest incidence of grants in 2008 (20%) followed by human necessities and, performing operations and transportation (both at 19%). From January to August 2009, a total of 3,617 applications were received by MyIPO with 736 of the applications filed by local applicants. In the same period 2,073 patents were granted, of which 186 were to local applicants. As regards International Applications, the statistics show that a total of 457 applications have been received by MyIPO from 16 August 2006 to August Appended below are the statistics on Patent and Utility Innovation applications and registrations in Malaysia, as extracted from MyIPO s online database. Application and Registration from 1999 to August 2009 Year Applications Received Registrations Malaysia Foreign Total Malaysia Foreign Total ,621 5, ,021 6, ,663 5, ,452 1, ,615 4, ,460 1, ,680 5, ,547 1, ,920 5, ,323 2, ,764 6, ,471 2, ,269 4, ,562 6, ,702 2, ,645 6, ,539 5, ,044 2, ,881 3, ,887 2,073 Total 5,238 50,675 55,913 1,114 27,454 28,568 PCT Applications received from August August 2009

5 Year PCT Applications Total 457 Malaysian Patents based on fields of Technology from year 1999 to August 2009 Year Sections Total A B C D E F G H , , , , , ,155 1, ,042 1,583 6, ,179 1,213 1, ,223 6, , ,073 Total 4,369 4,890 6, ,855 3,920 5,768 28,568 Section A : Human Necessities Section B : Performing Operations; Transporting Section C : Chemistry ; Metallurgy Section D : Textiles ; Paper Section E : Fixed Constructions Section F : Mechanical Engineering; Lighting; Heating; Weapons; Blasting Section G : Physics Section H : Electricity