PATENTS
New invention
The following information is provided for your general use.
Patent Registration - Procedure
Patent Registration - Duration
Application Stage - Filing Requirements
Renewal Stage - Filing Requirements
Recordal of Change of Name - Filing Requirements
Recordal of Change of Address - Filing Requirements
Recordal of Assignment - Filing Requirements
* You are advised to seek further professional advice before making any decision *
Both patent laws and technology practices change over times. A Patent Office usually maintains and monitors a list of qualified agents, so that professional IP services are provided. One most difficult skill for a patent agent to master is the ability to draft claims and interpret claims legally.
Our patent agents possess technical qualifications and have sufficient industrial exposure.
FLOWCHART from the MyIPO
[STAGE 1] APPLICATION STAGE
Filing with the MyIPO and secure a Filing Date and an Application Number
[STAGE 2] PRELIMINARY EXAMINATION
Application is examined on formalities. Received Certificate of Filing and Clear Formalities Report
[STAGE 3] SUBSTANTIVE EXAMINATION (SE)
Need to request for this examination within 18 months (or 2 years for PCT National Phase Entry) from the Filing Date (or a deferment is filed - otherwise the application will be deemed to be abandoned)
Can request for a MODIFIED SE, if patent is granted in USA / EPO / UK / Australia / Japan / Korea for the same invention.
RESULT 1: ADVERSE REPORT
Objection raised, if any. Decide whether to counter or to give up. If the MyIPO maintains on the objection, can appeal to the High Court of Malaya
RESULT 2: CLEAR REPORT
Certificate of Grant issued
[STAGE 4] RENEWAL STAGE
Upon grant, the invention will be retrospectively protected for a period of 20 years calculated from the filing date. Renewal fees need to be paid after grant, annually
Any protection before the patent is granted?
Power to caution and to place others on notice.
CLIENT CHARTER from the MyIPO
FROM FILING TO GRANT
For a straightforward case, it will take between 5 to 8 years:
1) First 18 months (or 2 years for PCT National Phase Entry) to file a request for Substantive Examination
2) Another 2 to 4 years for an examination report
3) Another 1 to 2 years for the issuance of Certificate of Grant
There are provisions for expedited examination. Reason(s) in Statutory Declaration form must be provided with prescribed fee.
An Applicant may request the Registrar to undertake an expedited examination. A Statutory Declaration stating the reasons and prescribed fee. The Registrar may accept the following reasons:
a) it is in the national or public interest;
b) there are infringement proceedings taking place or evidence showing potential infringement with regards to the patent being applied;
c) the Applicant has already commercialized the invention or plan to commercialize the invention within 2 years from the filing date of such a request for expedited examination;
d) application for grant of a patent is a condition to obtain monetary benefits from the Government or institutions recognized by the Registrar;
e) the invention relates to green technologies that will enhance the quality of the environment or conservation of energy resources; or
f) there are other reasonable grounds which support the request.
However, it is entirely at the discretion of the MyIPO whether to expedite the matter.
1) Full name and address of the Applicant
2) Full name and address of the Inventor(s)
3) If the Applicant is not the Inventor
Please justify the Applicant's right to apply (e.g. by employment / assignment / commission)
4) Patent specification (in or translated into English), including description, claim(s), abstract and drawing(s)
5) If this is a PCT National Phase Entry
Please provide:
a) PCT International Application Number
b) a copy of the PCT International Application (Request Form PCT/RO/101)
c) amendments filed in the International Phase (in or translated into English)
If Priority Claim (other than PCT) is intended
Please provide:
a) country
b) application number
c) filing date
Certified priority document with English translation to be submitted upon request only
6) Please download this Power of Attorney to be signed by a representative of the Applicant
* Please provide: name and designation of the signatory
* no legalization is required
* original form is needed for filing
Three conditions:
a) new in the world
b) involves an inventive step
c) industrially applicable
When an invention only fulfills condition a (new in the world), it can be registered as an Utility Innovation (Petty Patent)
Four prohibitions:
a) discoveries, scientific theories and mathematical methods
b) plant or animal varieties or essentially biological processes for the production of plants or animals
c) schemes, rules or methods for doing business
d) methods for the treatment of human or animal body, and diagnostic methods
With a valid patent registration, you can better protect your market position legally. When a competitor infringes your patented invention, you can act with the backing from the Laws.
Patent registration adds value to your invention. Most investors, venture capitalists, prospective partners or licensees are more willing to invest in your invention.
Yes. In Malaysia, you can still register it within 12 months from the date of first disclosure.
If the inventor (or one of) is a Malaysian, then an application has to be filed in Malaysia first (at least 2 months before filing outside Malaysia). If the invention is only intended to be filed outside Malaysia, then a written authority from the MyIPO is required.
To apply for such written authority, we require:
a) a copy of the patent specification (in or translated into English)
b) full name and address of the Applicant
c) full name and address of the Inventor(s)
Obtaining such authorization will not result in publication of the specification in Malaysia.
Have to file the PCT National Phase Entry application together with a written statement stating the reasons for the failure to enter the national phase within the 30-month period, and a declaration or other evidence in support of the reasons for such failure. If the MyIPO is satisfied that the failure was unintentional, then they will reinstate the application.
The application for reinstatement of the PCT International Application must be made within 12 months from the expiration of the 30-month period.
There is reinstatement fee for each month of delay.
1) Full Name and Address of the Proprietor
2) Registration Number
3) If APPLICATION STAGE is not handled by us
Please download this Power of Attorney to be signed by a representative of the Proprietor
* Please provide: name and designation of the signatory
* no legalization is required
* original form is needed for filing
1) The date of actual change in name
2) Documentary proof of the change in name (e.g. extract from the Commercial Register)
3) If PATENT is not handled by us
Please download this Power of Attorney to be signed by a representative of the Applicant / Proprietor
* Please provide: name and designation of the signatory
* no legalization is required
* original form is needed for filing
1) The date of actual change in address
2) If PATENT is not handled by us
Please download this Power of Attorney to be signed by a representative of the Applicant / Proprietor
* Please provide: name and designation of the signatory
* no legalization is required
* original form is needed for filing
1) Deed of Assignment (DOA) signed by the Assignor and the Assignee (witnessed by a third party, no legalization is required), must have the following particulars:
a) Full name and address of the Assignor and the Assignee
b) Patent Number and its Title
c) Consideration of the Assignment (a token sum of $1.00 is suffice)
2) Please download this Power of Attorney to be signed by a representative of the Assignor and the Assignee (separate forms)
* Please provide: name and designation of the signatory
* no legalization is required
* original form is needed for filing
