Malaysia Patent Act 1983 & Amendment 2022 PDF

MALAYSIA PATENT ACT 1983 & PATENT (AMENDMENT) ACT 2022 BY DR SITI JUNAIDAH BINTI AHMAD  LEARNING OBJECTIVES: Briefly explain the clause in Patent Act 1983 & Its amendment 2022 Briefly describe the Patent Regulation 1986 Discuss the process in applying the...

MALAYSIA PATENT ACT 1983 & PATENT (AMENDMENT) ACT 2022 BY DR SITI JUNAIDAH BINTI AHMAD  LEARNING OBJECTIVES: Briefly explain the clause in Patent Act 1983 & Its amendment 2022 Briefly describe the Patent Regulation 1986 Discuss the process in applying the patent State the relevant of Patent Act 1983 State the relationship between Patent Act & Patent Regulation  INTRODUCTION In 1986, Malaysia had system whereby patents issued in UK could be registered in Malaysia. On registration, the patent owner would have the privileges & rights as those conferred by the issue of the patent in the UK Patent Act introduces a completely new code for patent protection in Malaysia  REFLECTION ON PATENT A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. UTILITY OF INNOVATION A utility innovation is an exclusive right granted for a “minor” invention which does not require to satisfy the test of inventiveness as required of a patent. PATENTABLE INVENTION New, which means that the invention has not been publicly disclosed in any form, anywhere in the world; Involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and Industrially applicable, meaning it can be mass produced. NON-PATENTABLE INVENTION Discoveries, scientific theories and mathematical methods; Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made 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; Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.  PATENT ACT 1983 https://www.myipo.gov.my/en/patent-act-1983/ Example of product that have been applied to patent: https://iponlineext.myipo.gov.my/SPHI/Extra/IP/Mutual/Browse.aspx?sid=637877038147744249  RELEVANT OF PATENT ACT 1983 To exploit the patented invention To assign or transmit the patent To conclude license contracts  PATENT REGULATION 1986 Consist of rules & regulation related to patent act Includes the the terms and condition related to patent act PROCEDURE OF PATENT REGISTRATION @ MYIPO Application Forms: 1/14 Specification of patent Initial Inspection Formal Report Public Inspection 18 months after date of filling Substantive Inspection Application Form: 5 Substantive Inspection Report of Patent search and Inspection Grant Or Rejection Patent grant Or Rejection Notice  SCHEDULE 1: FORMS RELATED TO….. REQUEST FOR GRANT OF PATENT [Sections 23, 24 and 26B(1)] [Regulation 7(1)] REQUEST FOR RESTORATION OF RIGHT OF PRIORITY [Sections 17A and 27(1B)] [Regulations 23A(4) and 45(3)] APPLICATION FOR WRITTEN AUTHORITY [Section 23A(2)] [Regulations 7A and 45(3)] DECLARATION OF WITHDRAWAL OF APPLICATION [Section 25] [Regulations 24 and 45(3)] ENTERING NATIONAL PHASE FOR INTERNATIONAL APPLICATION [Sections 17A, 78O(1) and 78OA(1)] [Regulation 25A(1)]  SCHEDULE 1: FORMS RELATED TO….. REQUEST FOR CERTIFIED COPIES OR EXTRACT, OR CERTIFICATE BY THE REGISTRAR, OR TO EXAMINE REGISTER REQUEST FOR EARLY PUBLICATION OF PATENTS [Sections 17A and 33D(1)(b)] [Sections 10, 17A, 31(3)(b), 31A, 33(1), 34(4) and 86A] REQUEST FOR EARLY PUBLIC INSPECTION [Regulations 31A and 45(3)] [Sections 17A and 34(3)] REQUEST TO AMEND REGISTER REQUEST FOR MODIFIED SUBSTANTIVE EXAMINATION [Sections 17A and 33B(1)] [Sections 17A and 29A(2)] [Regulations 31B(1) and 45(3)] [Regulations 27A(1), 27A(1A), 27A(2) and 45(3)] APPLICATION FOR REINSTATEMENT OF LAPSED PATENT [Sections 17A and 35A(1)] REQUEST FOR DEFERMENT OF FILING OF REQUEST FOR [Regulations 33A(1) and 45(3)] MODIFIED SUBSTANTIVE EXAMINATION REQUEST FOR LICENCE TO EXPLOIT PATENTED INVENTION [Sections 17A and 29A(6)] [Regulations 27B(1) and 45(3)] [Sections 17A, 35A(5) and 87(2)(a)] [Regulations 33B(2), 45(3)]  SCHEDULE 1: FORMS RELATED TO….. REQUEST TO CONVERT APPLICATION FOR PATENT INTO APPLICATION FOR RECORDING OF SECURITY INTEREST APPLICATION FOR CERTIFICATE FOR UTILITY INNOVATION, TRANSACTION AND VICE VERSA [Sections 17A and 39(2A)] [Section 17B(3)] [Regulations 34(1A) and 45(3)] [Regulations 33C(1), 45(3)] APPLICATION TO AMEND THE PARTICULARS OF THE REQUEST FOR APPROVAL OF EXPEDITED EXAMINATION RECORDED SECURITY INTEREST TRANSACTION [Sections 17A, 23 and 87(2)(a)] [Sections 17 and 39(5)] [Regulations 34A(1) and 45(3)] [Regulations 27E(2) and 45(3)] REQUEST TO REMOVE THE RECORDED SECURITY INTEREST REQUEST FOR EXPEDITED EXAMINATION TRANSACTION FROM REGISTER [Sections 17A, 23 and 87(2)(a)] [Section 39(6)] [Regulations 27E(5) and 45(3)] [Regulations 34A(2), and 45(3)] APPLICATION FOR RECORDING OF ASSIGNMENT OR APPLICATION FOR CANCELLATION OF ENTRY IN REGISTER TRANSMISSION THAT ANY PERSON MAY OBTAIN A LICENCE [Sections 17A and 39(2)] [Sections 17A and 42(6)] [Regulations 34(1) and 45(3)] [Regulations 35(2) and 45(3)]  SCHEDULE 1: FORMS RELATED TO….. REQUEST FOR RECORDING EXPIRY, TERMINATION, OR REQUEST FOR CANCELLATION OF COMPULSORY LICENCE INVALIDATION OF LICENCE CONTRACT IN THE REGISTER [Section 54(2)] [Sections 17A, 42(5) and 47(a)] [Regulation 41(2)] [Regulations 37 and 45(3)] APPLICATION FOR GRANT OF A CERTIFICATE FOR A APPLICATION FOR COMPULSORY LICENCE UNDER SECTION UTILITY INNOVATION 49(1) or 49(1A)(a) or 49A [Sections 49(3), 49A and 50] [Section 17A] [Regulation 38(1)] [Regulation 45(1)] APPLICATION FOR COMPULSORY LICENCE UNDER SECTION APPLICATION TO EXTEND TERM OF CERTIFICATE FOR A 49(1A)(b) UTILITY INNOVATION [Sections 49(1A)(b) and 50(1)] [Section 35(3) of the Second Schedule] [Regulation 38(1)] [Regulation 45(2)] REQUEST FOR AMENDMENT OF DECISION GRANTING COMPULSORY LICENCE REQUEST TO AMEND PATENT APPLICATION [Section 54(1)] [Sections 17A and 79] [Regulation 41(1)] [Regulations 45(3) and 46]  SCHEDULE 1: FORMS RELATED TO….. REQUEST FOR RE-EXAMINATION OF PATENT APPLICATION TO ATTEND THE PATENT AGENT COURSE [Sections 17A, 79A(1A) and 79A(1B)] [Section 86(3)] [Regulations 45(3) and 46A(1)] [Regulation 45CA] APPLICATION TO ATTEND THE PATENT AGENT COURSE FOR APPOINTMENT OR CHANGE OF PATENT AGENT PURPOSE OF RE-SIT THE EXAMINATION [Section 86(4)] [Section 86(3)] [Regulations 10(3) and 45B(2)] [Regulation 45CA] APPLICATION FOR REGISTRATION OF PATENT AGENT REQUEST TO CORRECT OR CHANGE PARTICULARS OF PATENT AGENT [Section 86(3)] [Section 86(3)] [Regulation 45C(1)] [Regulation 45C(11)] APPLICATION FOR REGISTRATION AS CANDIDATE FOR APPLICATION FOR RENEWAL OF REGISTRATION OF PATENT THE EXAMINATION OF PATENT AGENT AGENT [Section 86(3)] [Section 86(3)] [Regulation 45D(2)] [Regulation 45E(1)]  SCHEDULE 1: FORMS RELATED TO….. APPLICATION FOR DEFERMENT OF RENEWAL OF APPLICATION FOR DEFERMENT OF RENEWAL OF REGISTRATION OF PATENT AGENT REGISTRATION OF PATENT AGENT [Section 86(3)] [Section 86(3)] [Regulation 45EB(2)] [Regulation 45EB(2)] APPLICATION FOR VOLUNTARY CANCELLATION AS A PATENT APPLICATION FOR VOLUNTARY CANCELLATION AS A PATENT AGENT AGENT [Section 86(3)] [Section 86(3)] [Regulation 45FA(1)] [Regulation 45FA(1)] APPLICATION TO ATTEND THE PATENT AGENT COURSE FOR APPLICATION TO ATTEND THE PATENT AGENT COURSE FOR PURPOSE OF RE-SIT THE EXAMINATION PURPOSE OF RE-SIT THE EXAMINATION [Section 86(3)] [Section 86(3)] [Regulation 45CA] [Regulation 45CA] APPLICATION TO ATTEND THE PATENT AGENT COURSE APPLICATION TO ATTEND THE PATENT AGENT COURSE [Section 86(3)] [Section 86(3)] [Regulation 45CA] [Regulation 45CA]  SCHEDULE 1: FORMS RELATED TO….. APPLICATION FOR TERMINATION OF THE APPOINTMENT OF PATENT REQUEST TO CORRECT OR CHANGE PARTICULARS OF PATENT AGENT AGENT [Section 86(3)] [Section 86(3)] [Regulation 45FC(1)] [Regulation 45C(11)] FURNISHING ADDRESS FOR SERVICES APPLICATION FOR RENEWAL OF REGISTRATION OF PATENT AGENT [Sections 17A and 87(2)(a)] [Section 86(3)] [Regulations 45(3) and 51(1)] [Regulation 45E(1)] REQUEST FOR EXTENSION OF TIME APPLICATION FOR DEFERMENT OF RENEWAL OF REGISTRATION OF PATENT AGENT [Sections 17A and 82] [Section 86(3)] [Regulations 45(3) and 53(1)] [Regulation 45EB(2)] STATEMENT JUSTIFYING THE APPLICANT’S RIGHT TO THE PATENT OR CERTIFICATE FOR UTILITY INNOVATION APPLICATION FOR VOLUNTARY CANCELLATION AS A PATENT AGENT [Section 86(3)] [Sections 17A and 23] [Regulation 45FA(1)] [Regulations 10(2) and 45(3)] APPLICATION FOR CEASE TO ACT AS A PATENT AGENT THIRD PARTY OBSERVATION [Section 86(3)] [ Section 17A and 13A (1)] [Regulation 45FB(1)] [Regulations 28A(1) and 45(3)] REQUEST FOR OPPORTUNITY OF BEING HEARD  NEW SECTION 26C THE PRINCIPAL ACT IS AMENDED BY INSERTING AFTER SECTION 26B THE FOLLOWING SECTION: “DEPOSIT OF MICRO-ORGANISM 26c. (1) If an invention involves a micro-organism which is not available to the public and cannot be described in the application for a patent in such a manner as to enable the invention to be carried out by a person having ordinary skill in the art, a sample of such micro-organism shall be deposited by the applicant or any other person with a National Depositary Authority or an International Depositary Authority not later than the filing date of the patent application. (2) The deposit of micro-organism with the National Depositary Authority referred to in subsection (1) shall be made in the prescribed manner. (3) The deposit of micro-organism with the International Depositary Authority referred to in subsection (1) shall be made in accordance with the Budapest Treaty. (4) The deposit of micro-organism with the National Depositary Authority or the International Depositary Authority, as the case may be, shall be recognized as fulfilling the requirement of disclosure in a patent application. (5) Any person may make a request for a sample of the micro-organism deposited under subsection (1) in the prescribed manner together with the payment of the prescribed fee and subject to the conditions as prescribed. (6) For the purposes of this section, “Budapest Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure done at Budapest on 28 April 1977.  PATENT INFRINGEMENT UNDER SECTION 35(1A) OF THE PATENT ACT 1983 Infringement occurs when unauthorized exploitation of the patented invention takes place. It is worth noting that there is no contributory ( or indirect) infringement of a Malaysian patent. Infringement proceedings must be taken by the patent owner within five years of the act (s) of the infringement (two years in the case of a utility innovation cert.) Under section 35 (1A) of PA– provides that a patent “ shall be deemed to be granted & shall take effect on the date the certificate of grant of the patent is issued” For a patent granted in respect of a product, infringement consist of: 1. Making, importing , offering sale, selling or using the product; and 2. Stocking such product for the purpose of offering the sale, salling or using For a patent granted in respect of a process, infringement consist of using the process; and doing any of the acts set out under (1) and (2) above in respect of a product obtained directly by means of the process. THANKS A LOT!!