A Beginner's Guide on Patent Registration in Malaysia
Updated: Jul 17, 2021
After spending countless effort, time and funds, you have completed your cutting edge invention. Undoubtedly, you do not want anyone to copy it. What then should you do? Register a patent.
The primary purpose of registering a patent for your invention is to secure the exclusive ownership. Subsequently, consider the commercialization of it including its licensing, manufacturing or sale.
What is a patent?
A patent is a set of exclusive rights granted to the proprietor for a period of 20 years, in exchange for public disclosure of the invention.
In order to be qualified as an invention, it has to be an idea that permits in practice the solution to a specific problem in the field of technology. It may be a product or process.
(Section 12 of Malaysian Patents Act 1983)
Further, an invention is patentable only if it fulfils all the following 3 requirements:-
Novelty - it is new, ie. not anticipated by any prior art, existing technology or knowledge.
Inventive steps - it is not obvious to a person having ordinary skill in the art.
Industrial application - it can be made or used in any kind of industry.
(Sections 11, 14-16 of Malaysian Patents Act 1983)
Step 1: Write down every single detail of your invention (literally)
While you may have the prototype ready, but it is important to have all the details in writing to prepare for a patent registration.
In general, the write up should at least cover the following issues:-
The background of the invention, including the problems it solves.
Comparison between your invention and the existing technologies.
What are the advantages of your invention over the existing technologies or how does your invention improve the existing technologies.
Describe what your invention consists of and how it works, including its drawings, schematic diagrams, flow charts, etc.
All the components required to build your invention.
What are the aspects of your invention that you wish to protect?
Step 2: Do a patent search and analysis
Although it is not legally required, it is highly recommended to conduct a patent search and analysis to compare your invention with those which have been filed or granted patents.
This is to gauge your chances of success to be granted a patent. Patent registration is a long process. Hence, it is advisable to use this opportunity to review your invention based on the search results. If necessary, make alterations or improvements to your invention to improve the chances of success.
Generally, we can rely on the patent database of the World Intellectual Property Organization (WIPO), Espacenet developed by the European Patent Office, Google Patent and the national patent office, Intellectual Property Corporation of Malaysia (MYIPO).
Step 3: Draft a patent specification
Once you are satisfied that you have a favourable chance of securing a patent for your invention. The next step is to draft a patent specification for your invention. It is basically a write up on your invention in a designated format. It contains:-
In summary, a description shall specify the technical field to which the invention relates. Further, it shall indicate the background art, which can be regarded as useful for the understanding, search and examination of the invention.
A description shall also disclose the invention in a way that it can be understood and sufficiently clear and complete for it to be evaluated and to be carried out by a person having ordinary skill in the art and state any advantageous effects of the invention, when comparing with the background art.
It should also describe the best mode contemplated by the applicant for carrying out the invention, with examples if appropriate. The description shall explicitly indicate the way in how the invention is industrially applicable and the way it can be made and use.
Claim(s), on the other hand, determines the scope of protection of an invention. The claim shall define the invention in terms of the technical features of the invention. In other words, the claim is meant to set out the features of your invention that you wish to be protected by the patent.
Drawing(s) shall be required when they are necessary for the understanding of the invention. To clarify, flow sheets and diagrams shall be considered drawings.
Last but not least, the Abstract shall contain a summary of the invention as mentioned in the description, claims and drawings, if any. The summary shall indicate the technical field to which the invention pertains. The summary shall be drafted in a clear and easily understandable manner on the technical problem, the essence of the solution of that problem through the invention, and the principal use of the invention. It shall be as concise as possible and not more than 150 words.
The above are just brief explanations of the requirements on the patent specification. The Malaysian Patent Regulations 1996 has provided detailed guidelines, including the physical requirements of the patent specification.
Step 4: Filing patent application
Once you have completed your patent specification above, you may prepare to file the patent application, which you should get the following information in order:- 1. Applicant's name and address
2. Inventor's name and address
3. Patent specification abovementioned
The application should be made by filing Patents Form No. 1 (Request for Grant of Patent).
It is important to note that there are 2 types of names to be included in the patent application, the applicant's name and the inventor's name.
The applicant and inventor can be the same person. However, if the applicant and inventor are different persons (for example, the inventor is the employee of the applicant), then the applicant should file another Patents Form No. 22, Statement Justifying Applicant’s Right to a Patent.
Further, a patent applicant can be either an individual or a legal entity / company that owns the patent. On the other hand, an inventor has to be an individual (human being), or a group of individuals, who invent the invention.
Step 5: Examination of patent application
Upon filing, the Examiner shall conduct a formality examination on the application. This examination is merely on the formality level (eg. documentation), and not yet on the subject matter of the invention. Once the formality requirements have been met, the Examiner will issue a Certificate of Filing and Formality Clear Report. If there is any insufficiency on the formality requirements, the applicant will be given an opportunity to amend the application to comply with those requirements.
It should be pointed out that the Certificate of Filing serves as proof that a patent application has been filed setting out the application details. It is not a grant of patent.
In addition to the above, the applicant should file Patents Form No. 5, being a Request for Substantive Examination. This is required for the Malaysian Patent Office to examine the patentability of your invention.
This can be filed at the point of filing the above Form No. 1 or any time before the expiry of 18 months from the date of filing the patent application. This could be a strategic decision because some of the patent applicants may wish to wait for foreign patent examination reports (eg. PCT International Search Report) before the filing of Form 5. We will discuss this issue separately in another article.
It should be pointed out that your patent application will be made available for public inspection after 18 months from your filing date.
Step 6: Considering an overseas patent application
Protection of patent is territorially based. Therefore, if you wish to protect your invention overseas, separate filing in each of the desired countries is necessary.
It is not necessary to file in other countries at the same time with your Malaysian patent application. But you should still start considering this as soon as possible or right after the filing of Malaysian application.
Generally, there are 2 routes to file patent applications internationally, ie. Paris Convention route and Patent Coorporation Treaty (PCT). Although both involve different processes and deadlines, it will be safe to set your eyesight at the deadline of one year from the date of your patent filing date in Malaysia. We will discuss the strategies of the international patent application separately.
Step 7: Responding to Office Action
While examining your patent application, the patent examiner will conduct his patent searches to compare your invention with the prior arts, to determine whether your invention fulfils the requirements of novelty, inventive steps, industrial applicability and other provisions of the Patents Act 1983.
The reality is, it is not surprising that the examiner may take 3 to 5 years to examine a patent application. Upon completion of the examination, the patent examiner will issue an Examiner's Report setting forth his opinion on whether your invention fulfils the abovementioned requirements.
It is not unusual for a patent application to encounter queries, amendments, objections or other directions from the Patent Office, these are commonly known as Office Action. You may need to go through a few rounds of appeals or responses to the Office Action to secure the final grant of patent.
Step 8: Grant of Patent and Renewals
After numerous efforts, the Examiner finally agrees that your invention is patentable and issues a Substantive Examination Clear Report, followed by a Notice of Grant and Patent Certificate. Your patent is now granted and you have an exclusive right to your invention. Your patent is valid for 20 years from the date of filing your patent application.
Moving forward, you may maintain the patent by simply paying the annual fee every year from the next year after the grant of your patent, up to twenty years from the filing date.
Engaging Patent Agent
In view that patent registration is a highly technical and lengthy process, it is strongly recommended to engage a competent patent agent to assist you in all the above processes. This is to ensure all the legal requirements have been complied with and to avoid missing deadlines.
Call us, it would be our pleasure to work with you :)
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Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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