Malaysia

MalaysiaCapital: Kuala Lumpur
Capital Timezone: GMT + 8
Population: 30,018,242 (est. 2014)
Languages: Malaysian (official), English, Chinese, Tamil
Currency: Malaysian Ringgit (MYR)
Legal System: English common law

Key Issues

• All litigation and prosecution in Malay or English
• Ranked 30th in the world for IP protection in the World Eco¬nomic Forum’s Global Competitiveness Report 2013/2014

Enforcement

• Specialized IP Court for hearing IP-related cases
• An enforceable jurisdiction that heavily relies on technical expert testimony
• Relatively rapid conclusion of litigation proceedings with decisions typically issued within 12 to 18 months of initiation
• Potential for alternative dispute resolution in IP matters via arbitration
• “Imminent infringement” action available against any person who has performed acts which make it likely that infringement will occur
• Infringement remedies – damages based on costs or an account of profits, injunctions, and delivery up and destruction of the infringing goods
• Declaration of non-infringement available
• Infringement actions may not be instituted after five (5) years from the act of infringement

Prosecution

• National phase entry deadline for PCT applications in Malaysia: 30 months
• Patentable subject matter – all subject matter patentable except:
– 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, microbiological 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 treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human/animal body
– inventions contrary to public order or morality
– inventions prejudicial to the interest or security of the nation
• Full Substantive Examination or Modified Substantive Examination routes available Under Modified Substantive Examination, the grant of a corresponding patent application in Australia, Japan, The Republic of Korea, the U.K., the U.S., or at the EPO can be relied on for grant in Malaysia however care must be taken to ensure compliance with Malaysian laws
• Expedited examination available on the following grounds: in national/public interest, there is on-going or potential infringement proceedings, the applicant has already commercialized the invention or intends to do so within two years, the invention relates to green technologies, and to meet conditions for obtaining monetary funds/benefits from the government or recognized institutions
• Applies a strict approach to “added matter” that is in alignment with the approach of the UK and European Patent Offices
• Double patenting is a ground of refusal to grant a patent
• Voluntary divisional applications possible
• Grace period (12 months) available for prior disclosure by applicant, or due to abuse of rights of the applicant
• A “utility innovation” patent is also available in addition to patent protection. A utility innovation:
– does not require inventive step assessment,
– only allows one claim;
– is granted for a period of ten years from the filing date, but may be extendible for two consecutive five-year periods

Other Issues

• No pre or post-grant opposition; only post-grant patent invalidation available
• Patent Term Extensions – not available
• Parallel importation – available
• Foreign filing license – required
• Pharmaceutical Data Exclusivity Laws – data and market exclusivity (5 years for a new drug product containing a New Chemical Entity; 3 years for a secondary indication of a registered drug product)
• No patent-drug linkage
• Participant in the ASEAN Patent Examination Co-operation (ASPEC)

For more information contact us on mail@fak.com.au or +61 7 3011 2200.