PATENTS
 

Patent Law of Malaysia
The Malaysian Patents Act 1983 and the Patents (Amendment) Act 1986 came into force on October 1, 1986 together with the Patents Regulations 1986, and repealed the three separate patent laws covering the three separate territories of Malaysia. Under the repealed laws, the only method of obtaining a patent in Malaysia was by obtaining the grant of a United Kingdom patent, or European patent designating UK, and then re-registering the United Kingdom or European patent in Malaysia. 

Malaysia is active member of: 
PCT Union
Paris Convention
Berne Union
Nice Union
Madrid Protocol
Madrid Union (Marks)
Vienna Union
WIPO
Patent Registration Procedure in Malaysia
1. To conduct a novelty search before filing the application so as to ascertain the issue of determine on the novelty of the invention. The search could take at least 10-working days to receive the results.
2. After the search is completed, an application can be filed with the patent specification which. comprise the description, claim(s), drawing(s) where required and an abstract.
3. After the lodgment of an application, the Registry will allocate a filing number to the application. This number is important as it establishes the priority of the application allotted application number.
4. If the Applicant wishes to claim priority, the declaration of priority has to be made within the grace period of 6 months from the date of the first filing.
5. After the Registrar has approved the formalities of the patent application (minimum of 2 months from the date of application) the registrar will issue a Certificate of Filing to the applicant.
6. A request for substantive examination is made within 18 month from the filing date together with the payment of prescribed fee. During the substantive examination, the Examiner determines the compliance of the substantive requirement.
7. Under the Patent (Amendment) Regulations 2011, applicants can now request for expedited Examination after 18 months from the priority or filing date by paying additional fee for request for approval of expedited examination with ground of statement given by the applicant. If the request is approved by the Registrar, the applicant can lodge to request for expedited examination. The registrar will issue the examination reports after 6 weeks. If the request is rejected or unfavorable decision raised by the registrar, the applications proceed back to the normal examination process.
8. When the patent has met with all the requirements as to form and substance, the Registrar will issue the certificate of grant and a copy of the patent and the Examiner’s final report is given to the Applicant. The details of the patent will be recorded in the Register. Upon issuance of grant, the Registrar will publish the patent in the government gazette and make the patent available to the public.
9. A patent is valid for 20 years from the date of application subject to yearly renewal. The prescribed annual fee is to be paid within 12 months prior to the expiration of each succeeding year. A utility innovation is protected up to 10 5 5 years from the date of filing, subject to use.

Timeframe
The whole registration procedure will normally take approximately 5 years for a smooth case. As to expedite examination will take approximately 21 months.

Patent Applications Documents in Malaysia
1. Text of disclosure or specification typewritten in 11⁄2 spacing, or preferably double-spaced; numbered every 5th line at the left margin; page numbered at top-centre of each sheet; comprising the following parts:
1.1 description of invention
1.2 a claim or claims
1.3 drawings (if any)
1.4 abstract not exceeding 150 words
2. Simply signed Power of Attorney (POA)
Particulars information required
3. Applicant(s): name; address and nationality.
4. Inventor(s): name, address and nationality of each inventor.
5. Statement Justifying Applicant’s Right to the Invention if the applicant is not the inventor. This may be a brief of informal statement explaining on how the applicant acquired the rights to the invention. We shall prepare the formal Statement.
6. Priority claim under the Paris Convention: basic application’s number, IPC, filing date, International Patent Classification and country where filed. Certified copy of the priority application is NOT required.

Late filing documents and Minimum Filing Requirements
These items are not the minimum requirements. The official Certificate of Filing will be issued for applications filed without these items. The abstract, POA and Statement on Applicant’s Right may be lodged with the Patent Office within 6 months of the filing date of the application.
Malaysian Patent Registration Information Remarks
1) If the filing date is on or after 1 August 2001, the term of a patent is 20 years from the date of filing of the patent application, subject to the payment of annual renewal fees. A utility innovation is protected up to 10+5+5 years from the date of filing, subject to use.
2) As the proprietor of a granted patent, you have the exclusive right in Malaysia to make, import, offer for sale, sell or use with the products that fall within the scope claims of your patented invention.
3) You can sell your granted patent to others (known as "assignment"). Please contact us for consultation in order to ensure that the ownership of granted or pending patent is properly assigned.
4) If there is any change in the name and/or address of the proprietor of the patent, application for recordal of name/address change should be filed to the Patents Register with a prescribed fee. Please contact us for further assistance, if required.
5) If you discover that your patented invention has been exploited without your consent, you can exercise your rights under the Patents Act by initiating legal action against the alleged infringing party, including seeking  relief in the form of an injunction to stop the infringing action, demanding for the profits gained by the
infringing party at his expense and/or, seeking damages for the loss suffered.
6) Your product packaging can be marked in accordance to your granted or pending patent to deter potential infringement (eg. Patent No. ___ or Patent Pending No. ___).
7) It is an offence to falsely represent that a product is patented when it is not, or if it is pending grant. The person who commits an offence shall be liable on conviction to a fine not exceeding RM15,000 or to
imprisonment for a term not exceeding two years or to both.
8) Even though your patent has been granted, anyone can revoke the patent by applying to the Registrar on the grounds that the invention is not patentable, the right to the patent does not belong to the person to whom the patent was granted or any other ground on which the Registrar could have refused to register the patent.
9) Where a partnership/business has been dissolved or has ceased for business, please contact us for consultation in order to ensure that the ownership of patent is properly assigned or transmitted.
10) Warning Notice – a registered patent owner is advisable to publish a warning notice in the media to publicly declare his exclusive rights in relation to the patent. Whilst this step is not obligatory, in the event of an action for infringement, the Court may refuse to award damages or to make an order for an account of profits if the infringer can satisfy the Court that he was not aware of your patented invention.

TRADEMARKS

Trademark Law Malaysia
Trade mark protection in Malaysia is governed by the Trade Marks Act 1976 (which came into force on September 1, 1983, incorporating the latest amendments with effect from March 3, 2003) and Trade Marks Regulations 1997 (which came into force on December 1, 1997, incorporating the latest amendments with effect from February 15, 2011).
Apart from statute law, the principles of “common law” also apply.
Member of Madrid Protocol as of December 27, 2019.
Trade mark protection is obtained by registration. It can also be acquired by sufficient public recognition.
The new Trademarks Act 2019 has been preliminarily approved by the Parliament and is anticipated to come into effect in the last quarter of 2019.

Classification
Nice classification, 11th edition. A separate application has to be filed for each class.

Document required
* Simply signed Power of Attorney (POA)
* A Statutory Declaration declaring bona fide ownership of the mark, is needed.

Trademark Registration Procedure in Malaysia
1. To conduct an unofficial search before filing the application so as to avoid the question of  similarity. The search could take at least 5-working days to receive the results.
2. After the search completed, an application of trade mark can be filed within the next working day provided all required documents and information are furnished sufficiently. The filing of an application does not guarantee registration even though the search has been conducted.
3. After the lodgment of an application, the Registry will allocate a filing number to the application. This number is important as it establishes the priority of the application allotted application number.
4. The Registry will deliver a preliminary examination report within 12-18 months (for normal track application) to see whether the mark is registrable in accordance with the Trade Mark Acts.
5. Under Trade Mark (Amendment) Regulations 2011, applicants can now expect to secure the trade marks registration around 6 months and 3 weeks through a fast track process, i.e expedited examination by paying additional expedition fee along with reason (eg. due to infringement or for government grants application). The request can be made within four(4) months from the date of filing the application. If the request is rejected or unfavorable decision raised by the Registrar, the application will be back to normal processing.
6. Once an application is accepted, the application will then be accepted for advertisement in Malaysian government gazette if there are no conflicting marks or provided the application satisfy the requirements of the Act and the Rules.
7. The trade mark concerned will further proceed to registration if no opposition is filed within the statutory opposition period of two months from the date of advertisement.
8. The Certificate of Registration will be valid for a period of ten years from the date of application and may be renewed for successive periods of ten years on payment of a renewal fee.

National Opposition Period
The opposition period is 2 months from the publication date of the application but an interested party can apply for extension(s) of time to possibly oppose.

Timeframe
The whole registration procedures for normal track application will normally take approximately 18 months, if there are no objections or oppositions. As to fast track application will take approximately from 6 to 12 months.

Remarks about the trademark registration process in Malaysia
An application to register a trademark has to be filed with the Registrar of Trade Marks.
The application process is subject to a two-stage examination process. At the first stage, formal examination is conducted to ascertain that the necessary information and documents have been provided. Once there is compliance with the formalities, the application will proceed to the second stage for substantive examination which includes an examination of distinctiveness and a search for prior trademarks.
The Registrar has discretion to decide whether to accept or refuse the application. If the application is accepted, the mark will proceed to publication in the Government Gazette for 2 months for opposition purposes. If the application is objected by the Registrar, the applicant is given two months to file a written submission. If the Registrar subsequently maintains his objection, the applicant may within 2 months of the maintained objection request for a hearing to present oral arguments.

Duration
The duration of a trademark is 10 years from the date of application and is renewable for periods of 10 years each.