The Patents (Amendment) Act 2022, (hereinafter referred to as “the Amendment Act”), the act which effected significant changes to the Patents Act 1983 (hereinafter referred to as “the Patents Act”), was passed by the Dewan Negara of Parliament (Senate) on 22 December 2021 and received Royal Accent on 4 March 2022.
The Amendment Act came into force in Malaysia on 18 March 2022, the same date on which the Regional Comprehensive Economic Partnership (hereinafter referred to as “RCEP”) Agreement came into force in Malaysia. The coming into force of the Amendment Act is part of the prerequisites of RCEP which requires the signatories to the RCEP Agreement to ensure that their Intellectual Property (IP) laws are in line with the other member states. The amendments were also brought about as a result of Malaysia’s commitment under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), as well as to comply with the provisions of the Budapest Treaty.
The amendments, as envisaged brought about notable changes to the application and examination process of patent applications in Malaysia. Among the changes brought about by the Amendment Act include the following:
Divisional Application
Under amended Section 26B of the Amendment Act, a divisional application cannot be filed if prior to the date of such application, the initial patent application or the immediately preceding application relating to the initial application has been granted a patent, refused, deemed to be withdrawn, or abandoned. Further, the deadline to file divisional application is three (3) months from the date of the first examination report. The deadline is absolute and the extension of time to file the response to the exam report does not extend the deadline to file the voluntary divisional application.
Substantive Examination
There are also changes in regard to deferment of filing of substantive examination. Under amended Section 29A of the Amendment Act, the deadline to file a request for substantive examination is final and it can no longer be deferred. Nevertheless, deferment is allowed to file the request for modified substantive examination, however, it is limited on the ground that the corresponding patent to be used for modified substantive examination has not been granted or not available by the expiration of the prescribed period for the filing of a request for modified substantive examination
Third Party Observation
The Amendment Act now allows any person including the Federal and State government to make observation on the patentability of a patent application. The insertion of new Section 34A into the Amendment Act, allows any third party to make observation and submit comments on the novelty and inventive step of the patent application. The application for third party observation shall be accompanied by a statutory declaration which explains the grounds of the observation. The deadline to file third party observation is three(3) months from the date of publication for direct application and three (3) months from the date of national phase entry for PCT applications. It is worth noting that the third-party observation allows a person whose right may be affected from a pending patent application to intervene in the prosecution of the patent application at an early stage. However, the Amendment Act does limit the person who may apply for third party observation and anyone whether or not has interest in the pending patent application may apply for third party observation. Nevertheless, it is worth noting the request for third party observation must be substantiated with grounds of the observation which allows the Registrar to screen out any baseless applications.
Publication of Patent Applications
The Amendment Act also introduced new Section 33D which provides for formal publication of direct Malaysian patent application. The section does not apply to PCT-National Phase applications. The publication will take place in the Official IP Journal, 18 months from the filing date or if priority right is claimed 18 months from the earliest priority date. The new provision also allows the applicant of a patent application to request for the application to be published earlier.
Voluntary Amendments
The previous Section which deals with voluntary amendment i.e., Section 26A has been deleted and nested into Section 79 of the Patents Act which deals with the power of Registrar to amend patent applications.
Under the deleted Section 26A of the Patents Act, there were no limitations to the amendments which may be made to the patent application and the applicant may amend the application provided that the amendment did not go beyond the disclosure of the initial application.
Amended Section 79 of the Amendment Act, which now deals with voluntary amendments, requires the applicant to file a request to the Registrar for voluntary amendments of the patent application for correction of obvious or clerical mistake or to make a substantive amendment to the description, claim(s), drawing(s) and or abstract. Amended Section 79 of the Amendment Act seems to suggest that voluntary amendment to patent applications cannot be filed as of right and the Registrar is vested with more discretion on whether to allow a voluntary amendment.
Recognising patent as property
The Amendment Act also effected the acceptance of patent as a form of intangible property. Amended Section 36 of the Amendment Act provides inter alia the right of a patent owner includes the right to deal with the patent as the subject of a security interest. Further amended Section 39 of the Amendment Act, in addition to allowing a patent to be the subject of a security interest in the same way as other personal or moveable property, reenforces the formal recognition of a patent as a form of property by stating that patent application may be assigned or transmitted in the same way as other personal or moveable property.
Deposit of microorganisms
The Amendment Act fortified Malaysia’s commitment to Budapest Treaty which was formally acceded on 31 March 2022. The Amendment Act introduced Section 26C and Subsection 78O(1A) which provides for and governs the procedure for the deposit of microorganisms with a recognised depository. This is line with requirements of Budapest Treaty which provides for international recognition of the deposit microorganisms and also eliminates the requirement of having to deposit the microorganisms in each country where the patent application is to be registered.
Opposition Proceedings
In an applauding move the Amendment Act has also introduced opposition proceedings whereby any interested person (including Federal and State Governments) may institute an opposition proceeding against the owner of a patent if no proceeding under the provisions of the Patents Act is pending in the Court with regards to the patent. The opposition proceedings which was introduced through new Section 55A of the Amendment Act, allows opposition of the patent grounds which are similar to the grounds for invalidation of a patent provided by Section 56(2) (a), (b) and (c) of the Patents Act i.e. the claimed invention in not an invention within the meaning of Section 12 of the Patents Act, or is not a patentable invention as provided by Sections 13 and 31(1) of the Patents Act, or is/ does not comply with the requirement of novelty, inventive step and industrial applicability in accordance with Sections 11, 14, 15, and 16 of the Patents Act; the description of the claims is not in accordance with requirements of Section 23 of the Patents Act; and the drawings which are essential for understanding of the claimed invention have not been furnished. At the end of the opposition proceedings, the Registrar may either order the patent to be maintained or maintained subject to amendment or invalidated.
The introduction of opposition proceedings also brought about amendments to invalidation proceedings whereby the new Section 56A of the Patents Act states that no invalidation proceeding may be instituted during pendency of an opposition proceeding unless both parties to the opposition agrees and the interested person is a defendant in an infringement action.
New Forms and Fees
The Amendment Act also brought together with-it substantial changes to the official fees and prescribed forms. Most of the forms which were used prior to the amendment have now been replaced with new forms to reflect the changes of the Patents Act and the associated official fees. For example, the Power of Attorney (Form 17) has been changed and fees for filing of Form 17 has changed from RM70.00 prior to amendment to RM100.00.
The Amendment Act clearly has revamped the patent application and examination process, introducing new and amending existing provisions of the Patents Act providing a complete makeover for the Malaysian patent practise. The amendments although came about to ensure the patent practise in Malaysia is in accordance with obligations under the international instruments to which Malaysia is a signatory, it has also ensured that the local patent practises are in par with the other nations. The amendments surely should be welcomed to ensure Malaysia’s patent law are relevant to current practises.
Nevertheless, as with implementation of any new provisions of law, there may be uncertainties in the initial stage of implementation of it, to which end patent applicants should be vigilant and seek clarification from registered patent agents like us should they encounter any issues.