Malaysia Makes Amendments to its Patent Act: Key Highlights

Malaysia has amended its Patent Act to ensure that its patent protection laws are in line with international standards. The amendments incorporate Malaysia’s commitments to various international treaties, such as the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the Regional Comprehensive Economic Partnership Agreement (RCEP), and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

On March 18, 2022, the Patent (Amendment) Act 2022 [Act A1649] (the “Act”) and accompanying implementing regulations went into effect, updating the law originally created in 1983. The Act, which Malaysia’s upper parliament passed in December 2021, brings Malaysia’s patent regulations in line with a number of international agreements the country is a party.

Major international agreements reflected in the Act include the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the Regional Comprehensive Economic Partnership Agreement (RCEP), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (the Budapest Treaty).

Here, we give an overview of the key amendments to Malaysia’s Patent Act.

Definition of a Malaysian resident

The amended Act introduces a new definition for “resident” in Section 3. According to the new definition, a resident is:

1. A citizen of Malaysia who is residing in Malaysia;
2. A non-citizen of Malaysia who—
   1. has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia; or
   2. is residing in Malaysia by virtue of a valid pass lawfully issued to him under the Immigration Act 1959/63 [Act 155] to enter and remain in Malaysia;
3. A body corporate incorporated, established, or registered under any written law in Malaysia other than a foreign company; or
4. An unincorporated body is established or registered under any written law in Malaysia.

Section 23A has national language text that specifies requirements for those who are considered a “resident”. Most importantly, residents must first apply for a patent application in Malaysia before applying elsewhere.

Ascension to the Budapest Treaty

The new Act officially recognizes Malaysia’s ascension to the Budapest Treaty. The Budapest Treaty is an international agreement first made in 1977 that allows for patents on microorganisms.

The Act introduces a new section, Section 26C, that lays out requirements for depositing microorganisms for patent filing. Per Section 26C (1), a sample of a microorganism 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

In Section 26C (3), the Act explicitly states that deposits of microorganisms to the International Depositary Authority should be made in accordance with the Budapest Treaty.

Restoration of right of priority

The Act contains a new stipulation for the restoration of the right of priority, offering applicants greater flexibility than before. Right of priority refers to the time-limited right for patent applicants who have filed a patent in another jurisdiction to have priority to file the same intellectual property in another jurisdiction. Restoration of right of priority refers to returning the right of priority to a patent applicant who has lost the right of priority.

Per the new Section 27 (1B), where the applicant fails to claim the right of priority during the period of twelve months referred to in subsection (1), the right of priority may be restored if:

1. A request for restoration of the right of priority is made by the applicant to the Registrar in the form as determined by the Registrar together with the payment of the prescribed fee; and
2. Such request under paragraph (a) fulfills the conditions as prescribed.

Opposition of patent

The Act introduces an extensive new Section 55A on procedures for opposition to a patent. As described in 55A (1), any interested person may commence opposition proceedings by filing a notice of opposition against the owner of the patent in relation to the grant of the patent to the Registrar.

The person must file the notice of opposition within the prescribed period from the date of publication of the grant of the patent and pay the prescribed fee. The person may file opposition proceedings on any of the grounds described in Section 56(2) (a), (b), or (c).

According to Section 55A (5), after opposition proceedings have been completed, the Registrar may decide to either maintain the patent, maintain the patent with any amendment, or invalidate the patent. If any person wishes to appeal, they may do so under the stipulations of Section 88, as described in Section 55A (6).

Third-party observation

Third parties can now make observations about the patentability of an application, per the new Section 34A. According to Section 34A (1), any person may, within the prescribed period, make observations in the form as determined by the Registrar together with the payment of the prescribed fee on any matter relating to the patentability of a patent application as may be prescribed, and shall include the reason for such observations.

Reinstatement of lapsed patent

The amended Act shortens the period during which applicants can file for reinstatement of a lapsed patent due to failure to pay the renewal fee. Per amendments to section 35A (1), the reinstatement period for a lapsed patent is now 12 months rather than two years.

Security interest

The Act updates Section 39 to allow for a patent to be treated as a security interest. With the change, a patent may now be the subject of a security interest in the same way as other personal or moveable property.

According to the new Section 39 (2A), any person who is a party to a security interest transaction in respect of a patent may apply to the Registrar in the prescribed manner to have such security interest transaction recorded in the Register. The new Section 39 (2B) clarifies that any security interest in respect of a patent may be enforced in the same way as other personal or moveable property.

Other updates

In addition to the amendments described above, the Act introduces numerous other changes. These include, among others, restrictions on divisional applications, rules on deferments of requests for examination, and regulations on post-grant amendments.

Due to the scope of changes, businesses with patents and other intellectual property registered in Malaysia should conduct a thorough assessment of the impacts of the new Act.

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