We are a Malaysian Registered Patent Agent, Trademark Agent, Industrial Design Agent and we offer drafting, filing and registration services for Malaysia and Foreign Countries.
But first of all what is a Malaysian Patent?
Intellectual property registration and protection in Malaysia comprises of patents, trademarks, industrial designs, copyright, geographical indications and layout designs of integrated circuits. Malaysia is a member of the World Intellectual Property Organisation (WIPO) and a signatory to the Paris Convention and Berne Convention which govern these intellectual property rights.
Malaysia is also a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organisation (WTO). Malaysia has also acceded to the Madrid Protocol for trademark matters. Malaysia provides strict adherence to intellectual property rights and she also grant adequate protection to both local and foreign patents. Malaysia's intellectual property laws are in conformance with international standards and have been reviewed by the TRIPs Council periodically.
But what is patentable in Malaysia and thus protectable?
A product and/or process that is:
1. New or Novel (novel, i.e. the invention has not been publicly disclosed anywhere else)
2. Inventive step (the special feature of non obviousness) of the invention cannot be obviously derived by any person skilled in the art). However, the inventive step is not required of an Utility Innovation (termed as smaller patent).
* Discoveries, scientific theories and mathematical methods (includes computing methods)
* Plant or animal varieties or essentially biological processes (genetic) for the production of plants or animals, other than manmade living micro-organisms, micro-biological processes and the products of such micro-organism processes ( there are exceptions where it is patentable in the USA).
* Schemes, rules or methods for doing business (some exceptions where it is patentable in USA), performing purely mental acts or playing games (methods of playing virtual games are patentable in the USA).
* Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (there are some exceptions for genetic manupulations which is patententable in USA).
* Programmes for computers with the exception that it is tied to a hardware in order for it to perform.
The ultimate decision to whether the item is patentable will have to depend on the patent examiner's discretion.
But in case of doubt, you can always revert to us at email@example.com for an advise.
How can we help you in filing your patent?
The professionals at Iskandarproject will help you to solidify your idea (since it is mostly vague to begin with) to such an extend that it could be considered a patentable thing. For this there is a lot of work because the IP professionals will have to take an overall view of it and also research on what is in the public domain. There is no such thing as completely new as technology always rely on a previous known art. Patents are usually small steps of improvement from a previous known technology. It is therefore not any easy task to draft your patent as usually an inventive mind with the capability of thinking out of the box is required. It is after all how you solve a problem that is important. Drafting a patent is a way of solving a problem. You will be able to move on even with a lot of roadblocks along the way. These roadblocks are created by prior inventions. Not all patent agents are the same, some are better than others!
What will the Malaysian Patent Agent do for you?
The Patent Agent that you have appointed to undertake prosecution will first of all conduct a patentability review, in other words, the patent agent will look at whether the idea is new or does it have an inventive step and also will it lead to be used by the industry.
In most likelyhood, the patent agent will have to search for priority art.
A priority art search will lead to materials available from public resources. In most probability, something similar will be found. It would then be the vital task of the patent agent to decide whether the idea is patentable or not. If the patent agent choose (after great deliberations) to proceed with the creation of the patent specification, then the work of drawing out the speicifications begins. The patent agent will need all his or her resourcess and experience to navigate away from all known obstacles that were thrown up by the priority art search. It is a dawnting task to say the least. That is why you should delegate your prosecution work to an agent if you can't afford to waste time and money.
A patent prosecution with MYIPO will mean after filing, your patent will be subjected to a preliminary search by the authority to see whether the format of your specification is correct. This will usually take two weeks time after which the authority will inform you to go ahead with subscribing for substantive examination or you will need to make the neccessary amendments to your specifications. Then you will have to wait for a period of say 4 (approximate) years before you will get a hearing from the authorities. In most cases you will get to hear of an adverse report, meaning that you will need to make further amendments to your specifications to not infringe on existing and known arts. But if you do not hear of objections, then considered yourself lucky as you will finally get a grant and will be notified of. Usually this will come about after 5 (approximate) years from the date of filing. If you encounter objections, then you will have to wait for six (approximate) years before
you get either the good or bad news. There is however a shortened pathway (by six months) where you will need to pay an extra fee and also appeal letter requesting for the shortened pathway!
Some basics of a patent application in Malaysia:
Your patent agent (assuming you have appointed one) will file for you:
i) Form 1 (Request for grant of patent);
ii) A patent specification consisting of a description of the invention, a claim or a set of claims, an abstract and drawings (if any);
iii) A filing fee.
Malaysia grants two types of patents:
1. Standard Patent: The invention must be novel, must have an inventive step and must be industrially applicable. Duration of protection is for 20 years from date of filing of application.
2. Certificate of Utility Innovation (also termed minor patent): Generally same as standard patent (examination required) except no inventive step is required.
A patent grants exclusive rights for 20 years starting from the date of filing of application. A Certificate for Utility Innovation provides exclusive rights for a maximum of 4 periods of 5 years each subjected to a paid fee.
What are the general requirements to file a patent application?
Malaysia adopts a "first to file" system (as opposed to the first to invent principal in the US) for patents. A filing date is accorded to the date (of importance when litigation arises) of receipt of the application if the application contains all the following information:
a) the name and address of the applicant (can be a company);
b) the name and address of the inventor (must be a person or persons);
c) a description and all drawings (if any) in duplicate, drawings can be informal drawings (not to scale);
d) a claim or claims; and
e) the prescribed fee (filing fee).
Malaysian Trademark Filing
The Malaysian lower house of parliament has approved Trade Descriptions (Amendment) Bill 2019 and Trademarks Bill 2019 were passed with a simple majority following debate among eight MPs in the Dewan Rakyat on 11th July 2019.
As such, Malaysia will accede to the Madrid Protocol, which is administered by the International Bureau of Wipo in Switzerland, and on it, allows a trademark owner to seek protection of the trademark in several countries simultaneously by filing one application with a single office, in one language and by paying one fee.
With Malaysia's acceding to the Madrid Protocol, Malaysian businesses would get trade mark protection from over 150 member countries. It would mean that Malaysian Businesses will get protection with a lower cost. Previously, trademark filing has to be made in individual countries.
For a better understanding of Intellectual Property Application, you may want to learn more here
For a better understanding of Malaysian Patent Prosecution Flowchart, you may want to learn more here
In case you need advise, please send a message to firstname.lastname@example.org (non free email account will be appreciated)
For Trademark and Industrial Design, Copyrights matters, you may seek our advisory at email@example.com (non free email account only)