Fees associated with the Malaysian PCT national phase entry as well as other patent fees are available in the fee calculator.
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Deadline for the PCT national phase entry in Malaysia
The 30-month term from the priority date is stipulated for entering the Malaysian PCT national phase. An applicant that unintentionally fails to meet the requirements for national phase entry within the regular 30-month term may apply for reinstatement. The maximum term for seeking reinstatement is:
- two months from the date of removal of the cause of the failure to meet the 30-month deadline; or
- 12 months from the 30-month deadline, whichever expires first.
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Filing requirements in Malaysia
The official language for national phase entry is English. No other language has been prescribed.
To obtain the date of filing the PCT national phase entry application should contain:
- request to grant a patent;
- details of the PCT application (preferably the bibliographic page as published by WIPO);
- copy of the PCT specification as published;
- copy of amendment if any.
Simply signed original of a Power of Attorney (POA) may be submitted during the formal examination that occurs approximately one month after filing the application. Legalization or notarization is not required.
Under the Malaysian IP law, there is no requirement or provision for filing an Assignment Deed, if the applicant is not the inventor. However, a statement explaining how the applicant derives its right to the patent from the inventor should be submitted to the Malaysian IPO during the formal examination.
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Examination of a PCT national phase patent application in Malaysia
PCT national phase patent applications undergo formal and substantive examinations. The request for the substantive examination should be filed within four years from the international filing date.
There are two options: standard substantive examination and modified substantive examination.
Under standard substantive examination, MyIPO will conduct its own search and substantive examination of the application, assisted whenever possible by the results of any search and examination of the same invention filed in Australia, the United Kingdom, the European Patent Office, Japan, Korea, the United States and under the PCT.
A request for modified substantive examination may only be filed when a corresponding Australian, European, United Kingdom, Japanese, Korean or United States patent has been granted for the same invention. Under modified substantive examination, the PCT national phase patent application undergoes a simplified examination process. The application is checked for novelty, statutory subject-matter and compliance with the specification of the foreign patent relied on, but there is no examination for inventive step and the number of formal requirements.
It is possible to file a request for use of the search and examination results from the ASPEC member-country. It is also possible to accelerate the substantive examination in Malaysia via PPH route.
A one-year novelty grace period from the date of disclosure to the public before the date of international filing is stipulated in the Malaysian legislation. If the application became available to the public due to the disclosure made in bad faith by any third party or made in consequence of acts committed by the applicant or his predecessor in title or made by way of a pending application to register the patent in the UK IPO, it does not disprove the novelty of the invention in Malaysia.
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Grant, validity term and maintenance fees
No official grant fee is required to be paid. Validity term of the patent in Malaysia constitutes twenty years as of the international filing date. Annual fees are due each year starting from the 2nd one and should be paid within twelve months from the date of grant. The succeeding annuities should be paid no later than the same anniversary when the patent is granted. Late payment is possible within a six-month grace period by paying a corresponding surcharge.
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Duration of a registration procedure
Average processing time for patent registration procedure in Malaysia is 3-5 years.
The Malaysian patent system includes provision for the grant of utility innovation certificates which are limited to one patent claim and are subject to formal and substantive examination.
A utility innovation is defined as any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application. There is no requirement for an inventive step.
The filing requirements and prosecution procedure are basically the same as for patents. A utility innovation is valid for 10 years from the international filing date, extendible by 2 further periods of 5 years for a total of 20 years.
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Representation by a patent attorney
Foreigners must appoint an agent, a registered Malaysian patent attorney to perform the PCT national phase entry in Malaysia.
Online search database for Malaysian Patents.
Brief summary is based on the information provided by NG, ARLENE TAN & LEONG on 09.02.2023
Please contact us if the above information is not in conformity with Malaysian IP Laws.