Seeking patent protection in Malaysia

Date: 2019-08-12
Authors: Jason Manakis & Desmond Tan

As part of our services in South East Asia, we are pleased to assist clients with all stages of the patent application process in Malaysia.

Malaysia is a particularly attractive jurisdiction in South East Asia, owing at least in part to being a relatively advanced economy in the region. Lately, Malaysia has seen positive growth in its GDP, and is now ranked second in South East Asia in the US Chamber of Commerce’s International IP Index (Index).

The Index has actually ranked Malaysia ahead of countries which are typically perceived to be focussed on innovation and technology, like China, and Russia.

Malaysia’s primary industries include resource extraction (oil and gas in particular), manufacturing, IT, and communication. In addition, the following aspects are viewed as strengths for the country:

  • Ready availability of a tertiary educated workforce, particularly in science and engineering;
  • High financial liquidity given that Malaysia has positioned itself as an Islamic financial hub;
  • High number of university/industry research collaborations and large appetite for more such collaborations;
  • High reliance on both technology imports and exports; and
  • High rate of generation of creative goods and services.

When the strengths of the country are assessed in a considered manner, it appears that the following can be considered for Malaysia:

  • Selecting the country as a base to carry out research activities, as it is a desirable place to seek funding from Islamic sources, has a good depth of talent, and has a good pool of technology collaborators;
  • Selecting the country as a location for patent protection, given the economy’s high reliance on both technology imports and exports, and the presence of an IP court in the legal system to enforce the patents;
  • Selecting the country as a location for patent enforcement efforts, given the economy’s high reliance on technology and presence of IP courts;
  • Expending some resources to map patents being filed by competitors in Malaysia, so as to identify possible opportunities in the country; and
  • Selecting the country as a location to test-bed technology for specific target markets, for example, in the halal food technology or medicinal space.

Key considerations when obtaining patent protection in Malaysia

Convention applications

Malaysia is a party to the Paris Convention, and therefore, complete patent applications can be filed in Malaysia within 12 months from the filing of a first application for an invention in a Convention country. An English translation of the specification is required at filing.

National Phase Entry applications

PCT National Phase applications must be filed within 30 months from the earliest claimed priority date, albeit late filings are possible in certain circumstances. An English translation of the specification is required at filing if the PCT application is not filed in English.

Utility patents

Utility patents are available in Malaysia. They have a 10-year term from the filing date of the application, and are for inventions that are novel and susceptible to industrial application.

Examination

Patent applications in Malaysia are not automatically examined. A request for examination must be filed within 4 years from the international filing date of a PCT application, or within 18 months of the date of filing of a convention application. Both dates may be deferred up to 18 months.

Substantive and modified examination is available in Malaysia. Under substantive examination, the Malaysian patent office conducts an original examination of the application. Modified examination can be requested where a patent for the same invention has been granted in Australia, the USA, Japan, Republic of Korea, the UK, or by the European Patent Office.

Divisional applications

Divisional applications can be filed in Malaysia up until three months after the date of the issuance of the first examination report for an application.

Non-patentable subject matter

The following subject matter is not patentable in Malaysia:

  • Discoveries, scientific theories and mathematical methods;
  • Plant or animal varieties, and biological processes for the production of plants or animals (other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes);
  • Schemes, rules or methods for doing business, performing purely mental acts, or playing games; and
  • Methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

How FPA can help you

In Malaysia we deliver through our related firm Advanz Fidelis, while we use our trusted network of top-tier firms in the remainder of the region. Our South East Asian hub model provides a single point of contact for the filing and management of prosecution and enforcement in South East Asia, delivering time efficiency and convenience, consistency of approach and superior outcomes for clients.

Please contact us so that we can tailor a solution for your patent portfolio in Malaysia, and in South East Asia more broadly.