– Patents Act 1983 (the Act), in force since October 1, 1986, last amended by the Patents (Amendment) Act 2022, in force since March 18, 2022.
– Patents Regulations 1986 (the Regulations), in force since October 1, 1986, last amended by the Patents (Amendment) Regulations 2022, in force since March 18, 2022.
– Patents (Waiver of Fee) Regulations 2020, in force since January 1, 2021, pertaining to waiver of certain official fees in light of the COVID-19 pandemic situation in Malaysia.

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since January 1, 1989.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 1, 1989.
– Convention on Biological Diversity, since June 12, 1992.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Patent Cooperation Treaty (PCT), since August 16, 2006.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since June 30, 2022.

Applicant(s): an inventor, co-inventors, an assignee, subject to agreement of the employer, the employee of a company, the person who commissioned the invention, or in the absence of any agreement to the contrary with the employee, the employer (company itself).

Employee’s invention: the patent rights in an invention made by an employee in the course of his or her normal duties will accrue to the employer and not to the employee unless otherwise agreed. Likewise, inventions made by a person commissioned by another, belong to the person who commissioned the invention.

Equitable remuneration for employees: if the invention acquires an economic value greater than the parties could have reasonably foreseen at the time of the contract of employment, the employee is entitled to equitable remuneration which may be fixed by the court in the absence of agreement between the parties.

Residents: applications by resident inventors or companies are to be filed first in Malaysia unless (a) not less than two months have lapsed after the application is first filed in Malaysia; (b) no prohibitions have been issued by the Registrar against the filing of the application outside Malaysia; or (c) authorization for filing the application first outside Malaysia has been requested for and granted by the Registrar in writing.

Foreign applicants: must appoint a locally registered patent agent.

Patentability conditions: the invention for which a patent is being sought must (a) be new; (b) involve an inventive step; (c) be capable of industrial application in the sense that it permits in practice the solution to a specific problem in the given field of technology; (d) not be excluded from patentability.

Novelty: an invention must not have been disclosed publicly in any way anywhere before the priority date claimed. An invention is regarded as involving an inventive step if, when compared with what is already known, it would not be obvious to an ordinary person skilled in the art of the given field.

Exempted disclosure: the following prior disclosures are however exempted, namely (a) if the disclosure occurred within one year preceding the date of the application and such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title; or (b) if the disclosure occurred within one year preceding the date of the application and such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title.

Not patentable: (1) a discovery, scientific theory, or mathematical method; (2) a method of treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; (3) a scheme, rule or method for performing a mental act, playing a game or doing business; (4) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living microorganisms, micro-biological processes and the products of such microorganism processes; (5) computer software and programs per se, but computer-related and software-related inventions are patentable, depending on the nature of the invention.

Priority: in accordance with the Paris Convention, the right of priority must be claimed within twelve months of the filing of the first Convention application. After the twelve-month period, the right of priority may be restored subject to the filing of a request and fulfillment of the prescribed conditions.

Division: possible into two or more applications anytime before issuance of the first substantive examination report or within three months of the issuance of the first examination report. A divisional application cannot be filed once the patent has been granted, deemed to be withdrawn, withdrawn, or abandoned. Each divisional application is entitled to the filing date and to any right of priority, if right of priority is claimed of the initial application.

Territory covered: the whole of Malaysia.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney duly executed by the applicant;
2. Specification in the English language (3 copies) including description (including a sequence listing, if any), claims (multiple independent and dependent claims are allowed), abstract and drawings (if any);
3. If the applicant is not the inventor, a statement justifying the applicant’s right to the invention, i.e. as assignee, administrator, employer, etc., of the inventor;
4. If priority is claimed, particulars of the Convention application: country, application date and number. An applicant shall state in his request any disclosure that he is aware of, but which is exempted under the law;
5. In practice, priority documents need not be submitted unless specifically requested by the Malaysian Intellectual Property Office (MyIPO). If requested, the priority documents would have to be submitted within the time frame given;
6. Payment of the filing fee (additional fees apply where the application comprises more than 10 claims).

Minimum requirements for securing a filing date:
1. Name, address and nationality of the applicant(s) and inventor(s);
2. Specification in the English language (3 copies) including description (including a sequence listing, if any), claims (multiple independent and dependent claims are allowed), abstract and drawings (if any);
3. If priority is claimed, the relevant data of the priority application including country, filing date and application number;
4. Payment of the filing fee (additional fees apply where the application comprises more than 10 claims).

Electronic filing: the Patent Office has put in place an electronic filing system and applications may now be filed online, with reduced filing fees.

Electronic signatures: Malaysia recognizes the legal effect of electronic signatures, however, POAs cannot be signed electronically, and it is advised that documents for IP filing purposes to be signed manually. Scanned copies of signed documents are accepted, but the original must be sent as soon as possible.

PCT applications: time limit for entering national phase under Chapter I and Chapter II: 30 months from the priority date. Priority may only be claimed from international applications filed after August 16, 2006 (date when the PCT came into force in Malaysia). The filing particulars as submitted in relation to the priority application must be provided.

There are two forms of examination: preliminary examination and substantive examination. A new Patent Examination Guidelines 2023 was published on January 30, 2023 by the Malaysian IP Office to assist Examiners with the examination procedure.

Preliminary examination: the preliminary examination to determine whether the application has complied with the formal requirements for filing will be carried out automatically upon filing of the application, without the need to make a request for it. The Examiner shall inform the applicant of any inadequacies, and these have to be dealt with within three months of the issuance of the Adverse Formalities Report.

Amendments: the Registrar may amend the patent application or documents submitted in relation to the application upon request of the patent applicant, for the purpose of (a) correcting a clerical error or an obvious mistake; or (b) changing the name or address of the applicant or inventor. In addition, the Registrar may amend the patent application upon request of the patent applicant provided that the amendment does not go beyond the disclosure in the initial application. If the amendment requires an Examiner to re-examine the patent, the request for re-examination shall be made in the form as determined by the Registrar together with the payment of the prescribed fee within the period of three months from the date of notification issued to the applicant.

Substantive examination falls into two categories, namely (1) substantive examination and (2) modified substantive examination. (1) Substantive examination: under the latest amendment, a request for substantive examination must be filed, with the prescribed fee, within eighteen months of filing the application. This is applicable to all patent filings after February 15, 2011. For applications filed before February 15, 2011 for which substantive examination has not yet been requested, the two-year time frame will still apply. The new official fees are applicable to both cases. Where appropriate, the request for substantive examination should be accompanied by: (a) particulars on any corresponding applications filed in any of the prescribed Industrial Property Offices, namely, the Patent Office of Australia, Japan, Korea, U.K., U.S.A. or E.P.O. in its capacity as a national office, an International Searching Authority or an International Preliminary Examination Authority under the Patent Cooperation Treaty; (b) the results of any searches or examination carried out by such prescribed Industrial Property Office. Where the results of any searches or examination are not in the English Language, a certified translation in the English Language must be provided. (2) Modified substantive examination: where the corresponding patent protection is granted or likely to be granted in a prescribed country namely, Australia, Japan, Korea, U.K., U.S.A. or by the EPO, the applicant may instead of requesting the substantive examination, request a modified substantive examination within a prescribed period. Under the modified substantive examination procedure, the Malaysian application is usually amended to conform to the granted patent for the same invention of the stipulated country. The deferment allowed is four years from the date of application and the application for deferment must be made within two years of the application date.

Substantive examination procedure for national applications filed on or after August 16, 2006: the applicant may request for either substantive examination or modified substantive examination to be deferred for a maximum period of five years from the filing date of the national application. Note: from March 18, 2022, deferment of substantive examination is no longer available, only deferment of modified substantive examination.

Objections and Adverse Examinations Reports: if objections are raised, the applicant must make observations on the Examiner’s report in response, or amend his application, or both, within three months from the date of the examination report. Limited extensions of time are possible.

Expedited examination: an applicant who requests or has requested for substantive examination may request for approval from the Registrar to undertake an expedited examination after eighteen months from the priority date or filing date of the application. A request for expedited substantive examination must be accompanied by the prescribed fee and by a statutory declaration setting out any one of the following grounds: (1) it is in the national or public interest; (2) there are infringement proceedings taking place or evidence showing potential infringement; (3) the applicant has already or plans to commercialize the invention; (4) the invention relates to green technologies; (5) to obtain funds or monetary benefits from the government or recognized institutions; (6) any other reasonable grounds. Upon approval by the Registrar, a further request for expedited examination will have to be made within five working days, together with the prescribed fees.

Observations: as of March 18, 2022, any person may submit comments as to the patentability of a patent application, within three months from the publication of the application.

Grant takes place when the application complies with all the requirements of the Act and Regulations.

Duration: patents applied for before but granted after and patents granted before August 1, 2001, subject to payment of annuity, have a duration of fifteen years from the date of grant or twenty years from the date of application, whichever is longer. For patents applied for and granted after August 1, 2001, and subject to annuity payments, the duration is twenty years from the date of application.

Renewal fees: payable annually in respect of the second and subsequent years for granted patents.

Annuity grace period: an extension of six months can be obtained for the period of payment of any renewal fees upon payment of a surcharge.

Reinstatement: reinstating a lapsed patent is possible within twelve months from the date on which a notice of the lapsing of a patent is published.

Licenses of right: the patent owner may voluntarily enter an endorsement of his willingness to grant a license for his granted patent at the Registry.

Contractual licenses: the patent owner and licensee are free to enter into binding contractual licenses relating to the invention being the subject of the patent.

Compulsory licenses: if working requirements are not met by the patentee, any person may apply to the Registrar for a compulsory license if he can establish that (a) there is no production of the patented product or any application of the patented process without any legitimate reason; or (b) there is no product produced under the patent for sale in the domestic market or that the products in question are sold at unreasonably high prices or do not meet the public demand adequately. An application for a compulsory license may be made at any time after the expiration of three years from the grant of the patent or four years from the filing date of the patent application, whichever is later. The applicant must have made efforts to obtain authorization from the patent owner on reasonable terms and conditions and such efforts undertaken have not been successful within a reasonable period of time.

Cross or interdependent licenses: if a patent cannot be worked without infringing an earlier granted patent or a patent granted pursuant to an earlier application, and if the invention of the patent constitutes in the opinion of MyIPO (established under the Intellectual Property Corporation of Malaysia Act 2002) an important technical advance and is of considerable economic significance, the Corporation may at the request of the latter patent owner, or his contractual or compulsory licensee, grant a compulsory license to the extent necessary to avoid infringement of the earlier patent.

Post-grant opposition: as of March 18, 2022, any third party may file an opposition before the Registrar, within six months from publication of the granted patent.

Post-grant amendments: under limited circumstances, post-grant amendments are possible. Amendments will not be allowed if the amendments would have the effect of matters being added, which extend beyond that disclosed before the amendment or would have the effect of extending the protection conferred at the time of grant of the patent. As of March 18, 2022, upon the patentee's request for post-grant amendments, the Registrar may require the patentee to file a request for re-examination of the patent.

Infringement: it is an infringement if a person without the owner’s consent where the patent has been granted in respect of a product (a) makes, imports, offers for sale, sells or uses the product; or (b) stocks such product for the purpose of offering for sale, selling or using the same. Where the patent has been granted in respect of a process, it is an infringement: (a) to use the process; or (b) to do any of the infringing acts with respect to a product obtained directly by means of the process without lawful authorization. Infringement proceedings cannot be commenced until the patent has been granted. The onus is on the defendant to prove that he has not infringed the process.

Imminent infringement: any persons who have performed acts that make it likely that an infringement will occur may be sued for infringement as well.

Time limitation for infringement action: an infringement action must be commenced within six years from the act of infringement. The following are exempted from infringement, namely: (1) acts which though of an industrial or commercial nature are carried out only for purposes of scientific research; (2) acts done to make, use, offer to sell or sell a patented invention being uses and acts reasonably related to the development and submission of information to relevant government authorities which regulate the manufacture, use of sale of drugs; (3) parallel imports; (4) rights derived from prior manufacturing or use; and (5) rights of exploitation of licensees.

Remedies which can be obtained by the patentee are interlocutory and permanent injunctions and damages. No criminal enforcement.

Assignment: assignment of granted patents and patent applications is possible. No such assignment shall have effect against third parties unless so recorded in the register. Devolution of title may also be by way of transmission or other testamentary disposition.

Invalidation of patent: any aggrieved person may institute court proceedings against the owner of the patent for the invalidation of the patent on any one or more of five grounds: (1) the invention is not a patentable invention; (2) the right to the patent do not belong to the person to whom the patent was granted; (3) the description or the claim does not comply with the Act and regulations; (4) any drawings which are necessary for the understanding of the claimed invention have not been furnished; and (5) that incomplete or incorrect information have been deliberately provided. In invalidation proceedings only some of the claims or some parts of a claim may be declared invalid. Any invalidated patent, claim or part of a claim shall be declared as null and void from the date of the grant of the patent.