Malaysia: The Patents (Amendment) Act 2022 ("PAA")

Pua Siau Kee analyses the recent legislative amendments impacting patent laws in Malaysia.

The PAA was passed by the House of Representatives on 15 December 2021 and subsequently by the Senate on 22 December 2021 to amend the Patents Act 1983 ("PA 1983"). The PAA came into force on 18 March 2022 save for certain provisions pertaining to:

(i) the depositing of microorganism with the relevant authorities;
(ii) the inspection of certain documents by the public; and
(iii) opposition proceedings against a granted patent before the Registrar.

The PAA takes into account Malaysia's commitments under the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement"), the Regional Comprehensive Economic Partnership Agreement ("RCEP") and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership ("CPTPP").

SOME OF THE KEY AMENDMENTS INTRODUCED BY THE PAA ARE SUMMARISED BELOW

Definition of "Resident"

The PAA introduces a definition for "resident" that includes:

(a) a Malaysian citizen residing in Malaysia;
(b) a non-Malaysian citizen who has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia, or is residing in Malaysia by virtue of a valid and lawful pass;
(c) a body corporate incorporated, established or registered under the laws of Malaysia; or
(d) an unincorporated body, established or registered under the laws of Malaysia.

The introduction of the above definition provides clarification to section 23A of the PA 1983 which dictates that a person or entity that falls within the definition of "resident" is required to first file a patent application in Malaysia, unless he/it has complied with the prescribed requirements to first file outside of Malaysia.

Further, the PAA also enables a resident, or any person who is a citizen of Malaysia residing outside Malaysia to file a PCT international application with the MyIPO.

Recognition of Patents as a form of Security Interest, Personal and Movable Property

A patent is now recognised as a form of security interest in the same way as other personal or moveable property. A security interest transaction in respect of a patent must be recorded on the Malaysian Patents Register before they can be enforced against third parties.

Power of Registrar to Grant Compulsory Licence

The Registrar of Patents ("Registrar") is now empowered to grant a compulsory licence notwithstanding any pre-existing contractual obligations (for example, an exclusive licence contract between a licensor and licensee). The relevant provision protects the licensor from any action for breach of contract by the licensee following the grant of a compulsory licence by the Registrar.

Post-Grant Opposition and Invalidation Proceedings

The PAA introduces a post-grant opposition procedure before the Registrar. Any interested person may, within the prescribed publication period, initiate opposition proceedings against a patent owner in relation to the grant of the patent before the Registrar. Where an opposition is filed by an interested person but has not been decided by the Registrar, the interested person is not allowed to institute any court proceedings to invalidate the patent concerned unless:

(a) parties to the opposition proceedings agree for the invalidation proceedings to be instituted before the court, or
(b) the interested person is a defendant in an infringement proceeding.

Extended Timelines for Judicial Assignment and Court Proceedings

The limitation period to commence an application for the judicial assignment of patent/patent application and court proceedings for infringement of a patent has been extended from five years to six years.

Shortened Timeline for Reinstatement of Lapsed Patent

The PAA has shortened the timeline to request for a reinstatement of a lapsed patent from 2 years to 12 months from the publication date of the notice of the lapsing of a patent.

Restoration of the Right of Priority

Where an applicant fails to claim a right of priority within 12 months from the filing date, the applicant may make a request to the Registrar for the restoration of the right of priority, subject to payment of the prescribed fees and conformance with the relevant conditions. Previously, there was no remedy available if the priority deadline was missed.

Third Party Observations on Patentability

It is now expressly provided that any person may, within a prescribed period, submit observations in writing to the Registrar on any matter relating to the patentability of a patent application. Previously, Malaysian examiners were not obliged to consider any input from third parties during examination. Introducing third party observations will allow the public to submit information that could be relevant in determining the patentability of an invention.

Removal of Deferment Request for Normal Substantive Examination

Previously, the PA 1983 allowed an applicant to defer the request for both normal substantive examination ("SE") and modified substantive examination ("MSE") by up to 5 years from the filing date on several grounds, for instance where certain information or documents concerning the examination request have yet to be made available. The PAA has removed such option to defer the request for normal SE but the option for deferment is still available for the request for MSE, on the ground that a patent or other title of industrial property protection is not available by the expiration of the prescribed period.

Compliance with Budapest Treaty

As a part of the patent disclosure procedure in compliance with the Budapest Treaty, the PAA has provided for a procedure to deposit a micro-organism (i.e. which is not available to the public and cannot be described in the patent application) with a National Depositary Authority or an International Depositary Authority.

CONCLUSION

Apart from complying with Malaysia's obligations under the respective international treaties, the PAA aims to bring the PA 1983 to be more in line with the current and ongoing developments of the international standards and practices for patents. In view of the amendments, various procedures and requirements under the Patents Regulations 1986 have also been revised or introduced.

First Published with Wong Jin Nee & Teo on March 2022, The Patents (Amendment) Act 2022 ("PAA")

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.