By Nur Asmaa, Tharishini Manalan, Jasmine Lim and Sry Farhany
We are all living in the digital era where everything is just within our fingertips. Want to pay bills? Do it online. Want to shop? Online. Want to buy food? Also online. At one point, you could even have your IP rights protected online. However, the Intellectual Property Corporation of Malaysia (MyIPO) has stopped allowing online filings since 18 March 2022. A Practice Notice was issued, enforcing physical or manual filings due to the changes to the Patents Act 1983 and Patents Regulations 1986.
Here, we list some of the pivotal transitions made in the Patents (Amendment) Act 2022 (“Act”) and the Patents (Amendment) Regulations 2022 (“Regulations”).
Restoration of Priority Right
Where the applicant’s priority right is invalid, the current Section 27, Regulation 23A allows the applicant to restore their priority right by arguing that they have unintentionally missed it. It will then be MyIPO’s decision on whether to allow the applicant to restore their priority right or otherwise.
Divisional Applications
Previously, the status of the parent application was not a concern for filing a Divisional Application and the deadline to file a Divisional Application could be extended if needed.
However, with the amendment of Section 26B, a Divisional Application can only be filed when the parent application is still pending. If the status of the parent application is other than pending, the applicant will not be allowed to file any Divisional Application based on its parent application. This restriction only applies to a Malaysian direct/convention application. Application via PCT is not affected by this amendment.
More importantly, Section 26B also states that the deadline for filing a Divisional Application cannot be extended, even if the parent application’s status is still pending, regardless if the parent application is a direct or a convention or an application via PCT.
Deferring the Request for Modified Substantive Examination (MSE)
Previously, when the applicant needed more time before filing the request for either the Substantive Examination (SE) or the Modified Substantive Examination (MSE), MyIPO will allow the applicant to defer the deadline for requesting either type of examination.
However, Section 29A(6) and Regulation 27B now mention that it is possible to defer the deadline only when the applicant is requesting for MSE. The deferred deadline would then be five (5) years from the Malaysian filing date/international filing date. At this point, the applicant should have a granted corresponding patent from MyIPO’s prescribed countries for filing the request for MSE.
If the applicant does not have any corresponding granted patents when the deadline for requesting MSE is nearing, the applicant would then have three (3) months from the deferred deadline to file the request for SE. It must be confirmed that there is no granted corresponding patent at this stage.
Reinstatement of a Lapsed Patent
Before these amendments were implemented, when an applicant had a lapsed patent, they had two (2) years from the lapsed date to reinstate their patent.
With the current Section 35A, the applicant has twelve (12) months from the lapsed date to reinstate their patent. When MyIPO has reinstated the patent, the notice of reinstatement would be published.
Conversion of Patent Applications
In Malaysia, a patent can either be filed as an invention or a utility innovation. There are situations where the applicant would like to convert their utility innovation into an invention or vice versa.
The former timeline for this conversion was six (6) months from the issuance date of the examination report. With the amended Section 17B and Regulation 33C, this timeline has been reduced to three (3) months from the issuance date of the examination report.
Furthermore, in contrast to the previous practice, it is not possible to file for an extension of time for the new timeline of three (3) months.
Response to Substantive Examination Adverse Report (SEAR)
Whenever an adverse report at the examination stage has been issued, it would previously state that the applicant has two (2) months from its issuance date to respond.
With Regulation 27C and Regulation 27D, the applicant now has three (3) months from the issuance date of the adverse examination report to respond. Regulation 27C governs the Substantive Examination Adverse Report (SEAR) while Regulation 27D regulates the Modified Substantive Examination Adverse Report.
On another note, if the current deadline of three (3) months cannot be met, the applicant has the option to extend this deadline for six (6) months from the deadline, as governed by Section 82, Regulation 53. This extension can only be filed once, and it must be filed before or on the deadline. Any extension of time filed after the deadline will not be entertained.
Sequence Listing
A sequence listing is a list of biological sequences in a specific format. Whenever a patent includes biological sequences, the sequence listing must be filed separately from the specification.
According to Section 28(1), Regulation 12A, the sequence listing must be submitted in the standard as determined by MyIPO. Referring to Item 4 in the Directive of Patents Act 1983 and Patents Regulations 1986, as well as the Practice Notice dated 30 June 2022 issued by MyIPO, the submitted sequence listing must be in the Portable Document Format (PDF) and Extensible Markup Language (XML) when filing the patent application.
Post-Grant Patent Amendments
Even when the patent has been granted, either MyIPO or the applicant may still opt to amend the patent.
With Section 79A and Regulation 46A, if MyIPO believes that a re-examination of the patent is required, the applicant then has three (3) months from the date of MyIPO’s notification to file the request for re-examination with a prescribed fee. If the applicant fails to file a request for re-examination, the application will be withdrawn.
Third Party Observations (TPO)
Any general member of the public, also known as third parties, is allowed to make observations on patent applications that challenge their patentability, with a prescribed fee. For inventions, third parties may question their novelty and inventive step, while for utility innovations, third parties may only argue their novelty.
According to the new Section 34A and Regulation 28A, a third party can make their observations depending on the type of application they are observing. If it is a conventional application, the third party has three (3) months from the Malaysian publication date to make their observation.
For national phase applications, when the international application has been published, third parties can make their observations three (3) months from the Malaysian filing date. If the international application has not been published, third parties can make their observations three (3) months from the international publication date once it has been published.
Infringement vs Invalidation
Infringement, also referred to as opposition, is currently governed by Section 55A where any interested person may file a notice of opposition. A notice of opposition can only be filed on the grounds of challenging the invention’s patentability, fulfilment of the application’s requirements and whether the drawings of the application have not been provided, accompanied with the payment of prescribed fees.
At the conclusion of the opposition proceedings, MyIPO can decide to either maintain the patent or maintain the patent with amendments or invalidate the patent.
On another note, when a notice of opposition is filed but a decision has not been made, the party involved in the opposition proceedings cannot commence invalidation proceedings unless both parties involved in the opposition agree to the invalidation proceedings or the interested person is a defendant in the infringement proceedings.
Governed by Section 56A, any interested person who intends to commence invalidation proceedings must first notify MyIPO and then, withdraw the notice of opposition filed.
According to Regulation 55, the interested person is to provide a copy of the application in question, as well as an appeal to commence either opposition or invalidation proceedings.
Micro-Organism Deposits
When a patent has a microorganism that cannot be described in the specification, Section 26C states that this microorganism shall be deposited in the National Depository Authority or the International Depository Authority. The deposit shall be made no later than the application’s filing date with a prescribed fee, subject to the prescribed conditions.
With Regulation 12D, the applicant can amend their patent application or patent with the prescribed fee when a new deposit of a microorganism has been made. This amendment should be done three (3) months from the date of the new deposit.
As of June 2022, the above are the pivotal amendments that should be acknowledged by the Applicants and Inventors. If you have concerns about the basics, our patent prosecution expert has written an article detailing the beginning of the prosecution as well as the types of applications when moving forward.
If you have any questions regarding any aspect of intellectual property, feel free to email us at kass@kass.asia and we shall gladly attend to your every need.
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