Malaysia

Filing Requirement / Documents Required

Direct National Application:-

1. Filing form request for the grant of a patent;
2. Applicant's name and address;
3. Inventor's name and address;
4. A specification comprising a description, claims and any necessary drawings;
5. the country and filing particulars of basic application whose priority is claimed;
6. Form for the appointment of patent agent; and
7. A statement justifying how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.

PCT National Phase Application:-

1. A copy of the PCT application in English language (i.e. PCT/RO/101);
2. The details of the PCT application as published by WIPO;
3. PCT specification as originally filed;
4. International Preliminary Report on Patentability;
5. Amendments filed in the international phase (if any);
6. Power of Attorney; and
7. A statement justifying how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.

Specific Remark

1. Simply signed Power of Attorney is required.

Procedure / Time Frame

1. Filing of Patent Application

   Applicant is required to submit an application within 12 months of priority date.

2. Publication

   Details of the application, including the specification are made available for public inspection after 18 months from the patent Malaysia filing date. Once published, the application will enjoy provisional protection under which, upon grant, the patentee may claim compensation for unauthorized use of the invention prior to grant.

3. Substantive Examination

   Every applicant has to file a request for a substantive or modified substantive examination within 18 months from the patent filing date (for a Direct National Application) and within 48 months from the international filing date (for a PCT national entry into Malaysia), wherein the registrar will refer the application to the examiner. The examiner will then submit a report after examining the application for compliance of regulations. Once the applicant makes observations on the report or amendments as the case may be the examiner will again report to the registrar who will then process the application.

4. Registration

   Once registered, a patent Malaysia is valid for a term of 20 years and will be subject to protection upon payment of annual renewal fees. Annuity is payable upon granvt.

Validity / Renewal

Annual fees are due each year starting from the 2nd one and should be paid within 12 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 6-month grace period by paying a corresponding surcharge.

Novelty Grace Period

12 months

Filing Requirement / Documents Required

1. Applicant's name and address
2. Author's name and address
3. Description of the design.
4. The country and filing particulars of basic application whose priority is claimed.
5. Power of Attorney.
6. Representations of the design.
7. Classification of the article or articles to which the industrial design is intended to be applied.
8. A statement justifying the applicant’s rights to the registration of the industrial design, if the author is not the applicant

Specific Remark

1. The original Power of Attorney must be submitted simultaneously with filing a design application in Malaysia. Legalisation or notarization is not required. However, if the representation of the Power of Attorney is not available, current practice allows filing a certified copy of the signed form, provided the original follows later.

Procedure / Time Frame

1. Application

   Design application has to be filed with the Malaysian Industrial Design office.

2. Formality Examination

   A preliminary examination of the application is done to test the compliance of legal requirements. There is no search or substantive examination of the application. However, in practice, objections of a substantive nature are often raised.

3. Registration

   Once the certificate is issued the Registrar will cause the registration to be published in the Gazette containing the notice of registration, details of the owner and other related information. The registrar will record the details of the design in his register and issue a certificate of registration to the applicant. No official grant fee is required to be paid. "

Validity / Renewal

The validity term for a Malaysian design is 5 years from the filing date or priority date. The application can be renewed for 4 further 5-year periods, giving a maximum term of 25 years. The renewal fee may be paid up to 6 months before the expiry date of the current period of registration. It is also possible to make a late payment, not more than 6 months after the expiry date, subject to a late payment penalty fee.

Novelty Grace Period

6 months