Examination

1. There are three stages in the examination process:
  1. (S28) Determination of a Filing Date which is automatically conducted by the Patent Registration Office upon receipt of the application.
     
  2. (S29) Preliminary Examination which is conducted automatically by the Patent Registration Office if the application is accorded a filing date.
     
  3. (S29A, S30) Substantive Examination which is only conducted following preliminary examination and following a request for examination by the applicant, accompanied by the appropriate fee, within 18 months of the filing date.
2. Determination of Filing Date
  1. It is in the applicant's interest to obtain the earliest possible filing date for the application, because any disclosure, or any other Malaysian patent application lodged, after the applicant's filing or priority date cannot be used to invalidate the newness of the application.
     
  2. (S28, R25) The application will be accorded the date of receipt of the application as the "filing date" provided that the application contains:
    1. the name and address of the applicant
    2. the name and address of the inventor
    3. a description
    4. a claim or claims; and
    5. that at the time of receipt of the application the prescribed fee has been paid. (Note that an additional fee is required for each claim in excess of 10).
  3. The applicant will be advised of any filing date deficiencies and given 3 months to correct them. Should there be any deficiencies, the application will be accorded a filing date of the receipt of acceptable corrections.
     
  4. Upon recordal of a filing date, the Office will forward to the applicant a certificate of filing.
3. Preliminary Examination
  1. (S29) As indicated above, preliminary examination is conducted automatically by the Patent Registration Office if the application is accorded a filing date.
     
  2. (R26) The application will be examined to ensure that it satisfies the formality requirements of the regulations. These are detailed in Regulations 5, 6, 7 (1 ), 8, 9, 11, 18 and 51 and relate principally to non-technical matters such as the correct completion of the Forms, use of correct sized paper, correct margins, and that the documents are suitable for reproduction by printing or microfilming. The applicant will be advised of any deficiencies and given a period of three months within which to correct them.
Substantive Examination and Modified Substantive
  1. (S29A, R27, R27A, R27B) Following preliminary examination an applicant may request substantive examination or, where a foreign patent application for essentially the same invention as that of the Malaysian application has been granted in a prescribed foreign country, he may request modified substantive examination.
     
  2. (R27, R27A and R27B) The request for either substantive or modified substantive examination should be made by the applicant on Form 5 or 5A respectively, together with the prescribed fee, within 18 months from the filing date of the application.
     
  3. [S29A (4)] A substantive examination request must be accompanied by information relating to the results of any search or examination carried out on any corresponding prescribed foreign patent application. Informally, the applicant is encouraged to lodge foreign search and examination results at any time, and also to lodge voluntary amendments which take into account the Malaysian legislation and any foreign search or examination results.
     
  4. [R27A(3)] A modified substantive examination request should be accompanied by a certified copy of any granted prescribed foreign patent for essentially the same invention as that of the Malaysian application. It should also be accompanied by amendments to bring the Malaysian application into substantial conformity (apart from matters of form) with the foreign granted patent.
     
  5. It is important to note that in accordance with Section 29A(8) of the Act this 18 month period within which to file the substantive examination request cannot be extended under Section 82. However, upon a request made by the applicant before the expiration of the  18 month period, the time for requesting examination or providing corresponding foreign search/examination information may be deferred under section 29A(6) of the Act on the ground that:

    1. a corresponding prescribed foreign patent has not been granted or is not available by the expiration of the 18 month period, and/ or
    2. prescribed foreign search and/or examination results are not available by the expiration of the 18 month period.
       
  6. [R27B(2)] The prescribed period of maximum deferment is:

    1. 5 years from the filing date for requesting substantive examination; or modified examination
    2. 5 years from the filing date for providing corresponding foreign search/examination results.
       
    According to subsection 29A(7), no deferment may be sought nor granted for a period greater than the 5 year periods referred to above.
     
  7. (S30, R27C) Under substantive examination the patent/certificate application will be examined with a view to reporting whether or not the application complies with certain requirements of the Patents Act and Regulations. In particular, a prior art search report will be made and the application will be examined for, amongst other things, compliance with the requirements for newness, inventive step, sufficiency of the description and clarity of the claims.
     
  8. The search by the Malaysian examiner will be made of previously published technical literature available to the examiner e.g. Malaysian, United States, Japan, Great Britain, Patent Cooperation Treaty and European patent documents available in the patent Registration Office library. The purpose of the search is to identify any documents published before the filing (priority) date of the application under examination, which may be useful to the examiner in determining newness and/or inventive step of the alleged invention defined by the patent application claims.
     
  9. (S30, R27D) Modified substantive examination to some extent formalizes the above informal practice under substantive examination for the examiner to make use of any search and examination already carried out by a foreign Patent Office on a corresponding foreign patent application. Under modified substantive examination the Malaysian examiner principally reports on the conformity between the Malaysian patent/certificate application and the foreign granted patent and is not required to conduct a prior art search (except in special circumstances) or examine the application for compliance with, for example, the requirements for inventive step, plurality of invention, sufficiency of the description or clarity of the claims.
     
  10. [R27C (4) and (6); R27D(5) and (7)]. Should the Examiner find that the application is not in order for grant following substantive or modified substantive examination, then the applicant will be provided with an adverse report setting out what requirements have not been complied with. The applicant will be given a period of two (2) months within which to respond to the report, either by argument or by amending the application. The application must finally comply with the requirements of the Act and regulations.
GRANT
  1. (S31 to S35) When the application complies with the requirements of the Act and Regulations, the Registrar will grant the patent, or will issue a certificate for the utility innovation in the case of a utility innovation.
     
  2. After grant, any person may obtain a copy of the patent specification from the Patent Registration Office and may also inspect the Register and the patent/certificate application file.
     
  3. A patent or certificate gives the owner thereof the right to exclude all others from using the invention or innovation in Malaysia for a period of 20 years from the date of filing in the case of a patent or 10 years (extendable to 10 + 5 + 5 years subject to use) in the case of a certificate. To keep the patent/ certificate in force the owner is required to pay annual renewal fees.
     

 

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