Patent FAQs

A patent is an award granted by the government to give the patent owner certain exclusive rights in relation to his/her invention for a limited period of time in order to publicise said invention.

A Utility Innovation is an award granted by the government to give the innovator certain exclusive rights for a minor invention or any new improvement of a known product or process which does not require satisfying the test of inventiveness as required of a patent.

A Patent is a commercial tool and a valuable asset due to the rights it gives the patent owner to monopolize the patented invention for a certain duration. Hence, if your invention has market potential, you may need a Patent protection to prevent third parties from using your invention without your authorization. Apart from this preventive action, a patent also attracts business opportunities and potential investors.

You should apply for a patent registration before you disclose your invention to the public as the disclosure could deprive the novelty of your invention

An invention is patentable if it is new, involves an inventive step and is industrially applicable.

Under Section 13(1) of the Patents Act 1983, non-patentable inventions include:

• discoveries, scientific theories, mathematical formulas or methods;
• plant or animal varieties or essentially biological processes for the production of plants and animals;
• schemes, rules or methods for doing business, mental acts or playing games;
• methods of treatment of human or animal body by surgery or therapy and diagnostic methods;
• computer programs;
• presentation of information.

A registered patent owner has the exclusive rights to exclude others from making his/her product. It also confers the right to institute legal action against anyone who is exploiting or selling his/her patented invention. A registered patent owner is also at liberty to assign or transmit the patent and to conclude license contracts. Above all else, it gives you priority over other parties wanting to register their patents in Malaysia.

Patent

Currently, a patent granted on application filed after 1 August 2001 is protected for a term of 20 years from the date of filing subject to payment of renewal fee. However, a patent granted on application filed before 1 August 2001 is protected for 15 years from the date of grant, subject to the payment of renewal fees.

Utility Innovation

The initial term of protection for Utility Innovation applications filed after 1 August 2001 is 10 years from the filing date and is renewable for a further two consecutive terms of 5 years each upon proof of its commercial and industrial use in Malaysia, or satisfying the explanation of its non-use.

Once your patent has expired or lapsed for non-payment of the renewal fee, anyone may freely make, use or sell your invention.

No, registration in Malaysia only gives protection in Malaysia because patent protections are territorial in nature. A separate patent application must be filed in the country in which you intend to seek protection within 12 months from the filing date for the first application in Malaysia under the Paris Convention; or 30 months from the first filing date under the Patent Cooperation Treaty (PCT).

No, but you can file your patent application (international phase) through the route called the ‘Patent Cooperation Treaty (PCT)’. Thereafter, you need to file your patent application in each country of interest. That application (national phase) should be filed within 30 months from the priority date.

PCT stands for Patent Cooperation Treaty. It provides a unified procedure for filing a patent application internationally, whereby a single ‘international’ application phase is recognized by all of the contracting countries of the PCT. However, the PCT does not lead to the grant of a patent and national phase application needs to be done in all countries of interest.

Yes, Malaysia became the 131st contracting state of the PCT and the PCT International Application can now be filed at MyIPO effective from 16 August 2006.

The court may award damages or account of profits and/or grant an injunction to prevent further infringement.

An infringement occurs when a person other than the patent owner produces a product or uses a process, which falls within the scope of protection of the patent, without his/her license or consent.