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Patent | Malaysia

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Patent

Summary Application Procedure Filing Requirements Charges Documents Required

In Malaysia, patent protection is obtainable by way of either entering the national phase of a Patent Cooperation Treaty (PCT) application or filing a direct national application.

1. Legislations:
Patents Act 1983 (Act 291).

2. Patentability Criteria:
A patent has to fulfill the following conditions in order to claim protection.

  • it is new
  • it involves an inventive step
  • it is industrially applicable
Non-Patentable Subject Matter:
An invention is not patentable if it contains the following:
  • discoveries, scientific theories and mathematical methods,
  • plant or animal varieties or essentially biological processes for the production of plant or animals,
  • schemes, rules or methods for doing business, performing mental acts, and
  • methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.


3. Utility Innovations:
The Malaysian patent system also provides for the grant of utility innovation certificates. A utility innovation must fulfill the criteria of novelty and industrial applicability (but not inventiveness). A utility innovation certificate may only have one claim and subject to evidence of commercial/industrial use in Malaysia, enjoys the same duration of protection like a patent.

4. Membership:
√ – Paris Convention
√ – PCT

Malaysia is a member of the Paris Convention since 1989, whereby applications from convention countries will be subject to the same priority date in Malaysia. The application for priority has to be made within six months of the first application in a convention country.

Malaysia is also a member of the PCT since 2006. An applicant who has made an international patent application may file and/or prosecute the patent application during its national phase entry into Malaysia within 30 months from the filing date of the international application or from the earliest priority date of the application if a priority is claimed.

5. Rule of Priority:
Unless requested by an Examiner, there is no requirement to file a certified copy of any priority application. “First to Apply” is the rule followed by Malaysia in determining priority of patents.

6. Duration:
For patent filed prior to 1st August 2001, the duration of protection is 15 years from the date of grant or 20 years calculated from the filing date, whichever expires later. For patents filed on or after 1st August 2001, the duration is 20 years calculated from the filing date (for a direct national application) and from the international filing date (for a PCT national phase application)

1. Filing of Patent Application
Every applicant is required to submit an application to the registrar of patents 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 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 18months (for filing made before 15 February 2011, it was 24months) from the patent filing date (for a non-PCT patent filing into Malaysia) 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
A patent once registered is valid for a term of 20 years and will be subject to protection subject to payment of annual renewal fees. Annuity is payable upon grant.

The following information and/or documents are required to file an application for a patent in Malaysia:-

Direct National Application:-
1. Request for the grant of a patent (PF 1):-
a) the name and address of the applicant;
b) the name and address of the inventor;
c) a specification comprising a description, claims and any necessary drawings; and
d) the country and filing particulars of basic application whose priority is claimed.
2. Appointment of Patent Agent (PF 10)
3. If the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.
4. There is no requirement for the filing of an assignment from inventor to applicant.

PCT National Phase Application
1. Form 2A ;
2. a copy of the PCT application in English language ( i.e. request form PCT/RO/101);
3. the details of the PCT application (suitably, the bibliographic page as published by WIPO);
4. one copy of the PCT specification as originally filed (in or translated to English);
5. one copy of any amendments filed in the international phase (in or translated to English);
6. an Appointment of Agent form signed by the applicant; and
7. if the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.

Application Fees

Items Official Fees (USD) Professional Fees (USD)
1. Filing Patent Application
- Each claim in excess of 10 claims - USD 7
150 270
2. Examination 370 240 Due 18 months from the date of filing.
3. Issuance Fee 50 100


Maintenance Fees
Items Official Fees (USD) Professional Fees (USD)
2nd annuity 100 140
3rd annuity 120 140
4th annuity 140 140
5th annuity 170 140
6th annuity 190 140
7th annuity 220 140
8th annuity 230 140
9th annuity 260 140
10th annuity 280 140
11th annuity 300 170
12th annuity 320 170
13th annuity 370 170
14th annuity 420 170
15th annuity 450 170
16th annuity 560 190
17th annuity 640 190
18th annuity 740 190
19th annuity 840 190
20th annuity 900 190

Basic Requirements

Documents Remarks Time of Filing
Patent specification, claims and abstract in English no legalization requirement On filing date
Drawings (if any) On filing date


Additional Documents for Convention Patent Application
Documents Remarks Time of Filing
Priority documents Certified copy of the basic patent application Within 2 months from request by the Examiner
Appointment of Agent (PF10) Within 2 months from request by the Examiner


Additional Documents for Entry of PCT National Phase in Malaysia
Documents Time of Filing
International Preliminary Report on Patentability based on International Preliminary Search Report (Chapter 1); or On filing date
International Preliminary Report on Patentability based on International Preliminary Examination Report (Chapter II) On filing date

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