A patent is an exclusive rights granted to an inventor by the federal government that permits the inventor to exclude others from making, selling or using the invention for a limited period of time.
A utility innovation is an exclusive rights granted for a minor invention that is new and industrially applicable to exclude others from making, selling or using the invention for a limited time. A utility innovation is not required to satisfy the requirement of inventiveness. In practice, protection for utility innovations is typically sought for innovations of an incremental nature that might not satisfy the criterion for patents.
Unlike a regular patent, whereby the application for more than one claim can be made, only one (1) claim is allowed for filing a utility innovation. A utility innovation is protected for a period of ten (10) years, and can be further renewed for another two (2) periods of five (5) years each from the filing date.
An invention means an idea of an inventor that permits in practice the solution to a specific
problem in technology.
Simply means that an invention is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.
A patent can provide you with an exclusive rights over the invention, and a competitive advantage as you will be the only person allowed to make, use, sell or import your invention before the expiry of the patent duration. If the inventor does not obtain patent rights for his invention and introduces his product or process based on his invention in the market, anybody can easily copy his invention and exploit it commercially.
Alternatively, a patent can provide an income or commercial profits if you license or sell the rights to make, use, sell or import your invention.
Further, consumers are often impressed by 'Patented Technology', so patenting can positively play in your business plan or marketing strategy.
Take note that inventions consisting of any of the following are not patentable: -
a. Discoveries, scientific theories and mathematical methods
b. Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes
c. Schemes, rules or methods for doing business, performing purely mental acts or playing games
d. Methods for the treatment of a human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body
Your invention should satisfy all the following requirements to be granted a patent registration: -
a. New, which means that the invention has not been publicly disclosed in any form, anywhere in the world;
b. Involve an inventive step, that is to say, the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and
c. Industrially applicable, meaning it can be mass-produced and used in any industry.
Explain your invention to us, and we have patent agent with technical expertise in helping you to draft a patent specification (i.e., title of invention, abstract, description of the invention, claims and drawings (if any).) for filing a patent application for your invention.
It would be advisable to perform a patent novelty search first to determine whether your invention is new in view of the prior arts available throughout the world. Our professional patent agents can assist you in studying your invention and help you with the search as it is essential to understand the criteria governing the determination of novelty, inventiveness and industrial applicability, as well as to verify that your invention does not fall into any category of the non-patentable invention prior to filing a patent application.
Once the novelty search is cleared and identified that your invention is likely to be patentable, we will proceed with the drafting of patent specification based on your invention. We will review the draft patent specification with you thoroughly to ensure the features in your invention that you wish to protect are not left out and the disclosures are well drafted. Once you are satisfied with the patent specification, we will file it with the Malaysian Patent Registration Office.
The patent application will then be examined for compliance with requirements under the Patents Act 1983,known as preliminary or formalities examination, followed by substantive examination for novelty, inventiveness and industrial applicability before being granted or refused on the grounds of the criteria being examined. Usually, the patent examiner will issue an adverse report should any objection arise from each of the examinations, and we will file appropriate arguments against the objections or file amendments to the application accordingly to meet the requirements. Once the patent examiner is satisfied that your patent application meets all the legal requirements, your invention will be granted a patent.
For Paris Convention / Direct Route: -
a)Patent specification including description, claims, abstract and drawings (ifany) in English (We are able to assist in drafting the patent specificationsailable);
b) full details of the applicant (s) and inventor(s) including names, addresses and nationalities;
c) priority details including Application No., filing date and country (If priority is to be claimed from a priority application);
d) the duly signed Patents Form 17 – Appointment of Agent (Only simple signature needed, notarisation or legalisation not required); and
e) information on how the applicant (s) derives its right to the patent from the inventor(s) if the applicant (s) is not the inventor(s) (generally by virtue of assignment or employment).
For entering of national phase via PCT route, please also provide: -
a) International Application Number;
b) International Application Request Form (PCT/RO/101) and its English translation if it is not in English; and
c) International Search Report or International Preliminary Examination Report, if available.
You must file a patent application within twelve (12) months from the priority date if apriority is to be claimed from a priority application via Paris Convention route; while an application to enter national phase should be filed within thirty (30) months from the priority date of the international application via PCT route.
You should keep your invention to yourself until your patent application has been filed as one of the legal requirements for an invention to be patentable is that your invention must not be publicly disclosed in any form prior to filing a patent application.
However, Section 14 (3) of the Malaysian Patents Act 1983 stipulates that a twelve-month grace period preceding the filing date of the Malaysian patent application is available to a patent applicant in respect of disclosures that are by reason or in consequence of: -
(a) acts committed by the applicant or his predecessor in title, or
(b) any abuse of rights of the applicant or his predecessor in title.
The estimated time frame for the patent examiner to examine a patent application is approximately three (3) to five (5) years.
A request for substantive examination or modified substantive examination should be filed within eighteen (18) months from the filing date if the application was filed under Paris Convention or Direct route; while within four (4) years from the international filing date for PCT route.
A request for deferment of substantive examination or modified substantive examination can be filed and the maximum duration allowed to file the request will be deferred to five (5) years from national or international filing date upon the Registrar’s approval. The application shall be deemed withdrawn if the request for substantive examination is not made with prescribed fees within the said period.
Unfortunately, no. Patent rights are territorial in nature. Currently, there is no world or international patent.
However, it is possible to file an international application under the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO). Although a PCT application does not automatically lead to worldwide patent protection, it makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
The cost of filing is lower, the decision on which countries to apply to can be delayed, an international search report will be issued and, if required, an international examination report may be requested. The results of the search or examination report can help you decide whether or not to proceed with the application in particular countries, thus avoiding further cost and delay in entering into a specific market.
You as the owner of a granted patent may commence infringement proceeding against the infringer and the Court may award damages and may grant an injunction to prevent further infringement as well as any other legal remedies as the Court deems fit.
A patent requires careful drafting, orderly application process and thorough examinations before it is granted. You would need a patent agent with expertise and skill in preparing patent specifications and knowledge on the whole prosecution procedures, as well as an in-depth scientific and technical background in the particular field of invention.
Furthermore, the language used in writing patent claims differs from the language you use when describing your invention, and the patent specification must strictly comply with Malaysian Patents Act 1983 and Patents Regulations 1986. The wording of your patent claims will later be used to determine whether someone is infringing your patent as well as the scope of the patent protection.
Given the complexity in preparing the patent specifications and handling the application process, we recommend (though not compulsory) to acquire legal assistance from a patent attorney with specific legal and technical skills to prepare and obtain a patent for your invention.
We can assist you in all aspects of patent protection and enforcement. Feel free to contact a member of our team or contact us at general@chphoonlaw.com.my should you have any questions.