FIRST WAVES OF IP REFORM JURISDICTION REPORT: MALAYSIA
Dave A. Wyatt and Lim Eng Leong Henry Goh & Co Sdn Bhd
Aſter much anticipation, the first waves of IP law reform finally reached Malaysia on February 15, 2011, when amendments to the Trade Marks and Patents Regulations came into force.
Official fees
One notable change is a significant increase in official fees across the board by about 30 to 60 percent. Tis is the first fee increase in more than 13 years for trademarks and 15 years for patents. We trust that the extra funds will help to expand the workforce and productivity of the Malaysian Intellectual Property Office (MyIPO), and so benefit IP owners. Having said that, the fee changes for patents include the unwelcome introduction of additional official fees when filing a new application. Tis change serves only to add to the administrative burden on both agents and MyIPO, and so is contrary to the overall theme of the other rule changes: streamlining procedures and shortening prosecution timeframes.
Expedited examination
Tere are now formal provisions for requesting expedited examination of both trademarks and patents. For trademarks, a request has to be filed within four months of the initial application date, whereas for patents, there is no time limit, provided the application has already been laid open to public inspection and a request for examination has been submitted. In either case, justification for the expedited examination is required in the form of a Statutory Declaration. A non-refundable official fee is also payable. Te grounds on which expedited examination may be considered are:
• National or public interest • Evidence of potential infringement or ongoing infringement proceedings • Registration is a condition for obtaining monetary grants from the government or institutions recognised by the registrar, or • Other reasonable grounds.
Te above grounds are common for both trademarks and patents. For patents, two additional grounds are available:
• The invention has already been commercialised or the applicant intends to do so within two years of requesting expedition, or
• The invention relates to green technologies that will enhance the quality of the environment or conservation of energy sources.
Upon approval of the request by MyIPO, the applicant must pay another substantial official fee for the expedited examination.
For trademarks, it must be noted that the process expedited is the examination of the mark, not its registration. Te mark is still subject to acceptance, and open to opposition and final registration. Moreover, the new process is only expected to be of value if there are minimal objections or
52 World Intellectual Property Review March/April 2011
none at all, since the real backlogs in trademarks relate to those applications where an objection has been maintained and a hearing is necessary.
For patents, the applicant can expect an office action within four weeks of paying the expedition fee. A term of three weeks is given to respond and no extension of time will be allowed. In view of the considerable expense, we do not envisage expedited examination being used frequently. Tere is no indication from MyIPO that, apart from the tighter timeframes, the examination will be conducted any differently from normal. Substantive examination of patents in Malaysia relies heavily on prosecution results from counterpart foreign applications. As such, using the existing modified examination option based on a granted foreign patent may be a more cost- effective route to early grant for many applicants.
e-filing
In keeping with the digital age, MyIPO has put in place an online system to allow certain transactions to take place electronically. As an incentive, official fees payable for e-filing are given a token discount. Te system is totally new and most agents have concerns about its reliability and capability, so there may be a lengthy transition period before the majority of applications are filed and prosecuted electronically. Nevertheless, the first steps have been taken.
Other changes
Other changes affecting the prosecution of trademark applications, include a new official fee that is payable when an applicant requests an ex-parte hearing to prosecute his trademark application further when the registrar maintains any objection(s) previously raised. It is our sincere hope that with such fees imposed, hearing dates will be fixed speedily so that deserving trademark applications can proceed to registration.
For patents, the term for requesting examination of a direct (non-PCT) application has been reduced to 18 months from the filing date. MyIPO has advised that the previous two-year term can still be relied on for applications filed prior to February 15, 2011. Te term for requesting examination of a PCT national phase application remains four years from the international filing date.
We see the new regulations as a hopeful indication of prospective amendments to the Patents and Trademarks Acts later this year. Te next wave of IP reform is expected to be in the copyright arena, with a Copyright Bill due to be tabled in parliament in March 2011.
Dave A. Wyatt is executive director and head of the patents department at Henry Goh & Co Sdn Bhd. He can be contacted at:
dave@henrygoh.com
Lim Eng Leong is in-house legal counsel at Henry Goh & Co Sdn Bhd. He can be contacted at:
engleong@henrygoh.com
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76