Waiver of Late Payment Surcharge for Annual Fee for Patent or Certificate for Utility Innovation
14 January 2021
In the exercise of powers conferred by paragraph 87(2)(e) of the Patents Act 1983, the Minister of Domestic Trade and Consumer Affairs has issued the Patents (Waiver of Fee) Regulations 2020
”) which came into effect on 1 January 2021.
The Regulations provide for a waiver of the surcharge for the late payment of annual fees under Item 18 of Part II, Schedule I of the Patents Regulations 1986. The waiver is only available to an owner of a patent or certificate for a utility innovation who has been affected by the control or prevention measures taken by the Malaysian Government to curb the spread of Covid-19 in Malaysia under the Prevention and Control of Infectious Diseases Act 1988.
The waiver under the Regulations only applies if the following criteria are fulfilled:
- the term of the patent or certificate for a utility innovation expires between 1 January 2021 to 30 June 2021; and
- an application for waiver of the surcharge is filed with the Registrar together with the prescribed payment of the annual fee for the year concerned within six months from the relevant expiry date of the patent or the certificate for the utility innovation, as the case may be.
The application for the waiver must be accompanied by supporting documents to prove that:
- if the owner is an individual:
- he is from the B40 group who receives Bantuan Sara Hidup or Bantuan Prihatin Nasional; or
- he has lost his job and income, or his income has been affected by the control or prevention measures (i.e. measures taken to curb the spread of Covid-19 under the Prevention and Control of Infectious Disease Act 1988).
- if the owner is a body, whether corporate or unincorporated:
- it had obtained approval for the extension of moratorium or any flexibility for repayment from any financial institution; or
- it has experienced cash flow problems due to the control or prevention measures (i.e. measures taken to curb the spread of Covid-19 under the Prevention and Control of Infectious Disease Act 1988); or
- it has pecuniary indebtedness and has problems on repayment of debt due to the control or prevention measures.
If there is more than one owner, it is sufficient if one of the owners fulfils any of the criteria mentioned in paragraphs (1) or (2) above.
Alert by Charmayne Ong (Partner) of the Intellectual Property Practice of Skrine.