The Patents (Amendment) Bill 2021 (‘the Bill’) was passed by the Dewan Rakyat (House of Representatives) on 15 December 2021 and the Dewan Negara (Senate) on 22 December 2021. The Bill will be submitted to the Yang di-Pertuan Agong for Royal Assent. The Bill will come into operation on a date to be determined by notification in the Gazette by the Minister of Domestic Trade and Consumer Affairs (‘Minister’) after being gazetted.
 
The Bill takes into account Malaysia’s commitments in various international treaties and agreements including, among others, the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (‘Budapest Treaty’).
 
The key amendments, among others, to be made to the Patents Act 1983 (‘the Act’) under the Bill are as follows:
 
Definition of “resident”
 
Clause 3(e) of the Bill introduces the definition of “resident” as including a citizen of Malaysia who is residing in Malaysia; a non-citizen of Malaysia who has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia; or is residing in Malaysia by virtue of a valid pass lawfully issued to him under the Immigration Act 1959/63; or a body corporate incorporated or an unincorporated body, established or registered under the laws of Malaysia. Therefore, the requirement for residents to first apply for a patent application in Malaysia under section 23A of the Act would include all persons who fall within the new definition of “resident”.
 
Revisions to Timeframes: judicial assignment, infringement proceeding and reinstatement of lapsed patent
 
Clause 8 of the Bill will amend the limitation period for commencing an application for the judicial assignment of a patent application or patent under section 19 of the Act from five years to six years.
 
Clause 49 of the Bill seeks to amend the limitation period for commencing court proceedings for patent infringement under subsection 59(3) of the Act from five years to six years.
 
On the other hand, clause 29 of the Bill will amend subsection 35A(1) of the Act to reduce the timeframe for reinstatement of a lapsed patent from two years to twelve months from the date the notice of lapsing of a patent is published in the Intellectual Property Official Journal.
 
Additional Fees for Patent Application
 
Section 28 of the Act will be amended by clause 16 of the Bill to impose additional prescribed fees for a patent application that contains more than ten claims.
 
Compliance with Article 31bis of TRIPS on compulsory licensing
 
Clauses 35, 36, 37, 38, 39, 41 and 62 seek to amend sections 48, 49, 50, 51, 52, 53 and 84 respectively of the Act to comply with the obligation under Article 31bis of the TRIPS Agreement to allow the grant of a compulsory licence for the production, importation and exportation of pharmaceutical products.
 
Recognition of patents as security interest, personal or movable property
 
Clause 30(a)(ii) of the Bill will introduce a new paragraph (1)(d) into section 36 of the Act to allow a patent to be dealt with as a security interest.
 
Section 39 of the Act will be amended by clause 33 of the Bill to provide that a patent is recognised in the same way as other personal or moveable property that may be the subject of security interest and to allow security interest transactions to be recorded in the Register.
 
Power of Registrar to grant compulsory licence notwithstanding contractual obligations
 
Clause 40 of the Bill seeks to introduce a new section 52A into the Act that permits the Registrar of Patents (‘Registrar’) to grant a compulsory licence notwithstanding an exclusive licence contract has been entered into between the licensor and a licensee. The new provision will also provide for the protection of the licensor from any action for breach of contract by the licensee resulting from the granting of the compulsory licence by the Registrar.
 
Opposition and Invalidation Proceedings
 
Clause 45 of the Bill introduces a new section 55A into the Act creating a post-grant opposition procedure before the Registrar. Any interested person may, within the prescribed period from the date of publication of the grant of patent, commence opposition proceedings by filing a notice of opposition against the owner of a patent to the Registrar in the prescribed manner on any of the grounds specified in paragraph 56(2)(a), (b) or (c) of the Act.
 
A new section 56A will be added to the Act pursuant to clause 47 of the Bill to clarify matters relating to the institution of invalidation proceedings in Court under section 56 of the Act in a situation when opposition proceedings before the Registrar under section 55A of the Act is pending. In the circumstance, the interested person is precluded from instituting any Court proceedings against the patent owner for invalidation under section 56 unless both parties to the opposition proceedings agree that the invalidation proceedings be instituted before the Court or if the interested person is a defendant in an infringement proceedings.
 
Compliance with Budapest Treaty
 
The Budapest Treaty is a treaty that provides that the deposit of the microorganisms with any International Depositary Authority is sufficient for purposes of the patent procedure before the national patent offices of all contracting states. Therefore, this would eliminate the need to deposit the microorganism in each country where protection is being sought.
 
Clauses 14 and 55 of the Bill will introduce a new section 26C and subsection 78O(1A) into the Act to give effect to the Budapest Treaty.
 
Comments
 
The amendments under the Bill are mainly to comply with Malaysia’s obligations under the respective treaties to which Malaysia is a signatory. The amendments further provide for new opposition procedures, previously not present in the Act and for protection of the licensor against the licensee for any breaches of contractual obligations resulting from the grant of a compulsory licence by the Registrar. In addition, patents are now expressly recognised in the same way as other personal or moveable property that may be the subject of security interest.
 
Article by Alyshea Low Khye Lyn (Senior Associate) of the Intellectual Property Practice of Skrine.