Patents Act Amendment - Changes to Patent Procedures

29 March 2022

• The option of filing a request for deferment is no longer available for normal Substantive Examination.  A deferment may only be filed for Modified Substantive Examination. This means that an applicant may no longer “extend” the term for filing a request for Substantive Examination. 
• The period to respond to an Examiner’s Report is now 3 months instead of the previous 2 months from the mailing date of the Examiner’s Report. 
• Third party observation on the patentability of a patent application is now possible.
• Payment of a lump sum for renewal fees is now available (maximum of 5 years).
• The word “resident” is now legally defined under the Act and this will be particularly relevant when an application for a foreign filing licence/waiver is required to allow the owner of the invention to first file outside Malaysia.  
• There is a new official fee claim structure as shown below Claims exceeding first 10 claims
  for 11^th to 20^th claim (each)     RM20
  for 21^st to 30^th claim (each)     RM30
  for 31^st to 40^th claim (each)     RM40
  for 41^st claim onwards (each) RM50