Patents Act Amendment - Changes to Patent Procedures
29 March 2022
With the coming into force of the amendments to the patent laws on 18 March 2022, this note gives a snapshot of a number of salient changes to patent prosecution procedures.
- 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 11th to 20th claim (each) RM20
for 21st to 30th claim (each) RM30
for 31st to 40th claim (each) RM40
for 41st claim onwards (each) RM50
Please contact our partner, Charmayne Ong
), or Patent Manager, Yap Tai Lan (email@example.com
) if you have any queries.
This alert contains general information only. It does not constitute legal advice nor an expression of legal opinion and should not be relied upon as such. For further information, kindly contact firstname.lastname@example.org.