PCT Applicant's Guide Malaysia EQE - Valid as from 31 Oct 2024

GENERAL INFO
RO
BIO
NATIONAL CHAPTER

Materials for the European Qualifying Examination (EQE)
Special edition as of 31 October 2024, prepared for EQE candidates

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau: pct.guide@wipo.int.

List of abbreviations used in this document:

Office: Intellectual Property Corporation of Malaysia

PA: Patents Act, 1983 (Act 291)

PR: Patents Regulations, 1986

List of currencies used in this document:

CHF (Swiss franc), MYR (Malaysian ringgit)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Article 64(5)
Refer to the full list.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

Malaysia

Two-letter code:

Name of Office:

Intellectual Property Corporation of Malaysia

Location:

Level 5
Menara MyIPO
PJ Sentral, Lot 12
Persiaran Barat
Seksyen 52
46200 Petaling Jaya
Selangor
Malaysia

Mailing address:

Same as above

Telephone:

(603) 7496 8900

E-mail:

pct@myipo.gov.my

Website:

http://www.myipo.gov.my

Facsimile:

(603) 7496 8999

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Yes, by facsimile

Which kinds of documents may be so transmitted?

All kinds of documents

Must the original of the document be furnished in all cases?

No, only upon invitation

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Yes, provided that the delivery service is:

DHL,

Federal Express,

Pos Laju,

UPS

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

IB,

Does national legislation restrict the filing of international applications with foreign Offices?

Patents Act 1983 (Act 291), Section 23A.

Unless written authorization from the Registrar to file abroad has already been obtained or unless an application for the same invention has been filed with the Office not less than two months earlier and either no directions prohibiting or restricting publication have been issued by the Registrar under Section 30A of the Patents Act 1983 (Act 291) or all such directions have been revoked.

Yes, filing restrictions apply to:

Applications by residents

Competent designated (or elected) Office(s) for this State:

Refer to corresponding National Phase.

Types of protection available via the PCT:

Certificates for a utility innovation,

Patents

Availability under the national law for an international-type search (PCT Article 15):

Section 35B of the Patents Act 1983 (Act 291)

Provisional protection after international publication:

After an international application is made available for public inspection, the applicant may in writing warn a person who has commercially or industrially worked the invention that a patent application for the invention has been filed. The applicant may demand from the person who has commercially or industrially worked the invention to pay as compensation to the applicant an amount equivalent to what the applicant would have normally received for the working of the invention from the time of the warning or, in the absence of a warning, from the time the international application has been made available for public inspection to the time of the grant of the patent. However, the right to demand that compensation shall be exercised only after the grant of the patent. Refer to Section 34(5) and (6) of the Patents Act 1983 (Act 291).

Information of interest if this Contracting State is designated (or elected)

Time when the name and address of the inventor must be given:

May be in the request or may be furnished later. If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit of two months from the date of receipt of the invitation.

Are there special provisions concerning the deposit of microorganisms and other biological material?

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

Malaysia

Language in which international applications may be filed:

English

Language accepted for language-dependent free text in the sequence listing:

Same as above

Language in which the request may be filed:

English

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the RO”).

Where the international application contains a sequence listing as a separate part of the description, this must be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

For the relevant notifications by the Office, refer to Official Notices (PCT Gazette) dated 25 September 2014, pages 138 et seq. and 21 July 2022, pages 187 et seq.

Yes, the Office accepts XML and PDF files filed using ePCT-Filing.

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes, the Office applies the “unintentional” criterion to such requests

Competent International Searching Authority:

AU,

EP,

JP,

Competent International Preliminary Examining Authority:

AU,

EP,

The Office is competent only if the international search is or has been carried out by that Office.

Fees payable to the RO:

Transmittal fee:

Electronic filing 550 MYR

Paper filing 550 MYR

— for one to 10 pages:

Paper filing, plus 5 MYR

— for 11 to 20 pages:

Paper filing, plus 10 MYR

— for 21 to 50 pages:

Paper filing, plus 40 MYR

— from 51 pages:

Paper filing, plus 60 MYR

International filing fee:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Equivalent in MYR of 1,330 CHF

Fee per sheet in excess of 30:

Equivalent in MYR of 15 CHF

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

Equivalent in MYR of 200 CHF

Electronic filing (the request, description, claims and abstract in character coded format):

Equivalent in MYR of 300 CHF

Search fee:

Refer to
Annex D(AU)
Annex D(EP)
Annex D(JP)
Annex D(KR)

Fee for priority document (PCT Rule 17.1(b)):

— for the first 10 pages:

550 MYR

— for each additional page:

per page, plus 7 MYR

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

150 MYR

Is an agent required by the receiving Office?

No, if the applicant resides in Malaysia
Yes, if the applicant is a non-resident

Who can act as agent?

Any patent agent registered before the Office

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Particular instances in which a separate power of attorney is required:

Not applicable

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Particular instances in which a copy of a general power of attorney is required:

Not applicable

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf (and the detailed requirements for each institution at: https://www.wipo.int/budapest/en/guide/section_d/subsection_c.html)

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

Where applicant requests publication earlier than 16 months from the priority date, not later than that request

— any additional indications:

At the time of filing (in the description)

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

Relevant information on the characteristics of the microorganism.

If the depositor is not the applicant, an authorization letter from the depositor must accompany the application at the time of filing or within 16 months from the priority date, or, where the applicant requests publication earlier than 16 months from the priority date, not later than that request

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(1): 30 months from the priority date
Under PCT Article 39(1)(a): 30 months from the priority date

Translation of international application required into (one of) the following language(s):

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

English

Required contents of the translation for entry into the national phase:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

Where the applicant furnishes a translation of the international application only as amended or only as originally filed, the Office will invite the applicant to furnish the missing translation.

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract

Under PCT Article 39(1): Description, claims, any text matter of drawings, abstract (if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary examination report)

Is a copy of the international application required in particular circumstances?

Yes, a copy is required only if the Office has not received a copy of the international application from the International Bureau under PCT Article 20. This may be the case where the applicant expressly requests an earlier start of the national phase under PCT Article 23(2) or 40(2).

National fees (Electronic or Paper Filing):

Filing fee

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

290 MYR

Claims fee for every additional claim exceeding the first ten claims for patent application or international application entering national phase

— from the 11^th to the 20^th claim, per claim

20 MYR

— from the 21^st to the 30^th claim, per claim

30 MYR

— from the 31^st to the 40^th claim, per claim

40 MYR

— for each claim in excess of 40

50 MYR

Exemptions, reductions or refunds of fees:

None

Special requirements of the Office (PCT Rule 51bis):

Name and address of the inventor if they have not been furnished in the “Request” part of the international application

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit of two months from the date of receipt of the invitation.

Statement justifying the applicant’s right to the patent where the applicant is not the inventor

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Evidence of entitlement to claim priority where the applicant is not the applicant who filed the earlier application

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306)

Appointment of an agent if the applicant is not resident in Malaysia

Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in electronic form

Who can act as agent?

Any patent agent registered before the Office

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies the “unintentional” criterion to such requests

The procedure in the national Phase

MY.01 FORM FOR ENTERING THE NATIONAL PHASE

PR 25A
The Office has available a special form for entering the national phase (refer to Annex MY.II). This form should preferably be used.

MY.02 TRANSLATION (CORRECTION)

Errors in the translation of the international application can be corrected with reference to the text of the international application as originally filed (refer to National Phase, paragraphs 6.002 and 6.003).

MY.03 FEES (MANNER OF PAYMENT)

The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex MY.I.

MY.04 APPOINTMENT OF AGENT

PA 86(5), PR 45B(2)
If the applicant is not resident in Malaysia, an agent shall be appointed by submitting to the Registrar a special form (refer to Annex MY.III), signed by the applicant. Any patent agent registered before the Office may act as agent.

MY.05 INVENTOR

PR 10(2)
If the applicant is not the inventor, the request must be accompanied by a statement naming the inventor and justifying the applicant’s right to the patent (refer to Annex MY.IV)

MY.06 ANNUAL FEES

PA 35(2), PR 33
Annual fees are payable for the second and each subsequent year following the date of grant of the patent. The fees must be paid twelve months before the date of expiration of the second and each succeeding year during the term of the patent. Payment of annual fees may still be made within six months from the due date, subject to the payment of a surcharge. The amounts of the annual fees are indicated in Annex MY.I.

MY.07 REQUEST FOR EXAMINATION

PA 29A, PR 27, PR 27A, PR 27B, PR 27C, PR 27D
Requests for examination or modified examination must be made on special forms (refer to Annexes MY.V and MY.VI) provided by the Office, together with the payment of the prescribed fees within four years from the filing date of the international application. Requests for modified examination must be accompanied by a certified copy of the granted patent in English; patents in Japanese or Korean must be accompanied by a certified translation into English.

MY.08 AMENDMENT OF THE APPLICATION; TIME LIMITS

PCT Art. 28, PCT Art. 41, PA 26A, PR 46
The applicant may, at any time before the patent is granted, make amendments to his application, with the payment of the prescribed fee, provided that the amendment does not go beyond the disclosure in the initial application.

MY.09 REVIEW UNDER ARTICLE 25 OF THE PCT

PCT Art. 25, PCT Rule 51
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. Where an international application is considered withdrawn, the applicant may request reconsideration by the Office.

MY.10 EXCUSE OF DELAYS IN MEETING TIME LIMITS

PCT Art. 24(2), PCT Art. 48(2), PCT Rule 49.6, PCT Rule 82bis
Reference is made to paragraphs 6.022 to 6.027 of the National Phase.

MY.11 REINSTATEMENT OF RIGHTS

Reinstatement of rights may be requested where the applicant unintentionally failed to observe a time limit set by the Office, which is prejudicial to his rights. A request for reinstatement must be presented in writing within two months from the removal of the cause of the failure to observe the time limit or twelve months from the date of expiration of the applicable time limit, whichever time limit expires earlier. Within the said two months, the omitted action must be completed and the fee for reinstatement of rights (refer to Annex MY.I) must be paid.

MY.12 CONVERSION

PA 17B, PR 33C
The applicant may convert an application for a patent into an application for a certificate for a utility innovation by filing a request to that effect and paying the prescribed fee within three months from the date of the examination report. The converted application shall have the filing date of the initial application.

Annexes

Annex MY.I - Fees

Patents (Electronic or paper filing)

Filing fee

290 MYR

Claims fee for every additional claim exceeding the first ten claims for patent application or international application entering national phase

— from the 11^th to the 20^th claim, per claim

20 MYR

— from the 21^st to the 30^th claim, per claim

30 MYR

— from the 31^st to the 40^th claim, per claim

40 MYR

— for each claim in excess of 40

50 MYR

Request for examination

1,100 MYR

Request for modified examination

640 MYR

Fee for amendment of the application

150 MYR

Reinstatement fee (per month of delay):

800 MYR

Annual fees:

— for the 2^nd year

290 MYR

— for the 3^rd year

360 MYR

— for the 4^th year

440 MYR

— for the 5^th year

530 MYR

— for the 6^th year

630 MYR

— for the 7^th year

730 MYR

— for the 8^th year

830 MYR

— for the 9^th year

910 MYR

— for the 10^th year

990 MYR

— for the 11^th year

1,020 MYR

— for the 12^th year

1,140 MYR

— for the 13^th year

1,280 MYR

— for the 14^th year

1,450 MYR

— for the 15^th year

1,550 MYR

— for the 16^th year

1,900 MYR

— for the 17^th year

2,100 MYR

— for the 18^th year

2,400 MYR

— for the 19^th year

2,700 MYR

— for the 20^th year

2,900 MYR

Surcharge for late payment of annual fee

100% of fee for year concerned

Fee for restoration of the right of priority

150 MYR

Fee for conversion

290 MYR

Patents (Paper Filing only)

Handling fee for document:

— from 1 to 10 pages

plus 5 MYR

— from 11 to 20 pages

plus 10 MYR

— from 21 to 50 pages

plus 40 MYR

— for each page in excess of 50

plus 60 MYR

Handling of physical computer storage device, per device

plus 50 MYR

How can payment of fees be effected?

The payment of the fees has to be effected in Malaysian Ringgit. All payments must indicate the application number (national, if already known; international, if the national application number is not yet known), the name of the applicant and the category of fee being paid

Payment may be effected to the Office by cheque, postal order, bank draft, local order, credit card or debit card