A patent is an award granted by the government to give the patent owner certain exclusive rights in relation to his/her invention for a limited period of time in order to publicise said invention.
What is a Utility Innovation?
A Utility Innovation is an award granted by the government to give the innovator certain exclusive rights for a minor invention or any new improvement of a known product or process which does not require satisfying the test of inventiveness as required of a patent.
Why do I need a patent registration?
A Patent is a commercial tool and a valuable asset due to the rights it gives the patent owner to monopolize the patented invention for a certain duration. Hence, if your invention has market potential, you may need a Patent protection to prevent third parties from using your invention without your authorization. Apart from this preventive action, a patent also attracts business opportunities and potential investors.
When should I apply for a patent?
You should apply for a patent registration before you disclose your invention to the public as the disclosure could deprive your invention of novelty.
Can I discuss the details of my invention with a potential investor before filing my patent application?
Generally, an invention which is made available to the public anywhere in the world by written or oral disclosure before a patent application is filed would be considered as prior art. As a result, it would prevent the inventor from obtaining a valid patent for that invention as such invention would no longer comply with the ‘novelty’ requirement. Hence, it is always important to file your invention for a patent application before disclosing the details of the invention. However, if it is inevitable to disclose your invention to a potential investor or a business partner before filing the application, such a disclosure should be accompanied by a confidentiality agreement.
What are the basic requirements for an invention to be patentable?
An invention is patentable if it is new, involves an inventive step and is industrially applicable.
What kinds of inventions cannot be patented?
Under Section 13(1) of the Patents Act 1983, non-patentable inventions include:
discoveries, scientific theories, mathematical formulas or methods;
plant or animal varieties or essentially biological processes for the production of plants and animals;
schemes, rules or methods for doing business, mental acts or playing games;
methods of treatment of human or animal body by surgery or therapy and diagnostic methods;
presentation of information.
What are the rights of a registered Patent Owner?
A registered patent owner has the exclusive rights to exclude others from making his/her product. It also confers the right to institute legal action against anyone who is exploiting or selling his/her patented invention. A registered patent owner is also at liberty to assign or transmit the patent and to conclude license contracts. Above all else, it gives you priority over other parties wanting to register their patents in Malaysia.
Is it advisable to conduct a patent search prior to my application?
Yes, you are strongly advised to do so in order to determine if your invention or similar inventions have been patented or is a subject application by other proprietors.
How long is the term of protection for a granted Patent and Utility Innovation in Malaysia?
Currently, a patent granted on application filed after 1 August 2001 is protected for a term of 20 years from the date of filing subject to payment of renewal fee. However, a patent granted on application filed before 1 August 2001 is protected for 15 years from the date of grant, subject to the payment of renewal fees.
The initial term of protection for Utility Innovation applications filed after 1 August 2001 is 10 years from the filing date and is renewable for a further two consecutive terms of 5 years each upon proof of its commercial and industrial use in Malaysia, or satisfying the explanation of its non-use.
What happens after a Patent or Utility Innovation expires?
Once your patent has expired or lapsed for non-payment of the renewal fee, anyone may freely make, use or sell your invention.
Can a Patent protection in Malaysia be extended to other foreign countries?
No, registration in Malaysia only gives protection in Malaysia because patent protections are territorial in nature. A separate patent application must be filed in the country in which you intend to seek protection within 12 months from the filing date for the first application in Malaysia under the Paris Convention; or 30 months from the first filing date under the Patent Cooperation Treaty (PCT).
Is it possible to attain a World Patent or International Patent?
No, but you can file your patent application (international phase) through the route called the ‘Patent Cooperation Treaty (PCT)’. Thereafter, you need to file your patent application in each country of interest. That application (national phase) should be filed within 30 months from the priority date.
What is PCT?
PCT stands for Patent Cooperation Treaty. It provides a unified procedure for filing a patent application internationally, whereby a single ‘international’ application phase is recognized by all of the contracting countries of the PCT. However, the PCT does not lead to the grant of a patent and national phase application needs to be done in all countries of interest.
Can I apply for an International Application (international phase) via the PCT route with the Malaysian Intellectual Property Office (MyIPO)?
Yes, Malaysia became the 131st contracting state of the PCT and the PCT International Application can now be filed at MyIPO effective from 16 August 2006.
What are the remedies for patent infringement?
The court may award damages or account of profits and/or grant an injunction to prevent further infringement.
When does a patent infringement occur?
An infringement occurs when a person other than the patent owner produces a product or uses a process, which falls within the scope of protection of the patent, without his/her license or consent.
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