LAWS OF MALAYSIA
Act A1264
PATENTS (AMENDMENT) ACT 2006
Date of Royal Assent … 15 June 2006
Date of publication in the Gazette ... 29 June 2006
An Act to amend Patents Act 1983.
ENACTED by the Parliament of Malaysia as follows:
Short title and commencement
1. (1) This Act may be cited as the Patents (Amendment)
Act 2006.
(2) This Act comes into operation on a date to be appointed by
the Minister by notification in the Gazette.
New section 35B
2. The Patents Act 1983 [Act 291], which is referred to as the
“principal Act” in this Act, is amended by inserting after section
35A the following section:
“Applicant or Patent Registration Office may request for
international search
35B. (1) Any applicant who files an application, other than
an international application, for the grant of a patent with the
Patent Registration Office may request that an international
search be carried out on such application by the International
Searching Authority which is specified under subsection 78L(1).
(2) The Patent Registration Office may subject an application,
other than an international application, for the grant of a
patent filed with it to an international search to be carried out
by the International Searching Authority which is specified
under subsection 78L(1).
(3) Where a search is carried out on an application pursuant
to subsection (1) or (2), the description and claims contained
in the application shall be presented in the languages specified
by the International Searching Authority and the search fees
as specified by the International Searching Authority shall be
paid by the applicant either to the International Searching
Authority directly or via the Patent Registration Office.”.
Amendment of section 78A
3. Section 78A of the principal Act is amended—
(a) by inserting after the definition of “national phase” the
following definitions:
‘ “State” means a state which is a party to the Treaty;
“patent” includes utility innovation;’;
(b) in the national language text, by inserting a semicolon at
the end of the definition of “permohonan antarabangsa”;
(c) in the English text, by substituting for the full stop at the
end of the definition of “international application” a
semicolon; and
(d) by substituting for the semicolon at the end of the definition
of “Treaty” a full stop.
Amendment of section 78D
4. Section 78D of the principal Act is amended by substituting for
the words “or utility innovation under Part VI” the words “under
Parts IVA and VI”.
Amendment of section 78F
5. Section 78F of the principal Act is amended by substituting for
the word “Any” the words “Subject to section 23A, any”.
Amendment of section 78G
6. Section 78G of the principal Act is amended—
(a) in subsection (1), by inserting after the word “abstract”
the words “in the form as specified in the Treaty”;
(b) by inserting after subsection (1) the following subsection:
“(1A) An international application shall be filed in
the English language.”;
(c) by inserting after subsection (2) the following subsection:
“(2A) An international application which has been
accorded an international filing date shall have the
effect of a patent application under this Act if the
application designates Malaysia for the purpose of
obtaining a patent under this Act and the international
filing date shall be considered to be the filing date for
the purposes of Parts IVA and VI.”; and
(d) by deleting subsection (3).
Deletion of section 78H
7. Section 78H of the principal Act is deleted.
Deletion of section 78I
8. Section 78I of the principal Act is deleted.
Deletion of section 78J
9. Section 78J of the principal Act is deleted.
Amendment of section 78K
10. Section 78K of the principal Act is amended by deleting the
words “and its rules”.
New section 78KA
11. The principal Act is amended by inserting after section 78K
the following section:
“Fees
78KA. An international application shall be subject to the
fees as specified in the Treaty and other prescribed fees.”.
Amendment of section 78M
12. Subsection 78M(2) of the principal Act is amended by substituting
for the words “the prescribed form and paying the prescribed fee”
the words “accordance with the Treaty”.
Substitution of section 78O
13. The principal Act is amended by substituting for section 78O
the following section:
“Entering the national phase
78O. (1) Where in an international application, the applicant
designates Malaysia for the purpose of obtaining a patent
under this Act, the applicant shall, before the expiration of
thirty months from the priority date—
(a) submit to the Patent Registration Office a copy of the
international application in the English language; and
(b) pay the prescribed fee.
(2) The Patent Registration Office shall not examine the
international application submitted under subsection (1) prior
to the expiration of thirty months from the priority date.
(3) Notwithstanding subsection (2), the Patent Registration
Office may, on the request of the applicant, examine an
international application prior to the expiration of thirty months
from the priority date, if the applicant has—
(a) submitted to the Patent Registration Office a copy of
the international application in the English language;
and
(b) paid the prescribed fee under subsection (1).
(4) If the applicant does not comply with the requirements
of subsection (1), the international application shall be
considered to be withdrawn for the purposes of this Act and
the Registrar shall notify the applicant that his international
application is considered to have been withdrawn.
(5) Any application which has entered the national phase
shall comply with the requirements of this Act.”.
New section 78OA
14. The principal Act is amended by inserting after section 78O
the following section:
“Reinstatement
78OA. (1) Where an international application is considered
to be withdrawn under section 78O, the applicant may, in
writing, apply to the Patent Registration Office to have the
international application reinstated by—
(a) submitting to the Patent Registration Office a copy of
the international application in the English language
and paying the prescribed fee under subsection 78O(1);
(b) submitting a written statement stating the reasons for
the failure to comply with subsection 78O(1) and a
declaration or other evidence in support of the reasons
for such failure; and
(c) paying the prescribed fee.
(2) The application under subsection (1) shall be made
within whichever of the following period expires first:
(a) two months from the date of removal of the cause of
the failure to meet the time limit provided in subsection
78O(1); or
(b) twelve months from the date of the expiration of the
time limit provided in subsection 78O(1).
(3) Where the Patent Registration Office is satisfied that
the failure by the applicant to comply with the requirements
of subsection 78O(1) was unintentional, the Patent Registration
Office shall reinstate the rights of the applicant with respect
to the international application.
(4) Where the Patent Registration Office is not satisfied
that the failure by the applicant to comply with the requirements
of subsection 78O(1) was unintentional, the Patent Registration
Office shall notify the applicant that it intends to refuse the
application and give an opportunity to the applicant to make
a written representation on the intended refusal within fourteen
days from the date of the notice.
(5) After considering any representation made by the
applicant under subsection (4), the Patent Registration Office
shall decide whether to reinstate the international application
or to refuse the application for reinstatement and notify the
applicant of its decision.”.
Deletion of section 78P
15. Section 78P of the principal Act is deleted.
Amendment of section 78Q
16. Section 78Q of the principal Act is amended—
(a) by substituting for subsection (1) the following subsection:
“(1) Where—
(a) a foreign receiving office has—
(i) refused to accord a filing date to an
international application;
(ii) declared that the international application
is considered withdrawn; or
(iii) declared that the designation of Malaysia
is considered withdrawn; or
(b) the International Bureau has declared that an
international application is considered withdrawn
because it has not received a record copy of the
international application within the time specified
under the Treaty; and
(c) copies of any document in the international
application have been sent to the Patent
Registration Office,
Patents (Amendment) 9
the applicant may request the Patent Registration Office
to review the justification of the refusal or declaration
under the Treaty.”; and
(b) by deleting subsection (3).