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Patents Regulations (Amendment) 2011

P.U.(A) 48/2011 Patents Regulations (Amendment) 2011

Preamble

IN exercise of the powers conferred by section 87 of the Patents Act 1983 [Act 291], the Minister makes the following regulations: Citation and commencement

1. (1) These regulationsmay be cited as the Patents (Amendment) Regulations 2011. (2) These Regulations come into operation on 15 February 2011.

Amendment of regulation 10

2. The Patents Regulations 1986 [P.U. (A) 327/1986], which are referred to as the “principal Regulations” in these Regulations, is amended by inserting after subregulation 10(2) the following subregulation:

“(3) For the purposes of subregulations (1) and (2), the request shall be made in Form 22 and shall be submitted together with Form 1 and Form 17.”.

Amendment of regulation 26

3. Subregulation 26(1) of the principal Regulations is amended by inserting after the word “9,” the word “10,”.

Amendment of regulation 27

4. Subregulation 27(1) of the principal Regulations is amended by substituting for the words “two years” the words “eighteen months”.

Amendment of regulation 27A

5. Subregulation 27A(1) of the principal Regulations is amended by substituting for the words “two years” the words “eighteen months”.

Amendment of regulation 27C

6. Regulation 27C of the principal Regulations is amended— (a) in subregulation (1), by deleting the word "10,"; and (b) in subregulation (4), by substituting for the word "three" the word "two".

Amendment of regulation 27D

7. Regulation 27D of the principal Regulations is amended— (a) in subregulation (1), by deleting the word “10,”; and (b) in subregulation (5), by substituting for the word “three” the word “two”.

New regulation 27E

8. The principal Regulations are amended by inserting after regulation 27D the following regulation:

27E. (1) An applicant who requests or has requested for substantive examination under regulation 27 may request the Registrar to undertake an expedited examination of the application once it has been made available for public inspection under section 34 of the Act. (2) A request for expedited examination shall bemade to the Registrar in Form 5H and shall be accompanied with—

(a) a statutory declaration stating the grounds for requesting the expedited examination; and

(b) the prescribed fee. (3) If an applicant has requested for an expedited examination, the Registrar may do so if the Registrar is reasonably satisfied that—

(a) it is in the national or public interest; (b) there are infringement proceedings taking place or evidence showing potential infringement with regards to the patent being applied;

(c) the applicant has already commercialized the invention or plan to commercialize the invention within two years from the filing date of a request for expedited examination under this regulation;

(d) application for grant of the patent is a condition to obtainmonetary benefits from the Government or institutions recognized by the Registrar;

(e) the invention relates to green technologies that will enhance the quality of the environment or conservation of energy resources; or

(f) there are other reasonable grounds which support the request. (4) The Registrar shall notify the applicant in writing, as soon as practicable after making his decision, whether the expedited examination shall be conducted or not. (5) If the Registrar is satisfied that a request for an expedited examination of the application is warranted, the applicant shall, within five working days from the date of receipt of the Registrar’s decision in subregulation (4), file Form 5I and pay the prescribed fee. (6) For the purpose of substantive examination of the application, if the Examiner reports that any of the requirements referred to in subsections 30(1) and (2) of the Act was not complied with, the Registrar shall give the applicant an adverse report to explain to the applicant the requirementswhich were not complied with and the applicant shall be given one opportunity to make observations on the report and to amend the application as to comply with those requirements within three weeks from the date of the issuance of the adverse report by the Registrar. (7) If the applicant fails to amend the application within the time stipulated under subregulation (6), the request for expedited examination is deemed to be withdrawn.”.

Amendment of regulation 52

9. The principal Regulations are amended by substituting for regulation 52 the following regulation: 52. (1) Any document or thing required or authorized by the Act or these Regulations to be filed at the Patent Registration Office shall be delivered by hand to the Patent Registration Office during its normal business hours or sent to the Registrar by post. (2) Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or thing, with the prepaid postage on it, to the Registrar at the Patent Registration Office and the document or thing shall be deemed to have been received at the time when the document or thing is actually received at the Patent Registration Office.

(3) The filing of a document or thing at the Patent Registration Office shall be deemed to be effected at such time as it is received at the Patent Registration Office and is recorded as received.”.

New regulations 52A and 52B

10. The principal Regulations are amended by inserting after regulation 52 the following regulations: 52A. (1) The Registrar may provide a service for the electronic filing of the document or thing required or authorized by the Act or these Regulations to be filed with the Registrar. (2) A person who intends to use the service provided under subregulation (1) shall comply with the terms and conditions as may be specified by the Registrar, either generally by notice published in the official website or, in any particular case, by notice, including through electronicmeans, to the person desiring to use such service. (3) A document or thing which is electronically filed under this regulation shall be deemed to be effected at such time as that document or thing is accepted by the electronic filing system. (4) Where any accompanying document or thing is not capable of being filed electronically, such accompanying document or thing may be delivered or sent to the Registrar in themanner specified in regulation 8, subject to such terms and conditions as the Registrar may specify.

52B. (1) Without limiting the generality of subregulation 52A(2), the terms and conditions for electronic filing shall include the following:

(a) the procedure to be complied with for the electronic filing of documents and things;

(b) the format or media in which a document or thing is to be recorded or stored for purposes of electronic filing;

(c) the manner of authenticating a document or thing which is required to be stamped, signed, sealed or certified, including the requirement for a digital signature of the person filing the document or thing; and

(d) the actions to be taken in the event of an interruption in the process of performing the electronic filing.

(2) Notwithstanding regulation 52A, the Registrar may refuse to accept or to register any document or thing which is filed electronically if—

(a) the information contained in such document or thing which is not capable of being displayed in a legible form;

(b) the electronic record of such document or thing is not capable of being stored in the electronic filing system; (c) the electronic record of such document or thing appears to the Registrar to be altered, damaged, incomplete or forged; or (d) any of the terms or conditions on electronic filing specified by the Registrar is not complied with.”.

Amendment of Schedule I

9. The principal Regulations are amended by substituting for Schedule I the following Schedule: “SCHEDULE I (Subregulation 2(2)) FEES PART I (1) (2) (3) (4) (5)

Item Matter/Proceeding Corresponding E‐Filing Fee Manual Fee

No Form (RM) (RM)

1 Request for grant of patent Form 1 (b) Claims for 1st ten claim

260.00

Nil

290.00

Nil

for every additional claim (per claim) Declaration of withdrawal Form 2

20.00

Nil

20.00

Nil

2A of application Entering national phase Form 2A

for first ten claims for every additional claim (per claim)

2B Request for reinstatement under section 78OA

3 Request for substantive examination

4 Request for modified substantive examination

5 Request for deferment of filing of request for examination or provision of information

6 Request for certified copies of extract

7 Request to amend Register 8 Request for reinstatement

of lapsed patent 9 Request for licence to

exploit patented invention 10 Request to convert

application for patent into application for certificate of utility innovation or vice versa

11 Request for approval of expedited examination

12 Request for Expedited examination

260.00 290.00

Form 2A

Form 5

20.00 650.00 per month of delay 950.00

20.00 690.00 per month of delay 1100.00

Form 5A 600.00 640.00

Form 5B Nil Nil

Form 5C 70.00 80.00

Form 5D Form 5E

70.00 130.00

80.00 140.00

Form 5F Nil Nil

Form 5G 260.00 290.00

Form 5H 200.00 250.00

Form 5I 2000.00 2200.00

13 Application or recording of assignment of transmission

14 Application for entry in Register that any person may obtain a licence

Application for cancellation of entry in Register that any person may obtain a licence Request for recording of particulars of licence contract in Register Request for recording expiry or termination of licence contract in Register Application for compulsory licence

19 Request for amendment of decision

Request for cancellation of compulsory licence Application for grant of certificate of utility innovation

22 Application to extend term of certificate for utility innovation

Form 6 130.00 140.00

Form 7 70.00 80.00

Form 8 70.00 80.00

Form 9 130.00 140.00

Form 10 100.00 110.00

Form 11 100.00 110.00

Form 12 100.00 110.00

Form 13 100.00 110.00

Form 14 130.00 140.00

Form 15 130.00 140.00

24 25

Request to amend application for grant of patent Request to amend patent Appointment or change of patent agent Application for registration of patent agent Application for registration as candidate for examination

Form 16

Form 16A Form 17

Form 18

Form 18A

70.00

70.00 70.00

2600.00

130.00

80.00

80.00 80.00

2670.00

140.00

PART II

(1)

Item

No.

1 2 3 4 5 6

(2)

Matter/Proceeding

Copy of patent Copy of search report Examination of Register Certified copies or extract from Register Copy or extract from Register Fee for public inspection of information relating to patent application Certified copies or extract of any information – for 1st five pages for every additional page Annual fee for patent: for second year after grant of patent for third year after grant of patent

(3)

E‐Filing Fee

(RM)

40.00 30.00 15.00 per hour 15.00 per page 3.00 per page 30.00 per hour

100.00 per page 3.00 per page

260.00 330.00

(4)

Manual Fee

40.00 30.00 15.00 per hour 15.00 per page 3.00 per page 30.00 per hour

100.00 per page 3.00 per page

290.00 360.00

(1)

Item

No.

10 11 12

(2)

Matter/Proceeding

for fourth year after grant of patent for fifth year after grant of patent for sixth year after grant of patent for seventh year after grant of patent for eight year after grant of patent for ninth year after grant of patent for tenth year after grant of patent for eleventh year after grant of patent for twelfth year after grant of patent for thirteenth year after grant of patent for fourteenth year after grant of patent for fifteenth year after grant of patent for sixteenth year after grant of patent for seventeenth year after grant of patent for eighteenth year after grant of patent for nineteenth year after grant of patent for twentieth year after grant of patent Surcharge for reinstatement

Surrender of compulsory licence Surrender of patent Annual fee for certificate for utility innovation: for third year after grant of certificate for fourth year after grant of certificate for fifth year after grant of certificate for sixth year after grant of certificate for seventh year after grant of certificate

(3)

E‐Filing Fee

(RM)

390.00 460.00 520.00 600.00 650.00 720.00 780.00 850.00 900.00 1050.00 1200.00 1300.00 1600.00 1850.00 2100.00 2400.00 2600.00 100% of fee for year concerned 80.00 80.00

160.00 210.00 210.00 260.00 260.00

(4)

Manual Fee

420.00 490.00 560.00 640.00 690.00 760.00 820.00 890.00 940.00 1100.00 1250.00 1350.00 1660.00 1900.00 2200.00 2500.00 2700.00 100% of fee for year concerned 90.00 90.00

170.00 240.00 240.00 290.00 290.00

(1) (2)

Item Matter/Proceeding

No.

for eight year after grant of certificate for ninth year after grant of certificate for tenth year after grant of certificate for eleventh year after grant of certificate for twelfth year after grant of certificate for thirteenth year after grant of certificate for fourteenth year after grant of certificate for fifteenth year after grant of certificate for sixteenth year after grant of certificate for seventeenth year after grant of certificate for eighteenth year after grant of certificate for nineteenth year after grant of certificate for twentieth year after grant of certificate

13 Holding of hearing 14 Certificate of grant of patent 15 Certificate for a utility innovation 15A Examination fee 16 Appeal against examination results 17 Extension of time (for every month or part of a

month) 18 Surcharge for late payment of annual fee

19 Public search through computer 20 Computer print‐out (bibliography data per page) 21 Permitted information (upon request)

for less than 10 pages for the subsequent pages

(3)

E‐Filing Fee

(RM)

320.00 320.00 370.00 520.00 780.00 910.00 1050.00 1300.00 1450.00 1600.00 1700.00 1850.00 1950.00 130.00 Nil Nil 130.00 per subject 260.00 per subject 70.00

100% of fee for year concerned 30.00 10.00

130.00 7.00

(4)

Manual Fee

350.00 350.00 400.00 560.00 820.00 950.00 1100.0 1350.00 1500.00 1650.00 1750.00 1900.00 2000.00 140.00 Nil Nil 140.00 per subject 290.00 per subject 80.00

100% of fee for year concerned 30.00 10.00

140.00 7.00

(1) (2) (3) (4)

Item Matter/Proceeding E‐Filing Fee Manual Fee

No.

22 Fee for preparing international application (RM)

3.00 per page 3.00 per page

PART III (1) (2) (3) (4)

Item Matter/ Proceeding E‐Filing Fee Manual Fee

No.

1 Transmittal fee under Rules 14 and 19 of the Regulations under the Treaty: for the first 30 sheets for each sheet in excess of 30 sheets (per sheet)

(RM)

500.00 60.00

(RM)

550.00 70.00

2 Fee for the late furnishing of transliteration for the purposes of international search

25% of the international filing fee prescribed under the Treaty

3 Fee for the late furnishing of transliteration for the purposes of international publication

25% of the international filing fee prescribed under the Treaty

4 Late payment fee under Rule 16 of the Regulation under

(i) 50% of the amount of unpaid fees; or

(1) (2) (3) (4)

Item Matter/ Proceeding E‐Filing Fee Manual Fee

No. (RM) (RM)

Treaty (ii) an amount equal to the transmittal fee; whichever is the higher provided that the amount of late payment fees shall not exceed 50% of the international filing fee prescribed under the Treaty

5 Fee for complying with national requirement in 130.00 140.00 response to the invitation

Amendment of Schedule II

The principal Regulations is amended in Schedule II by inserting after Form 5G the following form: “

Patents Form No. 5H PATENTS ACT 1983 REQUEST FOR APPROVAL FOR EXPEDITED EXAMINATION (Regulation 27E) To: The Registrar of Patent

Patents Registration Office Kuala Lumpur, Malaysia

For Official Use APPLICATION NO. : ……….....…...………. Filing Date: ………….……………....……….. Request received on: ……....…..……………. Fee received on: ……………...……………… Amount: …………………………...….……… *Cheque/Postal Order/Money Order/Draft/ Cash No.: ……………….……………...……………….

Date of mailing: ….……………………..……

Please submit this Form in duplicate together with the prescribed fee

Applicant’s or Agent’s file reference: ...………………....................................…….

I. IN THE MATTER OF: Patent Application No.: ..…..……..……. Filing Date: ………………...….

Certificate Application No.: ………….. Filing Date:….………………….

II. APPLICANT: Name : …….………………………………….……………………. Address : ……………….………….………………………………….

……………………...……………....………………………

III. REQUEST: The applicant requests the Registrar to refer the patent application identified above for an expedited examination in accordance with subregulation 27E(2) and (3) of the Patents Regulations 1986. This application contains the following (please tick):

(a) Statutory Declaration

(b) Grounds of statement

(c) Others (please specify )

…………………………………………………………………………………………. ……….………………………………………………………………………………….

Where the Registrar is satisfied that the request for expedited

examination complies with the requirement,he shall issue a notification that the applicant shall make the payment of the prescribed fee.

IV. ADDITIONAL INFORMATION accompanying this Form:

Yes No

V. SIGNATURE ……………………… ………………………… ** (Applicant/Agent) (Date)

If Agent, indicate Agent’s Registration No. ………………………………………………………  Delete whichever does not apply ** Type name under signature and delete whichever does not apply

Patents Form No. 5I PATENTS ACT 1983 REQUEST FOR FEE FOR EXPEDITED EXAMINATION (Regulation 27E) To: The Registrar of Patent

Patents Registration Office Kuala Lumpur, Malaysia

Date of mailing: ….……………………..……

Please submit this Form in duplicate together with the prescribed fee

Applicant’s or Agent’s file reference: ...………………....................................…….

I. IN THE MATTER OF: Patent Application No.: ..…..……..……. Filing Date: ……………………………...…. Certificate Application No.: ………….. Filing Date: ………………………………….

II. APPLICANT: Name : ……………………….………………………………….……………………. Address : ………….………………………………….………………………………….

………………………………………………….……………..………………

III. REQUEST: The applicant makes the payment for the expedited examination upon receipt of the Registrar’s notification in accordance with subregulation 27E(5) of the Patents Regulations 1986.

IV. ADDITIONAL INFORMATION accompanying this Form:

Yes No

V. SIGNATURE …………………………………. ………………………… ** (Applicant/Agent) (Date)

If Agent, indicate Agent’s Registration No. ………………………………………………………

 Delete whichever does not apply ** Type name under signature and delete whichever does not apply

11. The principal Regulations are amended in Schedule II by inserting after Form 21 the following form:

Patents Form No. 22 PATENTS ACT 1983 STATEMENT JUSTIFYING THE APPLICANT’S RIGHT TO A PATENT/CERTIFICATE (Regulation 10)

To: The Registrar of Patent Patents Registration Office Kuala Lumpur, Malaysia

For Official Use APPLICATION NO. : ……….....…...………. Filing Date: ………….……………....……….. Request received on: ……....…..…………….

Date of mailing: ….……………………..……

Please submit this Form in duplicate Applicant’s or Agent’s file reference: ...………………....................................…….

I. IN THE MATTER OF:

Patent Application No.: ..…..……..……. Filing Date: ……………………………...…. Certificate Application No.: ………….. Filing Date: ………………………………….

II. TITLEOF INVENTION: …………………...……………………………….…………….

III. APPLICANT: Name : ……………………….………………………………….……………………. Address : ………….………………………………….………………………………….

………………………………………………….……………..………………

IV. I/we believe that the inventor(s)/innovator(s) of the above mentioned applciation is

as follows: .................................................................................................................................. .................................................................................................................................. ..................................................................................................................................

V. Statement justifying the applicant’s right to a patent/certificate*: ...................................................................................................................................

IV. ADDITIONAL INFORMATION accompanying this Form:

Yes No

VI. SIGNATURE …………………………………. ………………………… ** (Applicant/Agent) (Date)

If Agent, indicate Agent’s Registration No. ………………………………………………………

 Delete whichever does not apply ** Type name under signature and delete whichever does not apply

Made 11 February 2011 [KPDN(S)(U2)26/6/20; PN(PU2)410/VI]

DATO’ SERI ISMAIL SABRI BIN YAAKOB Minister of Domestic Trade, Cooperatives and Consumerism

Malaysia

MY073

Patents (Amendment) Regulations 2011