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Legislative Implementation of Flexibilities - Malaysia

Title:Sections 29, 29A and 30 of the Patents Act No. 291 of 1983 as last amended by Act No. 1264 of 2006
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

Section 29. Preliminary examination. (1) Where an application for a patent has a filing date and is not withdrawn, the Registrar shall examine the application and determine whether it complies with the requirements of this Act and the regulations made under this Act which are designated by such regulations as formal requirements for the purposes of this Act. (2) If the Registrar, as a result of the examination under subsection (1), finds that not all the formal requirements are complied with, he shall give an opportunity to the applicant to make any observation on such finding and to amend the application within the prescribed period so as to comply with those requirements, and if the applicant fails to do so the Registrar may refuse the application.

Section 29A. Request for substantive examination or modified substantive examination.

(1) If an application for a patent has been examined under section 29 and is not withdrawn or refused, the applicant shall file, within the prescribed period, a request for a substantive examination of the application. (2) If a patent or other title of industrial property protection has been granted to the applicant or his predecessor in title in a prescribed country outside Malaysia or under a prescribed treaty or Convention for an invention which is the same or essentially the same as the invention claimed in the application, the applicant may, instead of requesting for a substantive examination, request for a modified substantive examination. (3) A request for a substantive examination or a modified substantive examination shall be made in the prescribed form and shall not be deemed to have been filed until the prescribed fee has been paid to the Registrar and any other prescribed requirement has been complied with. (4) The Registrar may require the applicant to provide, at the time of filing a request for a substantive examination.

(a) any prescribed information or prescribed supporting document concerning the filing of any application for a patent or other title of industrial property protection filed outside Malaysia by such applicant or his predecessor in title with a national, regional or international industrial property office; (b) any prescribed information concerning the results of any search or examination carried out by an International Searching Authority under the Patent Cooperation Treaty, relating to the same or essentially the same invention as that claimed in the application for which the request for a substantive examination is being filed.

(5) If the applicant -

(a) fails to file either a request under subsection (1) for a substantive examination or a request under subsection (2) for a modified substantive examination; or (b) fails to provide the information or document referred to in subsection (4) as required by the Registrar,

within the prescribed period, the application for a patent shall, subject to subsection (6), be deemed to be withdrawn at the end of that period. (6) Notwithstanding subsection (5), the Registrar may, upon the request of the applicant, grant a deferment of the filing of a request for examination referred to in subsection (1) or (2) or a deferment of the provision of the information or document referred to in subsection (4), and such deferment may be granted only on the grounds that -

(a) the patent or title referred to in subsection (2) has not been granted or is not available; or (b) the information or document referred to in subsection (4) would not be available,

by the expiration of the prescribed period for the filing of a request under subsection (1) or (2). (7) No deferment shall be granted under subsection (6) unless the request for such deferment is filed before the expiration of the prescribed period for the filing of a request under subsection (1) or (2) and no deferment may be sought nor granted for a period greater than that prescribed in the regulations made under this Act. (8) Without prejudice to the power of the Registrar to grant a deferment, the period prescribed for the purposes of this section may not be extended under the provisions of section 82.

Section 30. Substantive examination and modified substantive examination. (1) Where a request for substantive examination has been filed under subsection 29A(1), the Registrar shall refer the application to an Examiner who shall -

(a) determine whether the application complies with those requirements of this Act and the regulations made under this Act which are designated by such regulations as substantive requirements for the purposes of this Act; and (b) report his determination to the Registrar.

(2) Where a request for a modified substantive examination has been filed under subsection 29A(2), the Registrar shall refer the application to an Examiner who shall -

(a) determine whether the application complies with those requirements of this Act and the regulations made under this Act which are designated by such regulations as modified substantive requirements for the purposes of this Act; and (b) report his determination to the Registrar.

(3) If the Examiner reports, in accordance with subsection (1) or (2), that any of the requirements referred to in subsection (1) or (2), as the case may be, are not complied with, the Registrar shall give the applicant an opportunity to make observations on the report and to amend the application so as to comply with those requirements, within the prescribed period, and if the applicant fails to satisfy the Registrar that those requirements are complied with, or to amend the application so as to comply with them, the Registrar may refuse the application.

(4) The Registrar may grant an extension of the prescribed period referred to in subsection (3) but such extension may be granted only once and no subsequent extension may be granted under the provisions of section 82.

(5) If the Examiner reports, in accordance with subsection (1) or (2), that the application, whether as originally filed or as amended, complies with the requirements referred to in subsection (1) or (2), as the case may be, the Registrar shall notify the applicant of that fact and, subject to subsection (6), shall process the application accordingly. (6) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the Registrar may on that ground refuse to grant a patent in pursuance of more than one of the applications.

(7) The Registrar may waive, as he deems fit, the requirement of referring an application or any part of it for substantive examination under subsection (1):

Provided that he shall notify in the Gazette his intention to waive such requirement and shall allow any party who would be aggrieved by such waiver to be heard on the matter.

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