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Patents Act 1983 (Act No. 291, as amended up to Act No. A1264)



MALAYSIA

Patents Act

Act 291 of 1983 as amended by Act A1264 of 2006

ENTRY INTO FORCE: August 16, 2006

TABLE OF CONTENTS

PART I PRELIMINARY

Section 1. Short title, commencement and application.

Section 2. Extent of application.

Section 3. Interpretation.

PART II PATENTS BOARD

Sections 4-7A. (Deleted)

PART III ADMINISTRATION

Section 8. Registrar, Deputy Registrars and Assistant Registrars.

Section 9. Patent Registration Office.

Section 9A. Examiners.

Section 10. Patent information service.

PART IV PATENTABILITY

Section 11. Patentable inventions.

Section 12. Meaning of “invention”.

Section 13. Non-patentable inventions.

Section 14. Novelty.

Section 15. Inventive step.

Section 16. Industrial application.

PART IVA UTILITY INNOVATIONS

Section 17. Definition.

Section 17A. Application.

Section 17B. Conversion from an application for a patent into an application

for a certificate for a utility innovation, and vice versa.

Section 17C. Patent and certificate for a utility innovation cannot both

be granted for the same invention.

PART V RIGHTS TO A PATENT

Section 18. Right to a patent.

Section 19. Judicial assignment of patent application or patent.

Section 20. Inventions made by an employee or pursuant to a commission.

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Section 21. Inventions by Government employee.

Section 22. Joint owners.

PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION

Section 23. Requirements of application.

Section 23A. Applications by residents to be filed in Malaysia first.

Section 24. Application fee.

Section 25. Withdrawal of application.

Section 26. Unity of invention.

Section 26A. Amendment of application.

Section 26B. Division of application.

Section 27. Right of priority.

Section 27A. Priority date.

Section 28. Filing date.

Section 29. Preliminary examination.

Section 29A. Request for substantive examination or modified substantive

examination.

Section 30. Substantive examination and modified substantive examination.

Section 30A. Prohibition of publication of information which might be

prejudicial to the nation.

Section 31. Grant of patent.

Section 32. Register of Patents.

Section 32A. Notice of a trust not to be registered.

Section 33. Examination of Register and certified copies.

Section 33A. Certified copies of or extracts from Register, etc. admissible

as evidence in court.

Section 33B. Amendments to the Register.

Section 33C. Court may order rectification of the Register.

Section 34. Public inspection

Section 35. Duration of patent.

Section 35A. Reinstatement of a lapsed patent.

Section 35B. Applicant or Patent Registration Office may request for

international search.

PART VII RIGHTS OF OWNER OF PATENT

Section 36. Rights of owner of patent.

Section 37. Limitation of rights.

Section 38. Rights derived from prior manufacture or use.

PART VIII ASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND PATENTS

Section39.Assignmentandtransmissionofpatentapplicationsandpatents.

2

Section 40. Joint ownership of patent applications or patents.

PART IX LICENCE CONTRACTS

Section 41. Meaning of licence contract.

Section 42. Entry in the Register.

Section 43. Rights of the licensee.

Section 44. Rights of the licensor.

Section 45. Invalid clauses in licence contracts.

Section 46. Effect of patent application not being granted or patent being

declared invalid.

Section 47. Expiry, termination or invalidation of licence contract.

PART X COMPULSORY LICENCE

Section 48. Definition.

Section 49. Application for compulsory licences.

Section 49A. Application for compulsory licence based on interdependence

of patents.

Section 50. Request for grant of compulsory licence.

Section 51. Decision by the Corporation.

Section 52. Scope of compulsory licence.

Section 53. Limitation of compulsory licence.

Section 54. Amendment, cancellation and surrender of compulsory licence.

PART XI SURRENDER AND INVALIDATION OF PATENT

Section 55. Surrender of patent.

Section 56. Invalidation of patent.

Section 57. Date and effect of invalidation.

PART XII INFRINGEMENT

Section 58. Acts deemed to be infringement.

Section 58A. Acts deemed to be non-infringement.

Section 59. Infringement proceedings.

Section 60. Injunction and award of damages.

Section 61. Infringement proceedings by licensee and beneficiary of

compulsory licence.

Section 62. Declaration of non-infringement.

Section 62A. Applications in contravention of section 23A.

Section 62B. Publication of information in contravention of Registrar’s

directions.

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PART XIII OFFENCES

Section 63. Falsification of Register, etc.

Section 64. Unauthorised claim of patent.

Section 65. Unauthorized claim that patent has been applied for.

Section 66. Misuse of title “Patent Registration Office”.

Section 66A. Unregistered persons practising, etc., as a patent agent.

Section 67. Offences by corporation.

PART XIV POWERS RELATING TO ENFORCEMENT

Section 68. Authorization of officer to exercise powers under this Part.

Section 69. Powers of arrest.

Section 70. Search with warrant.

Section 71. List of things seized.

Section 72. Return of things seized.

Section 73. Power of investigation.

Section 74. Examination of witnesses.

Section 75. Admission of statements in evidence.

Section 76. Obstruction to search, etc.

Section 77. Institution of prosecution.

Section 78. Jurisdiction of subordinate Court.

PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY

Section 78A. Interpretation.

Section 78B. Application.

Section 78C. Patent Registration Office as receiving office.

Section 78D. Patent Registration Office as designated office.

Section 78E. Patent Registration Office as elected office.

Section 78F. Persons eligible for international application.

Section 78G. Filing of an international application.

Section 78H. (Deleted)

Section 78I. (Deleted)

Section 78J. (Deleted)

Section 78K. Processing of international applications.

Section 78KA. Fees.

Section 78L. International Searching Authority.

Section 78M. International Preliminary Examination Authority.

Section 78N. International publication of international application and

its effect.

Section 78O. Entering the national phase.

Section 78OA. Reinstatement.

Section 78P. (Deleted)

4

Section 78Q. Conversion of an international application into a national

application.

PART XV MISCELLANEOUS

Section 79. Power of Registrar to amend patent application.

Section 79A. Power of Registrar to amend patent.

Section 80. Other powers of Registrar.

Section 81. Exercise of discretionary power.

Section 82. Extension of time.

Section 83. Extension of time by reason of error in Patent Registration

Office.

Section 83A. Certificate by the Registrar.

Section 84. Rights of Government.

Section 85. Refusal to grant patent by the Registrar.

Section 86. Patent agents.

Section 87. Regulations.

Section 88. Appeal.

Section 89. Repeal and saving provisions.

Section 90. Transitional.

FIRST SCHEDULE [Section 7] (Deleted)

SECOND SCHEDULE [Section 17A]

LIST OF AMENDMENTS (Omitted)

5

PART I PRELIMINARY

Section 1. Short title, commencement and application.

(1) This Act may be cited as the Patents Act 1983 and shall come into

force on such date as the Minister may, by notification in the Gazette,

appoint.

(2) This Act shall apply throughout Malaysia.

Section 2. Extent of application.

This Act shall apply to patent applications made after the commencement

of this Act and to the registration of patents made on such applications.

Section 3. Interpretation.

In this Act, unless the context otherwise requires -

“appointed date” has the same meaning as is assigned to that expression

in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617];

[Ins. Act A1137: s.2]

“Assistant Registrar” means the person appointed or deemed to have been

appointed to be an Assistant Registrar under subsection (2) or (3) of

section 8; [Ins. Act A1137: s.2]

“authorized officer” means an officer authorized under section 68;

“Board” [Deleted by Act A1137: s.2];

“Corporation” means the Intellectual Property Corporation of Malaysia

established under the Intellectual Property Corporation of Malaysia Act

2002; [Ins. Act A1137: s.2]

“Court” means the High Court, or Judge thereof;

“Deputy Registrar” means the person appointed or deemed to have been

appointed to be a Deputy Registrar under subsection (2) or (3) of section

8; [Ins. Act A1137: s.2]

“employee” means a person who works or has worked under a contract of

employment, or who is in employment under, or for the purposes of, any

individual or organization;

“employer”,inrelationtoanemployee,meansthepersonbywhomtheemployee

is or was employed;

“Examiner” means any person, government department, unit or organization,

or any foreign or international patent office or organization, appointed

by the Corporation under section 9A; [Subs. Act A1137: s.2]

“filing date” means the date recorded by the Registrar as the filing date

under section 28; [Ins. Act A863: s.2]

“Minister” means the Minister for the time being charged with the

6

responsibility for intellectual property; [Ins. Act A1137: s.2]

“owner of the patent” or “owner of a patent” means the person for the

time being recorded in the Register as the grantee of a patent; [Ins.

Act A863: s.2]

“patented invention” means an invention for which a patent is granted

and “patented process” shall be construed accordingly;

“patented product” means a product which is a patented invention or, in

relation to a patented process, a product obtained directly by means of

the process or to which the process has been applied;

“prescribed” means prescribed by regulations made under this Act; [Ins.

Act A863: s.2]

“priority date” means the date prescribed in section 27A; [Ins. Act A863:

s.2]

“process” includes an art or a method; [Ins. Act A863: s.2]

“product” means any thing which appears in tangible form, and includes

any apparatus, article, device, equipment, handicraft, implement, machine,

substance and composition; [Ins. Act A863: s.2]

“Register” means the Register of Patents and the Register for Certificates

for Utility Innovations kept under this Act; [Am. Act A648: s.2]

“Registrar” means the Registrar of Patents as designated in subsection

(1) of section 8; [Am. Act A863: s.2; Am. Act A1137: s.2]

“right”, in relation to any patent application or patent, includes an

interest in the patent application or patent and, without prejudice to

the foregoing, any reference to a right in a patent includes a reference

to a share in the patent.

7

PART II PATENTS BOARD

Sections 4-7 [Deleted by Act A1137: s.3]

Sections 7A [Ins. Act A648: s.5, Deleted by Act A1137: s.3]

NOTE: The Patents Board established under Part II is dissolved. Any person

who, immediately before the appointed date, was appointed as an Examiner

by the dissolved Board shall continue in that office and be deemed for

the purposes of this Act to have been appointed under section 9A.

8

PART III ADMINISTRATION

Section 8. Registrar, Deputy Registrars and Assistant Registrars.

(1) The Director General of the Corporation shall be the Registrar of

Patents.

(2) The Corporation may appoint, on such terms and conditions as it may

determine, from amongst persons in the employment of the Corporation,

such number of Deputy Registrars of Patents, Assistant Registrars of

Patents and other officers as may be necessary for the proper administration

of this Act, and may revoke the appointment of any person so appointed

or deemed to have been so appointed under subsection (3).

(3) The persons holding office as Deputy Registrars, Assistant Registrars

and other officers under this Act before the appointed date who were given

an option by the Government of Malaysia to serve as employees of the

Corporation and have so opted shall on the appointed date be deemed to

have been appointed as Deputy Registrars, Assistant Registrars and such

other officers under subsection (2).

(4) Subject to the general direction and control of the Registrar and

to such conditions or restrictions as may be imposed by the Registrar,

a Deputy Registrar or an Assistant Registrar may exercise any function

of the Registrar under this Act, and anything by this Act appointed or

authorized or required to be done or signed by the Registrar may be done

or signed by any Deputy Registrar or Assistant Registrar and the act or

signature of a Deputy Registrar or an Assistant Registrar shall be as

valid and effectual as if done or signed by the Registrar.

(5) The Registrar shall have a seal of such device as may be approved

by the Corporation and the impressions of such seal shall be judicially

noticed and admitted in evidence. [Subs. Act A1137: s.4]

Section 9. Patent Registration Office.

(1) A Patent Registration Office and such number of branch offices of

the Patent Registration Office as may be necessary for the purposes of

this Act shall be established. [Subs. Act A1137: s.5]

(2)-(3) [Deleted by Act A1137: s.5].

(4) [Ins. Act A 648: s.6,Deleted by Act A1137: s.5].

9

(5) Any application or other document required or permitted to be filed

at the Patent Registration Office may be filed at any branch office of

the Patent Registration Office and such application or other document

shall be deemed to have been filed at the Patent Registration Office.

Section 9A. Examiners.

The Corporation may appoint any person, government department, unit or

organization,oranyforeignorinternationalpatentofficeororganization

to be an Examiner for the purposes of this Act. [Ins. Act A1137: s.6]

Section 10. Patent information service.

There shall be a patent information service which provides information

to the public upon payment of the prescribed fee. [Subs. Act A863: s.5]

10

PART IV PATENTABILITY

Section 11. Patentable inventions.

An invention is patentable if it is new, involves an inventive step and

is industrially applicable.

Section 12. Meaning of “invention”.

(1) An invention means an idea of an inventor which permits in practice

the solution to a specific problem in the field of technology.

(2) An invention may be or may relate to a product or process.

Section 13. Non-patentable inventions.

(1) Notwithstanding the fact that they may be inventions within the meaning

of section 12, the following shall not be patentable:

(a) discoveries, scientific theories and mathematical methods;

(b) plant or animal varieties or essentially biological processes for

the production of plants or animals, other than man-made living

micro-organisms, micro-biological processes and the products of such

micro-organism processes;

(c) schemes, rules or methods for doing business, performing purely mental

acts or playing games;

(d) methods for the treatment of human or animal body by surgery or therapy,

and diagnostic methods practised on the human or animal body:

Provided that this paragraph shall not apply to products used in any such

methods. [Subs. Act A648: s.7]

(2) For the purpose of subsection (1), in the event of uncertainty as

to whether the items specified therein shall be patentable or not, the

Registrar may refer the matter to the Examiner for an opinion and the

Registrar shall thereafter give a decision as to whether to include or

exclude such item as being patentable, as the case may be.

Section 14. Novelty.

(1) An invention is new if it is not anticipated by prior art.

(2) Prior art shall consist of -

(a) everything disclosed to the public, anywhere in the world, by written

publication, by oral disclosure, by use or in any other way, prior to

the priority date of the patent application claiming the invention; [Am.

Act A648: s.8; Am. Act A863: s.6]

11

(b) the contents of a domestic patent application having an earlier priority

date than the patent application referred to in paragraph (a) to the extent

that such contents are included in the patent granted on the basis of

the said domestic patent application. [Am. Act A648: s.8; Am. Act A863:

s.6]

(3) A disclosure made under paragraph (2)(a) shall be disregarded -

(a) if such disclosure occurred within one year preceding the date of

thepatentapplicationandifsuchdisclosurewasbyreasonorinconsequence

of acts committed by the applicant or his predecessor in title;

(b) if such disclosure occurred within one year preceding the date of

thepatentapplicationandifsuchdisclosurewasbyreasonorinconsequence

of any abuse of the rights of the applicant or his predecessor in title;

[Am. Act A648: s.8]

(c) if such disclosure is by way of a pending application to register

the patent in the United Kingdom Patent Office as at the date of coming

into force of this Act.

(4) The provisions of subsection (2) shall not exclude the patentability

of any substance or composition, comprised in the prior art, for use in

a method referred to in paragraph 13(1)(d), if its use in any such method

is not comprised in the prior art. [Ins. Act A863: s.6]

Section 15. Inventive step.

An invention shall be considered as involving an inventive step if, having

regard to any matter which forms part of the prior art under paragraph

14(2)(a), such inventive step would not have been obvious to a person

having ordinary skill in the art. [Am. Act A648: s.9]

Section 16. Industrial application.

An invention shall be considered industrially applicable if it can be

made or used in any kind of industry.

12

PART IVA UTILITY INNOVATIONS

Section 17. Definition.

For the purposes of this Part and any regulations made under this Act

in relation to this Part, “utility innovation” means any innovation which

creates a new product or process, or any new improvement of a known product

or process, which is capable of industrial application, and includes an

invention. [Subs. Act A648: s.11; Subs. Act A863: s.7, Am. Act A1088:

s.2]

Section 17A. Application.

(1) Except as otherwise provided in this Part, the provisions of this

Act, subject to the modifications in the Second Schedule, shall apply

to utility innovations in the same manner as they apply to inventions.

(2) Sections 11, 15, 26, Part X, and sections 89 and 90 shall not apply

to utility innovations.

[Ins. Act A648: s.12, Am. Act A863: s.8, Am. Act A1088: s.3]

Section 17B. Conversion from an application for a patent into an application

for a certificate for a utility innovation, and vice versa.

(1) An application for a patent may be converted into an application for

a certificate for a utility innovation.

(2) An application for a certificate for a utility innovation may be

converted into an application for a patent.

(3) A request to convert an application for a patent into an application

for a certificate for a utility innovation or to convert an application

for a certificate for a utility innovation into an application for a patent

shall be filed by the applicant and shall comply with regulations made

under this Act.

(4) A request for conversion under this section shall be filed not later

than six months from the date the Registrar makes known to the applicant

the report made by the Examiner in accordance with subsection 30(1) or

(2).

(5) A request for conversion under this section shall not be entertained

unless the prescribed fee has been paid to the Registrar.

13

(6) An application which has been converted shall be deemed to have been

filed at the time the initial application was filed.

[Ins. Act A863: s.9]

Section 17C. Patent and certificate for a utility innovation cannot both

be granted for the same invention.

(1) If an applicant for a patent has also -

(a) made an application for a certificate for a utility innovation; or

(b) been issued with a certificate for a utility innovation,

and the subject matter of the application for a patent is the same as

the subject matter of the application mentioned in paragraph (a) or of

the certificate mentioned in paragraph (b), a patent shall not be granted

until the application mentioned in paragraph (a) has been withdrawn or

the certificate mentioned in paragraph (b) has been surrendered.

(2) If an applicant for a certificate for a utility innovation has also

-

(a) made an application for a patent; or

(b) been granted a patent,

and the subject matter of the application for a certificate for a utility

innovation is the same as the subject matter of the application mentioned

in paragraph (a) or of the patent mentioned in paragraph (b), a certificate

for a utility innovation shall not be granted until the application

mentioned in paragraph (a) has been withdrawn or the patent mentioned

in paragraph (b) has been surrendered.

[Ins. Act A863: s.9]

14

PART V RIGHTS TO A PATENT

Section 18. Right to a patent.

(1) Any person may make an application for a patent either alone or jointly

with another.

(2) Subject to section 19, the rights to a patent shall belong to the

inventor.

(3) Where two or more persons have jointly made an invention, the rights

to a patent shall belong to them jointly.

(4) If two or more persons have separately and independently made the

same invention, and each of them has made an application for a patent,

the right to a patent for that invention shall belong to the person whose

application has the earliest priority date. [Ins. Act A863: s.10]

Section 19. Judicial assignment of patent application or patent.

Where the essential elements of the invention claimed in a patent

application or patent have been unlawfully derived from an invention for

which the right to the patent belongs to another person, such other person

may apply to the Court for an order that the said patent application or

patent be assigned to him:

Provided that the Court shall not entertain an application for the

assignment of a patent after five years from the date of the grant of

the patent. [Am. Act A863: s.11]

Section 20. Inventions made by an employee or pursuant to a commission.

(1) In the absence of any provisions to the contrary in any contract of

employment or for the execution of work, the rights to a patent for an

invention made in the performance of such contract of employment or in

the execution of such work shall be deemed to accrue to the employer,

or the person who commissioned the work, as the case may be:

Provided that where the invention acquires an economic value much greater

than the parties could reasonably have foreseen at the time of concluding

the contract of employment or for the execution of work, as the case may

be, the inventor shall be entitled to equitable remuneration which may

be fixed by the Court in the absence of agreement between the parties.

(2) Where an employee whose contract of employment does not require him

to engage in any inventive activity makes, in the field of activities

15

of his employer, an invention using data or means placed at his disposal

by his employer, the right to the patent for such invention shall be deemed

to accrue to the employer in the absence or any provision to the contrary

in the contract of employment:

Provided that the employee shall be entitled to equitable remuneration

which, in the absence of agreement between the parties, may be fixed by

the Court taking into account his emoluments, the economic value of the

invention and any benefit derived from it by the employer.

(3) The rights conferred on the inventor under subsections (1) and (2)

shall not be restricted by contract.

Section 21. Inventions by Government employee.

Notwithstanding the provisions of subsection 20(3), the provisions of

that section shall apply to a Government employee or an employee of a

Government organization or enterprise unless otherwise provided by rules

or regulations of such Government organization or enterprise.

Section 22. Joint owners.

Where the right to obtain a patent is owned jointly, the patent may only

be applied for jointly by all the joint owners.

16

PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION

Section 23. Requirements of application.

Everyapplicationforthegrantofapatentshallcomplywiththeregulations

as may be prescribed by the Minister under this Act.

Section 23A. Applications by residents to be filed in Malaysia first.

No person resident in Malaysia shall, without written authority granted

by the Registrar, file or cause to be filed outside Malaysia an application

for a patent for an invention unless -

(a) an application for a patent for the same invention has been filed

in the Patent Registration Office not less than two months before the

application outside Malaysia; and

(b) either no directions have been issued by the Registrar under section

30A in relation to the application or all such directions have been revoked.

[Ins. Act A648: s.13]

Section 24. Application fee.

An application for the grant of a patent shall not be entertained unless

the prescribed fee has been paid to the Registrar.

Section 25. Withdrawal of application.

An applicant may withdrawn his application at any time during its pendency

by submitting a declaration in the prescribed form to the Registrar, and

such withdrawal may not be revoked. [Subs. Act A863: s.12]

Section 26. Unity of invention.

An application shall relate to one invention only or to a group of inventions

so linked as to form a single general inventive concept.

Section 26A. Amendment of application.

The applicant may amend the application:

Provided that the amendment shall not go beyond the disclosure in the

initial application. [Ins. Act A648: s.14]

Section 26B. Division of application.

(1) The applicant may, within the prescribed time, divide the application

into two or more applications (“divisional applications”):

Provided that each divisional application shall not go beyond the

disclosure in the initial application.

17

(2) Each divisional application shall be entitled to the priority date

of the initial application.

[Ins. Act A648: s.14; Am. Act A863: s.13]

Section 27. Right of priority.

(1) An application may contain a declaration claiming the priority,

pursuant to any international treaty or Convention, of one or more earlier

national, regional or international applications filed, during the period

of twelve months immediately preceding the filing date of the application

containing the declaration, by the applicant or his predecessor in title

in or for any party to the said international treaty or Convention. [Am.

Act A863: s.14]

(1A) The period of twelve months mentioned in subsection (1) may not be

extended under the provisions of section 82. [Ins. Act A863: s.14]

(2) Where the application contains a declaration under subsection (1),

the Registrar may require that the applicant furnish, within the prescribed

time, a copy of the earlier application, certified as correct by the office

with which it was filed or where the earlier application is an international

application filed under any international treaty, by the International

Bureau of the World Intellectual Property Organization.

(3) The effect of the declaration referred to in subsection (1) shall

be as provided in the treaty or Convention referred to therein. [Am. Act

A863: s.14]

(4) Where any of the requirements of this section or any regulations

pertaining thereto have not been complied with, the declaration referred

to in subsection (1) shall be deemed to be invalid.

Section 27A. Priority date.

(1) Subject to subsection (2), the priority date of an application for

a patent is the filing date of the application.

(2) Where an application contains the declaration mentioned in section

27, the priority date of the application shall be the filing date of the

earliest application whose priority is claimed in that declaration. [Ins.

Act A863: s.15]

18

Section 28. Filing date.

(1) The Registrar shall record as the filing date the date of receipt

of the application:

Provided that the application contains -

(a) the name and address of the applicant;

(b) the name and address of the inventor;

(c) a description;

(d) a claim or claims; and

(e) that at the time of receipt of the application the prescribed fee

has been paid.

(2)WheretheRegistrarfindsthat,atthetimeofreceiptoftheapplication,

the provisions of subsection (1) are not fulfilled, he shall request the

applicant to file the required correction.

(3) Where the applicant complies with the request referred to in subsection

(2), the Registrar shall record as the filing date the date of receipt

of the required correction and where the applicant does not so comply,

the Registrar shall treat the application as invalid.

(4) Where the application refers to drawings which in fact are not included

in the application, the Registrar shall request the applicant to furnish

the missing drawings.

(5) Where the applicant complies with the request referred to in subsection

(4), the Registrar shall record as the filing date the date of receipt

of the missing drawings and where the applicant does not so comply, the

Registrar shall record as the filing date the date of receipt of the

application and make no reference to the said drawings.

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

19

so as to comply with those requirements, and if the applicant fails to

do so the Registrar may refuse the application.

[Subs. Act A863: s.16]

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

20

(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

oftheapplicant,grantadefermentofthefilingofarequestforexamination

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.

[Ins. Act A863: s.17]

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

21

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

thecasemaybe,arenotcompliedwith,theRegistrarshallgivetheapplicant

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

havingthesameprioritydatearefiledbythesameapplicantorhissuccessor

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.

[Subs. Act A863: s.18]

Section 30A. Prohibition of publication of information which might be

prejudicial to the nation.

(1) Subject to any direction of the Minister, where an application for

a patent is filed or is deemed to have been filed at the Patent Registration

22

Office and it appears to the Registrar that the application contains

information the publication of which might be prejudicial to the interest

or security of the nation, he may issue directions prohibiting or

restricting the publication of that information or its communication

whether generally or to a particular person or class of persons.

(2) Subject to any direction by the Minister, the Registrar may revoke

any direction issued by him under subsection (1) prohibiting or restricting

the publication or communication of any information contained in an

application for a patent if he is satisfied that such publication or

communication is no longer prejudicial to the interest or security of

the nation.

(3) Where directions issued by the Registrar under subsection (1) are

in force in respect of an application, the application may proceed to

the stage where it is in order for the grant of a patent but no patent

shall be granted in pursuance of such application.

(4) Nothing in this section prevents the disclosure of information

concerning an invention to a Ministry or a Government department or

authority for the purpose of obtaining advice as to whether directions

under this section should be made, amended or revoked.

[Ins. Act A648: s.16]

Section 31. Grant of patent.

(1) The grant of a patent shall not be refused and a patent shall not

be invalidated on the ground that the performance of any act in respect

of the claimed invention is prohibited by any law or regulation, except

where the performance of that act would be contrary to public order or

morality. [Am. Act A1088: s.4]

(2) Where the Registrar is satisfied that the application complies with

sections 23, 29 and 30, he shall grant the patent and shall forthwith

-

(a) issue to the applicant a certificate of grant of the patent and a

copy of the patent together with a copy of the Examiner’s final report;

and [Am. Act A863: s.19]

(b) record the patent in the Register.

(2A) Where two or more persons have separately and independently made

the same invention and each of them has made an application for a patent

23

having the same priority date, a patent may be granted on each application.

[Ins. Act A863: s.19]

(3) As soon as possible thereafter the Registrar shall -

(a) cause to be published in the Gazette a reference to the grant of the

patent; and

(b) make available to the public, on payment of the prescribed fee, copies

of the patent. [Am. Act A863: s.19]

(4) The patent shall be deemed to be granted on the date that the Registrar

performs the acts referred to in subsection (2).

Section 32. Register of Patents.

(1) The Registrar shall keep and maintain a register called the Register

of Patents.

(2) The Register of Patents shall contain all such matters and particulars

relating to patents as may be prescribed.

(3) The Register of Patents shall be kept in such form and on such medium

as may be prescribed. [Subs. Act A863: s.20]

Section 32A. Notice of a trust not to be registered.

Notice of a trust, express, implied or constructive, shall not be entered

in the Register or be accepted by the Registrar. [Ins. Act A863: s.21]

Section 33. Examination of Register and certified copies.

Any person may examine the Register and may obtain certified extracts

therefrom on payment of the prescribed fee.

Section 33A. Certified copies of or extracts from Register, etc. admissible

as evidence in court.

(1) The Register shall be prima facie evidence of all matters required

or authorized by this Act to be entered therein.

(2) Copies of or extracts from the Register, or of or from any document

or publication in the Patent Registration Office, if certified by the

Registrar in writing under his hand, shall be admissible in evidence in

all courts without further proof or production of the original. [Ins.

Act A863: s.22]

24

Section 33B. Amendments to the Register.

(1) The Registrar may, on request made in the prescribed manner by the

owner of a patent, amend the Register -

(a) by correcting any error in the name or address of the owner of the

patent; or

(b) by entering any change in the name or address of the owner of the

patent.

(2) Where the Register has been amended under this section, the Registrar

may require the certificate of grant of the patent to be submitted to

him, and may -

(a) revoke the certificate of grant of the patent and issue a new certificate

of grant of the patent; or

(b) make any consequential amendments in the certificate of grant of the

patent as are rendered necessary by the amendment of the Register.

(3) Notwithstanding any other provision of this Act or the regulations

made under this Act, no fee shall be payable by the owner of a patent

in respect of a request to correct any error in the name or address of

such owner unless such error is caused or contributed to by such owner.

[Ins. Act A863: s.22]

Section 33C. Court may order rectification of the Register.

(1) The Court may, on the application of any aggrieved person, order the

rectification of the Register by directing -

(a) the making of any entry wrongly omitted from the Register;

(b) the expunging or amendment of any entry wrongly made in or remaining

in the Register; or

(c) the correcting of any error or defect in the Register.

(2) Notice of every application under this section shall be served on

the Registrar who shall have the right to appear and be heard, and who

shall appear if so directed by the Court.

(3) Unless otherwise directed by the Court, the Registrar, in lieu of

appearing and being heard, may submit to the Court a statement in writing

signed by him -

(a) giving particulars in relation to the matter in issue;

(b) of the grounds of any decision given by him affecting the matter in

issue;

(c) of the practice of the Patent Registration Office in like cases; or

25

(d) of such other matters relevant to the issues and within his knowledge

as Registrar, as he thinks fit,

and such statement shall be deemed to form part of the evidence in Court.

(4) A sealed copy of an order under this section shall be served on the

Registrar who shall, upon receipt of the order, take such steps as are

necessary to give effect to the order.

[Ins. Act A863: s.22]

Section 34. Public inspection

(1) The Registrar shall make available for public inspection after eighteen

months from the priority date or filing date of a patent application and

upon payment of the prescribed fee -

(a) the name, address and description of the applicant and the name and

address of his agent, if any;

(b) the application number;

(c) the filing date of the application and, if priority is claimed, the

priority date, the number of the earlier application and the name of the

State in which the earlier application was filed or where the earlier

application is a regional or an international application, the name of

the country or countries for which and the office at which it was filed;

(d) the particulars of the application including the description, claim

or claims, drawing or drawings, if any, and the abstract and any amendments

to the application, if any; and

(e) any change in ownership of the application and any reference to a

licence contract appearing in the file relating to the application.

(2) Notwithstanding subsection (1) a patent application shall not be made

available for public inspection if -

(a) the patent application is withdrawn or refused or deemed to be withdrawn

or refused before the expiry of the period of eighteen months from the

priority date or filing date of the patent application; or

(b) it appears to the Registrar that the application contains information

which contravenes public order or morality.

(3) Information relating to a patent application may be inspected only

with the written permission of the patent applicant if the information

is requested within eighteen months from the priority date or filing date

of the patent application.

(4) A certified extract of the information may be obtained upon payment

26

of the prescribed fee.

(5) After an application is made available for public inspection, an

applicant may in writing warn a person who has commercially or industrially

worked the invention which is the subject matter of the application that

a patent application for the invention has been filed.

(6) An applicant may demand that a person who has commercially or

industrially worked the invention pay as compensation to the applicant

in respect of the invention -

(a) from the time the person is given the warning under subsection (5);or

(b) in the absence of a warning, after the patent application in respect

of the invention has been made available for public inspection,

an amount equivalent to what he would have normally received for the working

of the invention to the time of the grant of the patent.

(7) The right to demand compensation as provided for in subsection (6)

shall be exercised only after the grant of the patent.

(8) The exercise of the right to demand compensation under subsection

(6) shall not prevent the applicant from exercising his rights as the

owner of the patent in respect of the invention after the grant of the

patent.

(9) Where a patent application is withdrawn or refused after the application

is made available for public inspection, the right under subsection (6)

shall be deemed never to have existed. [Subs. Act A1196: s.2]

Section 35. Duration of patent.

(1) Subject to subsections (1B) and (1C), the duration of a patent shall

be twenty years from the filing date of the application. [Subs. Act A1088:

s.5; Am. Act A1196: s.3]

(1A) Without prejudice to subsection (1) and subject to the other provisions

of this Act, a patent shall be deemed to be granted and shall take effect

on the date the certificate of grant of the patent is issued. [Ins. Act

A1088: s.5]

(1B) Where a patent application was filed before 1 August 2001, and was

pending on that date, the duration of the patent granted on that application

shall be twenty years from the date of filing or fifteen years from the

27

date of grant, whichever is the longer. [Ins. Act A1196: s.3]

(1C) The duration of a patent granted before 1 August 2001 and still in

force on that date shall be twenty years from the date of filing or fifteen

years from the date of grant whichever is the longer. [Ins. Act A1196:

s.3]

(2) Where a patentee intends at the expiration of the second year from

the date of grant of the patent to keep the same in force he shall, twelve

months before the date of expiration of the second and each succeeding

year during the term of the patent, pay the prescribed annual fee:

Provided, however, that a period of grace of six months shall be allowed

after the date of such expiration, upon payment of such surcharge as may

be prescribed. [Am. Act A648: s.19]

(3) If the prescribed annual fee is not paid in accordance with subsection

(2), the patent shall lapse, and a notice of the lapsing of the patent

for non-payment of any annual fee shall be published in the Gazette. [Ins.

Act A863: s.23]

NOTE - (1) The amendment to section 35 of the principal Act shall not

effect any application for the grant of a patent or application for a

certificate for utility innovation, as the case may be, made under the

principal Act before the commencement of this Act and the provisions of

the principal Act relating to such applications shall apply to that

application as if those provisions had not been amended by this Act.

(2) Inventions or utility innovations in respect of which patents or utility

innovation certificates are granted under the principal Act and are still

protected on the commencement of this Act shall remain protected for such

duration as was provided for in section 35 of the principal Act as if

that section had not been amended by this Act - See section 13, Act A1088.

Section 35A. Reinstatement of a lapsed patent.

(1) Within two years from the date on which a notice of the lapsing of

a patent is published in the Gazette -

(a) the owner of the patent or his successor in title; or

(b) any other person who would, if the patent had not lapsed, have been

entitled to the patent,

may apply to the Registrar in the prescribed form to have the patent

reinstated.

28

(2) The Registrar may reinstate a patent on an application made under

subsection (1) -

(a) upon payment of all annual fees due and of a prescribed surcharge

for reinstatement; and

(b) upon being satisfied that the non-payment of annual fees was due to

accident, mistake or other unforeseeable circumstances.

(3) Where the Registrar reinstates a lapsed patent, he shall cause notice

of the reinstatement to be published in the Gazette.

(4) The reinstatement of a lapsed patent shall not prejudice the rights

acquired by third parties after it is notified in the Gazette that the

patent has lapsed and before it is notified in the Gazette that the patent

has been reinstated.

(5) The Minister may make regulations to provide for the protection or

compensation of persons who have exploited or taken definite steps, by

contract or otherwise, to exploit a patent after it is notified in the

Gazette that the patent has lapsed and before it is notified in the Gazette

that the patent has been reinstated, but any such protection shall not

extend beyond such exploitation of the lapsed patent as such persons have

availed themselves of or have taken definite steps to avail themselves

of.

(6) No proceedings shall be taken in respect of an infringement of a patent

committed after it is notified in the Gazette that the patent has lapsed

and before it is notified in the Gazette that the patent has been reinstated.

[Ins. Act A863: s.24]

35B. Applicant or Patent Registration Office may request for international

search

(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).

29

(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.”.

[Ins. Act A1264: s.2]

30

PART VII RIGHTS OF OWNER OF PATENT

Section 36. Rights of owner of patent.

(1) Subject and without prejudice to the other provisions of this Part,

the owner of a patent shall have the following exclusive rights in relation

to the patent:

(a) to exploit the patented invention;

(b) to assign or transmit the patent;

(c) to conclude licence contacts.

(2) No person shall do any of the acts referred to in subsection (1) without

the consent of the owner of the patent.

(3) For the purposes of this Part, “exploitation” of a patented invention

means any of the following acts in relation to a patent:

(a) when the patent has been granted in respect of a product:

(i) making, importing, offering for sale, selling or using the product;

(ii) stocking such product for the purpose of offering for sale, selling

or using;

(b) when the patent has been granted in respect of a process:

(i) using the process;

(ii) doing any of the acts referred to in paragraph (a), in respect of

a product obtained directly by means of the process.

(4) For the purposes of this section, if the patent has been granted in

respect of a process for obtaining a product, the same product produced

by a person other than the owner of the patent or his licensee shall,

unless the contrary is proved, be taken in any proceedings to have been

obtained by that process. [Ins. Act A648: s.20]

Section 37. Limitation of rights.

(1) The rights under the patent shall extend only to acts done for industrial

orcommercialpurposesandinparticularnottoactsdoneonlyforscientific

research.

(1A) The rights under the patent shall not extend to acts done to make,

use, offer to sell or sell a patented invention solely for uses reasonably

related to the development and submission of information to the relevant

authority which regulates the manufacture, use or sale of drugs. [Ins.

Act A1088: s.6]

31

(2) Without prejudice to section 58A, the rights under the patent shall

not extend to acts in respect of products which have been put on the market

- [Am. Act A1088: s.6]

(i) by the owner of the patent;

(ii) by a person having the right referred to in section 38;

(iii) by a person having the right referred to in section 43;

(iv) by the beneficiary of a compulsory licence within the meaning of

section 48.

(3) The rights under the patent shall not extend to the use of the patented

invention on any foreign vessel, aircraft, spacecraft or land vehicle

temporarily in Malaysia. [Am. Act A648: s.21]

(4) The rights under the patent shall be limited in duration as provided

for in section 35.

(5) The rights under the patent shall be limited by the provisions of

section 35A, by the provisions on compulsory licences as provided in

sections 51 and 52 and by the provisions on the rights of Government or

any person authorized by the Government as provided in section 84. [Am.

Act A863: s.25]

Section 38. Rights derived from prior manufacture or use.

(1) Where a person at the priority date of the patent application -

(a) was in good faith in Malaysia making the product or using the process

which is the subject of the invention claimed in the application;

(b) had in good faith in Malaysia made serious preparations towards the

making of the product or using the process referred to in paragraph (a),

he shall have the right, despite the grant of the patent, to exploit the

patented invention:

Provided that the product in question is made, or the process in question

is used, by the said person in Malaysia:

Provided further that he can prove, if the invention was disclosed under

the circumstances referred to in paragraphs 14(3)(a), (b) or (c) that

his knowledge of the invention was not a result of such disclosure. [Am.

Act A648: s.22; Am. Act A863: s.26]

(2) The right referred to in subsection (1) shall not be assigned or

transmitted except as part of the business of the person concerned.

32

PART VIII ASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND PATENTS

Section39.Assignmentandtransmissionofpatentapplicationsandpatents.

(1) A patent application or patent may be assigned or transmitted.

(2) Any person becoming entitled by assignment or transmission to a patent

application or patent may apply to the Registrar in the prescribed manner

to have such assignment or transmission recorded in the Register.

(3) No such assignment or transmission shall be recorded in the Register

unless -

(a) the prescribed fee has been paid to the Registrar;

(b) in the case of an assignment, it is in writing signed by or on behalf

of the contracting parties.

(4) No such assignment or transmission shall have effect against third

parties unless so recorded in the Register.

Section 40. Joint ownership of patent applications or patents.

In the absence of any agreement to the contrary between the parties, joint

owners of a patent application or patent may, separately, assign or transmit

their rights in the patent application or patent, exploit the patented

invention and take action against any person exploiting the patented

invention without their consent, but may only jointly withdraw the patent

application, surrender the patent or conclude a licence contract.

33

PART IX LICENCE CONTRACTS

Section 41. Meaning of licence contract.

(1) For the purposes of this Part, a “licence contract” means any contract

by which the owner of a patent (the “licensor”) grants to another person

or enterprise (the “licensee”) a licence to do any or all of the acts

referred to in paragraph (1)(a), and subsection 36(3).

(2) A licence contract shall be in writing signed by or on behalf of the

contracting parties.

Section 42. Entry in the Register.

(1) A licensor may in accordance with the regulations as prescribed by

the Minister apply to the Registrar for an entry to be made in the Register

to the effect that any person may obtain a licence.

(2) At any time after an entry has been made in the Register, any person

may apply to the licensor through the Registrar for a licence.

(3) Where a licence contract is concluded between the parties, the

contracting parties shall inform the Registrar accordingly and the

Registrar shall record such fact in the Register.

(4) Upon a request in writing signed by or on behalf of the contracting

parties, the Registrar shall, on payment of the prescribed fee, record

in the Register such particulars relating to the contract as the parties

thereto might wish to have recorded:

Provided that the parties shall not be required to disclose or have recorded

any other particulars relating to the said contract.

(5) Where a licence contract is terminated, the contracting parties shall

inform the Registrar of the termination and the Registrar shall record

such termination in the Register.

(6) The licensor may in accordance with the regulations as prescribed

by the Minister apply to the Registrar for the cancellation of the entry

made under subsection (1).

[Subs. Act A648: s.23]

Section 43. Rights of the licensee.

(1) In the absence of any provision to the contrary in the licence contract,

34

the licensee shall be entitled to do any or all of the acts referred to

in paragraph 1(a), and subsection 36(3), within the whole geographical

area of Malaysia without limitation as to time and through any application

of the invention.

(2) In the absence of any provision to the contrary in the licence contract,

the licensee may not give to a third person his agreement to perform in

Malaysia in respect of the invention any of the acts referred to in paragraph

1(a), and subsection 36(3).

Section 44. Rights of the licensor.

(1) In the absence of any provision to the contrary in the licence contract,

the licensor may grant a further licence to a third person in respect

of the same patent or himself do any or all of the acts referred to in

paragraph 1(a), and subsection 36(3).

(2) Where the licence contract provides that the licence is exclusive

and unless it is expressly provided otherwise in such contract, the licensor

shall not grant a further licence to a third person in respect of the

same patent or himself do any of the acts referred to in paragraph 1(a),

and subsection 36(3).

Section 45. Invalid clauses in licence contracts.

Any clause or condition in a licence contract shall be invalid in so far

as it imposes upon the licensee, in the industrial or commercial field,

restrictions not derived from the rights conferred by this Part on the

owner of the patent, or unnecessary for the safeguarding of such rights:

[Am. Act A648: s.24]

Provided that -

(a) restrictions concerning the scope, extent or duration of exploitation

of the patented invention, or the geographical area in, or the quality

or quantity of the products in connection with, which the patented invention

may be exploited; and

(b) obligations imposed upon the licensee to abstain from all acts capable

of prejudicing the validity of the patent,

shall not be deemed to constitute such restrictions.

Section 46. Effect of patent application not being granted or patent being

declared invalid.

Where, before the expiration of the licence contract, any of the following

events occur in respect of the patent application or patent referred to

35

in such contract:

(a) the patent application is withdrawn;

(b) the patent application is finally rejected;

(c) the patent is surrendered;

(d) the patent is declared invalid;

(e) the licence contract is invalidated,

[Am. Act A648: s.25]

the licensee shall no longer be required to make any payment to the licensor

under the licence contract, and shall be entitled to repayment of the

payment already made:

Provided that the licensor shall not be required to make any repayment,

or shall be required to make repayment only in part, to the extent that

he can prove that any such repayment would be inequitable under all the

circumstances, in particular if the licensee has effectively profited

from the licence.

Section 47. Expiry, termination or invalidation of licence contract.

The Registrar shall -

(a) if he is satisfied that a recorded licence contract has expired or

been terminated, record that fact in the Register upon a request in writing

to that effect signed by or on behalf of the parties thereto;

(b) record in the Register the expiry, termination or invalidation of

a licence contract under any provision of this Part.

36

PART X COMPULSORY LICENCE

Section 48. Definition.

For the purpose of this Part -

“beneficiary of the compulsory licence” means the person to whom a

compulsory licence has been granted in accordance with this Part; and

“compulsorylicence”meanstheauthorizationtoperforminMalaysiawithout

the agreement of the owner of the patent in respect of the patented invention

any of the acts referred to in paragraph 1(a), and subsection 36(3).

Section 49. Application for compulsory licences.

(1) At any time after the expiration of three years from the grant of

a patent, or four years from the filing date of the patent application,

whicheveristhelater,anypersonmayapplytotheRegistrarforacompulsory

licence under any of the following circumstances:

(a) where there is no production of the patented product or application

of the patented process in Malaysia without any legitimate reason;

(b) where there is no product produced in Malaysia under the patent for

sale in any domestic market, or there are some but they are sold at

unreasonably high prices or do not meet public demand without any legitimate

reason.

(2) A compulsory licence shall not be applied for unless the person making

the application has made efforts to obtain authorization from the owner

of the patent on reasonable commercial terms and conditions but such efforts

have not been successful within a reasonable period of time.

(3) The application for a compulsory licence shall be in compliance with

such regulations as may be prescribed by the Minister.[Subs. Act A1088:

s.7]

Section 49A. Application for compulsory licence based on interdependence

of patents.

(1) If the invention claimed in a patent (“later patent”) cannot be worked

in Malaysia without infringing a patent granted on the basis of an

application benefiting from an earlier priority date (“earlier patent”),

and if the invention claimed in the later patent constitutes, in the opinion

oftheCorporation,animportanttechnicaladvanceofconsiderableeconomic

significance in relation to the invention claimed in the earlier patent,

the Corporation, upon the request of the owner of the later patent, the

licensee of a licence contract under the later patent or the beneficiary

37

of a compulsory licence under the later patent, may grant a compulsory

licence to the extent necessary to avoid infringement of the earlier patent.

[Am. Act A863: s.30, Am. Act A1088: s.8]

(2) If a compulsory licence is granted under subsection (1), the Corporation,

upon the request of the owner of the earlier patent, the licensee of a

licence contract under the earlier patent or the beneficiary of a compulsory

licence under the earlier patent, may grant a compulsory licence under

the later patent. [Ins. Act A648: s.26; Am. Act A1137: s.7]

Section 50. Request for grant of compulsory licence.

(1) In an application for a compulsory licence under section 49 or section

49A, the applicant shall set forth the amount of royalty, the conditions

of the exploitation of the patent and the restrictions of the rights of

the licensor or the licensee, as the case may be, and a request for the

said licence. [Am. Act A648: s.27]

(2) Where an application for a compulsory licence is filed pursuant to

section 49 or section 49A, and this section, the Registrar shall notify

the applicant, the licensor or the licensee, as the case may be, of the

date the application shall be considered by the Corporation. [Am. Act

A648: s.27; Am. Act A1137: s.8]

(3) The licensor or the licensee, as the case may be, shall be furnished

with a copy of the application as mentioned in subsection (1).

Section 51. Decision by the Corporation.

(1) In considering the application for a compulsory licence under section

49 or section 49A, the Corporation may require the applicant, the licensor

or the licensee, as the case may be, to appear before the Corporation

to give a statement or to hand to the Corporation any document or any

other item. [Am. Act A648: s.28]

(2) When the application has been considered by the Corporation and a

decision has been made, the applicant, the licensor or the licensee, as

the case may be, shall be notified of the decision. [Am. Act A1137: s.9]

Section 52. Scope of compulsory licence.

Upon the granting of the compulsory licence to the applicant the Corporation

shall fix - [Am. Act A1137: s.10]

(a) the scope of the licence specifying in particular the period for which

38

the licence is granted; [Subs. Act A1196: s.4]

(b) the time limit within which the beneficiary of the compulsory licence

shall begin to work the patented invention in Malaysia; and

(c) the amount and conditions of the royalty due from the beneficiary

of the compulsory licence to the owner of the patent.

Section 53. Limitation of compulsory licence.

(1) A compulsory licence granted by the Corporation - [Am. Act A1137:

s.11]

(a) shall not be assigned otherwise than in connection with the goodwill

or business or that part of the goodwill or business in which the patented

invention is used;

(b) shall be limited to the supply of the patented invention predominantly

in Malaysia.

(2) The beneficiary of the compulsory licence shall not conclude licence

contracts with third persons under the patent in respect of which the

compulsory licence was granted. [Subs. Act A1088: s.9]

Section 54. Amendment, cancellation and surrender of compulsory licence.

(1) Upon the request of the owner of the patent or of the beneficiary

of the compulsory licence, the corporation may amend the decision granting

the compulsory licence to the extent that new facts justify such amendment.

(2) Upon the request of the owner of the patent, the Corporation shall

cancel the compulsory licence -

(a) if the ground for the grant of the compulsory licence no longer exists;

(b) if the beneficiary of the compulsory licence has, within the time

limit fixed in the decision granting the licence, neither begun the working

of the patented invention in Malaysia nor made serious preparations towards

such working;

(c) if the beneficiary of the compulsory licence does not respect the

scope of the licence as fixed in the decision granting the licence;

(d) if the beneficiary of the compulsory licence is in arrears of the

payment due, according to the decision granting the licence.

(3) The beneficiary of the compulsory licence may surrender the licence

by a written declaration submitted to the Registrar who shall record the

surrender in the Register, publish it, and notify the owner of the patent.

(4) The surrender shall take effect from the date the Patent Registration

39

Office receives the declaration of the surrender. [Am. Act A1137: s.12]

40

PART XI SURRENDER AND INVALIDATION OF PATENT

Section 55. Surrender of patent.

(1) The owner of the patent may surrender the patent by a written declaration

submitted to the Registrar.

(2) The surrender may be limited to one or more claims of the patent.

(3) Where a licence contract in respect of a patent is recorded in the

Register, the Registrar shall not, in the absence of any provision to

the contrary in the licence contract, accept or record the said surrender

except upon receipt of a signed declaration by which every licensee or

sub-licensee on record consents to the said surrender unless the

requirement of his consent is expressly waived in the licence contract.

(3A) Where a compulsory licence has been granted in respect of a patent,

the Registrar shall not accept or record the said surrender except upon

receipt of a signed declaration by which the beneficiary of the compulsory

licence consents to the said surrender. [Ins. Act A648: s.29]

(4) The Registrar shall record the surrender in the Register and cause

it to be published in the Gazette.

(5) The surrender shall take effect from the date the Registrar receives

the declaration.

Section 56. Invalidation of patent.

(1) Any aggrieved person may institute Court proceedings against the owner

of the patent for the invalidation of the patent.

(2) The Court shall invalidate the patent if the person requesting the

invalidation proves -

(a) that what is claimed as an invention in the patent is not an invention

within the meaning of section 12 or is excluded from protection under

section 13 or subsection 31(1) or is not patentable because it does not

comply with the requirements of sections 11, 14, 15 and 16;

(b) that the description or the claim does not comply with the requirements

of section 23;

(c) that any drawings which are necessary for the understanding of the

claimed invention have not been furnished;

(d) that the right to the patent does not belong to the person to whom

41

the patent was granted; or

(e)thatincompleteorincorrectinformationhasbeendeliberatelyprovided

or caused to be provided to the Registrar under subsection 29A(4) by the

person to whom the patent was granted or by his agent. [Ins. Act A863:

s.32]

(2A) Notwithstanding subsection (2), the Court shall not invalidate the

patent on the ground mentioned in paragraph (2)(d) if the patent has been

assigned to the person to whom the right to the patent belongs. [Ins.

Act A863: s.32]

(3) Where the provisions of subsection (1) apply on only some of the claims

or some parts of a claim, such claims or parts of a claim may be declared

invalid by the Court and the invalidity of part of a claim shall be declared

in the form of a corresponding limitation of the claim in question.

Section 57. Date and effect of invalidation.

(1) Any invalidated patent or claim or part of a claim shall be regarded

as null and void from the date of the grant of the patent.

(2) When the decision of the Court becomes final, the Registrar of the

Court shall notify the Registrar who shall record the said declaration

in the Register and cause it to be published in the Gazette.

42

PART XII INFRINGEMENT

Section 58. Acts deemed to be infringement.

Subject to subsections 37(1), (2) and (3) and section 38, an infringement

of a patent shall consist of the performance of any act referred to in

subsection 36(3) in Malaysia by a person other than the owner of the patent

and without the agreement of the latter in relation to a product or a

process falling within the scope of protection of the patent.

Section 58A. Acts deemed to be non-infringement.

(1) It shall not be an act of infringement to import, offer for sale,

sell or use -

(a) any patented product; or

(b) any product obtained directly by means of the patented process or

to which the patented process has been applied,

which is produced by, or with the consent, conditional or otherwise, of

the owner of the patent or his licensee.

(2) For the purposes of this section, “patent” includes a patent granted

in any country outside Malaysia in respect of the same or essentially

the same invention as that for which a patent is granted under this Act.

[Ins. Act A1088: s.10]

Section 59. Infringement proceedings.

(1) The owner of the patent shall have the right to institute court

proceedings against any person who has infringed or is infringing the

patent.

(2) The owner of the patent shall have the same right against any person

who has performed acts which make it likely that an infringement will

occur, which in this Part is referred to as an “imminent infringement”.

(3) The proceedings in subsections (1) and (2) may not be instituted after

five years from the act of infringement.

Section 60. Injunction and award of damages.

(1) If the owner of the patent proves that an infringement has been committed

or is being committed, the Court shall award damages and shall grant an

injunction to prevent further infringement and any other legal remedy.

(2) If the owner of the patent proves imminent infringement the Court

43

shall grant an injunction to prevent infringement and any other legal

remedy.

(3) The defendant in any proceedings referred to in this section may request

in the same proceedings the invalidation of the patent, in which case

the provisions of subsections 56(2) and (3) shall apply.

Section 61. Infringement proceedings by licensee and beneficiary of

compulsory licence.

(1) For the purposes of this section, “beneficiary” means -

(a) any licensee unless the licence contract provides that the provisions

of this subsection do not apply or provides different provisions;

(b) the beneficiary of a compulsory licence granted under section 51.

(2) Any beneficiary may request the owner of the patent to institute Court

proceedings for any infringement indicated by the beneficiary, who shall

specify the relief desired.

(3) The beneficiary may, if he proves that the owner of the patent received

the request but refuses or fails to institute the proceedings within three

months from the receipt of the request, institute the proceedings in his

own name, after notifying the owner of the patent of his intention but

the owner shall have the right to join in the proceedings.

(4) Notwithstanding that the three-month period referred to subsection

(3)hasnotbeensatisfied,theCourtshall,ontherequestofthebeneficiary,

grant an appropriate injunction to prevent infringement or to prohibit

its continuation, if the beneficiary proves that immediate action is

necessary to avoid substantial damage.

Section 62. Declaration of non-infringement.

(1) Subject to subsection (4), any interested person shall have the right

to request, by instituting proceedings against the owner of the patent,

that the Court declare that the performance of a specific act does not

constitute an infringement of the patent.

(2) If the person making the request proves that the act in question does

not constitute an infringement of the patent, the Court shall grant the

declaration of non-infringement.

(3) (a) The owner of the patent shall have the obligation to notify the

44

licensee of the proceedings and the licensee shall have the right to join

in the proceedings in the absence of any provision to the contrary in

the licence contract.

(b) The person requesting the declaration of non-infringement shall have

the obligation to notify the beneficiaries of the compulsory licence

granted under section 51 of the proceedings and the said beneficiaries

shall have the right to join in the proceedings.

(4)Iftheactinquestionisalreadythesubjectofinfringementproceedings,

thedefendantintheinfringementproceedingsmaynotinstituteproceedings

for a declaration of non-infringement.

(5) Proceedings for a declaration of non-infringement may be instituted

together with proceedings to invalidate the patent, except where

invalidation of the patent is requested under subsection 60(3).

Section 62A. Applications in contravention of section 23A.

Any person who files or causes to be filed an application for a patent

in contravention of section 23A commits an offence and is liable on

conviction to a fine not exceeding fifteen thousand ringgit or to

imprisonment for a term not exceeding two years or to both. [Ins. Act

A648: s.30]

Section 62B. Publication of information in contravention of Registrar’s

directions.

Any person who publishes or communicates information in contravention

of any direction issued by the Registrar under section 30A commits an

offence and is liable on conviction to a fine not exceeding fifteen thousand

ringgit or to imprisonment for a term not exceeding two years or to both.

[Ins. Act A648: s.30]

45

PART XIII OFFENCES

Section 63. Falsification of Register, etc.

Any person who makes or causes to be made a false entry in any Register

kept under this Act, or makes or causes to be made a writing falsely

purporting to be a copy or reproduction of an entry in any such Register,

or produces or tenders or causes to be produced or tendered in evidence

any such false writing, commits an offence and is liable on conviction

to a fine not exceeding fifteen thousand ringgit or to imprisonment for

a term not exceeding two years or to both.

Section 64. Unauthorised claim of patent.

(1) Any person who falsely represents that anything disposed of by him

for value is a patented product or process commits an offence and, subject

to the following provisions of this section, is liable on conviction to

a fine not exceeding fifteen thousand ringgit or to imprisonment for a

term not exceeding two years or to both.

(2) For the purposes of subsection (1), a person who for value disposes

of an article having stamped, engraved or impressed on it or otherwise

applied to it the word “patent” or “patented” or anything expressing or

implying that the article is a patented product, shall be taken to represent

that the article is a patented product.

(3) Subsection (1) does not apply where the representation is made in

respect of a product after the patent for that product or, as the case

may be, the process in question has expired or been invalidated and before

the end of a period which is reasonably sufficient to enable that person

to take steps to ensure that the representation is not made or does not

continue to be made. [Am. Act A863: s.33]

(4) In proceedings for an offence under this section, it shall be a defence

for any person to prove that he used due diligence to prevent the commission

of the offence.

Section 65. Unauthorized claim that patent has been applied for.

(1) Any person who represents that a patent has been applied for in respect

of any article disposed of for value by him and -

(a) no such application has been made, or

(b) any such application has been refused or withdrawn,

commits an offence and, subject to the following provisions of this section,

46

is liable on conviction to a fine not exceeding fifteen thousand ringgit

or to imprisonment for a term not exceeding two years or to both.

(2) Paragraph 1(b) does not apply where the representation is made or

continues to be made before the expiry of a period which commences with

the refusal or withdrawal and which is reasonably sufficient to enable

that person to take steps to ensure that the representation is not made

or does not continue to be made.

(3) For the purposes of subsection (1), a person who for value disposes

of an article having stamped, engraved or impressed on it or otherwise

applied to it the words “patent pending”, or anything expressing or implying

that a patent has been applied for in respect of the article, shall be

taken to represent that a patent has been applied for in respect of the

article.

(4) In any proceedings for an offence under this section, it shall be

a defence for any person to prove that he used due diligence to prevent

the commission of the offence.

Section 66. Misuse of title “Patent Registration Office”.

Any person who uses on his place of business or any document issued by

him or otherwise, the words “Patent Registration Office” or any other

words suggesting that his place of business is, or is officially connected

with, the Patent Registration Office commits an offence and is liable

on conviction to a fine not exceeding fifteen thousand ringgit or to

imprisonment for a term not exceeding two years or to both.

Section 66A. Unregistered persons practising, etc., as a patent agent.

Any person who carries on business, practices, acts, describes himself,

holds himself out, or permits himself to be described or held out, as

a patent agent without being registered under this Act commits an offence

and is liable on conviction to a fine not exceeding fifteen thousand ringgit

or to imprisonment for a term not exceeding two years or to both. [Ins.

Act A648: s.31]

Section 67. Offences by corporation.

(1) Where an offence under this Act which has been committed by a body

corporate is proved to have been committed with the consent or connivance

of, or to be attributable to any neglect on the part of a director, manager,

secretary or other similar officer of the body corporate, or any person

47

who was purporting to act in any such capacity, he, as well as the body

corporate, commits that offence and is liable to be prosecuted against

and punished accordingly as provided by the Act.

(2) Where the affairs of a body corporate are managed by its members,

subsection (1) shall apply in relation to the acts and defaults of a member

in connection with his functions of management as if he was a director

of a body corporate.

48

PART XIV POWERS RELATING TO ENFORCEMENT

Section 68. Authorization of officer to exercise powers under this Part.

(1) The Minister may authorize in writing any public officer to exercise

the powers under this Part.

(2) Any such officer shall be deemed to be a public servant within the

meaning of the Penal Code [Act 574].

(3) In exercising any of the powers under this Part, an officer shall

on demand produce to the person against whom he is acting under this Act

the authority issued to him by the Minister.

Section 69. Powers of arrest.

(1) Any authorized officer or police officer may arrest without warrant

any person whom he sees or finds committing or attempting to commit or

abetting the commission of an offence or whom he reasonably suspects of

being engaged in committing or attempting to commit or abetting the

commission of any offence against this Act if such person refuses or fails

to furnish his name and residence or there are reasonable grounds for

believing in that he has furnished a false name or residence or that he

is likely to abscond.

(2) Any authorized officer or police officer making an arrest without

warrant shall, without unnecessary delay, bring the person arrested to

the nearest police station.

(3) No person who has been arrested by an authorized officer or police

officer shall be released except on his own bond or on bail or on the

special order in writing of a Magistrate.

Section 70. Search with warrant.

(1) Whenever it appears to any Magistrate upon written information on

oath and after any enquiry which he may think necessary that there is

reasonable cause to believe that in any dwelling house, shop, building

or place there is being committed an offence against this Act, or any

regulations made thereunder, he may issue a warrant authorizing any

authorized officer or police officer named therein, by day or night and

with or without assistance to enter the dwelling house, shop, building

or place and there search for and seize or take copies of all books, accounts,

documents or other articles which contain or are suspected to contain

49

information as to any offence so suspected to have been committed or any

other thing relating to the offence.

(2) Any such officer may if it is necessary so to do -

(a) break open any outer or inner door of the dwelling house, shop, building

or place, and enter thereinto;

(b) forcibly enter the dwelling house, shop, building or place and every

part thereof;

(c) remove by force any obstruction to enter, search, seize and remove

as he is empowered to effect; and

(d) detain every person found therein until the dwelling house, shop,

building or place has been searched.

Section 71. List of things seized.

The authorized officer or police officer seizing any books, accounts,

documents or other articles under this Part shall prepare a list of the

things seized and forthwith deliver a copy signed by him to the occupier

or his agents or servants present in the premises.

Section 72. Return of things seized.

Where under this Part possession has been taken of any books, accounts,

documents or other articles, then the authorized officer or police officer

shall within four weeks of the seizure, where no criminal proceedings

have been instituted, restore possession to the owner.

Section 73. Power of investigation.

(1) An authorized officer or police officer shall have the power to

investigate the commission of any offence under this Act or regulations

made thereunder.

(2) Every person required by an authorized officer or police officer to

give information or produce any book, account, document or other article

relating to the commission of such offence which is in the person’s power

to give shall be legally bound to give the information or to produce the

book, account, document or other article.

Section 74. Examination of witnesses.

(1) An authorized officer or police officer making an investigation under

section 73 may examine orally any person supposed to be acquainted with

the facts and circumstances of the case and shall reduce into writing

any statement made by the person so examined.

50

(2) Such person shall be bound to answer all questions relating to such

case put to him by such officer:

Provided that such person may refuse to answer any question the answer

to which have a tendency to expose him to a criminal charge or penalty

or forfeiture.

(3) A person making a statement under this section shall be legally bound

to state the truth, whether or not such statement is made wholly or partly

in answer to questions.

(4) An authorized officer or police officer examining a person under

subsection (1) shall first inform that person of the provisions of

subsections (2) and (3).

(5) A statement made by any person under this section whether or not a

caution has been administered to him under section 75 shall, whenever

possible, be reduced into writing and signed by the person making it or

affixed with his thumb-print, as the case may be, after it has been read

to him in the language in which he made it and after he has been given

an opportunity to make any correction he may wish.

Section 75. Admission of statements in evidence.

(1) Where any person is charged with any offence under this Act or any

regulations made thereunder, any statement whether the statement amounts

to a confession or not or is oral or in writing, made at any time, whether

before or after the person is charged and whether in the course of

investigations made under section 74 or not and whether or not wholly

or partly in answer to questions by that person to or in the hearing of

any authorized officer or police officer of or above the rank of Inspector

and whether or not interpreted to him by another authorized officer, police

officer or other person, shall be admissible in evidence at his trial

and, if the person charged tenders himself as a witness, any such statement

may be used in cross-examination and for the purpose of impeaching his

credit:

Provided that -

(a) no such statement shall be admissible or used as aforesaid -

(i) if the making of the statement appears to the Court to have been caused

by any inducement, threat or promise having reference to the charge

proceeding from a person in authority and sufficient in the opinion of

the Court to give the person charged grounds which would appear to him

51

reasonable for supposing that by making it he would gain any advantage

or avoid any evil of a temporal nature in references to the proceedings

against him; or

(ii) in the case of a statement made by the person after his arrest, unless

theCourtissatisfiedthatacautionwasadministeredtohiminthefollowing

words or words to the like effect:

“It is my duty to warn you that you are not obliged to say anything or

to answer any question, but anything you say, whether or not in answer

to a question, may be given in evidence”; and

(b) a statement made by any person before there is time to caution him

shall not be rendered inadmissible in evidence merely by reason of no

such caution having been administered if it had been administered as soon

as possible.

(2) Notwithstanding anything to the contrary contained in any written

law, a person accused of an offence to which subsection (1) applies shall

not be bound to answer any questions relating to the case after any such

caution as aforesaid has been administered to him.

Section 76. Obstruction to search, etc.

Any person who -

(a) refuses any authorized officer or police officer access to any place;

(b) assaults, obstructs, hinders or delays any authorized officer or police

officer in effecting any entrance which he is entitled to effect under

this Act, or in the execution of any duty imposed or power conferred by

this Act; or

(c) refuses or neglects to give any information which may reasonably be

required of him and which he has it in his power to give,

commits an offence and is liable on conviction to a fine not exceeding

three thousand ringgit or to imprisonment for a term not exceeding one

year or to both.

Section 77. Institution of prosecution.

No prosecution for any offence under this Act shall be instituted except

by or with the consent in writing of the Public Prosecutor.

Section 78. Jurisdiction of subordinate Court.

(1) Notwithstanding any other written law, a subordinate Court shall have

power to try any offence under this Act and on conviction to impose the

full penalty therefor.

52

(2) For the purpose of subsection (1), “subordinate Court” means a Sessions

Court or a Magistrate’s Court.

53

PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY

Section 78A. Interpretation.

For the purposes of this Part -

“International Bureau” means the International Bureau of the World

Intellectual Property Organization and, as long as it subsists, the United

International Bureau for the Protection of Intellectual Property (BIRPI);

“international search” means a search conducted by the International

Searching Authority appointed under Article 16 of the Treaty to discover

relevant prior art with respect to the invention;

“international phase” means the period beginning from the filing of an

internationalapplicationtothetimetheinternationalapplicationenters

the national phase;

“national phase” means the period beginning from the performance, by the

applicant, of the acts specified in subsection 78O(1);

“State” means a state which is a party to the Treaty;

“ patent” includes utility innovation;

“receiving office” means the national office or the intergovernmental

organization with which the international application has been filed;

“elected office” means the national office of or acting for the State

elected by the applicant under Chapter II of the Treaty;

“designated office” means the national office of or acting for the State

designated by the applicant under Chapter I of the Treaty;

“international preliminary examination” means a preliminary and

non-binding examination carried out by the International Preliminary

Examination Authority appointed under Article 32 of the Treaty on the

questions of whether the invention appears to be novel, involves an

inventive step and is industrially applicable;

“Treaty” means the Patent Cooperation Treaty done at Washington on 19

June 1970.

“international application” means an application for a patent filed under

the Treaty; [Ins. Act A1264: s.3]

Section 78B. Application.

The provisions of this Part shall apply to an international application

filed under the Treaty. [Ins. Act A1196: s.5]

Section 78C. Patent Registration Office as receiving office.

The Patent Registration Office shall act as a receiving office for an

international application. [Ins. Act A1196: s.5]

54

Section 78D. Patent Registration Office as designated office.

The Patent Registration Office shall act as a designated office for an

international application in which Malaysia is designated for the purposes

of obtaining a patent under Parts IVA and VI.

[Am. Act A1264: s.4]

Section 78E. Patent Registration Office as elected office.

The Patent Registration Office shall act as an elected office for an

international application if the applicant elects Malaysia as a State

in which he intends to use the results of the international preliminary

examination. [Ins. Act A1196: s.5]

Section 78F. Persons eligible for international application.

Subject to section 23A, any person who is a citizen or resident of Malaysia

shall be entitled to file an international application for a patent with

the Patent Registration Office. [Am. Act A1264: s.5]

Section 78G. Filing of an international application.

(1) An international application shall be filed by submitting to the Patent

Registration Office a request in the prescribed form together with a

description, one or more claims, drawings, if any, and an abstract in

the form as specified in the Treaty.

(1A) An international application shall be filed in the English language.

[Ins. Act A1264: s.6]

(2) The request shall contain -

(a) a petition to the effect that the international application be processed

according to the Treaty;

(b) the designation of the State or States in which protection for the

invention is desired;

(c) the name, nationality and residence of the applicant;

(d) the name and the place of business of the applicant’s agent, if any;

(e) the title of the invention; and

(f) the name and address of the inventor.

(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.

55

(3) [Deleted by Act A1264: s.6]

Section 78H [Deleted by Act A1264: S.7]

Section 78I [Deleted by Act A1264: S.8]

Section 78J [Deleted by Act A1264: S.9]

Section 78K. Processing of international applications.

The Treaty shall apply to the processing of an international application

during the international phase of the application. [Ins. Act A1196: s.5]

78KA. Fees

An international application shall be subject to the fees as specified

in the Treaty and other prescribed fees. [Ins. Act A1264: s.10]

Section 78L. International Searching Authority.

(1) The Registrar shall, by notification published in the Gazette, specify

the International Searching Authority which is competent to carry out

the international search for international applications filed with the

Patent Registration Office.

(2) When there is more than one competent International Searching Authority,

the applicant shall indicate his choice of International Searching

Authority in the request.[Ins. Act A1196: s.5]

Section 78M. International Preliminary Examination Authority.

(1) The Registrar shall, by notification published in the Gazette, specify

the International Preliminary Examination Authority which is competent

to carry out international preliminary examination for international

applications filed with the Patent Registration office.

(2) The applicant may request for an international preliminary examination

to be carried out in respect of the application by submitting a demand

in accordance with the Treaty.

[Am. Act A1264: s.12]

Section 78N. International publication of international application and

its effect.

(1) The international publication of an international application by the

56

International Bureau designating Malaysia as a designated office shall

have the same effect as the making available for public inspection under

section 34 of a patent application if the international publication is

transmitted to and received by the Patent Registration Office.

(2) The Patent Registration Office shall make available the international

publication of the international application designating Malaysia as a

designated office for public inspection as soon as possible.

Section 78O. Entering the national phase

(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 7 Patents

(Amendment) (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. [Am. A1264: s.13]

Section 78OA. Reinstatement

(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

57

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. [Ins. A1264: s.13]

Section 78P [Deleted by Act A1264: s.15]

Section 78Q. Conversion of an international application into a national

application.

(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;

58

or

(b)theInternationalBureauhasdeclaredthataninternationalapplication

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, the applicant may request the

Patent Registration Office to review the justification of the refusal

or declaration under the Treaty.”; and

(2) If the Patent Registration Office finds that the refusal or declaration

referred to in subsection (1) was the result of an error or omission,

it shall treat the international application as if such error or omission

had not occurred and shall treat the application as a patent application

in accordance with the provisions of this Act. [Am. A1264: s.16]

(3) [Deleted by Act A1264: s.16]

59

PART XV MISCELLANEOUS

Section 79. Power of Registrar to amend patent application.

(1) The Registrar may, upon a request made by an applicant for a patent

in accordance with patent regulations made under this Act, amend the

applicant’s patent application, or any document submitted at the Patent

Registration Office in connection with the application, for the purpose

of correcting a clerical error or an obvious mistake.

(2) Every request under subsection (1) shall be accompanied by the

prescribed fee.[Subs. Act A863: s.37]

Section 79A. Power of Registrar to amend patent.

(1) The Registrar may, upon a request made by the owner of a patent in

accordance with regulations made under this Act, amend the description,

the claim or claims, or the drawings, of the patent, or amend any other

document associated with the patent, for the purpose of correcting a

clerical error or an obvious mistake or for any other reason acceptable

to the Registrar.

(2) The Registrar shall not make an amendment under this section if the

amendment would have the effect of disclosing a matter which extends beyond

that disclosed before the amendment or if the amendment would have the

effect of extending the protection conferred at the time of grant of the

patent.

(3) The Registrar shall not make an amendment under this section if there

are pending before any Court proceedings in which the validity of the

patent may be put in issue.

(4) Every request under subsection (1) shall be accompanied by the

prescribed fee.

(5) Notwithstanding subsection (4), no fee shall be payable by the owner

of a patent in respect of a request to correct a mistake or an error in

any document issued by the Patent Registration Office unless such mistake

or error is caused or contributed to by such owner.

Section 80. Other powers of Registrar.

(1) The Registrar may, for the purpose of this Act -

(a) summon witnesses;

60

(b) receive evidence on oath;

(c) require the production of any document or article; and

(d) amend costs as against a party to proceedings before him.

(2) Any person who without any lawful excuse fails to comply with any

summons, order or direction made by the Registrar under paragraphs 1(a),

(b) and (c) commits an offence and is liable on conviction to a fine not

exceeding two thousand ringgit or to imprisonment for a term not exceeding

six months or to both.

(3) Costs awarded by the Registrar may in default of payment be recovered

in a Court of competent jurisdiction as a debt due by the person against

whomthecostswereaccordedtothepersoninwhosefavourtheywereaccorded.

Section 81. Exercise of discretionary power.

Where any discretionary power is given to the Registrar by this Act or

any regulations made thereunder, he shall not exercise the power on any

person who may be adversely affected by his decision without giving to

the person an opportunity of being heard.

Section 82. Extension of time.

Subject to subsection 27(1A), subsection 29A(8) and subsection 30(4),

where, by this Act or any regulations made thereunder a time is specified

within which an act or thing is to be done, the Registrar may, unless

otherwise expressly directed by the Court, extend the time either before

or after its expiration, upon payment of the prescribed fee. [Am. Act

A648: s.32; Am. Act A863: s.39]

Section 83. Extension of time by reason of error in Patent Registration

Office.

(1) Where by reason of -

(a) circumstances beyond the control of the person concerned; or

(b) an error or action on the part of the Patent Registration Office,

an act in relation to an application for a patent or in proceedings under

this Act, not being proceedings in a Court, required to be done within

a certain time has not been so done, the Registrar may extend the time

for doing the act. [Am. Act A863: s.40]

(2) The time required for doing an act may be extended under this section

although that time has expired.

61

Section 83A. Certificate by the Registrar.

The Registrar may certify, by writing under his hand, that an entry, matter

or thing required by or under this Act to be made or done, or not to be

made or done, has or has not been made or done, as the case may be, and

such certificate shall be prima facie evidence of the truth of the facts

stated therein and shall be admissible in evidence in all courts. [Ins.

Act A863: s.41]

Section 84. Rights of Government.

(1) Notwithstanding anything contained in this Act -

(a) where there is national emergency or where the public interest, in

particular, national security, nutrition, health or the development of

other vital sectors of the national economy as determined by the Government,

so requires; or

(b) where a judicial or relevant authority has determined that the manner

of exploitation by the owner of the patent or his licensee is

anti-competitive,

the Minister may decide that, even without the agreement of the owner

of the patent, a Government agency or a third person designated by the

Minister may exploit a patented invention.

(2) The owner of the patent shall be notified of the decision of the Minister

as soon as is reasonably practicable.

(3) The exploitation of the patented invention shall be limited to the

purpose for which it was authorized and shall be subject to the payment

totheownerofthepatentofanadequateremunerationforsuchexploitation,

taking into account -

(a) the economic value of the Minister’s authorization as determined in

the decision; and

(b) where a decision has been taken under paragraph (1)(b), the need to

correct anti-competitive practices.

(4) The Minister shall make his decision under subsection (3) after hearing

the owner of the patent and any other interested person if they wished

to be heard.

(5) The exploitation of a patented invention in the field of semi-conductor

technology shall only be authorized either -

(a) for public non-commercial use; or

(b) where a judicial or relevant authority has determined that the manner

62

of exploitation of the patented invention, by the owner of the patent

or his licensee, is anti-competitive and if the Minister is satisfied

that the authorization would remedy such anti-competitive practice.

(6) The authorization shall not exclude -

(a) the continued exercise by the owner of the patent of his rights under

subsection 36(1); or

(b) the issuance of compulsory licences under Part X.

(7) Where a third person has been designated by the Minister, the

authorization may only be transferred with the goodwill or business of

that person or with that part of the goodwill or business in which the

patented invention is being exploited.

(8) The exploitation of the invention by the Government agency or the

third person designated by the Minister shall be predominantly for the

supply of the market in Malaysia.

(9) Upon the request of -

(a) the owner of the patent; or

(b) the Government agency or the third person authorized to exploit the

patented invention,

the Minister may, after hearing the parties, if either or both wish to

be heard, vary the terms of the decision authorizing the exploitation

of the patented invention to the extent that changed circumstances justify

such variation.

(10)Upontherequestoftheownerofthepatent,theMinistershallterminate

the authorization if he is satisfied, after hearing the parties, if either

or both wish to be heard, that the circumstances mentioned in subsection

(1) which led to his decision have ceased to exist and are unlikely to

recur or that the Government agency or the third person designated by

him has failed to comply with the terms of the decision.

(11) Notwithstanding subsection (10), the Minister shall not terminate

the authorization if he is satisfied that the need for adequate protection

of the legitimate interests of the Government agency or the third person

designated by him justifies the maintenance of the decision.

(12)Theownerofapatent,aGovernmentagencyorthethirdpersonauthorized

to exploit a patented invention may appeal to the Court against the decision

63

of the Minister under this section.

(13) In this section “Government agency” means the Federal Government

or the Government of a State and includes a Ministry or Department of

that Government.[Subs. Act A1088: s.11]

Section 85. Refusal to grant patent by the Registrar.

The Registrar in the exercise of his powers shall have the right to refuse

to grant a patent for products or processes scheduled under regulations

made by the Minister under this Act where it appears to the Registrar

that the granting of such a patent would be prejudicial to the interest

or security of the nation. [Am. Act A648: s.34]

Section 86. Patent agents.

(1) There shall be kept at the Patent Registration Office a Register of

Patents Agents.

(2) No person shall carry on business, practice, act, describe himself,

hold himself out, or permit himself to be described or held out, as a

patent agent unless he is registered in the Register of Patents Agents.

(3) The registration of a patent agent mentioned in subsection (2) shall

be in accordance with the regulations as may be prescribed by the Minister

under this Act.

(4) The appointment or change of a patent agent shall not be effective

against any third person unless it is registered in the Register of Patents

Agents.

(5) A person who has neither his domicile nor residence in Malaysia may

not proceed before the Patent Registration Office under the provisions

of this Act in respect of his patent except through a patent agent.

[Subs. Act A648: s.35; Am. Act A863: s.43]

Section 87. Regulations.

(1) Subject to the provisions of this Act, the Minister may make regulations

for the purpose of carrying into effect the provisions of this Act.

(2) In particular and without prejudice to the generality of subsection

(1), such regulations may provide for all or any of the following:

(a) to regulate the procedure to be followed in connection with any

64

proceeding or other matter before the Registrar or the Patent Registration

Office under this Act including the service of documents;

(b) to classify goods including methods and processes for the purpose

of registration of patents;

(c) to make or require duplication of patents or other documents;

(d) to secure and regulate the publishing, selling or distributing, in

such manner as the Minister may think fit, of copies of patents and other

documents;

(e) to prescribe the fees payable for applications for patents and other

fees payable for other matters prescribed under this Act; [Am. Act A863:

44]

(f) to prescribe forms, books, registers, documents and other matters

to be used under this Act;

(g) to regulate generally on matters pertaining to the business of patents

carried on in the Patent Registration Office whether or not specially

prescribed under this Act.

Section 88. Appeal.

(1) Any person aggrieved by any decision or order of the Registrar or

the Corporation may appeal to the Court. [Am. Act A1137: s.14]

(2) The same rules of procedure on appeal shall apply to appeals made

under subsection (1) as to appeals to the High Court from a decision of

a subordinate Court in civil matters.

Section 89. Repeal and saving provisions.

(1) The Registration of United Kingdom Patents Act 1951 [Act 215], the

Patents Ordinance of Sarawak [Sarawak Cap. 61], the Registration of United

Kingdom Patents Ordinance of Sabah [Sabah Cap. 124] and the Patents (Rights

of Government) Act 1967 [Act 53 of 1967] are repealed: [Am. Act A648:

s.36]

Provided that:

(a) any subsidiary legislation made under the repealed laws shall in so

far as such subsidiary legislation is not inconsistent with the provisions

of this Act continue in force and have effect as if it had been made under

this Act and may be repealed, extended, varied or amended accordingly;

(b) any appointment made under the repealed laws or subsidiary legislation

made thereunder shall continue in force and have effect as if it had been

made under this Act unless the Minister otherwise directs;

(c) any certificate or grant issued or made, in respect of a patent, under

the repealed laws and in force immediately prior to the coming into force

65

of this Act shall remain in force -

(i) so long as the original patent remains in force in the United Kingdom;

or

(ii) until the expiration of twenty years from the date of application,

whichever is the earlier.[Subs. Act A863: s.45]

Section 90. Transitional.

(1) Where an application has been made under an Act or Ordinance repealed

under section 89, the Registrar may issue a certificate or make a grant

on such application as if the Act or Ordinance had not been repealed,

and such certificate or grant shall remain in force - [Am. Act A863: s.46]

(a) so long as the original patent remains in force in the United Kingdom;

or

(b) until the expiration of twenty years from the date of application,

whichever is the earlier.

(2) Where a patent has been granted under the United Kingdom Patents Act

1977 not earlier than twenty-four months before the coming into force

of this Act, the owner of the patent may, within a period of twelve months

from the coming into force of this Act, make an application for a certificate

or a grant and the Registrar may issue a certificate or make a grant on

such application as if the Act or Ordinance repealed under section 89

had not been repealed, and such certificate or grant shall remain in force

- [Am. Act A863: s.46]

(a) so long as the original patent remains in force in the United Kingdom;

or

(b) until the expiration of twenty years from the date of the application,

whichever is the earlier.

(3) [Deleted by Act A863: s.46].

(4) Where, prior to the coming into force of this Act, an application

for a patent has been made under the United Kingdom Patents Act 1977 or

an application designating the United Kingdom has been filed at the European

Patent Office, the applicant may, within a period of twelve months from

the coming into force of this Act, make an application for the grant of

a patent under this Act, and such application shall be accorded the filing

date and the right of priority which have been accorded to it in the United

Kingdom. [Ins. Act A648: s.37]

66

FIRST SCHEDULE [Section 7] [Deleted by Act A1137]

67

SECOND SCHEDULE [Section 17A]

MODIFICATIONS TO THE PROVISIONS OF THE ACT APPLICABLE TO UTILITY

INNOVATIONS

(1) Provisions

of the Act

(2) Modifications

Section 3 Substitute “certificate for a utility innovation” and

“application for a certificate for a utility innovation”

for “patent” and “patent application” respectively in

the definition of “right”.

Section 13 1. Substitute “utility innovations” for “inventions”.

2. Substitute “eligible for a certificate for a utility

innovation” for “patentable”.

Section 14 Substitute therefor the following:

“14. Novelty.

(1) A utility innovation is new to Malaysia if it is not

anticipated by prior art.

(2) Prior art shall consist of -

(a) everything disclosed to the public by written

publication, by oral disclosure, by use or in any other

way, prior to the priority date of the application for

a certificate for a utility innovation claiming the

utility innovation; [Am. Act A863: s.47]

(b) the contents of a domestic application for a

certificate for a utility innovation having an earlier

priority date than the application referred to in

paragraph(a)totheextentthatsuchcontentsareincluded

in the certificate for a utility innovation granted on

the basis of the said domestic application. [Am. Act A863:

s.47]

(3) A disclosure made under paragraph 2(a) shall be

disregarded -

(a) if such disclosure occurred within one year preceding

the date of the application and if such disclosure was

by reason or in consequence of acts committed by the

applicant or his predecessor in title;

(b) if such disclosure occurred within one year preceding

the date of the application and if such disclosure was

by reason or in consequence of any abuse of the rights

of the applicant or his predecessor in title.”.

68

Section 16 Substitute “utility innovation” for “invention”. [Ins.

Act A1088: s.12]

PART V

(except as

otherwise

provided

below)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “innovator” for “inventor”.

3. Substitute “utility innovation” for “invention”.

4. Substitute “a utility innovation” for “an invention”.

Section 19 Substitute therefor the following:

“19. Judicial assignment of application for a utility

innovation or a certificate for a utility innovation.

Where the essential elements of the utility innovation

claimed in -

(a) an application for a certificate for a utility

innovation; or

(b) a certificate for a utility innovation,

havebeenunlawfullyderivedfromaninventionorautility

innovation for which the right to the patent or the

certificate for a utility innovation belongs to another

person, such other person may apply to the Court for an

order that the said application or certificate be assigned

to him:

Provided that the Court shall not entertain an application

for the assignment of a certificate for a utility

innovation after three years from the date of the grant

of the certificate.”.

PART VI

(except as

otherwise

provided

below)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “innovator” for “inventor”.

3. Substitute “utility innovation” for “invention”.

4. Substitute “an application for a certificate for a

utility innovation” for “a patent application”.

Section 28 Substitute“theclaim”for“aclaimorclaims”inparagraph

1(d).

Section 29 [Deleted by Act A863: s.47]

Section 31 1. In subsection (2) -

(a)-(b) [Deleted by Act A1137: s.16]

(c) substitute “a certificate for a utility innovation”

for “a certificate of grant of the patent and a copy of

the patent” in paragraph (a);

(d) substitute the following paragraph for paragraph

69

(b):“direct the Registrar to record the certificate for

a utility innovation in the Register for Certificates

for Utility Innovations.”.

2. [Deleted by Act A1137: s.16]

Section 32 1. Substitute “Register for Certificates for Utility

Innovations” for “Register of Patents”.

2. Substitute “certificates for utility innovations” for

“patents”.

[Subs. Act A863: s.47]

Section 33B Substitute “certificate for utility innovation” for

“certificate of grant of the patent”. [Ins. Act A863:

s.47]

Section 34 Substitute “any application for a certificate for a

utility innovation” for “any patent application”.

Section 35 Substitute therefor the following:

“35. Duration of certificate for a utility innovation.

(1) The duration of a certificate for a utility innovation

shall be ten years from the filing date of the application.

[Subs. Act A1088: s.12]

(1A) Without prejudice to subsection (1) and subject to

the other provisions of this Act, a certificate for a

utility innovation shall be deemed to be granted and shall

take effect on the date the certificate for utility

innovation is issued. [Ins. Act A1088: s.12]

(2) Notwithstanding subsection (1), the owner of a

certificate for a utility innovation may, before the

expiration of the period of ten years mentioned in

subsection (1), apply for an extension for an additional

period of five years and may, before the expiration of

the second period of five years, apply for an extension

for a further period of five years. [Am. Act A1088: s.12]

(3) An application for extension under subsection (2)

shall be accompanied by an affidavit of the owner of the

certificate for the utility innovation showing that the

utility innovation is in commercial or industrial use

in Malaysia, or satisfactorily explaining its non-use,

and shall also be accompanied by the prescribed fee.

(4) Where the owner of a certificate for a utility

innovation intends to keep the certificate in force, he

shall, twelve months before the date of expiration of

the third and each succeeding year during the term of

70

the certificate, pay the prescribed annual fee:

Provided, however, that a period of grace of six months

shall be allowed after the date of such expiration upon

payment of such surcharge as may be prescribed.

(5) If the annual fee is not paid in accordance with

subsection (4) the certificate for the utility innovation

shall lapse, and a notice of the lapsing of the certificate

for non-payment of any annual fee shall be published in

the Gazette. [Ins. Act A863: s.47]

PART VII

(except as

otherwise

provided

below)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “utility innovation for which a certificate

has been granted” for “patented invention”.

3. Substitute “application for a certificate for a utility

innovation” for “patent application”.

4. Substitute “utility innovation” for “invention”.

Section 37 1. In subsection (2) -

(a) substitute a full stop for the semicolon at the end

of paragraph (iii);

(b) delete paragraph (iv).

2. Delete “, by the provisions on compulsory licences

as provided in sections 51 and 52” in subsection (5).

[Subs. Act A863: s.47]

Section 38 In subsection (1) -

(a) substitute a full stop for the colon at the end of

the first proviso;

(b) delete the second proviso.

PART VIII 1. Substitute “An application for a certificate for a

utility innovation or a certificate for a utility

innovation” for “A patent application or patent”.

2. Substitute “an application for a certificate for

utility innovation or a certificate for a utility

innovation” for “a patent application or patent”.

3. Substitute “the application for a certificate for a

utility innovation” for “the patent application”.

4. Substitute “certificate for a utility innovation” for

“patent”.

5. Substitute “utility innovation for which a certificate

has been granted” for “patented invention”.

71

PART IX 1. Substitute “certificate for a utility innovation” for

a “patent”.

2. Substitute “utility innovation” for “invention”.

3. Substitute “utility innovation for which a certificate

has been granted” for “patented invention”.

4. Substitute “application for a certificate for a utility

innovation” for “patent application”.

PART XI

(except as

otherwise

provided

below)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “utility innovation” for “invention”.

Section 55 Delete subsections (2) and (3A).

Section 56 1. Substitute the following paragraph for paragraph

(2)(a):

“(a) that what is claimed as a utility innovation in the

certificate for a utility innovation is not a utility

innovation within the meaning of section 17 or is excluded

from protection under section 13 or subsection 31(1);”.

2. Substitute “some parts of a claim, such parts of a

claim” for “some of the claims or some parts of a claim,

such claims or parts of a claim” in subsection (3).

PART XII

(except as

otherwise

provided

below)

Substitute “certificate for a utility innovation” for

“patent”.

Section 59 Substitute “two” for “five” in subsection (3).

Section 61 Substitute the following subsection for subsection (1):

“(1) For the purposes of this section, “beneficiary” means

any licensee unless the licence contract provides that

the provision of this subsection do not apply or provides

different provisions.”.

Section 62 1. Delete “(a)” after “(3)” in subsection (3).

2. Delete paragraph (3)(b).

PART XIII

(except as

otherwise

provided

below)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “product in respect of which a certificate

for a utility innovation has been granted” for “patented

product”.

72

3. Substitute “utility innovation” for “invention”.

Section 64 1. Substitute “product or process in respect of which

a certificate for a utility innovation has been granted”

for “patented product or process” in subsection (1).

2. Delete ‘the word “patent” or “patented” or’ in

subsection (2).

PART XV

(except in

section 86)

1. Substitute “certificate for a utility innovation” for

“patent”.

2. Substitute “utility innovation” for “invention”.

3. Substitute “certificates for utility innovations” for

“patents”.

Section 86 Substitute “his certificate for a utility innovation”

for “his patent” in subsection (5).”.

[Ins. Act A648: s.39]

Note: Saving provision. [Act A1137]

The amendments to the principal Act shall not affect any preliminary

examination, any request for substantive examination or modified

substantive examination, any application for the grant of a patent or

application for a certificate for utility innovation or any patent or

utility innovation certificate granted, as the case may be, made under

the principal Act before the appointed date and the amended provisions

shall apply to the examination, request, application or grant, as the

case may be, as if the provisions had not been so amended. [Act A1137:

s.17]

73

74

LIST OF AMENDMENTS (Omitted)