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.
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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)
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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)
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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
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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.
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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.
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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].
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(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]
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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]
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(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.
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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.
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(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]
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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
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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.
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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.
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(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]
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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
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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
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(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)