Patents (Amendment) Regulations 1995, Malaysia, WIPO Lex

Main text(s)

English Patents (Amendment) Regulations 1995

PATENTS (AMENDMENT) REGULATIONS 1995

P.U. (A) 262/1995

PATENTS (AMENDMENT) REGULATIONS 1995

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

1. Citation and commencement

These regulations may be cited as the Patents (Amendment) Regulations 1995 and shall come into force on 1 August 1995.

2. General amendment

The Patents Regulations 1986 [P.U.(A) 327/86], which in these Regulations are referred to as the “principal Regulations”, are amended in the English language text by substituting for the words “sub‐regulation” and “sub‐regulations” wherever they appear the words “subregulation” and subregulations” respectively.

3. Amendment of regulation 2

The English language text of subregulation 2(2) of the principal Regulations is amended by inserting after the word “means” the word “and”.

4. Amendment of regulation 7

Regulation 7 of the principal Regulations is amended—

(a) by renumbering regulation 7 as subregulation (1) of regulation 7; and

(b) by inserting after subregulation (1) the following subregulation:

“(2) The title of the invention shall indicate clearly and concisely the subject‐matter to which the invention relates.”.

5. Amendment of regulation 14

Regulation 14 of the principal Regulations is amended by deleting subregulation (2). 1

6. Amendment of regulation 16

Regulation 16 of the principal Regulations is amended—

(a) in subregulation (3) by substituting for the words “paragraph (a) subregulation (2)” the words “subregulation (2) (a)”;

(b) in the English language text in subregulation (5) by substituting for the word “abstracts” the word “abstract”; and

(c) in subregulation (6) by deleting the word “and” appearing after the word “drawing”.

7. Amendment of regulation 17

The English language text of subregulation 17 (1) of the principal Regulations is amended by substituting for the word “weights” the word “weight”.

8. Amendment of regulation 18

Regulation 18 of the principal Regulations is amended—

(a) in the English language text in subregulation (3) by inserting after the words “All sheets” the word “shall”;

(b) in subregulation (7) by substituting for the word “sheet,” the words “sheet and”;

(c) in subregulation (8) by substituting for the words “and in at least 11/2 lines spacing” the words “in at least 11/2 line spacing”; and

(d) in the English language text in subregulation (10) by substituting for the word “colourings” the word “colouring”.

9. Amendment of regulation 19

Regulation 19 of the principal Regulations is amended—

(a) in the national language text by inserting after the figures “19”. the figures “(1)”; and

(b) in the English language text in paragraph 19(1)(c) by inserting before the word “apparatus” the word “an”.

10. New regulation 19A

The principal Regulation are amended by inserting after regulation 19 the following regulation:

Division of application

19A. For the purposes of section 26B (1) of the Act—

(a) where an application is divided pursuant to an objection in an Examiner’s report made under section 30(1) or 30(2) of the Act for noncompliance with section 26 of the Act, the request for the division of the application shall be made within three months from the date of mailing of such report;

(b) in any other case, the applicant may, of his own volition, request for the division of the application not later than three months from the date of mailing of the Examiner’s first report made under section 30(1) or 30(2) of the Act.”.

11. Amendment of regulation 21

Regulation 21 of the principal Regulations is amended—

(a) in the national language text by substituting for the word “penetapan” wherever it appears the word “akuan”; and

(b) by deleting subregulation (5).

12. Amendment of regulation 24

The English language text of subregulation 24(2) of the principal Regulation is amended by substituting for the word “authorised” the word “authorized”.

13. Amendment of regulation 26

The principal Regulations are amended by substituting for regulation 26 the following regulation:

Preliminary examination

26. (1) The requirements of regulations 5, 6, 7(1), 8, 9, 11, 18 and 51 shall be formal requirements for the purposes of section 29(1) of the Act.

(2) Where section 29(2) of the Act applies, the Registrar shall notify the applicant of his findings and the applicant shall make any observation on such finding or any amendment to the application or both within three months from the date of mailing of the Registrar’s notification.”.

14. Amendment of regulation 27

The principal Regulations are amended by substituting for regulation 27 the following regulations:

Request for substantive examination

27. (1) A request for a substantive examination shall be made to the Registrar on Form 5 together with the payment of the prescribed fee within two years from the filing date of the application.

(2) Where an application is divided under regulation 19Amore than two years from the filing date of the application, a further request for a substantive examination shall bemade at the time of the filing of the request for the division of the application.

(3) A request for a substantive examination shall, where appropriate, be accompanied by—

(a) information relating to the application number and filing date of any application for a patent or other title of industrial property protection filed with any prescribed industrial property office relating to the same or essentially the same invention as that claimed in the application;

(b) information relating to the number assigned to a patent or other title of industrial property protection granted for the same or essentially the same invention as that claimed in the application by any prescribed industrial property office;

(c) the results of any searches or examinations carried out by any prescribed industrial property office relating to the same or essentially the same invention as that claimed in the application.

(4) The Registrar may waive, as he deems fit, any requirement under subregulation (3).

(5) Where an application is deemed to be withdrawn under section 29A (5) of the Act, the Registrar shall inform the applicant in writing of that fact and shall state the reasons therefor.

(6) For the purposes of these Regulations, “prescribed industrial property office “means the Patent Office of Australia, the Patent Office of the United Kingdom, the Patent Office of the United States of America or the European Patent Office, as the case may require, in its capacity as a national office or, where appropriate, as an International Searching Authority or as an International Preliminary Examination Authority under the Patent Cooperation Treaty.

Request for modified substantive examination

27A. (1) A request for a modified substantive examination shall be made to the Registrar on Form5A togetherwith the payment of the prescribed feewithin two years from the filing date of the application.

(2) Where an application is divided under regulation 19Amore than two years from the filing date of the application, a further request for a modified substantive examination shall be made at the time of the filing of the request for the division of the application.

(3) A request for a modified substantive examination shall be accompanied by—

(a) a certified true copy of the patent or other title of industrial property protection granted to the applicant or his predecessor in title in the prescribed country or under the prescribed treaty or Convention, and where the patent or other title of industrial property protection is not in the English language, a certified translation in the English language thereof;

(b) where the description, claims or drawings of the invention granted a patent or other title of industrial property protection by the prescribed country or under the prescribed treaty or Convention are not, apart from matters of form, substantially the same as the description, claims or drawings of the invention claimed

in the application, the amendments required for the purpose of bringing them into conformity.

(4) Where an application is deemed to be withdrawn under section 29A (5) of the Act, the Registrar shall inform the applicant in writing of that fact and shall state the reasons therefor.

(5) For the purposes of these Regulations—

“prescribed country” means Australia, the United Kingdom or the United States of America, as the case may require;

“prescribed treaty or Convention” means the European Patent Convention.

Deferment of filing of request for substantive examination and modified substantive examination

27B. (1) A request for a deferment of the filing of a request for a substantive examination under regulation 27 or a modified substantive examination under regulation 27A or a deferment of the provision of information or documents required under regulation 27(3) shall be made to the Registrar of Form 5B.

(2) For the purposes of section 29A (7) of the Act, the maximum period of deferment allowed—

(a) for the filing of a request under regulation 27, shall be three years from the filing date of the application;

(b) for the filing of a request under regulation 27A, shall be four years from the filing date of the application;

(c) for the provision of the information or documents required under regulation 27(3), shall be three years from the filing date of the application.

Substantive examination

27c.(1) The requirements of sections 13, 14, 15 and 16, Part V, and sections 26, 26A, 26B and 27 of the Act and regulations 7(2), 10, 12 to 17, 21 and 50 shall be substantive requirements for the purposes of section 30(1) of the Act.

(2) For the purpose of determining whether the application complies with the substantive requirements, in particular sections 14 and 15 of the Act, the Examiner shall search such documents as the Registrar deems necessary.

(3) Upon receipt of the Examiner’s report under section 30(1) (b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of sections 14 and 15 of the Act have been satisfied and subregulation (2) shall apply in relation to such further search or other investigation.

(4) Where section 30(3) of the Act applies, the Registrar shall send a copy of the Examiner’s report to the applicant and the applicant shall make any observation on such report or any amendment to the application or both within three months from the date of mailing of the report.

(5) Where the applicant makes any observation on the Examiner’s report or any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shall report his determination to the Registrar.

(6) Without prejudice to the foregoing provisions the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application.

Modified substantive examination

27D.(1) The requirements of sections 13 and 14, Part V, and sections 26A, 26B and 27 of the Act and regulations 10, 21 and 50 shall be substantive requirements for the purposes of section 30(2) of the Act.

(2) In addition, it shall also be a substantive requirement that the description, claims and drawings of the invention claimed in the application, whether as filed or as amended under the Act or these Regulations, apart from matters of form, shall be the same or substantially the same as the description, claims and drawings of the invention granted a patent or other title of industrial property protection by the prescribed country or under the prescribed treaty or Convention.

(3) For the purpose of determining whether the application complies with the substantive requirements, in particular section 14 of the Act, the Examiner shall search such documents as the Registrar deems necessary.

(4) Upon receipt of the Examiner’s report under section 30(2) (b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of section 14 of the Act have been satisfied and subregulation (3) shall apply in relation to such further search or other investigation.

(5) Where section 30(3) of the Act applies, the Registrar shall send a copy of the Examiner’s report to the applicant and the applicant shall make any observation on such report or any amendment to the application or bothwithin threemonths from the date of mailing of the report.

(6) Where the applicant makes any observation on the Examiner’s report or any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shall report his determination to the Registrar.

(7) Without prejudice to the foregoing provisions, the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application.”.

15. Amendment of regulation 28

The principal Regulations are amended by substituting for regulation 28 the following regulation: “28, Where an application is refused under section 29(2), 30(3), 30(6), 31(1) or 85 of the Act, the Registrar shall notify the applicant in writing of that decision and shall i state the reasons therefor.”.

16. Amendment of regulation 29

Regulation 29 of the principal Regulations is amended by deleting subregulation (2).

17. Amendment of regulation 31

The principal Regulations are amended by substituting for regulation 31 and the marginal note thereto the following regulation and marginal note:

Register

31. (1) The Register shall be kept in such form and on such medium as the Registrar may determine.

(2) The Register shall contain the particulars specified in paragraphs (a) to (j) of regulation 30.”.

18. New regulations 31A and 31B

The principal Regulations are amended by inserting after regulation 31 the following regulations:

Request for certified copies of or extracts from Register, etc.

31A. A request for certified copies or extracts for the purposes of sections 33, 33A(2), 34 and 83A of the Act shall be made to the Registrar on Form 5c together with the payment of the prescribed fee.

Amendment of Register

31B. (1) A request under section 33B of the Act to amend the Register shall be made to the Registrar on Form 5D together with the payment qf the prescribed fee.

(2) The Registrar may require the submission of such information or documents, including a written explanation by the owner of the patent, in support of the request for the amendment.”.

19. Amendment of regulation 32

Regulation 32 of the principal Regulations is amended by substituting for the words (a) to (j) in” the words “specified in paragraphs (a) to (j) of.

20. Amendment of regulation 33

Subregulation 33(2) of the principal Regulations is amended by deleting the words “and reference thereto shall be published in the Gazette”.

21. New regulations 33A, 33B, 33C

The principal Regulations are amended by inserting after regulation 33 the following regulations:

Reinstatement of lapsed patent

33A. (1) A request under section 35A (1) of the Act for the reinstatement of a lapsed patent shall be made to the Registrar on Form 5E together with the payment of the prescribed fee.

(2) The Registrar may require the submission of such information or documents, including a written explanation by the person making the request, in support of the request for the reinstatement of the lapsed patent.

(3) Where a case for reinstatement has not been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact and shall state the reasons therefor and shall give the person making the request an opportunity to be heard.

(4) Upon receipt of a notification under subregulation (3), the person making the request may, within onemonth from the date of the mailing of the notification, request for a hearing.

(5) Where the Registrar receives a request for a hearing under subregulation (4), he shall give the person making the request an opportunity to present his case and shall thereafter give his decision.

(6) Where no request for a hearing is received within the prescribed period or where the personmaking the request does not appear on the date fixed for the hearing of the request the Registrar shall refuse the request for reinstatement and shall inform the person making the request in writing of that decision.

(7) Where a case for reinstatement has been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact.

(8) Upon receipt of a notification under subregulation (7), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar all annual fees due and the prescribed surcharge for reinstatement.

(9) The Registrar shall, upon receipt of the annual fees due and the prescribed surcharge for reinstatement, reinstate the patent; and the date of reinstatement shall be recorded in the Register.

Protection of person who exploit lapsed patents

33B. (1) Any person who has exploited or taken definite steps, by contract or otherwise, to exploit a patent after it is notified in theGazette that the patent has lapsed and before it is notified in the Gazette that the patent has been reinstated may request for a licence to exploit the patented invention.

(2) A request under subregulation (1) shall be made to the Registrar on Form 5F.

(3) A copy of the request shall be served on the owner of the patent.

(4) The Registrar may require the person making the request or the owner of the patent or both to appear before him for the purpose of giving a statement or submitting any document or other information.

(5) The Registrar may, where he is satisfied that a licence to exploit the patented invention should be granted, grant a licence to the person making the request subject to such terms and conditions as the Registrar deems fit and the owner of the patent shall be deemed to have consented to such grant.

(6) The Registrar shall inform the person making the request and the owner of the patent in writing of his decision.

Conversion of application

33c. (1) A request under section 17B(3) of the Act 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 made to the Registrar on Form 5G together with the payment of the prescribed fee.

(2) Where a case for conversion has been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact.

(3) Upon receipt of a notification under subregulation (2), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar—

(a) in the case of a request to convert an application for a patent into an application for a certificate for a utility innovation, the prescribed fee payable under regulation 45;

(b) in the case of a request to convert an application for a certificate for a utility innovation into an application for a patent, the prescribed fee payable under regulation 7.

(4) For the avoidance of doubt it is declared that where an application has been converted in accordance with this regulation, the prescribed fee paid on the original application shall not be refundable.”.

22. Amendment of regulation 34

The English language text of subregulation 34(1) of the principal Regulations is amended by inserting before the words “prescribed fee” the words “payment of the”.

23. Amendment of regulation 40

The English language text of regulation 40 of the principal Regulations is amended—

(a) in subregulation (2) by substituting for the word “decison” the word “decision”; and

(b) in subregulation (3) by substituting for the word “paragraph” the word “paragraphs”.

24. New Part VIA

The principal Regulations are amended by inserting after Part VI of the following Part:

“PART VIAPATENT AGENTS

45A. Interpretation

In this Part, unless the context otherwise requires—

“Board of Examiners” means the board of Examiners of Patent Agents established under regulation 45G;

“Secretary‐General” means the Secretary‐General of the Ministry charged with the responsibility for the development of industrial property.

45B. Representation in proceedings

(1) Unless the Act or any regulation made thereunder otherwise prescribes, or the Registrar otherwise directs, any person may be represented in proceedings before the Patent Registration Office by a patent agent whomay attend, file documents and sign documents on that person’s behalf.

(2) The appointment or change of a patent agent shall be made on Form 17, signed by the person or persons to be represented by the agent and submitted to the Registrar.

45c. Representation of patent agents

(1) An application to be registered as a patent agent in the Register of Patents Agents shall be made to the Registrar on Form 18 together with the payment of the prescribed fee.

(2) In order to be registered in the Register of Patents Agents, the applicant shall satisfy the Registrar—

(a) that he is domiciled in or is a permanent resident of Malaysia;

(b) that he is an advocate and solicitor of the High Court in Malaya or an advocate of the High Court in Sabah and Sarawak, or has a relevant degree or its equivalent in an approriate branch or engineering or science from an institution of higher learning approved by the Board of Examiners, or has qualifications entitling him to graduate membership of a professional engineering or scientific institution or the like recognized by the Board of Examiners; and

(c) that he has passed the examination specified in regulation 45D.

(3) The Registrar may, at any time, require proof of the matters specified in paragraphs (a), (b) and (c) of subregulation (2).

(4) The Registrar may refuse to register any person who has been convicted of an offence involving fraud or dishonesty.

(5) The Registrar, upon being satisfied that the applicant qualifies to be registered in the Register of Patents Agents, shall register the applicant for a term expiring on the 31st December of that year.

45D. Examination for patent agents

(1) For the purposes of regulation 45c (2) (c), the board of Examiners shall conduct an examination which shall consist of the following subjects:

(a) technology;

(b) Malaysian patent law and practice;

(c) Malaysian trade mark and designs law and practice; and

(d) foreign industrial property law and practice.

(2) An application for registration as a candidate for the examination specified in subregulation (1) shall be made to the Board of Examiners of Form 18A together with the payment of the prescribed fee.

(3) An application under subregulation (2) shall be sent to the Secretary to the Board of Examiners at the Patent Registration Office on or before the date determined by the board of Examiners for the submission of such applications.

(4) A candidate shall be required to sit for each of the subjects specified in subregulation (1) at a sitting of the examination.

(5) A candidate who has sat for and failed to pass any of the subjects specified in subregulation (1) may, if he is dissatisfied with his results, appeal to the Secretary‐ General for re‐scrutiny of the results within fourteen days from the date of the notification of such results together with the payment of the prescribed fee.

(6) Upon receipt of an appeal under subregulation (5), the Secretary‐General shall consider the appeal and make a decision of thereon.

(7) The decision of the Secretary‐General shall be final and conclusive.

(8) A candidate who has sat for and failed to pass any or all of the subjects specified in subregulation (1) at an examination may apply to re‐sit such subject or subjects, as the case may be, at the next sitting of the examination and such application shall be made to the Board or Examiners on Form 18B together with the payment of the prescribed fee.

(9) Any candidate who has failed to pass all of the subjects specified in subregulation (1) after three attempts shall be deemed to have failed the overall examination and subregulations (5), (6), (7) and (8) shall not apply thereto.

(10) Any candidate who is deemed to have failed the overall examination under subregulation (9)may re‐apply to be registered as a candidate under subregulation (2).

45E. Renewal of registration of patent agents

(1) An application for the renewal of registration as a patent agent shall be made to the Registrar on Form 19 together with the payment of the prescribed fee by the 31st January of each year: Provided that in the case of a person who immediately before the date of coming into* force of this regulationwas registered as a patent agent the application for the renewal of registration as a patent agent shall be made within thirty days of the expiry of the registration.

(2) The Registrar shall, upon being satisfied that the conditions specified in regulation 45c continue to be satisfied, renew the registration of the patent agent for a term expiring on the 31st December of that year: Provided that a personwho immediately before the date of coming into force of this regulation was registered as a patent agent shall be deemed to have satisfied the conditions specified in regulation 45c (2) (c).

(3) Notwithstanding subregulation (2), the Registrar may refuse to renew the registration of any person who has been convicted of an offence involving fraud or dishonesty.

45F. Cancellation of registration patent agents

(1) The Registrar may cancel the registration of any person who has been convicted of an offence involving fraud or dishonesty.

(2)Where the registration of any person is cancelled under this regulation no fees paid for the purpose of registration or renewal of registration shall be refundable.

45G. Board of Examiners of Patent Agents

(1) There is established a Board of Examiners of Patent Agents which shall consist of—

(a) the Registrar of Patents, who shall be Chairman; and 15

(b) four other persons proficient in the field of industrial property appointed by the Secretary— General.

(2) An officer of the Patent Registration Office shall be Secretary to the Board of Examiners.

(3) A member of the Board of Examiners appointed under subregulation (1) (b) shall, unless his appointment is sooner revoked or he sooner resigns, hold office for such period not exceeding three years as the Secretary‐General may determine and shall be eligible for reappointment.

(4) At a meeting of the Board of Examiners three members shall from a quorum.

(5) In the absence of the Chairman, a member nominated by the Chairman shall preside at the meeting and such member may exercise all the powers of the Chairman in respect of that meeting.

(6) If on any question to be determined there is an equality of votes, the Chairman shall have the casting vote in addition to his deliberative vote.

(7) The Board of Examiners shall be responsible for‐r‐

(a) the conduct of the examination specified in regulation 45D;

(b) preparing and publishing the examination syllabus and determining the study material to be recommended;

(c) preparing examination papers;

(d) registering and admitting candidates;

(e) determining the time, date and place for the examination;

(f) awarding certificates; and

(g) advising the Registrar as to the persons who have satisfied the requirements of paragraphs (b) and (c) of subregulation 45c(2).

(8) The Board of Examiners shall enjoy the prerogative of awarding and withdrawing certificates, withholding and cancelling the results of any candidate, and barring any person from taking the examination.

45H. Setting, assessing andmarking of examinations questions and answers

(1)The Board of Examinersmay appoint suitably qualified persons to be examiners for the purpose of setting, assessing and marking questions or answers for the examination specified in regulation 45D.

(2) The Board of Examiners may give such instructions in relation to the setting, assessing and marking of questions or answers as it considers necessary.

(3)The examiners appointed under subregulation (1) shall be paid such allowances as the Minister may direct.”.

25. Amendment of regulation 46

The principal Regulations are amended by substituting for regulation 46 and the marginal note thereto the following regulation and marginal note:

Amendment of application

46. A request under section 79(1) of the Act to correct a clerical error or obvious mistake in an application for the grant of a patent shall be made to the Registrar on Form 16 together with the payment of the prescribed fee.”.

26. New regulation 46A

The principal Regulations are amended by inserting after regulation 46 the following regulation:

Amendment of patent

46A. A request under section 79A (1) of the Act to correct a clerical error or obvious mistake in a patent or any other document associated with the patent, or to amend a patent or any other document associated with the patent for any other reason shall be made to the Registrar on Form 16A together with the payment of the prescribed fee.”.

27. Deletion of regulation 48 and 49

The principal Regulations are amended by deleting regulations 48 and 49.

28. Amendment of Schedule I

The principal Regulations are amended by substituting for Schedule I the following Schedule:

“SCHEDULE I (Regulation 2(2))

PART I FEES

(1) (2) ItemMatter/ No. Proceeding 1. (a) Request for grant

(b) Claims (i) for first ten claims (ii) for every i ideational claim

2. Declaration of withdrawal of application 3. Request for substantive examination 4 Request for modified substantive examination 5. Request for deferment of filing of request for

examination or provision of information 6. Request for certified copies or extracts 7. Request to amend Register 8. Request for reinstatement of lapsed patent 9. Request for licence to exploit patented invention 10. Request to convert application for, ... patent into

application for certificate for utility innovation or vice versa

11. Application for recording of assignment or transmission

(3) Fee (RM) 200.00

Nil 10.00 per claim

— 700.00 450.00 50.00

50.00 100.00 — 200.00 100.00*

50.00

(4) Corresponding

Form l Form

Form 2 Form 5 Form 5A Form 5B Form 5c

Form 5D Form 5B Form 5F Form 5G Form 6

Form 7

(1) (2) (3) ItemMatter/ Fee No. Proceeding (RM) 12. Application for entry in Register that any person may 50.00

obtain a licence 13. Application for cancellation of entry in Register that 100.00

any person may obtain a licence 14. Request for recording of particulars of licence contract 75.00

in Register 15. Request for recording expiry or termination of licence 75.00

contract in Register 16. Application for compulsory licence 75.00 17. Request for amendment of decision granting 75.00

compulsory licence 18. Request for cancellation of compulsory licence 100.00 19. Application for grant of certificate for utility 100.00

innovation 20. Application to extend term of certificate for utility 50.00

innovation 21. Request to amend application for grant of patent 50.00 22. Request to amend patent — 23. Appointment or change of patent agent 2000.00 24. Application for registration of patent agent 100.00 25. Application for registration as candidate for 100.00

examination 26. Application to re‐sit examination 100.00 27. Examination fee per subject 28. Application for renewal of registration of patent agent 400.00 29. Furnishment of address for service 100.00 30. Request for extension of time 200.00

PART II

(1) (2) Fee ItemMatter/* (RM) No. Proceeding 1.Copy of patent 30.00

(4) Corresponding

Form 8 Form

Form 9

Form 10

Form 11

Form 12 Form 13

Form 14 Form 15

Form 16

Form 16A Form 17 Form 18 Form 18A Form 18B

Form 19 Form 20 Form 21

(1) (2) ItemMatter/* No. Proceeding 2.Copy of search report 3.Examination of Register 4.Certified extract from Register 5.Photocopy of extract from Register 6. Inspection of file relating to patent or patent application 7.Certified extracts from file relating to patent or patent application— (a) for first five pages (b) for every additional page 8.Annual fee for patent: (a) for second year (b) for third year (c) for fourth year (d) for fifth year (e) for sixth year (f) for seventh year (g) for eighth year (h) for ninth year (i) for tenth year (j) for eleventh year (k) for twelveth year (I) for thirteenth year (m) for fourteenth year (n) for fifteenth year 9.Surcharge for reinstatement 10.Surrender of compulsory licence 11.Surrender of patent 12.Annual fee for certificate for utility innovation:

(a) for third year (b) for fourth year (c) for fifth year (d) for sixth year

Fee (RM)

20.00 10.00 per hour 10.00 per page 2.00 per page 10.00 per hour

10.00 per page 2.00 per page

200.00 250.00 300.00 350.00 400.00 450.00 500.00 550.00 600.00 650.00 700.00 800.00 900.00 1100.00 100% of fee for year concerned 60.00 60.00

120.00 160.00 160.00 200.00

(1) Item No.

(2) Matter/* Proceeding (e) for seventh year (f) for eighth year (g) for ninth year (h) for tenth year (i) for eleventh year (J) for twelveth year (k) for thirteenth year (I) for fourteenth year* (m) for fifteenth year

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

29. Amendment of Schedule II

Schedule II to the principal Regulations is amended—

Fee (RM)

200.00 240.00 240.00 280.00 400.00 600.00 700.00 800.00 1000.00 100.00 150.00 100.00 200,00 per subject 50.00 per month”.

(a) by substituting for Forms 1 and 2 the forms set out in the Schedule; ‐

(b) by deleting Forms 3 and 4;

(c) by substituting for Form 5 the form set out in the Schedule;

(d) by inserting after Form 5, Forms 5A, 5B, 5C, 5D, 5E, 5F and 5G set out in the Schedule;

(e) by substituting for Forms 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16 the forms set out in the Schedule;

(f) by inserting after Form 16, Form 16A set out in the Schedule;

(g) by substituting for Forms 17 and 18 the forms set out in the Schedule;

(h) by inserting after Form 18, Forms 18A and 18B set out in the Schedule; and

(i) by substituting for Forms 19, 20 and 21 the forms set out in the Schedule.

30. Saving and transitional

(1) Any registration as a patent agent granted under the principal Regulations and in force immediately before the commencement of these Regulations shall, in so far as its grant is not inconsistent with these Regulations, be deemed to have been granted under these Regulations and shall continue in force until it expires.

(2) Any application for registration as a patent agent or application for renewal of registration as a patent agent made or pending before the date of coming into force of these Regulations shall be deemed to have been made under the principal Regulations and the principal Regulations shall continue to apply to such applications as if the principal Regulations had not been amended:

Provided that the registration of such person as a patent agent shall be for a term expiring on the 31st December 1995 and for the purposes of this proviso the prescribed fee payable shall be proportionate to the term to be renewed.

Schedule

Regulations 29 FORMS

Patents Form No. 1 PATENTS ACT 1983

REQUEST FOR GRANT OF PATENT (Regulation 7(1))

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

For Official Use

Application received on: .………………………….. Fee received on: ……………..………………………… Amount: …………………………………………..………. *Cheque/Postal Order/ Money Order/ Draft/ Cash No:……………………………………….................

Yes No

Please submit this Form in duplicate Applicant’s or Agent’s file reference together with the prescribed fee. …………………………………………………...

THE APPLICANT(S) REQUEST(S) THE GRANT OF A PATENT IN RESPECT OF THE FOLLOWING PARTICULARS:

I. TITLE OF INVENTION: …………………………………………………………………………………………………………………… …………………………………………………………………………………………………………………….

II. APPLICATION(S) (the data concerning each applicant must appear in this box or, if the space is insufficient, in the space below):

Name: …………………………………………………………………………………………………………. I.C. / Passport No:………………………………………………………………………………………… Address: ………………………………………………………………………………………………………

……………………………………………………………………………………………………... Address for service in Malaysia: …………………………………………………………….......... ……………………………………………………………………………………………………………………. Nationality: …………………………………………………………………………………………………. *Permanent residence or principal place of business: ……………………………………………………………………………………………………………………. ……………………………………………………………………………………………………………………

Telephone Number Fax Number (if any) (if any)

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

* Delete whichever does not apply

Additional Information (if any)

III. INVENTIOR Applicant is the inventor

If the applicant is not the inventor:

Yes No

Name of inventor: ………………………………………………………………………………………… Address of inventor: ………………………………………………………………………………………

……………………………………………………………………………………... A statement justifying the applicant’s right to the patent accompanies this Form:

Yes No

Additional Information (if any)

IV. AGENT OR REPRESENTATIVE: Applicant has appointed a patent agent in accompanying Form No. 17

V. DIVISIONAL APPLICATION The application is a divisional application The benefit of the filing date priority date of the initial application is claimed in as musch as the subject‐matter of the present application is contained in the initial application identified below:

Initial Application No: ………………………………………………………………………………….

Date of filing of initial application: ………………………………………………………………..

VI. DISCLOSURES TOBE DISREGARDEDFOR PRIOR ART PURPOSES: Additional information is contained in supplemental box:

(a) Disclosure was due to acts of applicant or his predecessor in title

Date of disclosure :...........................................................

(b) Disclosure was due to abuse of rights of applicant or his predecessor in title

Date of disclosure:............................................................

A statement specifying inmore detail the facts concerning the Yes disclosure accompanies this Form No

Additional Information (if any)

VII. PRIORITY CLAIM (if any): The priority of an earlier application is claimed as follows: Country (if the earlier application is a regional or international application, indicate the office with which it is filed): ………………………………………………………………………………………………………………… ………... Filing Date: ......................................................................................... Application No.: ................................................................................... Symbol of the International Patent Classification: If not yet allocated, please tick

The priority of more than one earlier application is claimed: Yes No

The certified copy of the earlier application (s) accompanies this Form:

Yes No

If No, it will be furnished by..............................................................................(date)

Additional Information (if any)

VIII. CHECKLIST: A. This application contains the following:

1. request 2. description ..............................................sheets 3.claim........................................................sheets 4.abstract ....................................................sheets 5.drawings……...............................................sheets Total.........................................................sheets

B. This Form, as filed, is accompanied by the items checked below: (a) sighed Form No. 17 (b) declaration that inventor does not wish to be named in the

patent (c) statement justifying applicant’s right to the patent

(d) statement that certain disclosures be disregarded

(e) priority document (certified copy of earlier application)

(f) cash, cheque, money order, banker’s draft or postal order for the payment of application fee

(g) other documents (specify)

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

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

For Official Use 1. Date application received:............................................................ 2. Date of receipt of correction, later filed papers or drawings completing the application:

…………………………………………………………………………………………………………………

** Type name under signature and delete whichever does not apply.

Patents Form No. 2 PATENTS ACT 1983 DECLARATION OFWITHDRAWAL OF APPLICATION (Regulations 24 and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate

For Official Use APPLICATION NO. : …..………………………… Filing Date :…………………………………………..

Declaration received on : ………………………

Date of mailing : ……………………………………

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

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

II. APPLICATION(S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. DECLARATION : *I/WE declare *my/our desire that the above‐identified application be withdrawn under Section 25 of the Patent Act 1983.

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

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

* Delete whichever does not apply ** Type name under signature. Pursuant to Regulation 24, a declaration of withdrawal

must be signed by the applicant (s) or by the agent so authorized for that specific purposes.

Patents Form No. 5 PATENTS ACT 1983 REQUEST FOR SUBSTANTIVE EXAMINATION (Regulations 27(1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

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

Date of mailing : ……………………………………

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:………….

II. APPLICANT(S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. REQUEST : The applicant(s) request(s) the Registrar to refer the patent application identified above to an Examiner for a Substantive examination in accordance with Section 29A (1) of the Patent Act 1983.

IV. ADDITIONAL INFORMATION accompanies this Form: Yes No

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

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

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

Patents Form No. 5A PATENTS ACT 1983 REQUEST FOR MODFIED SUBSTANTIVE EXAMINATION (Regulations 27A (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

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

III.

IV.

REQUEST : The applicant(s) request(s) the Registrar to refer the patent application identified above to an Examiner for a substantive examination in accordance with Section 29A (2) of the Patent Act 1983.

PRESCRIBED FOREIGN PATENT :

I provide herewith a certified copy of the specification of Patent No. : …………………………………………. in granted in ……………………………………… on ……………………………………………………..

Copy of granted patent from : * UK/US/EP/Australia

I. AMENDMENTS: Amendments in accordance with regulation 27A(3)(b) accompany this form

Yes No

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

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

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

Patents Form No. 5B PATENTS ACT 1983 REQUEST FOR DEFERMENT OF FILING OF REQUEST FOR EXAMINATION OR PROVISION OF INFORMATION (Regulations 27B (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

VI. APPLICANT(S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

VII. REQUEST : The applicant requests the Registrar to issue a certified copy/extract of the matter specified below in accordance with section 33/33A(2)/34/83A of the Patents Act 1983: …………………………………………………………………………………………………………………. ………………………………………………………………………………………………………………….

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

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

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

Patents Form No. 5D PATENTS ACT 1983 REQUEST TO AMEND REGISTER (Regulations 31B (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

II. OWNER (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III.

IV.

REQUEST : The owner(s) request(s) the Registrar to amend the Register in accordance with section 33B of the Patents Act 1983 by – *(a) correcting an error in the *name/address of the owner(s); or (b) changing the *name/address of the owner(s) In respect of the above identified *patent/certificate.

*CORRECTED/CHANGED *NAME/ADDRESS OF OWNER(S): Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

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

……………………………… (Date)

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

* Delete whichever does not apply ** Type name under signature and delete whichever does not apply. Patents Form No. 5E PATENTS ACT 1983 REQUEST FOR REINSTATEMENT OF LAPSED PATENT (Regulations 33A (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

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

III. REQUEST : The owner(s) request(s) the Registrar to reinstate the *patent/certificate identified above in accordance with section 35A of the Patents Act 1983.

IV. EVIDENCE IN SUPPORT accompanies this Form: Yes No

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

……………………………… (Date)

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

* **

Delete whichever does not apply Type name under signature and delete whichever does not apply.

Patents Form No. 5F PATENTS ACT 1983 REQUEST FOR LICENCE TO EXPLOIT PATENDED INVENTION (Regulations 33B (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

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

Date of Reinstatement of *Patent/Certificate: ………………………………………………

II. OWNER (S) : Name : …………………………………………………………………………….……………………..

Address : ………………………………………………………….…………………………………..…

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

III. REQUEST : The applicant applies to the Registrar for a licence under the *patent/certificate identified above in accordance with regulation 33B of the Patents Regulations 1986.

IV. ADDITIONAL INFORMATION accompanies this Form: Yes No

V. A COPY OF THIS REQUEST HAS BEEN SERVED ON THE OWNER(S) IDENTIFIED ABOVE:

Yes No

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

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

* Delete whichever does not apply ** Type name under signature and delete whichever does not apply. Patents Form No. 5G PATENTS ACT 1983 REQUEST TO CONVERT APPLICATION FOR PATENT INTO APPLICATION FOR CERTIFICATE FOR UTILITY INNOVATION OR VICE VERSA (Regulations 33C (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

*Cheque / Postal Order / Money Order / Draft / Cash No. :……………………………………

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

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

II. APPLICANT (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. REQUEST : The applicant applies to the Registrar for the conversion of the *patent/certificate application identified above in accordance into an application for a *certificate for a utility innovation/patent in accordance with section 17B of the Patents Act 1986.

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

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

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

Patents Form No. 6 PATENTS ACT 1983 APPLICATION FOR RECORDING OF ASSIGNMENT OR TRANSMISSION

For Official Use APPLICATION NO. : ……………..……………… Filing Date : …………………………………………

(Regulations 34 (1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Request received on :…………………………… Fee received on : ………………………………… Amount : ……………………………………………. *Cheque / Postal Order / Money Order / Draft / Cash No. :…………………………………… Date of mailing: ………………………………………

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

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

II. *APPLICANT (S)/OWNER (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III.

IV.

APPLICATION : The new *applicant(s)/ new owner(s) below *applies/apply to the Registrar to record the *assignment/transmission of the above identified *patent application/ patent/ certificate application/ certificate.

*NEW APPLICANT(S)/ NEW OWNER(S) : Name : ……………………………………………………………….………………………………...

Address : ………………………………………………………………….……………………………… .………………….……………………………………………..…..……………………………

Address for service in Malaysia : …………………………….……..…………………………… ………………………………………………………………………….………………………………………… Nationality : …..……………………………………………………………….…………………………..

Telephone Number Fax Number (if any) (if any)

……………………………….. …………………..………

V. SIGNATURE ……………………………………..…………… ……………………………… ** (NewApplicant/New Owner (Date) Agent for New Applicant or New Owner)

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

(in case of assignment)………………………………… ……………………………. ** (Applicant/ Owner (Date) Agent for Applicant for Owner)

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

* **

Delete whichever does not apply Type name under signature and delete whichever does not apply.

Patents Form No. 7 PATENTS ACT 1983 APPLICATION FOR ENTRY IN REGISTER THAT ANY PERSON MAY OBTAIN A LICENCE (Regulations 35 (1) and 45(3))

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

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

Fee received on : ………………………………… Amount : ……………………………………………. *Cheque / Postal Order / Money Order / Draft / Cash No. :…………………………………… Date of mailing: ………………………………………

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

I. IN THE MATTER OF : Patent No:……………………………………………. Date of Grant: ………………………… Certificate No:………………………………………. Date of Grant: …………………………

II. *PATENT/CERTIFICATE OWNER (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. APPLICATION : The *patent/certificate owner(s) *applies/apply to the Registrar for an entry to be made in the Register to the effect that any person may obtain a licence under the *patent/certificate identified above. (The *patent/certificate owner (s) *is/are not precluded by contract from granting licences under the *patent/certificate).

VII. ADDITIONAL INFORMATION accompanies this Form: Yes No

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

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

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

For Official UsePatents Form No. 8 PATENTS ACT 1983 APPLICATION FOR CANCELLATION OF ENTRY IN REGISTER THAT ANY PERSON MAY OBTAIN A LICENCE (Regulations 35 (2) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

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

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

V. IN THE MATTER OF : Patent No:……………………………………………. Date of Grant: ………………………… Certificate No:………………………………………. Date of Grant: …………………………

VI. LICENSOR : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

VII. APPLICATION : The licensor applies to the Registrar for the cancellation of the entry made that any person may obtain a licence.

VIII. ADDITIONAL INFORMATION accompanies this Form: Yes No

VIII. SIGNATURE ……………………………………..…………… ……………………………… ** (Licensor/Agent) (Date)

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

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

For Official UsePatents Form No. 9 PATENTS ACT 1983 REQUEST FOR RECORDING OF PARTICULARS OF LICENCE CONTRACT IN REGISTER (Regulations 36 and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

I. IN THE MATTER OF : Patent No:……………………………………………. Date of Grant: ………………………… Certificate No:………………………………………. Date of Grant: ………………………… and the licence contract relating thereto.

II.

III.

IV.

LICENSOR : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

LICENSEE : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

REQUEST : The above parties request the Registrar to record in the Register the following particular relating to the licence contract: ……………………………………………………………………………………………………… ……………………………………………………………………………………………………… ………………………………………………………………………………………………………

V. ADDITIONAL INFORMATION accompanies this Form: Yes No

VI.

SIGNATURE ……………………………………..…………… ……………………………… ** (Licensor/Agent for Licensor) (Date)

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

………………….………………………………… ……………………………. ** (Licensor/Agent for Licensor) (Date)

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

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

Patents Form No. 10 PATENTS ACT 1983 REQUEST FOR RECORDING EXPIRY OR TERIMINATION OF LICENCE CONTRACT IN REGISTER (Regulations 37 and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

Date of mailing: ………………………………………

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

II. LICENSOR : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. LICENSEE : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

IV. REQUEST : The parties to the licence contract identified above request the Registrar to record in the Register the

expiry or termination of the licence contract.

V. ADDITIONAL INFORMATION accompanies this Form: The following items accompany this Form:

(a) Documentation evidencing the above fact (specify( (b) Others (specify)

VI. SIGNATURE ……………………………………..…………… ……………………………… ** (Licensor/Agent for Licensor) (Date)

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

………………….………………………………… ……………………………. ** (Licensor/Agent for Licensor) (Date)

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

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

Patents Form No. 11 For Official Use 45

APPLICATION FOR COMPULSORY LICENCE (Regulations 38) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur Malaysia

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

PATENTS ACT 1983

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

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

……………………………………………………………………….…………………………. Address for service in Malaysia : …………………………….……..…………………………… ………….…………………………………………………………….………………………………………… Nationality : ……….………………………………………………………….………………………….. Telephone Number Fax Number

(if any) (if any) ……………………………….. …………………..………

III. REQUEST: The above applicant applies to the Register to transmit to the Board the request, in respect of the patent identified above, for the grant of a compulsory licence under Section 49 and/or 49A of the Patents Act 1983, in accordance with the terms proposed in Part IV of this Form and upon the grounds set out in Part V of this Form.

IV. PROPOSED TERMS: A statement setting out the amount of royalty, the conditions of the exploitation of the patent and the restriction of the rights of the licensor or licensee, as the case may be, is attached.

V. ** STATEMENT OF GROUNDS attached.

VI. ADDITIONAL INFORMATION : The following items accompany this Form: (a) Evidence that the patent owner has received a request from the applicant to obtain a licence contract but that he has been unable to obtain such a licence on reasonable terms and within a reasonable time.

(b) Plan according to which the applicant intends to work the patented invention, including evidence that he has the ability to do so in Malaysia.

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

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

* Delete whichever does not apply 47

** The ground upon which the request is based shall be indicated by a reference to the statutory provision the applicant considers applicable (Section 49(1)(a) and/or 49(1)(b) and/or 49A of the Patents Act 1983) and to the facts he considers as justifying the grant of a compulsory licence.

*** Type name under signature and delete whichever does not apply.

For Official UsePatents Form No. 12 PATENTS ACT 1983 REQUEST FOR AMENDMENT OF DECISION GRANTING COMPULSORY LICENCE (Regulations 41(1)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

I. IN THE MATTER OF : Patent No:……………………………………………. Date of Grant: ………………………… and the compulsory licence relating thereto.

II. PATENT OWNER (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. BENEFICIARY OF COMPULSORY LICENCE : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

IV. REQUEST : The above *patent owner(s) beneficiary of a compulsory licence ask(s) the Registrar to transmit to the Board the present request for the following amendment of the decision granting the compulsory licence identified above upon the grounds that the new facts set out below justify such amendment.

V. STATEMENT OF GROUNDS, including new facts that justify the amendment are attached.

VI. ADDITIONAL INFORMATION accompanies this Form: Yes No

VII. SIGNATURE ……………………………………..………………… ……………………………… ** (Patent Owner/Beneficiary/Agent) (Date)

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

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

Patents Form No. 13 PATENTS ACT 1983 REQUEST FOR CANCELLATION OF COMPULSORY LICENCE (Regulations 41(2)) To : The Registrar of Patents

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

Patents Registration Office Kuala Lumpur,Malaysia

Amount : ……………………………………………. *Cheque / Postal Order / Money Order / Draft / Cash No. :…………………………………… Date of mailing: ………………………………………

Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

Fee received on : …………………………………

I. IN THE MATTER OF : Patent No:……………………………………………. Date of Grant: ………………………… and the compulsory licence relating thereto.

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

III.

IV.

REQUEST : The above patent owner(s) ask(s) the Registrar to transmit to the Board the present request for the cancellation of the compulsory licence identified above upon the grounds set out below.

**STATEMENT OF GROUNDS, including new facts that justify the amendment are attached.

V. ADDITIONAL INFORMATION accompanies this Form: Yes No

VI. SIGNATURE ……………………………………..………………… ……………………………… *** (Patent Owner/Beneficiary/Agent) (Date)

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

* Delete whichever does not apply ** The ground upon which the request is based shall be indicated by a reference to the

statutory provision the applicant considers to be applicable (Section 54(2)(a) or 54(2)(b) or 54(2)(c) or 54(2)(d) of the Patents Act 1983) and to the facts he considers as justifying the grant of a compulsory licence.

*** Type name under signature and delete whichever does not apply.

Patents Form No. 14 PATENTS ACT 1983

REQUEST FOR GRANT OF PATENT (Regulation 45(1))

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

For Official Use

Application received on: .…………………………..

Filing Date: ………………………………………………

Application received on: …………………………...

Fee received on: ……………..…………………………

Amount: …………………………………………..……….

*Cheque/Postal Order/ Money Order/ Draft/ Cash No:……………………………………….................

Date of mailing: ……………………………………………

Please submit this Form in duplicate together with the prescribed fee.

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

THE APPLICANT(S) REQUEST(S) THE GRANT OF A CERTIFICATE FOR A UTILITY INNOVATION IN RESPECT OF THE FOLLOWING PARTICULARS:

II. APPLICATION(S) (the data concerning each applicant must appear in this box or, if the space is insufficient, in the space below):

*Permanent residence or principal place of business: ……………………………………………………………………………………………………………………. ……………………………………………………………………………………………………………………

Telephone Number Fax Number (if any) (if any)

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

III. INVENTIOR

Applicant is the inventor Yes No

If the applicant is not the inventor: Name of inventor: ………………………………………………………………………………………… Address of inventor: ………………………………………………………………………………………

……………………………………………………………………………………... A statement justifying the applicant’s right to the patent accompanies this Form:

Yes No

IV. AGENT OR REPRESENTATIVE: Applicant has appointed a patent agent in accompanying Form No. 17

Yes No

Agent’s Registration No:………………………………………………………………………….. Applicants have appointed ……………………………………………………………………… to be their common representative

V. DIVISIONAL APPLICATION The application is a divisional application

The benefit of the filing date priority date

of the initial application is claimed in as much as the subject‐matter of the present application is contained in the initial application identified below:

Initial Application No: ………………………………………………………………………………….

Date of filing of initial application: ………………………………………………………………..

VI. DISCLOSURES TOBE DISREGARDEDFOR PRIOR ART PURPOSES: Additional information is contained in supplemental box:

(a) Disclosure was due to acts of applicant or his predecessor in title

Date of disclosure :...........................................................

(b) Disclosure was due to abuse of rights of applicant or his predecessor in title

Date of disclosure:............................................................

A statement specifying inmore detail the facts concerning the Yes disclosure accompanies this Form No

VII. PRIORITY CLAIM (if any): The priority of an earlier application is claimed as follows: Country (if the earlier application is a regional or international application, indicate the office with which it is filed): ……………………………………………………………………………………………………………… Filing Date: ........................................................................................... Application No.: ................................................................................... Symbol of the International Patent Classification: If not yet allocated, please tick

The priority of more than one earlier application is claimed: Yes No

The certified copy of the earlier application (s) accompanies this Form:

Yes No

If No, it will befurnished by..............................................................................(date)

VIII. CHECKLIST: A. This application contains the following:

1. request 2. description ..............................................sheet 3. claim........................................................sheets 4. abstract ....................................................sheets 5. drawings……...............................................sheets Total.........................................................sheets

B. This Form, as filed, is accompanied by the items checked below: (a) sighed Form No. 17

(b) declaration that inventor does not wish to be named in the certificate

(c) statement justifying applicant’s right to the patent

(d) statement that certain disclosures be disregarded

(e) priority document (certified copy of earlier application)

(f) cash, cheque, money order, banker’s draft or postal order for the payment of application fee

(g) other documents (specify)

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

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

For Official Use 1. Date application received:............................................................ 2. Date of receipt of correction, later filed papers or drawings completing the application:

…………………………………………………………………………………………………………………

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

Patents Form No. 15 PATENTS ACT 1983 REQUEST TO EXTEND TERM OF CERTIFICATE FOR UTILITY INNOVATION (Regulations 45(2)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

Date of mailing: ………………………………………

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

I. IN THE MATTER OF : Certificate No:………………………………………. Date of Grant: …………………………

II. APPLICANT (S) (the data concerning each applicant must appear in this box or, if the space is insufficient, in the space below):

……………………………………………………………………………………………………... Address for service in Malaysia: ……………………………………………………………..........

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

Telephone Number Fax Number (if any) (if any)

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

III. APPLICATION: The owner of the Certificate applies for an extension of the term of the Certificate for an additional period of five years.

IV. AFFIDAVIT: An affidavit showing that the utility innovation is in commercial or industrial usein Malaysia or satisfactorily explaining its non‐use is attached in accordance with section 35(3) of the Patents Act 1983.

V. ADDITIONAL INFORMATION accompanies this Form: Yes No

VI. SIGNATURE ……………………………………..…………… ……………………………… ** (Owners (s)/Agent) (Date)

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

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

Patents Form No. 16 PATENTS ACT 1983 REQUEST FOR TO AMEND APPLICATION FOR GRANT OF PATENT (Regulations 46 and 45(3)) To : The Registrar of Patents

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

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

Fee received on : ………………………………… Amount : ……………………………………………. *Cheque / Postal Order / Money Order / Draft / Cash No. :……………………………………

Date of mailing: ………………………………………

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

I. IN THE MATTER OF : Patent Application No: …………………………… Filing Date: ………………………… Certificate No:………………………………………. Filing Date: …………………………… Other document (identify) ……………………………………………………………………….

II. PERSON (S) MAKING REQUEST:

Name: …………………………………………………………………………………………………………. Address: ………………………………………………………………………………………………………

……………………………………………………………………………………………………... Address for service in Malaysia: …………………………………………………………….......... …………………………………………………………………………………………………………………….

Telephone Number Fax Number (if any) (if any)

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

III. REQUEST:

The person (s) above‐identified request (s) the Registrar that, after *his/their paying the prescribed fee, the clerical error or obviousmistake in the document identified above may, in accordance with section 79 of the Patents Act 1983, be corrected as attached.

IV. ADDITIONAL INFORMATION accompanies this Form: Yes No

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

……………………………… (Date)

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

* **

Delete whichever does not apply Type name under signature and delete whichever does not apply.

Patents Form No. 16A PATENTS ACT 1983 REQUEST FOR TO AMEND PATENT (Regulations 46A and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

Date of mailing: ………………………………………

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

I. IN THE MATTER OF : Patent No: …………………………………………… Date of Grant: ………………………… Certificate No:………………………………………. Date of Grant:…………………………

II.

III.

OWNER (S):

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

ASSOCIATED DOCUMENT (if any):

Document: ……………………………………………………………………………………………………

IV. REQUEST:

The owner (s) request (s) the Registrar to amend, as attached, the above‐ identified *patent/certificate/document in accordance with section 79A(1) of the Patents Act 1983.

V. REASON FOR REQUEST: * (a) Correction of clerical error (b) correction of obvious mistake (c) Other **reason …………………………………………………………………..

VI. ADDITIONAL INFORMATION accompanies this Form: Yes No

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

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

* Delete whichever does not apply. ** specify other reason. *** type name under signature and delete whichever does not apply.

Patents Form No. 17 PATENTS ACT 1983 APPOINTMENT OR CHANGE OF PATENT AGENT (regulations 45B (2) and 45 (3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit one copy of this Form.

*I/ We the undersigned,

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

Date of mailing: ………………………………………

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

Name: ……………………………………………………………………………………………………….. Address: ……………………………………………………………………………………………………

…………………………………………………………………………………………………… appoint Name: ……………………………………………………………………………………………………….. Address: ……………………………………………………………………………………………………

…………………………………………………………………………………………………… Telephone Number Fax Number

(if any) (if any) ……………………………… …………………………

to act as *my/our agent in connection with the following matter(s): ………………………………………………………………………………………………………………… ………………………………………………………………………………………………………………… Ratify all acts done by the agent on *my/our behalf in connection with *that /those matter (s), and requests that all notices, requisitions and communications relating thereto be sent to the agent at the abovementioned said address. Any previous appointment in respect of the same matter (s) is revoked. **SIGNATURE …………………………………. ……………………………..

(Date) * Delete whichever does not apply ** Must be signed by the person (s) appointing the agent, type name under signature.

Patents Form No. 18 PATENTS ACT 1983 REQUEST FOR TO AMEND PATENT (Regulations 45C(1)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

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

I. APPLICANT : Name : ………………………………………………………………………………….…………………….. Address : ….………………………………………………………….…………………………………..…

……………………………………………………………………….…………………………. Nationality : …….…………………………….………………………………………………………….. *Permanent residence or principal place of business : ………………………………………….…………………………………………………….………………….. .……………………………………………………………………….………………………….………………

Telephone Number Fax Number (if any) (if any)

………………………….. …………………..………

II. APPLICATION:

The above applicant applies for registration as a patent agent in the Register of Patents Agents.

III. QUALIFICATIONS : The applicant (tick whichever is applicable) :

(a) is an advocate and solicitor of the High Court (b) has passed the examination specified in Regulation 45D (c) has a relevant degree or its equivalent in engineering or science (d) has not been convicted of any offence involving fraud or dishonesty (e)has been convicted of an offence involving fraud or dishonesty and record thereof with a statement of explanation accompanies this Form

IV. Proof of the matters specified in paragraphs (a), (b), (c), and (d) of Part III of this Form, if applicable, accompanies this Form.

V. SIGNATURE ……………………………………..…………… ** (Applicant)

……………………………… (Date)

* **

Delete whichever does not apply. Type name under signature.

Patents Form No. 18A PATENTS ACT 1983 APPLICATION FOR REGISTRATION AS CANDIDATE FOR EXAMINATION (Regulations 45D(2)) To : The Secretary

Board of Examiners of Patents Agents Patent Registration Office Kuala Lumpur Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

I. I ………………………………………………………. of …………………………………………………….. …………………………………………………………………………………………………………………… hereby apply for registration as a candidate at the Examination for Registration as Patent Agents to be held in the month of …………………….. 19……

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

Telephone Number Fax Number (if any) (if any)

………………………………….. ……………………………… * Delete whichever does not apply ** type name under signature.

Patents Form No. 18B PATENTS ACT 1983 APPLICATION FOR REGISTRATION AS CANDIDATE FOR EXAMINATION (Regulations 45D(2)) To : The Secretary

Board of Examiners of Patents Agents Patent Registration Office Kuala Lumpur Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

II. I ………………………………………………………. of …………………………………………………….. …………………………………………………………………………………………………………………… hereby apply to submit myself to re‐sit the examination in the following subject (s) at the Examination for Registration as Patent Agents to be held in the month of …………………….. 19…… Subject: ………………………………………………………………………………………………………

……………………………………………………………………………………………………… 64

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

VII. SIGNATURE ……………………………………..…………… ……………………………… ** (Applicant) (Date)

Telephone Number Fax Number (if any) (if any)

………………………………….. ……………………………… * Delete whichever does not apply ** type name under signature.

Patents Form No. 19 PATENTS ACT 1983 APPLICATION FOR RENEWAL OF REGISTRATION OF PATENT AGENTS (Regulations 45E(1)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

Please submit this Form in duplicate together with the prescribed fee.

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

.……………………………………………………………………….………………………….……………… Telephone Number Fax Number

(if any) (if any) ………………………….. …………………..………

II. APPLICATION:

The above applicant applies for renewal of the registration in the Register of Patents Agents.

III. QUALIFICATIONS : The applicant (tick whichever is applicable) : (a) is an advocate and solicitor of the High Court (b) has passed the examination specified in Regulation 45D (c) has a relevant degree or its equivalent in engineering or science (d) has not been convicted of any offence involving fraud or dishonesty (e)has been convicted of an offence involving fraud or dishonesty and record thereof with a statement of explanation accompanies this Form

IV. ADDITONAL INFORMATION accompanies this Form: Yes No

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

* Delete whichever does not apply ** type name under signature.

Patents Form No. 20 PATENTS ACT 1983 FURNISHMENT OF ADDRESS FOR SERVICE (Regulations 51 and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

APPLICATION NO. : ……………..……………… Fee received on : ………………………………… Amount : ……………………………………………. *Cheque / Postal Order / Money Order / Draft / Cash No. :……………………………………

Date of mailing: ……………………………………… Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

For Official Use

II. *APPLICANT (S) : Name : …………………………………………………………………………….…………………….. Address : ………………………………………………………….…………………………………..…

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

III. REQUEST : The applicant (s) identified above request (s) the Registrar for the *inclusion/addition/alteration/substitution of an address for service in Malaysia as follows: …………………………………………………………………………………………………………………… ……………………………………………………………………………………………………………………

IV. ADDITONAL INFORMATION accompanies this Form: Yes No

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

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

* Delete whichever does not apply ** type name under signature and delete whichever does not apply.

For Official UsePatents Form No. 21 PATENTS ACT 1983 REQUEST FOR EXTENSION OF TIME (Regulations 53(1) and 45(3)) To : The Registrar of Patents

Patents Registration Office Kuala Lumpur,Malaysia

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

Date of mailing: ……………………………………… Please submit this Form in duplicate together with the prescribed fee. Applicant’s or Agent’s file reference:

……………………………………………………..………….

I. IN THE MATTER OF :

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

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

III. REQUEST : ** The applicant (s) request (s) the Registrar to extend the time within which to: …………………………………………………………………………………………………………………… ……………………………………………………………………………………………………………………

IV. EXTENSION PERIOD SOUGHT: From: ………………………........................... To: ………………………………………………..

V. *** STATEMENT OF GROUNDS attached

VI. ADDITONAL INFORMATION accompanies this Form: Yes No

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

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

* Delete whichever does not apply

** Insert brief description of the act or things to be done. *** The applicant shall state the facts he considers as justifying the extension. **** Type name under signature and delete whichever does not apply.

Made 29 June 1995. [HI/KPDN/PAT/20/5; PN. (PU2) 410/IV.]

DATO’ HAJI ABU HASSANBIN HAJI OMAR, Minister of Domestic Trade and Consumer Affairs

Patents (Amendment) Regulations 1995, Malaysia

Available Materials