Problems relating to Trade and Investment on Malaysia
17. Implementation of intellectual property rights ("IPRs") |
|||
Issue |
Issue details |
Requests |
Reference |
| (1) Shortage of the Period for Request of Modified Substantive Examination | - The deadline for request of Modified Substantive Examination Scheme (MSES) is 4-years in principle from the filing date of patent application (FDPA), extendable up to 5-years from FDPA by requesting extension. Therefore, in most cases, it requires filing of request for extension of the application period, in order to allow for the period up to the point of registration in the U.S., Japan, etc. | - It is requested that GOM amends the Act so that the deadline of filing request for examination under MSES is 5-years (or more) from FDPA. | - Patent Regulation, Articles 27(1), 27A(1) & 27B(2) |
| (2) Absence of Board of Patent Appeals and Interferences (BPAI) at Intellectual Property Corporation of Malaysia (PHIM) | - Intellectual Property Corporation of Malaysia (PHIM, or later called MyIPO) has no scheme for seeking judgement on invalidation of patent. Board of Patent Appeals and Interferences (BPAI). To seek patent invalidation, the claimant must bring the case to the court naming the patent holder as defendant. | - It is requested that MyIPO establishes the scheme for patent invalidity examination. | - Patent Act, Article 56 |
| (3) Insufficient Application Points for Divisional Patent Application | - As regards Division of Patent Application (DPA), it is prescribed that DPA may be filed within 3-months of the mailing date of the examiner's report on violation of unity of invention, or at claimant's own initiative. Therefore, it is impossible to divide the patent at the time of refusal examination or patent examination. It cuts down the opportunity for the applicant's acquisition of the patent in the particular claims as desired by the applicant. | - It is requested that MyIPO takes steps to amend the Act so that DPA may be filed upon the examiner's negative determination of the examination. | - Malaysia Patents Act Article 30(1)(2)(3)(5) - Patents Regulations Article 19A |
| (4) Fuzzy Legislative Provisions on Obligation to File Applications in the First Country | - In emerging countries where growing needs for local development prevail, numerous countries continue to retain the legislative provisions on "obligation to file applications in the first country (OFAFC)", however, without a clear-cut definition. It makes it difficult to protect IPRs effectively. Today when the R&D activities encompassing multiple countries are indispensable, the risk of infringement under OFAFC in plural countries is a matter of concern. | - It is requested that MyIPO takes steps to: -- deregulates or repeals OFAFC or provides its clear-cut legislative provisions, or -- promotes deregulation for application of OFAFC requirements upon cross border R&D activity by agreements among plural countries, etc. |
|
<<BACK |