18th March 2022
The Patents (Amendment) Act 2022 seeks ensure that our country’s patent laws are in line with current developments on patent protection on an international level.
Recognition of Micro-biological Processes as Patentable Inventions
Section 13(1)(b) of the Patents Act 1983 (“Act”) has been amended to clarify that inventions relating to products on microbiological processes are patentable inventions. To this end, new Sections 26C and 78O have been introduced to provide for a procedure to deposit micro-organisms which is not available to the public and cannot be described in the patent application with a National Depositary Authority or an International Depositary Authority as a part of the patent disclosure procedure in compliance with the Budapest Treaty.
This procedure will also apply to international patent applications which designates Malaysia for the purpose of obtaining a patent and is consistent with the proposal for Malaysia to become a member of the Budapest Treaty. The Budapest Treaty facilitates the deposit micro-organisms for the purpose of patent protection at a recognised storage place only once to enjoy patent protection at designated member countries.
Limitation Period for Infringement Proceedings
The limitation period of 5 years for proceedings for patent infringement as currently provided for under Section 59(3) of the Act has been extended to 6 years.
Patents as Objects of Property
A new paragraph (1)(d) to Section 36 of the Act is introduced to allow a patent to be dealt with as a security interest. Further, Section 39 of the Act is amended to allow a patent to be recognised as personal property or movable property capable of being the subject of security interest and security interest transactions may now be recorded with the Patents Office.
Notice of Trust in the Register
Previously, under Section 32A of the Act, a notice of trust, whether express, implied or constructive, shall not be entered in the Register. However, with the amendment to this section, a notice of an express trust or a beneficiary of an express trust may be accepted by the Registrar and entered into the Register. Even so, a notice of implied or constructive trust is still not allowed to be entered in the Register.
Introduction of Patent Opposition Proceedings
In a greatly welcomed move, the Act now includes provisions for opposition proceedings under which any interested person (including the Federal and State government) may commence opposition proceedings by filing a notice of opposition against a patent owner. The grounds of opposition are the same as those specified in Section 56(2)(a), (b) and (c) of the Act for invalidation proceedings.
At the conclusion of the opposition proceedings, the Registrar has three options: (a) maintain the patent; (b) maintain the patent subject to amendment; or (c) invalidate the patent. If the Registrar arrives at the conclusion that the patent ought to be invalidated, the effects of invalidation as set out under Section 57 of the Act will apply to opposition proceedings under the new Section 55A as well.
Amendments to Invalidation Proceedings
A new Section 56A is introduced in connection with the new Section 55A. Under the new Section 56A, where a notice of opposition filed by an interested person under Section 55A has not been decided by the Registrar, no proceedings may be instituted in Court for the invalidation of the patent concerned.
However, it also provides that invalidation proceedings may nonetheless be instituted if: (a) both parties to the opposition proceedings agree for the invalidation proceedings to be instituted before the Court; or (b) the interested person is a defendant in an infringement action.
Further, it is relevant to note that Section 57(2) of the Act has been removed, thus indicating that the Registrar is no longer required to record invalidation of a patent in the Register or publish it in the Official Journal.
Amendments to Appeal Proceedings
Section 88(2) of the Act which stipulates that an appeal in respect of any order or decision of the Registrar shall be treated as an appeal from the subordinate court to the High Court has been deleted. This amendment, in essence, indicates that an appeal from a decision of the Registrar to the High Court will no longer be treated as an appeal from the subordinate court to the High Court, which is significant, as it allows such appeals to be heard by the apex court.
Amendments to Patent Application and Examination Procedures
The Act includes various amendments to the patent application and examination process, amongst which include:-
a) Allowing an applicant for the grant of a patent to make a request to the Registrar for the restoration of a right of priority;
b) A divisional application shall not be allowed if before the date of such request, the initial patent application or the immediately preceding application relating to the initial application has been granted a patent, refused, deemed to be withdrawn, withdrawn or abandoned. The prescribed period for making the request for division cannot be extended;
c) An applicant is no longer required to provide to the Registrar certain information or supporting documents 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 when filing a request for substantive examination; and
d) The period for applying for the reinstatement of a lapsed patent is reduced from 2 years to 12 months from the date the notice of lapsing of a patent is published in the Intellectual Property Official Journal.
Amendments have been introduced to enable Malaysia to comply with its obligations under Article 31bis of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) by allowing the grant of a compulsory licence for the production of pharmaceutical products in Malaysia and exportation of that pharmaceutical product to an eligible importing country to address a public health problem.
A new Section 52A is introduced to allow the Registrar to grant a compulsory licence even if an exclusive licence contract has been entered into between the licensor and a licensee. The new provision also seeks to protect a licensor from any action for breach of contract by the licensee which may result from the grant of a compulsory licence by the Registrar.
Managing Partner and Head, IP
* This Alert is intended for general information of the clients of our Firm. It should not be regarded as legal professional advice. If you need advice based on specific facts, please feel free to contact us.