PATENTS (AMENDMENT) ACT 2022

This Act comes into operation on a date to be appointed by the Minister by notification in the Gazette and the Minister may appoint different dates for the coming into operation of different provisions of this Act.

General amendment

by substituting for the word “Gazette” wherever appearing the words “Official Journal” except in section 1; and

by substituting for the words “prescribed time” wherever appearing the words “prescribed period”.

Amendment of section 3

by inserting after the definition of “Corporation”

the following definition:

‘ “Council for TRIPS” means the council established under the TRIPS Agreement;’;

by inserting after the definition of “filing date”

the following definitions:

‘ “International Depositary Authority” means a depositary institution which has acquired the status of international depositary authority under the Budapest

Treaty;

“micro-organism” means any organism of microscopic size and parts of an organism of microscopic size, including sterile organism, virus and viroid;’;

by inserting after the definition of “Minister” the following definition:

‘ “Official Journal” means the Intellectual Property

Official Journal published by the Registrar under section 86a;’;

by inserting after the definition of “patented product”

the following definition:

‘ “pharmaceutical product” means—

any patented product; or

any product manufactured through a patented process, of the pharmaceutical sector that includes active ingredient necessary for its manufacture and diagnostic kit needed for its use;’;

Patents (Amendment)

by inserting after the definition of “Registrar” the following definition:

‘ “resident” includes—

a citizen of Malaysia who is residing in

Malaysia;

a non-citizen of Malaysia who—

has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia;

or

a body corporate incorporated, established or registered under any written law in

Malaysia other than a foreign company;

or

an unincorporated body established or registered under any written law in

Malaysia;’;

in the definition of “right”, by substituting for the full stop at the end of that definition a semicolon; and

by inserting after the definition of “right” the following definition:

‘ “TRIPS Agreement” means the Agreement on

Trade-Related Aspects of Intellectual Property Rights set out in Annex 1C to the Agreement Establishing the World Trade Organization.’.

Amendment of section 13

by substituting for subsection (4) the following subsection:

“(4)  A request for conversion under this section shall be filed with the Registrar within the prescribed period.”; and

by inserting after subsection (4) the following subsection:

“(4a) Without prejudice to the power of the Registrar to allow conversion, the prescribed period referred to in subsection (4) shall not be extended under section 82.”.

Amendment of section 18

by renumbering the existing provision as subsection (1);

and

by inserting after subsection (1) as renumbered the following subsection:

“(2)  In this section, “Government” means the

Federal Government or a State Government.”.

Amendment of section 23a

in the national language text—

by renumbering the existing provision as subsection (1); and

in the English language text, in subsection (1), by substituting for the words “No person resident in Malaysia shall”

the words “No person who is a resident shall”; and

by inserting after subsection (1) the following subsection:

“(2)  An application for the grant of a written authority by the Registrar referred to in subsection (1) shall be made by the resident in the prescribed manner together with the payment of the prescribed fee.”.

Amendment of section 25

by inserting after the word “submitting” the words

“to the Registrar”; and

by substituting for the words “the prescribed form to the Registrar” the words “the form as determined by the Registrar together with the payment of the prescribed fee”.

Deletion of section 26a

by substituting for subsection (1) the following subsection:

“(1)  The applicant may, within the prescribed period, make a request to the Registrar for a divisional application to divide an application into two or more applications in the form as determined by the Registrar together with the payment of the prescribed fee, provided that each divisional application shall not go beyond the disclosure in the initial application.”;

by inserting after subsection (1) the following subsections:

“(1a)  A request for the divisional application under subsection (1) shall not be allowed by the Registrar if before the date of such request, the initial application or the immediate preceding application relating to the initial application has been—

granted a patent;

refused;

deemed to be withdrawn;

Patents (Amendment)

withdrawn; or

abandoned.

Without prejudice to the power of Registrar to allow for divisional application, the prescribed period referred to in subsection (1) shall not be extended under section 82.”; and

The deposit of micro-organism with the National

Depositary Authority referred to in subsection (1) shall be made in the prescribed manner.

The deposit of micro-organism with the International

Depositary Authority referred to in subsection (1) shall be made in accordance with the Budapest Treaty.

The deposit of micro-organism with the National

Depositary Authority or the International Depositary Authority, as the case may be, shall be recognized as fulfilling the requirement of disclosure in a patent application.

Any person may make a request for a sample of the micro-organism deposited under subsection (1) in the prescribed manner together with the payment of the prescribed fee and subject to the conditions as prescribed.

For the purposes of this section, “Budapest Treaty”

means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent

Procedure done at Budapest on 28 April 1977.”.

Amendment of section 27

in subsection (1)—

by substituting for the words “the priority”

the words “the right of priority”; and

by inserting after subsection (1a) the following subsection:

“(1b) Where the applicant fails to claim the right of priority during the period of twelve months referred to in subsection (1), the right of priority may be restored if—

a request for restoration of right of priority is made by the applicant to the Registrar in the form as determined by the Registrar together with the payment of the prescribed fee; and

such request under paragraph (a) fulfils the conditions as prescribed.”.

Amendment of section 28

in paragraph (1)(c), by inserting after the words

“a description” the words “including a sequence listing, if any”;

Patents (Amendment)

by inserting after subsection (1) the following subsection:

“(1a) For the purposes of paragraph (1)(d), where the application comprises more than ten claims, each subsequent claim shall be subject to the payment of the prescribed fee.”;

by substituting for subsection (2) the following subsection:

“(2)  Where the Registrar finds that the application made by the applicant does not fulfil the requirement under paragraph (1)(a), (b), (c) or (d), the Registrar shall request the applicant to file the required correction within the prescribed period.”;

by inserting after subsection (2) the following subsection:

“(2a) Where the Registrar finds that the application made by the applicant does not fulfil the requirement under subsection (1a), the Registrar shall request the applicant to make payment of the prescribed fee for each subsequent claim within the prescribed period.”;

by substituting for subsection (3) the following subsection:

“(3)  Where—

the applicant complies with the request of the

Registrar to file the required correction under subsection (2), the Registrar shall record as the filing date the date of receipt of the required correction;

the applicant does not comply with the request of the Registrar to file the required correction under subsection (2), the application shall be treated as abandoned;

the applicant complies with the request of the Registrar to make payment of the prescribed fee for each subsequent claim under subsection (2a), the Registrar shall record as the filing date the date of receipt of the application under subsection (1); or

the applicant does not comply with the request of the Registrar to make payment of the prescribed fee for each subsequent claim under subsection (2a), the Registrar shall record as the filing date the date of receipt of the application under subsection (1) for the first ten claims only.”;

in subsection (4), by inserting after the words “the missing drawings” the words “within the prescribed period”; and

by inserting after subsection (5) the following subsection:

“(6)  The prescribed period referred to in subsections (2), (2a) and (4) shall not be extended by the Registrar under section 82.”.

Amendment of section 29a

in subsection (2), by substituting for the words “the applicant may, instead of requesting for a substantive examination, request for a modified substantive examination”

the words “the applicant may, instead of filing a request for a substantive examination, file a request for a modified substantive examination within a prescribed period”;

in subsection (3), by substituting for the words

“prescribed form” the words “form as determined by the Registrar”;

by deleting subsection (4);

by substituting for subsection (5) the following subsection:

“(5)  If the applicant fails to—

file a request for a substantive examination under subsection (1); or

file a request for a modified substantive examination under subsection (2),

Patents (Amendment)

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within the prescribed period, the application for a patent shall be deemed to be withdrawn at the end of that period.”;

by substituting for subsection (6) the following subsections:

“(6)  Notwithstanding paragraph (5)(b), the Registrar may, upon the request of the applicant in the form as determined by the Registrar together with the payment of the prescribed fee, allow a deferment of the filing of a request for a modified substantive examination referred to in subsection (2).

The deferment under subsection (6) may be allowed only on the grounds that the patent or other title of industrial property protection has not been granted or is not available by the expiration of the prescribed period for the filing of a request for modified substantive examination.”; and

A notice of an express trust or a beneficiary of an express trust, or both, may be accepted by the Registrar and entered in the Register.

Notwithstanding subsection (2), the Registrar shall not be affected by the notice of an express trust or a beneficiary of an express trust, and failure to enter such notice in the Register does not affect any right or duty under the trust.”.

Substitution of section 33

any document relating to a patent application or patent which may be obtained pursuant to the provisions of this Act; or

any document which is not to be made available to any third party in accordance with this Act.”.

Amendment of section 33b

in subsection (1), by inserting after the words

“prescribed manner” the words “together with the payment of the prescribed fee”; and

in paragraphs (1)(a) and (b), by inserting after the words

“owner of the patent” the words “or the inventor”.

Amendment of section 33c

by substituting for subsection (2) the following subsection:

“(2)  For the purposes of the application under subsection (1), the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court.”; and

by deleting subsection (4).

New section 33d

by substituting for subsection (1) the following subsection:

“(1)  Where a patent application has been published under section 33d, upon receipt of a payment of the prescribed fee, the Registrar shall make available

Patents (Amendment)

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for public inspection in the prescribed manner the following information or document relating to a patent application to the extent that such information or document is in the possession of the Registrar—

the name, address and description of the applicant, and the name and address of his agent, if any;

the application number;

the filing date of the application, and if a right of priority is claimed, the priority date, the number of an earlier application, the name of a country in which the earlier application was filed, or where the earlier application is a regional or an international application, the name of the country for which and the office at which it was filed;

the particulars of the application including the description, claim or claims, drawings, if any, and the abstract and any amendments to the application, if any;

any change in ownership of the application and any reference to a licence contract relating to the application;

search and examination reports;

communications in respect of the patent application from the applicant to the Patent Registration

Office as determined by the Registrar; and

patent and non-patent related literature citations submitted by the applicant or any other person to the Patent Registration Office.”;

by deleting subsection (2);

by substituting for subsection (3) the following subsection:

“(3)  Where there is no request made by the applicant under paragraph 33d(1)(b), any person who intends to inspect the information or document relating to a patent application referred to in subsection (1) before the expiry of the eighteen months from the filing date, or if right of priority is claimed, the priority date of a patent application, shall make a request to the Registrar in the form as determined by the Registrar accompanied by—

a written permission of the applicant; and

a payment of the prescribed fee.”; and

in subsection (5), paragraph (6)(b) and subsection (9), by substituting for the words “made available for public inspection” the words “published under section 33d”.

New section 34a

by substituting for the words “two years” the words

“twelve months”; and

by substituting for the words “the prescribed form”

the words “the form as determined by the Registrar together with the payment of the prescribed fee”.

Amendment of section 36

in subsection (1)—

by substituting for the full stop at the end of paragraph (c) the words “; and”; and

by inserting after subsection (4) the following subsection:

“(5)  In proving to the contrary in any proceedings referred to in subsection (4), the person other than the owner of the patent or his licensee shall not be required to disclose any manufacturing or commercial secret if the court is satisfied that it is unreasonable or unnecessary to do so, or prejudicial to the manufacturing or commercial secret of that person.”.

Amendment of section 37

in subsection (1), by substituting for the words “and in particular not to acts done only for scientific research”

the words “and shall not extend to acts done for experimental or scientific research purposes”;

in subsection (1a)—

by inserting after the words “relevant authority”

the words “either in Malaysia or outside

Malaysia”; and

in subsection (3), by substituting for the words

“temporarily in Malaysia” the words “which temporarily or accidentally enters Malaysia”.

Substitution of heading of Part VIII

in the shoulder note, by substituting for the words

“Assignment and transmission of patent applications and patents” the words “Assignment, transmission and security interest transaction”;

in subsection (1), by inserting after the word “transmitted”

the words “in the same way as other personal or moveable property”;

by inserting after subsection (1) the following subsection:

“(1a)  A patent may be the subject of a security interest in the same way as other personal or moveable property.”;

Patents (Amendment)

by inserting after subsection (2) the following subsections:

“(2a)  Any person who is a party to a security interest transaction in respect of a patent may apply to the Registrar in the prescribed manner to have such security interest transaction recorded in the Register.

Any security interest in respect of a patent may be enforced in the same way as other personal or moveable property.”;

The Registrar may remove the recorded security interest transaction from the Register on the application of any person who is a party to the security interest transaction in the prescribed manner.”.

Amendment of Part X

in the definition of “beneficiary of the compulsory licence”, by deleting the word “and” at the end of that definition;

in the definition of “compulsory licence”, by substituting for the full stop at the end of that definition the words

“; and”; and

by inserting after the definition of “compulsory licence”

the following definition:

‘ “eligible importing country” means—

a least developed country which is a member of the World Trade Organization; and

any other country which is a member of the World Trade Organization which—

notifies the Council for TRIPS of its intention to act as an importer in accordance with Article 31bis and the Annex to the TRIPS Agreement; and

in paragraph (1)(b), by deleting the words “are sold at unreasonably high prices or”;

by inserting after subsection (1) the following subsection:

“(1a)  Notwithstanding subsection (1), at any time after the grant of a patent, any person may make an application to the Registrar for a compulsory licence—

where the products produced in Malaysia under the patent for sale in the domestic market are sold at unreasonably high prices without any legitimate reason; or

Patents (Amendment)

for the purposes of production of a pharmaceutical product in Malaysia and exportation of such pharmaceutical product to an eligible importing country to deal with its public health problem.”;

and

in subsection (2), by substituting for the words

“A compulsory licence” the words “Except for paragraph (1a)(b), a compulsory licence”.

Amendment of section 50

in subsection (1), by substituting for the word “royalty”

the words “adequate remuneration”;

by inserting after subsection (1) the following subsection:

“(1a)  In addition to the requirements specified in subsection (1), an application for a compulsory licence under paragraph 49(1a)(b) shall comply with any other requirements as prescribed.”;

by substituting for subsection (2) the following subsection:

“(2)  Where an application for a compulsory licence is made pursuant to section 49 or a request for a compulsory licence is made pursuant to section 49a, the Registrar shall furnish a copy of the application or the request to the licensor or the licensee, as the case may be, for an opportunity to make observations on the application or request within the prescribed period.”; and

by deleting subsection (3).

Amendment of section 51

in paragraph (b), by deleting the word “and” at the end of that paragraph;

in paragraph (c)—

by substituting for the word “royalty” the words

“adequate remuneration”; and

by inserting after paragraph (c) the following paragraph:

“(d) any other conditions as may be determined by the Registrar.”.

New section 52a

The grant of a compulsory licence by the Registrar under subsection (1) shall not give rise to an action for breach of the licence contract referred to in subsection (1)

by the licensee against the licensor.”.

Amendment of section 53

If the interested person is not a resident, the security for costs of the opposition proceedings as determined by the Registrar shall be given by the interested person at the time of filing the notice of opposition under subsection (1).

After the filing of notice of opposition under subsection (1), any request or filing of documents made by the interested person or owner of the patent in relation to the opposition proceedings shall be made in the prescribed manner together with the payment of the prescribed fee.

The Registrar may form an ad hoc opposition committee to give recommendation to the Registrar in making a decision on the notice of opposition.

At the end of the opposition proceedings, the Registrar shall decide whether to—

Where the Registrar decides to maintain the grant of a patent under paragraph (5)(a) or (b), no application under section 56 shall be made by the interested person in relation to the patent concerned except by way of counterclaim for the invalidation under subsection 60(3) or appeal to the Court under section 88.

Where the Registrar decides to maintain the grant of a patent with any amendment under paragraph (5)(b), the amendment shall be deemed to have effect from the date of the grant of the patent.

Patents (Amendment)

Any decision of the Registrar under this section or any appeal from such decision of the Registrar under section 88

shall not prevent any party to any infringement proceedings from invalidating the patent on any of the grounds referred to in section 56.

In this section, “interested person” includes the Federal Government and a State Government.”.

Amendment of section 56

in paragraph (c), by inserting after the semicolon at the end of that paragraph the word “or”;

in paragraph (d), by substituting for the words “; or”

at the end of that paragraph a full stop; and

by deleting paragraph (e).

New section 56a

both parties to the opposition proceedings agree for the invalidation proceedings to be instituted before the Court; or

the interested person is a defendant in an infringement proceedings.

Before the interested person institutes the invalidation proceedings under section 56 by virtue of paragraph (1)(a)

or (b), the interested person shall—

in subsection (1), by inserting after the words

“part of a claim” the words “under section 55a or 56”; and