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Patents |
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Requirements |
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2. Official Filing Certificate |
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The official filing date and the official Certificate of Filing is issued to applications which have fulfilled the minimum filing requirements, i.e. the above requirements except for items 1.1.3.4 (Abstract); 1.4 (Priority claim); 1.5 (Statement Justifying Applicant's Right); and 1.6 (Patent Agent Appointment Form). |
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3. Prosecution of the Patent Application |
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After the filing of an application, there are two major stages of prosecution, i.e. the Preliminary Examination and Substantive Examination. |
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3.1 Preliminary Examination on the application is performed automatically upon filing of the patent application and the Report is usually issued together with the Certificate of Filing. The Preliminary Examination Report contains observations made by the Examiner on the formal and documentation compliance of the application. Any deficiency noted in the Report must be rectified within 3 months of the date of issuance of the Preliminary Examination Report. |
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3.2 Substantive Examination must be requested within 24 months of the filing date. Upon filing the request the patent application will be examined with regard to its patentability of the subject matter and validity of the claims. The applicant must now decide which of the two types of substantive examination he would like his application to proceed under: (i) normal examination or (ii) modified
examination. |
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3.2.1 Normal or full examination. Upon making the request, the applicant needs to provide certain examination assistance, where possible, such as information, where appropriate or available, the application number,patent number, search result or examination result of corresponding patent application filed in one of the following countries known for their rigorous examination standards: |
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- Australia
- United Kingdom
- United States of America
- European Patent Office |
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Deferment: The applicant may defer requesting examination for up to one (1) year if none of the above-mentioned information or search results are available yet. |
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3.2.2 Modified Examination is available to the applicant if he has a corresponding patent granted in any one of the territories listed above and the applicant agrees to amend his Malaysian application to conform to the text of the said foreign patent. At the time of requesting for examination, the required documents are: |
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- a certified copy of the said foreign granted patent, together with
- the pages of the description and claims of the Malaysian application which have been amended to conform to the text of the said foreign patent. |
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Deferment: The applicant may defer requesting examination for up to two (2) years to await the availability of any one of the said foreign granted patents. |
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3.2.3 Responding to Examination Reports. Upon the issuance of the Substantive Examination Report, the applicant is given 3 months to reply and/or make amendments to overcome the Examiner's objections. Only one further extension of 3 months upon the expiry of the initial 3-month period may be requested for by the applicant to respond to the issues raised in the Report. |
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3.2.4 Amendment of Specification: The specification may be amended at any time before grant, preferably before the request for substantive examination is made. The amendments must not go beyond the disclosure in the initial application. |
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3.2.5 Publication of Application: There is no publication of the subject matter during the pendency of the application. Only upon grant is the subject matter made available to the public and the patent's particulars together with an abstract of the invention published in the Government Gazette. |
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3.2.6 Withdrawal or Abandonment: An application may be abandoned or withdrawn at any time. The subject matter of an abandoned or withdrawn application will not be published. |
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Withdrawal is a formal procedure wherein a request and declaration is filed with Patent Office requesting for the withdrawal of the application. Such withdrawal is irreversible and has immediate effect upon lodgment with the Patent Office. |
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Abandonment of an application is merely inaction to official actions, e.g. by not replying or responding to outstanding Examination Reports, etc. The application will remain pending until the period prescribed for responding or taking action expires. |
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4. Patentability |
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4.1 Unpatentable Inventions: |
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i. discovery, scientific theory or mathematical method; |
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ii. plant or animal variety or essentially biological process for the production of plants or animals, other than man-made living microbes, microbiological process and the products of such microbes; |
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iii. scheme, rule or method for doing business, performing purely mental acts or playing games; |
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iv. method for the treatment of human or animal body by surgery or therapy, and diagnostic method practiced on the human or animal body; however, products used in any such method is patentable. |
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4.2 Patentable Inventions
An invention is defined as an idea of an inventor that permits in practice the solution to a specific problem in the field of technology. A patentable invention is an invention that is novel, has inventive step and is industrially applicable, i.e. able to solve a specific technological problem, and does not fall within one of the above categories of unpatentable inventions. It may be or relate to a product or process. |
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4.2.1 Novelty
An invention is new if it is not anticipated by prior art, which consists of |
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(a) public disclosures that occur prior to the filing date or, where priorityis claimed, prior to the priority date of the patent application claiming the invention. |
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(b) contents of a domestic patent application having an earlier filing date or, where appropriate, an earlier priority date than the patent application referred to in paragraph (a) above to the extent that such contents are included in the patent granted on the basis of the said domestic patent application. |
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4.2.2 Inventive Step. An invention is considered to have inventive step if, having regard to any matter which forms part of the prior art under paragraph 4.2.1(a) above, such inventive step would not have been obvious to a person having ordinary skill in the art. |
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4.2.3 Industrial Application. An invention is considered industrially applicable if it can be made or used in any kind of industry. |
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