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Patents |
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Requirements |
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5. Divisional Applications |
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Unity of Invention Requirements |
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5.1 Unity of Invention. An application should relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. The same application may, however, include: |
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5.1.1 in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for a use of the product; or |
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5.1.2 in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the process; or |
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5.1.3 in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for an apparatus or means specifically designed for carrying out the process. |
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5.1.4 Subject to the "one invention one application" rule of paragraph 5.1 above, an application may contain two or more independent claims of the same category which cannot be covered readily by a single generic claim. |
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5.2 Divisional Applications. A pending application may be divided into two or more divisional applications provided that each divisional application does not go beyond the disclosure in the initial application. Each divisional application is entitled to the filing date and, where appropriate, the priority date of the initial application. |
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6. Terms and Rights |
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6.1 Term of a patent is 20 years from the date of filing in Malaysia (for patent applications filed on or after 1st August 2001). Term of patent filed in Malaysia prior to 1st August 2001 and was pending
on that date, is 20 years from date of filing in Malaysia or 15 years from date of grant, whichever is longer. Term of a patent granted in Malaysia prior to 1st August 2001 and was still in force on that date, is 20 years from date of filing in Malaysia or 15 years from date of grant, whichever is longer. |
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6.2 Exclusive Rights. The owner of a patent has the exclusive rights to exploit, assign or transmit, and conclude license contracts in relation to the patent. Exploitation of a patented invention includes: |
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6.2.1 (when a patent is granted for a product) making, importing, offering for sale, selling, or using; or stocking the product for sale or offer to sell, selling or using. |
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6.2.2 (when a patent is granted for a process) using the process, or doing any of the acts referred to in paragraph 6.2.1 in respect of a product obtained directly by means of the patented process. |
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6.3 Infringement. Unauthorized performance of any acts referred to above, subject to other provisions of the Patents Act, is an infringement of the rights of the owner. However, infringement proceedings may not be instituted after 5 years from the infringing act. |
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6.4 Patent Licenses
The patentee may grant to another person a license to do any or all
of the acts referred to in paragraph 6.2 "Exclusive Rights" above. |
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6.4.1 Compulsory License. A third party's right to a compulsory license arise when a patent is not exploited for more than 3 years from the grant of a patent, or four years from the filing date of the
patent application (whichever is the later) without legitimate reason, or when products are produced under a patent for sale in Malaysia at unreasonable prices or do not meet public demand. |
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Compulsory licenses are also granted in the case where a later patent cannot be worked without infringing an earlier patent. |
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6.4.2 Voluntary Endorsement of License. A patentee may make an entry in the Register of Patents to the effect that any person may apply for a license through the Registrar of Patents. |
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7. Utility Models |
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7.1 Inventions that do not meet the patent's requirements of novelty, inventive step and industrial application may be protected as a utility model (called "utility innovation" under our Patents Act
1983). The requirements of a utility model are as follows: |
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7.1.2 Novelty. A utility model is considered new if it has not been disclosed to the public by written or oral disclosure, use, or other ways prior to the filing date. |
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7.1.3 Utility. The requirements of inventive step and industrial application are reduced to that of utility. |
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"Utility innovation" is thus defined as any innovation which creates a new product or process, or any new improvement of a known product or process, which can be made or used in any kind of industry, and includes an invention. |
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7.2 Procedure and Format. The documentation and procedure of a utility model application are the same as those of a patent except that only a single claim is allowed in the former. |
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7.3 Term and Rights |
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7.3.1 Term. For utility model applications filed in Malaysia on or after 1st August 2001, an initial term granted is 10 years. It may be extended for another 2 consecutive terms of 5 years each if the
proprietor of a utility model can show to the satisfaction of the Patents Board at the end of each term that the said utility model is still in commercial or industrial use in Malaysia. (For utility
model applications filed in Malaysia prior to 1st August 2001, an initial term granted is 5 years. It may be extended for another 2 consecutive terms of 5 years each if the proprietor of a utility model can show to the satisfaction of the Patents Board at the end of each term that the said utility model is still in commercial or industrial use in Malaysia.) |
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7.3.2 Exclusive Rights. The exclusive rights of a utility model are similar to those of a patent. The statutory time bar for instituting infringement proceedings is, however, 2 years from the date of
infringement. |
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7.3.3 Licenses. Utility model owners may grant licenses to others. Compulsory licenses do not apply. |
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8. Change of Ownership |
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8.1 Patents, utility models and their respective applications may be assigned or transmitted. The requirements are as follows: |
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8.1.1 Assignment document signed by or on behalf of the contractingparties or, in the case of transmission, documents evidencing the transfer of title to the new owner. Copies of the documents should be notarized if executed outside Malaysia. No legalization is required. |
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8.1.2 Name, address and nationality of both the assignor and assignee or, in the case of transmission, the beneficiary. |
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8.1.3 Patent agent appointment forms (Form 17) duly signed by both the assignor and assignee or, in the case of a transmission, the beneficiary. |
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8.2 The assignment or transmission will only be effective against third parties upon recordation in the Register of Patents. |
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9. Searches |
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The Malaysian Patent and Trademark Offices are equipped with the Patents and Trademarks Automated System (PANTAS) for computer searches of Malaysian granted patents and/or Utility Innovations. We provide the following patent search services: |
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9.1 Equivalent Patent Search
This mode of search is conducted to locate and identify all Malaysian granted patents and/or Utility Innovations and/or pending patent and/or utility innovation applications which correspond to any foreign patens and/or pending patent applications. |
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9.2 Subject Matter Search
This mode of search is conducted to ascertain state-of-the-art, technology update; novelty of an invention; infringement and non-infringement search; competitors' watch, etc. Please note that during the pendency of the patent and/or Utility Innovation applications, only the following information are divulged by the Malaysian Patent Office to the public: |
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a. name, address and nationality of the applicant;
b. name and address of the local patent agent;
c. patent application number and filing date;
d. priority data (if claimed);
e. title of invention;
f. any change in ownership of the application; references to license contract relating to the patent application. |
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