ACT 291 
PATENTS ACT 1983
(Click here to see Annotated Statutes of this Act)

Part I PRELIMINARY

SECTION

1.Short title, commencement and application

2.Extent of application

3.Interpretation

Part II PATENTS BOARD

SECTION

4.Omitted or Deleted Section

Part III ADMINISTRATION

SECTION

8.Registrar, Deputy Registrars and Assistant Registrars

9.Patent Registration Office

9a.Examiners

10.Patent information service

Part IV PATENTABILITY

SECTION

11.Patentable inventions

12.Meaning of "invention"

13.Non-patentable inventions

14.Novelty

15.Inventive step

16.Industrial application

Part IVA UTILITY INNOVATIONS

SECTION

17.Definition

17a.Application

17b.Conversion from an application for a patent into an application for a certificate for a utility innovation, and vice versa

17c.Patent and certificate for a utility innovation cannot both be granted for the same invention

Part V RIGHTS TO A PATENT

SECTION

18.Right to a patent

19.Judicial assignment of patent application or patent

20.Inventions made by an employee or pursuant to a commission

21.Inventions by Government employee

22.Joint owners

Part VI APPLICATION, PROCEDURE FOR GRANT AND DURATION

SECTION

23.Requirements of application

23a.Applications by residents to be filed in Malaysia first

24.Application fee

25.Withdrawal of application

26.Unity of invention

26a.Amendment of application

26b.Division of application

27.Right of priority

27a.Priority date

28.Filing date

29.Preliminary examination

29a.Request for substantive examination or modified substantive examination

30.Substantive examination and modified substantive examination

30a.Prohibition of publication of information which might be prejudicial to the nation

31.Grant of patent

32.Register of Patents

32a.Notice of a trust not to be registered

33.Examination of Register and certified copies

33a.Certified copies of or extracts from Register, etc., admissible as evidence in court

33b.Amendments to the Register

33c.Court may order rectification of the Register

34.Public inspection

35.Duration of patent

35a.Reinstatement of a lapsed patent

35b.Applicant or Patent Registration Office may request for international search

Part VII RIGHTS OF OWNER OF PATENT

SECTION

36.Rights of owner of patent

37.Limitation of rights

38.Rights derived from prior manufacture or use

Part VIII ASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND PATENTS

SECTION

39.Assignment and transmission of patent applications and patents

40.Joint ownership of patent applications or patents

Part IX LICENCE CONTRACTS

SECTION

41.Meaning of licence contract

42.Entry in the Register

43.Rights of the licensee

44.Rights of the licensor

45.Invalid clauses in licence contracts

46.Effect of patent application not being granted or patent being declared invalid

47.Expiry, termination or invalidation of licence contract

Part X COMPULSORY LICENCES

SECTION

48.Definition

49.Application for compulsory licences

49a.Application for compulsory licence based on interdependence of patents

50.Request for grant of compulsory licence

51.Decision by the Corporation

52.Scope of compulsory licence

53.Limitation of compulsory licence

54.Amendment, cancellation and surrender of compulsory licence

Part XI SURRENDER AND INVALIDATION OF PATENT

SECTION

55.Surrender of patent

56.Invalidation of patent

57.Date and effect of invalidation

Part XII INFRINGEMENT

SECTION

58.Acts deemed to be infringement

58a.Acts deemed to be non-infringement

59.Infringement proceedings

60.Injunction and award of damages

61.Infringement proceedings by licensee and beneficiary of compulsory licence

62.Declaration of non-infringement

Part XIII OFFENCES

SECTION

62a.Applications in contravention of section 23a

62b.Publication of information in contravention of Registrar's directions

63.Falsification of Register, etc.

64.Unauthorized claim of patent

65.Unauthorized claim that patent has been applied for

66.Misuse of title "Patent Registration Office"

66a.Unregistered persons practising, etc., as a patent agent

67.Offences by corporation

Part XIV POWERS RELATING TO ENFORCEMENT

SECTION

68.Authorization of officer to exercise powers under this Part

69.Powers of arrest

70.Search with warrant

71.List of things seized

72.Return of things seized

73.Power of investigation

74.Examination of witnesses

75.Admission of statements in evidence

76.Obstruction to search, etc.

77.Institution of prosecution

78.Jurisdiction of subordinate Court

Part XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY

SECTION

78a.Interpretation

78b.Application

78c.Patent Registration Office as receiving office

78d.Patent Registration Office as designated office

78e.Patent Registration Office as elected office

78f.Persons eligible for international application

78g.Filing of an international application

78h.Omitted or Deleted Section

78i.Omitted or Deleted Section

78j.Omitted or Deleted Section

78k.Processing of international applications

78ka.Fees

78l.International Searching Authority

78m.International Preliminary Examination Authority

78n.International publication of international application and its effect

78o.Entering the national phase

78oa.Reinstatement

78p.Omitted or Deleted Section

78q.Conversion of an international application into a national application

Part XV MISCELLANEOUS

SECTION

79.Powers of Registrar to amend patent application

79a.Power of Registrar to amend patent

80.Other powers of Registrar

81.Exercise of discretionary power

82.Extension of time

83.Extension of time by reason of error in Patent Registration Office

83a.Certificate by the Registrar

84.Rights of Government

85.Refusal to grant patent by the Registrar

86.Patent agents

87.Regulations

88.Appeal

89.Repeal and saving provisions

90.Transitional

First Schedule

Second Schedule

An Act to make better provisions in the law relating to patents and for other matters connected therewith.

[1 October 1986, P.U.(B) 500/1986]

BE IT ENACTED by the Seri Paduka Baginda Yang di-Pertuan Agong with the advice and consent of the Dewan Negara and Dewan Rakyat in Parliament assembled, and by the authority of the same, as follows:

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/1.Short title, commencement and application

Part I PRELIMINARY

1. Short title, commencement and application

(1) This Act may be cited as the Patents Act 1983 and shall come into force on such date as the Minister may, by notification in the Gazette, appoint.

(2) This Act shall apply throughout Malaysia.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/2.Extent of application

2. Extent of application

This Act shall apply to patent applications made after the commencement of this Act and to the registration of patents made on such applications.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/3.Interpretation

3. Interpretation

In this Act, unless the context otherwise requires--

"appointed date"

has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617];

"Assistant Registrar"

means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection 8(2) or (3);

"authorized officer"

means an officer authorized under section 68;

"Corporation"

means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002;

"Court"

means the High Court, or Judge thereof;

"Deputy Registrar"

means the person appointed or deemed to have been appointed to be a Deputy Registrar under subsection8(2) or (3);

"employee"

means a person who works or has worked under a contract of employment, or who is in employment under, or for the purposes of, any individual or organization;

"employer",

in relation to an employee, means the person by whom the employee is or was employed;

"Examiner"

means any person, government department, unit or organization, or any foreign or international patent office or organization, appointed by the Corporation under section 9a;

"filing date"

means the date recorded by the Registrar as the filing date under section 28;

"Minister"

means the Minister for the time being charged with the responsibility for intellectual property;

"owner of the patent" or "owner of a patent"

means the person for the time being recorded in the Register as the grantee of a patent;

"patented invention"

means an invention for which a patent is granted and "patented process" shall be construed accordingly;

"patented product"

means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;

"prescribed"

means prescribed by regulations made under this Act;

"priority date"

means the date prescribed in section 27a;

"process"

includes an art or a method;

"product"

means any thing which appears in tangible form, and includes any apparatus, article, device, equipment, handicraft, implement, machine, substance and composition;

"Register"

means the Register of Patents and the Register for Certificates for Utility Innovations kept under this Act;

"Registrar"

means the Registrar of Patents as designated in subsection 8(1);

"right",

in relation to any patent application or patent, includes an interest in the patent application or patent and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/4. - 7a.Omitted or Deleted Section

Part II PATENTS BOARD

4. - 7a. Omitted or Deleted Section

(Deleted by Act A1137).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/8.Registrar, Deputy Registrars and Assistant Registrars

Part III ADMINISTRATION

8. Registrar, Deputy Registrars and Assistant Registrars

(1) The Director General of the Corporation shall be the Registrar of Patents.

(2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Patents, Assistant Registrars of Patents and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection(3).

(3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection(2).

(4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar.

(5) The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/9.Patent Registration Offic

9. Patent Registration Office

(1) A Patent Registration Office and such number of branch offices of the Patent Registration Office as may be necessary for the purposes of this Act shall be established.

(2) - (4) (Deleted by Act A1137).

(5) Any application or other document required or permitted to be filed at the Patent Registration Office may be filed at any branch office of the Patent Registration Office and such application or other document shall be deemed to have been filed at the Patent Registration Office.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/9a.Examiners

9a. Examiners

The Corporation may appoint any person, government department, unit or organization, or any foreign or international patent office or organization to be an Examiner for the purposes of this Act.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/10.Patent information service

10. Patent information service

There shall be a patent information service which provides information to the public upon payment of the prescribed fee.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/11.Patentable inventions

Part IV PATENTABILITY

11. Patentable inventions

An invention is patentable if it is new, involves an inventive step and is industrially applicable.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/12.Meaning of "invention"

12. Meaning of "invention"

(1) An invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.

(2) An invention may be or may relate to a product or process.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/13.Non-patentable inventions

13. Non-patentable inventions

(1) Notwithstanding the fact that they may be inventions within the meaning of section 12, the following shall not be patentable:

Provided that this paragraph shall not apply to products used in any such methods.

(2) For the purpose of subsection (1), in the event of uncertainty as to whether the items specified therein shall be patentable or not, the Registrar may refer the matter to the Examiner for an opinion and the Registrar shall thereafter give a decision as to whether to include or exclude such item as being patentable, as the case may be.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/14.Novelty

14. Novelty

(1) An invention is new if it is not anticipated by prior art.

(2) Prior art shall consist of--

(3) A disclosure made under paragraph (2)(a) shall be disregarded--

(4) The provisions of subsection (2) shall not exclude the patentability of any substance or composition, comprised in the prior art, for use in a method referred to in paragraph 13(1)(d), if its use in any such method is not comprised in the prior art.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/15.Inventive step

15. Inventive step

An invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the prior art under paragraph 14(2)(a), such inventive step would not have been obvious to a person having ordinary skill in the art.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/16.Industrial application

16. Industrial application

An invention shall be considered industrially applicable if it can be made or used in any kind of industry.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/17.Definition

Part IVA UTILITY INNOVATIONS

17. Definition

For the purposes of this Part and any regulations made under this Act in relation to this Part, "utility innovation" means any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application, and includes an invention.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/17a.Application

17a. Application

(1) Except as otherwise provided in this Part, the provisions of this Act, subject to the modifications in the Second Schedule, shall apply to utility innovations in the same manner as they apply to inventions.

(2) Sections 11, 15, 26, Part X, and sections89 and 90 shall not apply to utility innovations.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/17b.Conversion from an application for a patent into an application for a certificate for a utility innovation, and vice versa

17b. Conversion from an application for a patent into an application for a certificate for a utility innovation, and vice versa

(1) An application for a patent may be converted into an application for a certificate for a utility innovation.

(2) An application for a certificate for a utility innovation may be converted into an application for a patent.

(3) A request to convert an application for a patent into an application for a certificate for a utility innovation or to convert an application for a certificate for a utility innovation into an application for a patent shall be filed by the applicant and shall comply with regulations made under this Act.

(4) A request for conversion under this section shall be filed not later than six months from the date the Registrar makes known to the applicant the report made by the Examiner in accordance with subsection 30(1) or (2).

(5) A request for conversion under this section shall not be entertained unless the prescribed fee has been paid to the Registrar.

(6) An application which has been converted shall be deemed to have been filed at the time the initial application was filed.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/17c.Patent and certificate for a utility innovation cannot both be granted for the same invention

17c. Patent and certificate for a utility innovation cannot both be granted for the same invention

(1) If an applicant for a patent has also--

and the subject matter of the application for a patent is the same as the subject matter of the application mentioned in paragraph (a) or of the certificate mentioned in paragraph (b), a patent shall not be granted until the application mentioned in paragraph (a) has been withdrawn or the certificate mentioned in paragraph (b) has been surrendered.

(2) If an applicant for a certificate for a utility innovation has also--

and the subject matter of the application for a certificate for a utility innovation is the same as the subject matter of the application mentioned in paragraph (a) or of the patent mentioned in paragraph (b), a certificate for a utility innovation shall not be granted until the application mentioned in paragraph (a) has been withdrawn or the patent mentioned in paragraph (b) has been surrendered.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/18.Right to a patent

Part V RIGHTS TO A PATENT

18. Right to a patent

(1) Any person may make an application for a patent either alone or jointly with another.

(2) Subject to section 19, the rights to a patent shall belong to the inventor.

(3) Where two or more persons have jointly made an invention, the rights to a patent shall belong to them jointly.

(4) If two or more persons have separately and independently made the same invention, and each of them has made an application for a patent, the right to a patent for that invention shall belong to the person whose application has the earliest priority date.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/19.Judicial assignment of patent application or patent

19. Judicial assignment of patent application or patent

Where the essential elements of the invention claimed in a patent application or patent have been unlawfully derived from an invention for which the right to the patent belongs to another person, such other person may apply to the Court for an order that the said patent application or patent be assigned to him:

Provided that the Court shall not entertain an application for the assignment of a patent after five years from the date of the grant of the patent.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/20.Inventions made by an employee or pursuant to a commission

20. Inventions made by an employee or pursuant to a commission

(1) In the absence of any provisions to the contrary in any contract of employment or for the execution of work, the rights to a patent for an invention made in the performance of such contract of employment or in the execution of such work shall be deemed to accrue to the employer, or the person who commissioned the work, as the case may be:

Provided that where the invention acquires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract of employment or for the execution of work, as the case may be, the inventor shall be entitled to equitable remuneration which may be fixed by the Court in the absence of agreement between the parties.

(2) Where an employee whose contract of employment does not require him to engage in any inventive activity makes, in the field of activities of his employer, an invention using data or means placed at his disposal by his employer, the right to the patent for such invention shall be deemed to accrue to the employer in the absence or any provision to the contrary in the contract of employment:

Provided that the employee shall be entitled to equitable remuneration which, in the absence of agreement between the parties, may be fixed by the Court taking into account his emoluments, the economic value of the invention and any benefit derived from it by the employer.

(3) The rights conferred on the inventor under subsections(1) and (2) shall not be restricted by contract.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/21.Inventions by Government employee

21. Inventions by Government employee

Notwithstanding the provisions of subsection 20(3), the provisions of that section shall apply to a Government employee or an employee of a Government organization or enterprise unless otherwise provided by rules or regulations of such Government organization or enterprise.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/22.Joint owners

22. Joint owners

Where the right to obtain a patent is owned jointly, the patent may only be applied for jointly by all the joint owners.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/23.Requirements of application

Part VI APPLICATION, PROCEDURE FOR GRANT AND DURATION

23. Requirements of application

Every application for the grant of a patent shall comply with the regulations as may be prescribed by the Minister under this Act.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/23a.Applications by residents to be filed in Malaysia first

23a. Applications by residents to be filed in Malaysia first

(1) No person resident in Malaysia shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless--

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/24.Application fee

24. Application fee

An application for the grant of a patent shall not be entertained unless the prescribed fee has been paid to the Registrar.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/25.Withdrawal of application

25. Withdrawal of application

An applicant may withdraw his application at any time during its pendency by submitting a declaration in the prescribed form to the Registrar, and such withdrawal may not be revoked.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/26.Unity of invention

26. Unity of invention

An application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/26a.Amendment of application

26a. Amendment of application

The applicant may amend the application:

Provided that the amendment shall not go beyond the disclosure in the initial application.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/26b.Division of application

26b. Division of application

(1) The applicant may, within the prescribed time, divide the application into two or more applications ("divisional applications"):

Provided that each divisional application shall not go beyond the disclosure in the initial application.

(2) Each divisional application shall be entitled to the priority date of the initial application.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/27.Right of priority

27. Right of priority

(1) An application may contain a declaration claiming the priority, pursuant to any international treaty or Convention, of one or more earlier national, regional or international applications filed, during the period of twelve months immediately preceding the filing date of the application containing the declaration, by the applicant or his predecessor in title in or for any party to the said international treaty or Convention.

(1a) The period of twelve months mentioned in subsection(1) may not be extended under the provisions of section 82.

(2) Where the application contains a declaration under subsection(1), the Registrar may require that the applicant furnish, within the prescribed time, a copy of the earlier application, certified as correct by the office with which it was filed or where the earlier application is an international application filed under any international treaty, by the International Bureau of the World Intellectual Property Organization.

(3) The effect of the declaration referred to in subsection(1) shall be as provided in the treaty or Convention referred to therein.

(4) Where any of the requirements of this section or any regulations pertaining thereto have not been complied with, the declaration referred to in subsection (1) shall be deemed to be invalid.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/27a.Priority date

27a. Priority date

(1) Subject to subsection (2), the priority date of an application for a patent is the filing date of the application.

(2) Where an application contains the declaration mentioned in section 27, the priority date of the application shall be the filing date of the earliest application whose priority is claimed in that declaration.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/28.Filing date

28. Filing date

(1) The Registrar shall record as the filing date the date of receipt of the application:

Provided that the application contains--

(2) Where the Registrar finds that, at the time of receipt of the application, the provisions of subsection (1) are not fulfilled, he shall request the applicant to file the required correction.

(3) Where the applicant complies with the request referred to in subsection (2), the Registrar shall record as the filing date the date of receipt of the required correction and where the applicant does not so comply, the Registrar shall treat the application as invalid.

(4) Where the application refers to drawings which in fact are not included in the application, the Registrar shall request the applicant to furnish the missing drawings.

(5) Where the applicant complies with the request referred to in subsection (4), the Registrar shall record as the filing date the date of receipt of the missing drawings and where the applicant does not so comply, the Registrar shall record as the filing date the date of receipt of the application and make no reference to the said drawings.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/29.Preliminary examination

29. Preliminary examination

(1) Where an application for a patent has a filing date and is not withdrawn, the Registrar shall examine the application and determine whether it complies with the requirements of this Act and the regulations made under this Act which are designated by such regulations as formal requirements for the purposes of this Act.

(2) If the Registrar, as a result of the examination under subsection(1), finds that not all the formal requirements are complied with, he shall give an opportunity to the applicant to make any observation on such finding and to amend the application within the prescribed period so as to comply with those requirements, and if the applicant fails to do so the Registrar may refuse the application.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/29a.Request for substantive examination or modified substantive examination

29a. Request for substantive examination or modified substantive examination

(1) If an application for a patent has been examined under section 29 and is not withdrawn or refused, the applicant shall file, ?within the prescribed period, a request for a substantive examination of the application.

(2) If a patent or other title of industrial property protection has been granted to the applicant or his predecessor in title in a prescribed country outside Malaysia or under a prescribed treaty or Convention for an invention which is the same or essentially the same as the invention claimed in the application, the applicant may, instead of requesting for a substantive examination, request for a modified substantive examination.

(3) A request for a substantive examination or a modified substantive examination shall be made in the prescribed form and shall not be deemed to have been filed until the prescribed fee has been paid to the Registrar and any other prescribed requirement has been complied with.

(4) The Registrar may require the applicant to provide, at the time of filing a request for a substantive examination--

(5) If the applicant--

within the prescribed period, the application for a patent shall, subject to subsection (6), be deemed to be withdrawn at the end of that period.

(6) Notwithstanding subsection (5), the Registrar may, upon the request of the applicant, grant a deferment of the filing of a request for examination referred to in subsection(1) or (2) or a deferment of the provision of the information or document referred to in subsection (4), and such deferment may be granted only on the grounds that--

by the expiration of the prescribed period for the filing of a request under subsection (1) or (2).

(7) No deferment shall be granted under subsection (6) unless the request for such deferment is filed before the expiration of the prescribed period for the filing of a request under subsection (1) or (2) and no deferment may be sought nor granted for a period greater than that prescribed in the regulations made under this Act.

(8) Without prejudice to the power of the Registrar to grant a deferment, the period prescribed for the purposes of this section may not be extended under the provisions of section 82.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/30.Substantive examination and modified substantive examination

30. Substantive examination and modified substantive examination

(1) Where a request for substantive examination has been filed under subsection 29a(1), the Registrar shall refer the application to an Examiner who shall--

(2) Where a request for a modified substantive examination has been filed under subsection 29a(2), the Registrar shall refer the application to an Examiner who shall--

(3) If the Examiner reports, in accordance with subsection(1) or (2), that any of the requirements referred to in subsection(1) or (2), as the case may be, are not complied with, the Registrar shall give the applicant an opportunity to make observations on the report and to amend the application so as to comply with those requirements, within the prescribed period, and if the applicant fails to satisfy the Registrar that those requirements are complied with, or to amend the application so as to comply with them, the Registrar may refuse the application.

(4) The Registrar may grant an extension of the prescribed period referred to in subsection (3) but such extension may be granted only once and no subsequent extension may be granted under the provisions of section 82.

(5) If the Examiner reports, in accordance with subsection(1) or (2), that the application, whether as originally filed or as amended, complies with the requirements referred to in subsection (1) or (2), as the case may be, the Registrar shall notify the applicant of that fact and, subject to subsection (6), shall process the application accordingly.

(6) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the Registrar may on that ground refuse to grant a patent in pursuance of more than one of the applications.

(7) The Registrar may waive, as he deems fit, the requirement of referring an application or any part of it for substantive examination under subsection (1):

Provided that he shall notify in the Gazette his intention to waive such requirement and shall allow any party who would be aggrieved by such waiver to be heard on the matter.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/30a.Prohibition of publication of information which might be prejudicial to the nation

30a. Prohibition of publication of information which might be prejudicial to the nation

(1) Subject to any direction of the Minister, where an application for a patent is filed or is deemed to have been filed at the Patent Registration Office and it appears to the Registrar that the application contains information the publication of which might be prejudicial to the interest or security of the nation, he may issue directions prohibiting or restricting the publication of that information or its communication whether generally or to a particular person or class of persons.

(2) Subject to any direction by the Minister, the Registrar may revoke any direction issued by him under subsection (1) prohibiting or restricting the publication or communication of any information contained in an application for a patent if he is satisfied that such publication or communication is no longer prejudicial to the interest or security of the nation.

(3) Where directions issued by the Registrar under subsection(1) are in force in respect of an application, the application may proceed to the stage where it is in order for the grant of a patent but no patent shall be granted in pursuance of such application.

(4) Nothing in this section prevents the disclosure of information concerning an invention to a Ministry or a Government department or authority for the purpose of obtaining advice as to whether directions under this section should be made, amended or revoked.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/31.Grant of patent

31. Grant of patent

(1) The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the performance of any act in respect of the claimed invention is prohibited by any law or regulation, except where the performance of that act would be contrary to public order or morality.

(2) Where the Registrar is satisfied that the application complies with sections 23, 29 and 30, he shall grant the patent and shall forthwith--

(2a) Where two or more persons have separately and independently made the same invention and each of them has made an application for a patent having the same priority date, a patent may be granted on each application.

(3) As soon as possible thereafter the Registrar shall--

(4) The patent shall be deemed to be granted on the date that the Registrar performs the acts referred to in subsection (2).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/32.Register of Patents

32. Register of Patents

(1) The Registrar shall keep and maintain a register called the Register of Patents.

(2) The Register of Patents shall contain all such matters and particulars relating to patents as may be prescribed.

(3) The Register of Patents shall be kept in such form and on such medium as may be prescribed.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/32a.Notice of a trust not to be registered

32a. Notice of a trust not to be registered

Notice of a trust, express, implied or constructive, shall not be entered in the Register or be accepted by the Registrar.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/33.Examination of Register and certified copies

33. Examination of Register and certified copies

Any person may examine the Register and may obtain certified extracts therefrom on payment of the prescribed fee.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/33a.Certified copies of or extracts from Register, etc., admissible as evidence in court

33a. Certified copies of or extracts from Register, etc., admissible as evidence in court

(1) The Register shall be prima facie evidence of all matters required or authorized by this Act to be entered therein.

(2) Copies of or extracts from the Register, or of or from any document or publication in the Patent Registration Office, if certified by the Registrar in writing under his hand, shall be admissible in evidence in all courts without further proof or production of the original.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/33b.Amendments to the Register

33b. Amendments to the Register

(1) The Registrar may, on request made in the prescribed manner by the owner of a patent, amend the Register--

(2) Where the Register has been amended under this section, the Registrar may require the certificate of grant of the patent to be submitted to him, and may--

(3) Notwithstanding any other provision of this Act or the regulations made under this Act, no fee shall be payable by the owner of a patent in respect of a request to correct any error in the name or address of such owner unless such error is caused or contributed to by such owner.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/33c.Court may order rectification of the Register

33c. Court may order rectification of the Register

(1) The Court may, on the application of any aggrieved person, order the rectification of the Register by directing--

(2) Notice of every application under this section shall be served on the Registrar who shall have the right to appear and be heard, and who shall appear if so directed by the Court.

(3) Unless otherwise directed by the Court, the Registrar, in lieu of appearing and being heard, may submit to the Court a statement in writing signed by him--

and such statement shall be deemed to form part of the evidence in Court.

(4) A sealed copy of an order under this section shall be served on the Registrar who shall, upon receipt of the order, take such steps as are necessary to give effect to the order.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/34.Public inspection

34. Public inspection

(1) The Registrar shall make available for public inspection after eighteen months from the priority date or filing date of a patent application and upon payment of the prescribed fee--

(2) Notwithstanding subsection (1) a patent application shall not be made available for public inspection if--

(3) Information relating to a patent application may be inspected only with the written permission of the patent applicant if the information is requested within eighteen months from the priority date or filing date of the patent application.

(4) A certified extract of the information may be obtained upon payment of the prescribed fee.

(5) After an application is made available for public inspection, an applicant may in writing warn a person who has commercially or industrially worked the invention which is the subject matter of the application that a patent application for the invention has been filed.

(6) An applicant may demand that a person who has commercially or industrially worked the invention pay as compensation to the applicant in respect of the invention--

an amount equivalent to what he would have normally received for the working of the invention to the time of the grant of the patent.

(7) The right to demand compensation as provided for in subsection(6) shall be exercised only after the grant of the patent.

(8) The exercise of the right to demand compensation under subsection(6) shall not prevent the applicant from exercising his rights as the owner of the patent in respect of the invention after the grant of the patent.

(9) Where a patent application is withdrawn or refused after the application is made available for public inspection, the right under subsection (6) shall be deemed never to have existed.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/35.Duration of patent

35. Duration of patent

(1) Subject to subsections (1b) and (1c), the duration of a patent shall be twenty years from the filing date of the application.

(1a) Without prejudice to subsection (1) and subject to the other provisions of this Act, a patent shall be deemed to be granted and shall take effect on the date the certificate of grant of the patent is issued.

(1b) Where a patent application was filed before 1 August 2001, and was pending on that date, the duration of the patent granted on that application shall be twenty years from the date of filing or fifteen years from the date of grant, whichever is the longer.

(1c) The duration of a patent granted before 1 August 2001 and still in force on that date shall be twenty years from the date of filing or fifteen years from the date of grant whichever is the longer.

(2) Where a patentee intends at the expiration of the second year from the date of grant of the patent to keep the same in force he shall, twelve months before the date of expiration of the second and each succeeding year during the term of the patent, pay the prescribed annual fee:

Provided, however, that a period of grace of six months shall be allowed after the date of such expiration, upon payment of such surcharge as may be prescribed.

(3) If the prescribed annual fee is not paid in accordance with subsection(2), the patent shall lapse, and a notice of the lapsing of the patent for non-payment of any annual fee shall be published in the Gazette.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/35a.Reinstatement of a lapsed patent

35a. Reinstatement of a lapsed patent

(1) Within two years from the date on which a notice of the lapsing of a patent is published in the Gazette--

may apply to the Registrar in the prescribed form to have the patent reinstated.

(2) The Registrar may reinstate a patent on an application made under subsection (1)--

(3) Where the Registrar reinstates a lapsed patent, he shall cause notice of the reinstatement to be published in the Gazette.

(4) The reinstatement of a lapsed patent shall not prejudice the rights acquired by third parties after it is notified in the Gazette that the patent has lapsed and before it is notified in the Gazette that the patent has been reinstated.

(5) The Minister may make regulations to provide for the protection or compensation of persons who have exploited or taken definite steps, by contract or otherwise, to exploit a patent after it is notified in the Gazettethat the patent has lapsed and before it is notified in the Gazette that the patent has been reinstated, but any such protection shall not extend beyond such exploitation of the lapsed patent as such persons have availed themselves of or have taken definite steps to avail themselves of.

(6) No proceedings shall be taken in respect of an infringement of a patent committed after it is notified in the Gazette that the patent has lapsed and before it is notified in the Gazette that the patent has been reinstated.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/35b.Applicant or Patent Registration Office may request for international search

35b. Applicant or Patent Registration Office may request for international search

(1) Any applicant who files an application, other than an international application, for the grant of a patent with the Patent Registration Office may request that an international search be carried out on such application by the International Searching Authority which is specified under subsection 78l(1).

(2) The Patent Registration Office may subject an application, other than an international application, for the grant of a patent filed with it to an international search to be carried out by the International Searching Authority which is specified under subsection 78l(1).

(3) Where a search is carried out on an application pursuant to subsection (1) or (2), the description and claims contained in the application shall be presented in the languages specified by the International Searching Authority and the search fees as specified by the International Searching Authority shall be paid by the applicant either to the International Searching Authority directly or via the Patent Registration Office.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/36.Rights of owner of patent

Part VII RIGHTS OF OWNER OF PATENT

36. Rights of owner of patent

(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:

(2) No person shall do any of the acts referred to in subsection(1) without the consent of the owner of the patent.

(3) For the purposes of this Part, "exploitation" of a patented invention means any of the following acts in relation to a patent:

(4) For the purposes of this section, if the patent has been granted in respect of a process for obtaining a product, the same product produced by a person other than the owner of the patent or his licensee shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/37.Limitation of rights

37. Limitation of rights

(1) The rights under the patent shall extend only to acts done for industrial or commercial purposes and in particular not to acts done only for scientific research.

(1a) The rights under the patent shall not extend to acts done to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs.

(2) Without prejudice to section 58a, the rights under the patent shall not extend to acts in respect of products which have been put on the market--

(3) The rights under the patent shall not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.

(4) The rights under the patent shall be limited in duration as provided for in section 35.

(5) The rights under the patent shall be limited by the provisions of section 35a by the provisions on compulsory licences as provided in sections 51 and 52 and by the provisions on the rights of Government or any person authorized by the Government as provided in section84.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/38.Rights derived from prior manufacture or use

38. Rights derived from prior manufacture or use

(1) Where a person at the priority date of the patent application--

he shall have the right, despite the grant of the patent, to exploit the patented invention:

Provided that the product in question is made, or the process in question is used, by the said person in Malaysia:

Provided further that he can prove, if the invention was disclosed under the circumstances referred to in paragraph 14(3) (a), (b) or (c) that his knowledge of the invention was not a result of such disclosure.

(2) The right referred to in subsection (1) shall not be assigned or transmitted except as part of the business of the person concerned.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/39.Assignment and transmission of patent applications and patents

Part VIII ASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND PATENTS

39. Assignment and transmission of patent applications and patents

(1) A patent application or patent may be assigned or transmitted.

(2) Any person becoming entitled by assignment or transmission to a patent application or patent may apply to the Registrar in the prescribed manner to have such assignment or transmission recorded in the Register.

(3) No such assignment or transmission shall be recorded in the Register unless--

(4) No such assignment or transmission shall have effect against third parties unless so recorded in the Register.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/40.Joint ownership of patent applications or patents

40. Joint ownership of patent applications or patents

In the absence of any agreement to the contrary between the parties, joint owners of a patent application or patent may, separately, assign or transmit their rights in the patent application or patent, exploit the patented invention and take action against any person exploiting the patented invention without their consent, but may only jointly withdraw the patent application, surrender the patent or conclude a licence contract.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/41.Meaning of licence contract

Part IX LICENCE CONTRACTS

41. Meaning of licence contract

(1) For the purposes of this Part, a "licence contract" means any contract by which the owner of a patent (the "licensor") grants to another person or enterprise (the "licensee") a licence to do any or all of the acts referred to in paragraph 36(1)(a), and subsection 36(3).

(2) A licence contract shall be in writing signed by or on behalf of the contracting parties.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/42.Entry in the Register

42. Entry in the Register

(1) A licensor may in accordance with the regulations as prescribed by the Minister apply to the Registrar for an entry to be made in the Register to the effect that any person may obtain a licence.

(2) At any time after an entry has been made in the Register, any person may apply to the licensor through the Registrar for a licence.

(3) Where a licence contract is concluded between the parties, the contracting parties shall inform the Registrar accordingly and the Registrar shall record such fact in the Register.

(4) Upon a request in writing signed by or on behalf of the contracting parties, the Registrar shall, on payment of the prescribed fee, record in the Register such particulars relating to the contract as the parties thereto might wish to have recorded:

Provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.

(5) Where a licence contract is terminated, the contracting parties shall inform the Registrar of the termination and the Registrar shall record such termination in the Register.

(6) The licensor may in accordance with the regulations as prescribed by the Minister apply to the Registrar for the cancellation of the entry made under subsection (1).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/43.Rights of the licensee

43. Rights of the licensee

(1) In the absence of any provision to the contrary in the licence contract, the licensee shall be entitled to do any or all of the acts referred to in paragraph 36(1)(a), and subsection 36(3) within the whole geographical area of Malaysia without limitation as to time and through any application of the invention.

(2) In the absence of any provision to the contrary in the licence contract, the licensee may not give to a third person his agreement to perform in Malaysia in respect of the invention any of the acts referred to in paragraph 36(1)(a), and subsection36(3).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/44.Rights of the licensor

44. Rights of the licensor

(1) In the absence of any provision to the contrary in the licence contract, the licensor may grant a further licence to a third person in respect of the same patent or himself do any or all of the acts referred to in paragraph 36(1)(a), and subsection 36(3).

(2) Where the licence contract provides that the licence is exclusive and unless it is expressly provided otherwise in such contract, the licensor shall not grant a further licence to a third person in respect of the same patent or himself do any of the acts referred to in paragraph 36(1)(a), and subsection36(3).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/45.Invalid clauses in licence contracts

45. Invalid clauses in licence contracts

Any clause or condition in a licence contract shall be invalid in so far as it imposes upon the licensee, in the industrial or commercial field, restrictions not derived from the rights conferred by this Part on the owner of the patent, or unnecessary for the safeguarding of such rights:

Provided that--

shall not be deemed to constitute such restrictions.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/46.Effect of patent application not being granted or patent being declared invalid

46. Effect of patent application not being granted or patent being declared invalid

Where, before the expiration of the licence contract, any of the following events occur in respect of the patent application or patent referred to in such contract:

the licensee shall no longer be required to make any payment to the licensor under the licence contract, and shall be entitled to repayment of the payment already made:

Provided that the licensor shall not be required to make any repayment, or shall be required to make repayment only in part, to the extent that he can prove that any such repayment would be inequitable under all the circumstances, in particular if the licensee has effectively profited from the licence.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/47.Expiry, termination or invalidation of licence contract

47. Expiry, termination or invalidation of licence contract

The Registrar shall--

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/48.Definition

Part X COMPULSORY LICENCES

48. Definition

For the purpose of this Part--

"beneficiary of the compulsory licence"

means the person to whom a compulsory licence has been granted in accordance with this Part; and

"compulsory licence"

means the authorization to perform in Malaysia without the agreement of the owner of the patent in respect of the patented invention any of the acts referred to in paragraph 36(1)(a), and subsection36(3).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/49.Application for compulsory licences

49. Application for compulsory licences

(1) At any time after the expiration of three years from the grant of a patent, or four years from the filing date of the patent application, whichever is the later, any person may apply to the Registrar for a compulsory licence under any of the following circumstances:

(2) A compulsory licence shall not be applied for unless the person making the application has made efforts to obtain authorization from the owner of the patent on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time.

(3) The application for a compulsory licence shall be in compliance with such regulations as may be prescribed by the Minister.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/49a.Application for compulsory licence based on interdependence of patents

49a. Application for compulsory licence based on interdependence of patents

(1) If the invention claimed in a patent ("later patent") cannot be worked in Malaysia without infringing a patent granted on the basis of an application benefiting from an earlier priority date ("earlier patent"), and if the invention claimed in the later patent constitutes, in the opinion of the Corporation, an important technical advance of considerable economic significance in relation to the invention claimed in the earlier patent, the Corporation, upon the request of the owner of the later patent, the licensee of a licence contract under the later patent or the beneficiary of a compulsory licence under the later patent, may grant a compulsory licence to the extent necessary to avoid infringement of the earlier patent.

(2) If a compulsory licence is granted under subsection (1), the Corporation, upon the request of the owner of the earlier patent, the licensee of a licence contract under the earlier patent or the beneficiary of a compulsory licence under the earlier patent, may grant a compulsory licence under the later patent.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/50.Request for grant of compulsory licence

50. Request for grant of compulsory licence

(1) In an application for a compulsory licence under section 49 or section49a, the applicant shall set forth the amount of royalty, the conditions of the exploitation of the patent and the restrictions of the rights of the licensor or the licensee, as the case may be, and a request for the said licence.

(2) Where an application for a compulsory licence is filed pursuant to section 49 or section49a, and this section, the Registrar shall notify the applicant, the licensor or the licensee, as the case may be, of the date the application shall be considered by the Corporation.

(3) The licensor or the licensee, as the case may be, shall be furnished with a copy of the application as mentioned in subsection(1).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/51.Decision by the Corporation

51. Decision by the Corporation

(1) In considering the application for a compulsory licence under section 49 or section49a, the Corporation may require the applicant, the licensor or the licensee, as the case may be, to appear before the Corporation to give a statement or to hand to the Corporation any document or any other item.

(2) When the application has been considered by the Corporation and a decision has been made, the applicant, the licensor or the licensee, as the case may be, shall be notified of the decision.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/52.Scope of compulsory licence

52. Scope of compulsory licence

Upon the granting of the compulsory licence to the applicant the Corporation shall fix--

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/53.Limitation of compulsory licence

53. Limitation of compulsory licence

(1) A compulsory licence granted by the Corporation--

(2) The beneficiary of the compulsory licence shall not conclude licence contracts with third persons under the patent in respect of which the compulsory licence was granted.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/54.Amendment, cancellation and surrender of compulsory licence

54. Amendment, cancellation and surrender of compulsory licence

(1) Upon the request of the owner of the patent or of the beneficiary of the compulsory licence, the Corporation may amend the decision granting the compulsory licence to the extent that new facts justify such amendment.

(2) Upon the request of the owner of the patent, the Corporation shall cancel the compulsory licence--

(3) The beneficiary of the compulsory licence may surrender the licence by a written declaration submitted to the Registrar who shall record the surrender in the Register, publish it, and notify the owner of the patent.

(4) The surrender shall take effect from the date the Patent Registration Office receives the declaration of the surrender.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/55.Surrender of patent

Part XI SURRENDER AND INVALIDATION OF PATENT

55. Surrender of patent

(1) The owner of the patent may surrender the patent by a written declaration submitted to the Registrar.

(2) The surrender may be limited to one or more claims of the patent.

(3) Where a licence contract in respect of a patent is recorded in the Register, the Registrar shall not, in the absence of any provision to the contrary in the licence contract, accept or record the said surrender except upon receipt of a signed declaration by which every licensee or sub-licensee on record consents to the said surrender unless the requirement of his consent is expressly waived in the licence contract.

(3a) Where a compulsory licence has been granted in respect of a patent, the Registrar shall not accept or record the said surrender except upon receipt of a signed declaration by which the beneficiary of the compulsory licence consents to the said surrender.

(4) The Registrar shall record the surrender in the Register and cause it to be published in the Gazette .

(5) The surrender shall take effect from the date the Registrar receives the declaration.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/56.Invalidation of patent

56. Invalidation of patent

(1) Any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent.

(2) The Court shall invalidate the patent if the person requesting the invalidation proves--

(2a) Notwithstanding subsection (2), the Court shall not invalidate the patent on the ground mentioned in paragraph (2)(d) if the patent has been assigned to the person to whom the right to the patent belongs.

(3) Where the provisions of subsection (1) apply on only some of the claims or some parts of a claim, such claims or parts of a claim may be declared invalid by the Court and the invalidity of part of a claim shall be declared in the form of a corresponding limitation of the claim in question.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/57.Date and effect of invalidation

57. Date and effect of invalidation

(1) Any invalidated patent or claim or part of a claim shall be regarded as null and void from the date of the grant of the patent.

(2) When the decision of the Court becomes final, the Registrar of the Court shall notify the Registrar who shall record the said declaration in the Register and cause it to be published in the Gazette.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/58.Acts deemed to be infringement

Part XII INFRINGEMENT

58. Acts deemed to be infringement

Subject to subsections37(1), (2) and (3) and section38, an infringement of a patent shall consist of the performance of any act referred to in subsection 36(3) in Malaysia by a person other than the owner of the patent and without the agreement of the latter in relation to a product or a process falling within the scope of protection of the patent.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/58a.Acts deemed to be non-infringement

58a. Acts deemed to be non-infringement

(1) It shall not be an act of infringement to import, offer for sale, sell or use--

which is produced by, or with the consent, conditional or otherwise, of the owner of the patent or his licensee.

(2) For the purposes of this section, "patent" includes a patent granted in any country outside Malaysia in respect of the same or essentially the same invention as that for which a patent is granted under this Act.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/59.Infringement proceedings

59. Infringement proceedings

(1) The owner of the patent shall have the right to institute Court proceedings against any person who has infringed or is infringing the patent.

(2) The owner of the patent shall have the same right against any person who has performed acts which make it likely that an infringement will occur, which in this Part is referred to as an "imminent infringement".

(3) The proceedings in subsections (1) and (2) may not be instituted after five years from the act of infringement.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/60.Injunction and award of damages

60. Injunction and award of damages

(1) If the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy.

(2) If the owner of the patent proves imminent infringement the Court shall grant an injunction to prevent infringement and any other legal remedy.

(3) The defendant in any proceedings referred to in this section may request in the same proceedings the invalidation of the patent, in which case the provisions of subsections 56(2) and (3) shall apply.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/61.Infringement proceedings by licensee and beneficiary of compulsory licence

61. Infringement proceedings by licensee and beneficiary of compulsory licence

(1) For the purposes of this section, "beneficiary" means--

(2) Any beneficiary may request the owner of the patent to institute Court proceedings for any infringement indicated by the beneficiary, who shall specify the relief desired.

(3) The beneficiary may, if he proves that the owner of the patent received the request but refuses or fails to institute the proceedings within three months from the receipt of the request, institute the proceedings in his own name, after notifying the owner of the patent of his intention but the owner shall have the right to join in the proceedings.

(4) Notwithstanding that the three-month period referred to subsection(3) has not been satisfied, the Court shall, on the request of the beneficiary, grant an appropriate injunction to prevent infringement or to prohibit its continuation, if the beneficiary proves that immediate action is necessary to avoid substantial damage.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/62.Declaration of non-infringement

62. Declaration of non-infringement

(1) Subject to subsection (4), any interested person shall have the right to request, by instituting proceedings against the owner of the patent, that the Court declare that the performance of a specific act does not constitute an infringement of the patent.

(2) If the person making the request proves that the act in question does not constitute an infringement of the patent, the Court shall grant the declaration of non-infringement.

(3)

(4) If the act in question is already the subject of infringement proceedings, the defendant in the infringement proceedings may not institute proceedings for a declaration of non-infringement.

(5) Proceedings for a declaration of non-infringement may be instituted together with proceedings to invalidate the patent, except where invalidation of the patent is requested under subsection60(3).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/62a.Applications in contravention of section 23a

Part XIII OFFENCES

62a. Applications in contravention of section 23a

Any person who files or causes to be filed an application for a patent in contravention of section 23a commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/62b.Publication of information in contravention of Registrar's directions

62b. Publication of information in contravention of Registrar's directions

Any person who publishes or communicates information in contravention of any direction issued by the Registrar under section 30a commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/63.Falsification of Register, etc.

63. Falsification of Register, etc.

Any person who makes or causes to be made a false entry in any Register kept under this Act, or makes or causes to be made a writing falsely purporting to be a copy or reproduction of an entry in any such Register, or produces or tenders or causes to be produced or tendered in evidence any such false writing, commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/64.Unauthorized claim of patent

64. Unauthorized claim of patent

(1) Any person who falsely represents that anything disposed of by him for value is a patented product or process commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

(2) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

(3) Subsection (1) does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has, expired or been invalidated and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.

(4) In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/65.Unauthorized claim that patent has been applied for

65. Unauthorized claim that patent has been applied for

(1) Any person who represents that a patent has been applied for in respect of any article disposed of for value by him and--

commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

(2) Paragraph (1)(b) does not apply where the representation is made or continues to be made before the expiry of a period which commences with the refusal or withdrawal and which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.

(3) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the words "patent pending", or anything expressing or implying that a patent has been applied for in respect of the article, shall be taken to represent that a patent has been applied for in respect of the article.

(4) In any proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/66.Misuse of title "Patent Registration Office"

66. Misuse of title "Patent Registration Office"

Any person who uses on his place of business or any document issued by him or otherwise, the words "Patent Registration Office" or any other words suggesting that his place of business is, or is officially connected with, the Patent Registration Office commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/66a.Unregistered persons practising, etc., as a patent agent

66a. Unregistered persons practising, etc., as a patent agent

Any person who carries on business, practices, acts, describes himself, holds himself out, or permits himself to be described or held out, as a patent agent without being registered under this Act commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/67.Offences by corporation

67. Offences by corporation

(1) Where an offence under this Act which has been committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of a director, manager, secretary or other similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate, commits that offence and is liable to be prosecuted against and punished accordingly as provided by the Act.

(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he was a director of a body corporate.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/68.Authorization of officer to exercise powers under this Part

Part XIV POWERS RELATING TO ENFORCEMENT

68. Authorization of officer to exercise powers under this Part

(1) The Minister may authorize in writing any public officer to exercise the powers under this Part.

(2) Any such officer shall be deemed to be a public servant within the meaning of the Penal Code [Act574].

(3) In exercising any of the powers under this Part, an officer shall on demand produce to the person against whom he is acting under this Act the authority issued to him by the Minister.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/69.Powers of arrest

69. Powers of arrest

(1) Any authorized officer or police officer may arrest without warrant any person whom he sees or finds committing or attempting to commit or abetting the commission of an offence or whom he reasonably suspects of being engaged in committing or attempting to commit or abetting, the commission of any offence against this Act if such person refuses or fails to furnish his name and residence or there are reasonable grounds for believing in that he has furnished a false name or residence or that he is likely to abscond.

(2) Any authorized officer or police officer making an arrest without warrant shall, without unnecessary delay, bring the person arrested to the nearest police station.

(3) No person who has been arrested by an authorized officer or police officer shall be released except on his own bond or on bail or on the special order in writing of a Magistrate.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/70.Search with warrant

70. Search with warrant

(1) Whenever it appears to any Magistrate upon written information on oath and after any enquiry which he may think necessary that there is reasonable cause to believe that in any dwelling house, shop, building or place there is being committed an offence against this Act, or any regulations made thereunder, he may issue a warrant authorizing any authorized officer or police officer named therein, by day or night and with or without assistance to enter the dwelling house, shop, building or place and there search for and seize or take copies of all books, accounts, documents or other articles which contain or are suspected to contain information as to any offence so suspected to have been committed or any other thing relating to the offence.

(2) Any such officer may if it is necessary so to do--

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/71.List of things seized

71. List of things seized

The authorized officer or police officer seizing any books, accounts, documents or other articles under this Part shall prepare a list of the things seized and forthwith deliver a copy signed by him to the occupier or his agents or servants present in the premises.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/72.Return of things seized

72. Return of things seized

Where under this Part possession has been taken of any books, accounts, documents or other articles, then the authorized officer or police officer shall within four weeks of the seizure, where no criminal proceedings have been instituted, restore possession to the owner.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/73.Power of investigation

73. Power of investigation

(1) An authorized officer or police officer shall have the power to investigate the commission of any offence under this Act or regulations made thereunder.

(2) Every person required by an authorized officer or police officer to give information or produce any book, account, document or other article relating to the commission of such offence which it is in the person's power to give shall be legally bound to give the information or to produce the book, account, document or other article.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/74.Examination of witnesses

74. Examination of witnesses

(1) An authorized officer or police officer making an investigation under section 73 may examine orally any person supposed to be acquainted with the facts and circumstances of the case and shall reduce into writing any statement made by the person so examined.

(2) Such person shall be bound to answer all questions relating to such case put to him by such officer:

Provided that such person may refuse to answer any question the answer to which have a tendency to expose him to a criminal charge or penalty or forfeiture.

(3) A person making a statement under this section shall be legally bound to state the truth, whether or not such statement is made wholly or partly in answer to questions.

(4) An authorized officer or police officer examining a person under subsection (1) shall first inform that person of the provisions of subsections (2) and (3).

(5) A statement made by any person under this section whether or not a caution has been administered to him under section75 shall, whenever possible, be reduced into writing and signed by the person making it or affixed with his thumb-print, as the case may be, after it has been read to him in the language in which he made it and after he has been given an opportunity to make any correction he may wish.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/75.Admission of statements in evidence

75. Admission of statements in evidence

Where any person is charged with any offence under this Act or any regulations made thereunder, any statement whether the statement amounts to a confession or not or is oral or in writing, made at any time, whether before or after the person is charged and whether in the course of investigations made under section 74 or not and whether or not wholly or partly in answer to questions by that person to or in the hearing of any authorized officer or police officer of or above the rank of Inspector and whether or not interpreted to him by another authorized officer, police officer or other person, shall be admissible in evidence at his trial and, if the person charged tenders himself as a witness, any such statement may be used in cross-examination and for the purpose of impeaching his credit:

Provided that--

(2) Notwithstanding anything to the contrary contained in any written law, a person accused of an offence to which subsection (1) applies shall not be bound to answer any questions relating to the case after any such caution as aforesaid has been administered to him.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/76.Obstruction to search, etc.

76. Obstruction to search, etc.

Any person who--

commits an offence and is liable on conviction to a fine not exceeding three thousand ringgit or to imprisonment for a term not exceeding one year or to both.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/77.Institution of prosecution

77. Institution of prosecution

No prosecution for any offence under this Act shall be instituted except by or with the consent in writing of the Public Prosecutor.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78.Jurisdiction of subordinate Court

78. Jurisdiction of subordinate Court

(1) Notwithstanding any other written law, a subordinate Court shall have power to try any offence under this Act and on conviction to impose the full penalty therefor.

(2) For the purpose of subsection (1), "subordinate Court" means a Sessions Court or a Magistrate's Court.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78a.Interpretation

Part XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY

78a. Interpretation

For the purposes of this Part--

"International Bureau"

means the International Bureau of the World Intellectual Property Organization and, as long as it subsists, the United International Bureau for the Protection of Intellectual Property (BIRPI);

"international search"

means a search conducted by the International Searching Authority appointed under Article 16 of the Treaty to discover relevant prior art with respect to the invention;

"international phase"

means the period beginning from the filing of an international application to the time the international application enters the national phase;

"national phase"

means the period beginning from the performance, by the applicant, of the acts specified in subsection78o(1);

"State"

means a state which is a party to the Treaty;

"patent"

includes utility innovation;

"receiving office"

means the national office or the intergovernmental organization with which the international application has been filed;

"elected office"

means the national office of or acting for the State elected by the applicant under Chapter II of the Treaty;

"designated office"

means the national office of or acting for the State designated by the applicant under Chapter I of the Treaty;

"international preliminary examination"

means a preliminary and non-binding examination carried out by the International Preliminary Examination Authority appointed under Article 32 of the Treaty on the questions of whether the invention appears to be novel, involves an inventive step and is industrially applicable;

"international application"

means an application for a patent filed under the Treaty;

"Treaty"

means the Patent Cooperation Treaty done at Washington on 19 June 1970.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78b.Application

78b. Application

The provisions of this Part shall apply to an international application filed under the Treaty.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78c.Patent Registration Office as receiving office

78c. Patent Registration Office as receiving office

The Patent Registration Office shall act as a receiving office for an international application.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78d.Patent Registration Office as designated office

78d. Patent Registration Office as designated office

The Patent Registration Office shall act as a designated office for an international application in which Malaysia is designated for the purposes of obtaining a patent under Parts IVa and VI.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78e.Patent Registration Office as elected office

78e. Patent Registration Office as elected office

The Patent Registration Office shall act as an elected office for an international application if the applicant elects Malaysia as a State in which he intends to use the results of the international preliminary examination.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78f.Persons eligible for international application

78f. Persons eligible for international application

Subject to section23a, any person who is a citizen or resident of Malaysia shall be entitled to file an international application for a patent with the Patent Registration Office.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78g.Filing of an international application

78g. Filing of an international application

(1) An international application shall be filed by submitting to the Patent Registration Office a request in the prescribed form together with a description, one or more claims, drawings, if any, and an abstract in the form as specified in the Treaty.

(1a) An international application shall be filed in the English language.

(2) The request shall contain--

(2a) An international application which has been accorded an international filing date shall have the effect of a patent application under this Act if the application designates Malaysia for the purpose of obtaining a patent under this Act and the international filing date shall be considered to be filing date for the purposes of Parts IVa and VI.

(3) (Deleted by Act A1264).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78h.Omitted or Deleted Section

78h. Omitted or Deleted Section

(Deleted by Act A1264)

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78i.Omitted or Deleted Section

78i. Omitted or Deleted Section

(Deleted by Act A1264)

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78j.Omitted or Deleted Section

78j. Omitted or Deleted Section

(Deleted by Act A1264)

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78k.Processing of international applications

78k. Processing of international applications

The Treaty shall apply to the processing of an international application during the international phase of the application.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78ka.Fees

78ka. Fees

An international application shall be subject to the fees as specified in the Treaty and other prescribed fees.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78l.International Searching Authority

78l. International Searching Authority

(1) The Registrar shall, by notification published in the Gazette, specify the International Searching Authority which is competent to carry out the international search for international applications filed with the Patent Registration Office.

(2) When there is more than one competent International Searching Authority, the applicant shall indicate his choice of International Searching Authority in the request.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78m.International Preliminary Examination Authority

78m. International Preliminary Examination Authority

(1) The Registrar shall, by notification published in the Gazette, specify the International Preliminary Examination Authority which is competent to carry out international preliminary examination for international applications filed with the Patent Registration Office.

(2) The applicant may request for an international preliminary examination to be carried out in respect of the application by submitting a demand in accordance with the Treaty.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78n.International publication of international application and its effect

78n. International publication of international application and its effect

(1) The international publication of an international application by the International Bureau designating Malaysia as a designated office shall have the same effect as the making available for public inspection under section 34 of a patent application if the international publication is transmitted to and received by the Patent Registration Office.

(2) The Patent Registration Office shall make available the international publication of the international application designating Malaysia as a designated office for public inspection as soon as possible.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78o.Entering the national phase

78o. Entering the national phase

(1) Where in an international application, the applicant designates Malaysia for the purpose of obtaining a patent under this Act, the applicant shall, before the expiration of thirty months from the priority date--

(2) The Patent Registration Office shall not examine the international application submitted under subsection (1) prior to the expiration of thirty months from the priority date.

(3) Notwithstanding subsection (2), the Patent Registration Office may, on the request of the applicant, examine an international application prior to the expiration of thirty months from the priority date, if the applicant has--

(4) If the applicant does not comply with the requirements of subsection (1), the international application shall be considered to be withdrawn for the purposes of this Act and the Registrar shall notify the applicant that his international application is considered to have been withdrawn.

(5) Any application which has entered the national phase shall comply with the requirements of this Act.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78oa.Reinstatement

78oa. Reinstatement

(1) Where an international application is considered to be withdrawn under section 78o, the applicant may, in writing, apply to the Patent Registration Office to have the international application reinstated by--

(2) The application under subsection (1) shall be made within whichever of the following period expires first:

(3) Where the Patent Registration Office is satisfied that the failure by the applicant to comply with the requirements of subsection 78o(1) was unintentional, the Patent Registration Office shall reinstate the rights of the applicant with respect to the international application.

(4) Where the Patent Registration Office is not satisfied that the failure by the applicant to comply with the requirements of subsection 78o(1) was unintentional, the Patent Registration Office shall notify the applicant that it intends to refuse the application and give an opportunity to the applicant to make a written representation on the intended refusal within fourteen days from the date of the notice.

(5) After considering any representation made by the applicant under subsection (4), the Patent Registration Office shall decide whether to reinstate the international application or to refuse the application for reinstatement and notify the applicant of its decision.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78p.Omitted or Deleted Section

78p. Omitted or Deleted Section

(Deleted by Act A1264)

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/78q.Conversion of an international application into a national application

78q. Conversion of an international application into a national application

(1) Where--

the applicant may request the Patent Registration Office to review the justification of the refusal or declaration under the Treaty.

(2) If the Patent Registration Office finds that the refusal or declaration referred to in subsection (1) was the result of an error or omission, it shall treat the international application as if such error or omission had not occurred and shall treat the application as a patent application in accordance with the provisions of this Act.

(3) (Deleted by Act A1264).

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/79.Powers of Registrar to amend patent application

Part XV MISCELLANEOUS

79. Powers of Registrar to amend patent application

(1) The Registrar may, upon a request made by an applicant for a patent in accordance with patent regulations made under this Act, amend the applicant's patent application, or any document submitted at the Patent Registration Office in connection with the application, for the purpose of correcting a clerical error or an obvious mistake.

(2) Every request under subsection (1) shall be accompanied by the prescribed fee.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/79a.Power of Registrar to amend patent

79a. Power of Registrar to amend patent

(1) The Registrar may, upon a request made by the owner of a patent in accordance with regulations made under this Act, amend the description, the claim or claims, or the drawings, of the patent, or amend any other document associated with the patent, for the purpose of correcting a clerical error or an obvious mistake or for any other reason acceptable to the Registrar.

(2) The Registrar shall not make an amendment under this section if the amendment would have the effect of disclosing a matter which extends beyond that disclosed before the amendment or if the amendment would have the effect of extending the protection conferred at the time of grant of the patent.

(3) The Registrar shall not make an amendment under this section if there are pending before any Court proceedings in which the validity of the patent may be put in issue.

(4) Every request under subsection (1) shall be accompanied by the prescribed fee.

(5) Notwithstanding subsection (4), no fee shall be payable by the owner of a patent in respect of a request to correct a mistake or an error in any document issued by the Patent Registration Office unless such mistake or error is caused or contributed to by such owner.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/80.Other powers of Registrar

80. Other powers of Registrar

(1) The Registrar may, for the purpose of this Act--

(2) Any person who without any lawful excuse fails to comply with any summons, order or direction made by the Registrar under paragraphs (1)(a), (b) and (c) commits an offence and is liable on conviction to a fine not exceeding two thousand ringgit or to imprisonment for a term not exceeding six months or to both.

(3) Costs awarded by the Registrar may in default of payment be recovered in a Court of competent jurisdiction as a debt due by the person against whom the costs were accorded to the person in whose favour they were accorded.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/81.Exercise of discretionary power

81. Exercise of discretionary power

Where any discretionary power is given to the Registrar by this Act or any regulations made thereunder, he shall not exercise the power on any person who may be adversely affected by his decision without giving to the person an opportunity of being heard.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/82.Extension of time

82. Extension of time

Subject to subsection 27(1a), subsection 29a(8) and subsection 30(4), where, by this Act or any regulations made thereunder a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly directed by the Court, extend the time either before or after its expiration, upon payment of the prescribed fee.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/83.Extension of time by reason of error in Patent Registration Office

83. Extension of time by reason of error in Patent Registration Office

(1) Where by reason of--

an act in relation to an application for a patent or in proceedings under this Act, not being proceedings in a Court, required to be done within a certain time has not been so done, the Registrar may extend the time for doing the act.

(2) The time required for doing an act may be extended under this section although that time has expired.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/83a.Certificate by the Registrar

83a. Certificate by the Registrar

The Registrar may certify, by writing under his hand, that an entry, matter or thing required by or under this Act to be made or done, or not to be made or done, has or has not been made or done, as the case may be, and such certificate shall be prima facie evidence of the truth of the facts stated therein and shall be admissible in evidence in all courts.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/84.Rights of Government

84. Rights of Government

(1) Notwithstanding anything contained in this Act--

the Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Minister may exploit a patented invention.

(2) The owner of the patent shall be notified of the decision of the Minister as soon as is reasonably practicable.

(3) The exploitation of the patented invention shall be limited to the purpose for which it was authorized and shall be subject to the payment to the owner of the patent of an adequate remuneration for such exploitation, taking into account--

(4) The Minister shall make his decision under subsection (3) after hearing the owner of the patent and any other interested person if they wished to be heard.

(5) The exploitation of a patented invention in the field of semi-conductor technology shall only be authorized either--

(6) The authorization shall not exclude--

(7) Where a third person has been designated by the Minister, the authorization may only be transferred with the goodwill or business of that person or with that part of the goodwill or business in which the patented invention is being exploited.

(8) The exploitation of the invention by the Government agency or the third person designated by the Minister shall be predominantly for the supply of the market in Malaysia.

(9) Upon the request of--

the Minister may, after hearing the parties, if either or both wish to be heard, vary the terms of the decision authorizing the exploitation of the patented invention to the extent that changed circumstances justify such variation.

(10) Upon the request of the owner of the patent, the Minister shall terminate the authorization if he is satisfied, after hearing the parties, if either or both wish to be heard, that the circumstances mentioned in subsection (1) which led to his decision have ceased to exist and are unlikely to recur or that the Government agency or the third person designated by him has failed to comply with the terms of the decision.

(11) Notwithstanding subsection (10), the Minister shall not terminate the authorization if he is satisfied that the need for adequate protection of the legitimate interests of the Government agency or the third person designated by him justifies the maintenance of the decision.

(12) The owner of a patent, a Government agency or the third person authorized to exploit a patented invention may appeal to the Court against the decision of the Minister under this section.

(13) In this section "Government agency" means the Federal Government or the Government of a State and includes a Ministry or Department of that Government.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/85.Refusal to grant patent by the Registrar

85. Refusal to grant patent by the Registrar

The Registrar in the exercise of his powers shall have the right to refuse to grant a patent for products or processes scheduled under regulations made by the Minister under this Act where it appears to the Registrar that the granting of such a patent ?would be prejudicial to the interest or security of the nation.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/86.Patent agents

86. Patent agents

(1) There shall be kept at the Patent Registration Office a Register of Patents Agents.

(2) No person shall carry on business, practice, act, describe himself, hold himself out, or permit himself to be described or held out, as a patent agent unless he is registered in the Register of Patents Agents.

(3) The registration of a patent agent mentioned in subsection (2) shall be in accordance with the regulations as may be prescribed by the Minister under this Act.

(4) The appointment or change of a patent agent shall not be effective against any third person unless it is registered in the Register of Patents Agents.

(5) A person who has neither his domicile nor residence in Malaysia may not proceed before the Patent Registration Office under the provisions of this Act in respect of his patent except through a patent agent.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/87.Regulations

87. Regulations

(1) Subject to the provisions of this Act, the Minister may make regulations for the purpose of carrying into effect the provisions of this Act.

(2) In particular and without prejudice to the generality of subsection (1), such regulations may provide for all or any of the following:

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/88.Appeal

88. Appeal

(1) Any person aggrieved by any decision or order of the Registrar or the Corporation may appeal to the Court.

(2) The same rules of procedure on appeal shall apply to appeals made under subsection (1) as to appeals to the High Court from a decision of a subordinate Court in civil matters.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/89.Repeal and saving provisions

89. Repeal and saving provisions

The Registration of United Kingdom Patents Act 1951 [Act 215], the Patents Ordinance of Sarawak [Sarawak Cap. 61], the Registration of United Kingdom Patents Ordinance of Sabah [Sabah Cap. 124 ] and the Patents (Rights of Government) Act 1967 [Act No. 53 of 1967] are repealed:

Provided that:

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/90.Transitional

90. Transitional

(1) Where an application has been made under an Act or Ordinance repealed under section 89, the Registrar may issue a certificate or make a grant on such application as if the Act or Ordinance had not been repealed, and such certificate or grant shall remain in force--

whichever is the earlier.

(2) Where a patent has been granted under the United Kingdom Patents Act 1977 not earlier than twenty-four months before the coming into force of this Act, the owner of the patent may, within a period of twelve months from the coming into force of this Act, make an application for a certificate or a grant and the Registrar may issue a certificate or make a grant on such application as if the Act or Ordinance repealed under section 89 had not been repealed, and such certificate or grant shall remain in force--

whichever is the earlier.

(3) (Deleted by Act A863).

(4) Where, prior to the coming into force of this Act, an application for a patent has been made under the United Kingdom Patents Act 1977 or an application designating the United Kingdom has been filed at the European Patent Office, the applicant may, within a period of twelve months from the coming into force of this Act, make an application for the grant of a patent under this Act, and such application shall be accorded the filing date and the right of priority which have been accorded to it in the United Kingdom.

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/First Schedule

 First Schedule

(Deleted by Act A1137)

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291,,/Second Schedule

 Second Schedule

[ Section17a]

MODIFICATIONS TO THE PROVISIONS OF THE ACT APPLICABLE TO UTILITY INNOVATIONS

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/LIST OF AMENDMENTS

 LIST OF AMENDMENTS

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/LIST OF BILLS

 LIST OF BILLS

Unannotated Statutes of Malaysia - Principal Acts/PATENTS ACT 1983 Act 291/PATENTS ACT 1983 ACT 291/LIST OF SUBSIDIARY LEGISLATION

 LIST OF SUBSIDIARY LEGISLATION