November/December 2018

www.IAM-media.com Patents in Asia | Co-published feature 107

Malaysia
By Azlina Aisyah Khalid and Oon Yen Yen, Henry Goh & Co Sdn Bhd

How do you get a patent in your Allowance of the application can be expected within
jurisdiction? six to 12 months after the request.
Types of protection and eligibility criteria A request for expedited examination can be filed
Patents and utility innovations (UI) are available in once a request for normal examination has been
Malaysia. The basic criteria for patentability are: submitted and the application has been published.
• novelty; The grounds on which expedited examination may
• inventive step; and be considered are:
• industrial applicability. • national or public interest;
• there is evidence of potential infringement or
Malaysian patent law has a worldwide novelty ongoing infringement proceedings;
standard, qualified by a 12-month novelty grace • registration is a condition for obtaining grants
period in respect of any public disclosures of the from the government or recognised institutions;
invention that originate from the applicant before the • the invention has been or will be commercialised
filing date of the Malaysian patent application. This within two years of requesting expedition;
period is calculated from the date of first disclosure • the invention relates to green technologies; or
and does not protect against third-party disclosures. • other reasonable grounds.
‘Inventive step’ is assessed based on obviousness to
a skilled person. Examiners prefer to base their decision to allow
An invention is considered capable of industrial an application on the positive results of relevant (ie,
application if it can be made or used in any kind European, US, UK, Australian, Japanese or Korean)
of industry. corresponding patent applications and will seldom
Unlike a patent application, the inventive step make a decision solely on the basis of technical or
requirement does not apply to a UI application in substantive arguments. Unless a suitable allowed or
Malaysia. A Malaysian UI application undergoes granted corresponding claimset is available, pursuing
substantive examination much like a patent expedited examination will result only in the application
application, albeit with a lower registrability bar. being issued with an adverse examination report and,
ultimately, returned to the normal prosecution track.
The application – process and costs A request to participate in the MyIPO-JPO PPH
The cost, from filing to grant, for a smooth-sailing pilot programme can be made on the basis of a
application with 10 claims or fewer and undergoing corresponding Japanese or Patent Cooperation Treaty
normal substantive examination can be less than (PCT) application, which has received a positive
$2,000, including official fees. This is provided that patentability opinion from the JPO. Prosecution is
only one examination report is issued and that no significantly reduced to as little as four months under
extensions of time become necessary. this programme, as opposed to between two and
It typically takes about four years for an three years under normal examination. It is possible
application to proceed to grant. There are several to obtain a grant within four to five months of filing
options for expediting prosecution, namely: provided that the request for normal examination
• to request modified substantive examination; and the request for participation in the PPH are filed
• to request expedited examination; simultaneously with the application.
• to participate in the Intellectual Property A request to participate in the MyIPO-EPO
Corporation of Malaysia (MyIPO)-Japan Patent PPH pilot programme can be made on the basis of a
Office ( JPO) Patent Prosecution Highway (PPH) corresponding European or PCT application, which
pilot programme; has received a positive patentability opinion from the
• to participate in the MyIPO-European Patent EPO. The first office action (if any) can be expected
Office (EPO) PPH pilot programme; or within three months of requesting to participate in
• to participate in the MyIPO-State Intellectual the PPH and a decision on grant is obtainable within
Property Office (SIPO) PPH pilot programme. six months of such a request.
A request to participate in the MyIPO-SIPO
Modified substantive examination is a simplified PPH pilot programme can be made on the basis of
examination process where the specification of the a corresponding Chinese or PCT application, which
application is amended to adopt the specification of a has received a positive patentability opinion from the
relevant (ie, European, US, UK, Australian, Japanese SIPO. The first office action (if any) can be expected
or Korean) corresponding patent. It is atypical for within three months of requesting to participate in
an adverse examination report to issue following the PPH and a decision on grant is obtainable within
a request for modified substantive examination. six months of such a request.
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Technology-based considerations (eg, software and Administrative enforcement options

pharmaceuticals) Malaysian patent law does not provide for
Software inventions: There are various options for administrative enforcement options. A patent owner
protecting software inventions in Malaysia provided may enforce its rights only upon grant of the patent
that such inventions meet the statutory definition and by way of civil litigation. There are no criminal
of an invention that is required to solve a technical actions available for patent infringement.
problem. Data processing that does not involve
a technical effect or advance will not constitute a How are patents enforced through the
Azlina Aisyah Khalid patentable invention. Software inventions that are courts?
Senior legal counsel construed as a business method are not patentable as Key forums and their composition
[email protected] business methods are excluded from patentability. There is no scope for forum selection. All IP suits
According to MyIPO’s patent examination must be initiated at the geographical location of the
Azlina Aisyah Khalid is senior legal guidelines, claims directed to computer programs high court where the defendant resides or where the
counsel at Henry Goh Malaysia and is per se or a computer program embodied on a carrier, cause of action occurs – although many cases are now
experienced in trademarks, copyright, regardless of its content, are not allowed. A computer filed at the Kuala Lumpur High Court, which has a
licensing, design infringement, program may be patentable if the claimed subject dedicated IP Court.
domain name registration and matter makes a technical contribution to the art (eg, There is no jury panel in a civil litigation suit. A
franchise law. She is a registered program-controlled machines or program-controlled single judge sits in the court of first instance (high
patent, trademark, industrial design manufacturing processes). court). At appellate levels, there is a panel of judges
and geographical indications agent. comprising three judges in the court of appeal and
Her legal practice began in 1996 Pharmaceuticals: Methods of treatment of the usually five judges in the Federal Court. Although nine
and she has been with Henry Goh human or animal body by surgery or therapy, and is the maximum number, it is rare for a patent appeal
since 2004. She is editor of Henry diagnostic methods practised on the human or to require more than five judges in the Federal Court.
Goh’s newsletter. animal body are excluded subject matter in Malaysia.
MyIPO currently allows first and second medical Trial flow – discovery, trial, witnesses, timing
use claims. and cost
MyIPO examiners tend to adopt the approach Patent litigation is begun by way of writ of summons
of the EPO with regard to substantive matters where the applicable rules are the Rules of the
concerning life-science inventions and are often Court 2012. The suit is commenced by way of a
guided by the relevant provisions of the European writ summons, sealed by the high court, enclosing a
Patent Convention (EPC 2000) and the EU Biotech statement of claim. All applications for interim relief
Directive (98/44/EC). (eg, injunctions, Anton Piller orders and discovery
orders in aid of the interim reliefs) can be applied
What are the major administrative for by way of notice of application supported by
procedures in your jurisdiction? affidavits. These interim reliefs can be applied for ex
Appealing patent office decisions parte and/or inter partes.
The Patents Act provides that MyIPO cannot refuse Upon service of the writ, the defendant may file
a patent application without giving the applicant its defence (and counter-claim if any). The plaintiff is
an opportunity to be heard. If written and/or oral entitled to file its reply (and defence to the counter-
submissions before and/or during a hearing are claim, if any). A defendant may raise invalidation
insufficient to overturn a decision, the applicant has proceedings as a defence against an infringement claim.
the right to appeal an adverse decision to the High Once the pleadings are closed, the court fixes
Court of Malaya. a date for case management whereby it will issue
directions as to how the trial is to be conducted.
The case-management practice and directions are
generally uniform – although each judge has their
“Many cases are now filed at the Kuala Lumpur own peculiar directions.
Once case-management directions are complied
High Court, which has a dedicated IP Court” with, the court will fix full trial dates. The current
practice is that the court will direct that evidence-
in-chief be submitted via witness statements in the
form of questions and answers. Thereafter, opposing
Third-party challenges – oppositions and counsel may cross-examine the witnesses; the party
invalidations calling the witness then has the opportunity to re-
There are no formal provisions in Malaysian patent examine. Examination-in-chief, cross-examination
law for third-party intervention and examiners are and re-examination is by way of oral testimony given
under no obligation to consider prior art submitted under oath. Nonetheless, the court may direct that all
by a third party. However, MyIPO examiners do take evidence be submitted orally.
into consideration such documents if the application The stages and estimated timeframe for a patent
in question is still pending under examination. litigation action are provided in Table 1.
Malaysian patent law does not provide for either
pre-grant or post-grant opposition. The only avenue Legal doctrines, available remedies and the
for recourse for an aggrieved party is instituting appeals process
an invalidation proceeding before the High Court Doctrine of equivalents: Malaysian courts have
of Malaya. adopted purposive construction to determine the
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www.IAM-media.com Patents in Asia | Co-published feature 109

TABLE 1. Stages and estimated timeframe for a patent litigation action

Stages of litigation Estimated timeframe

Stage one Between one and two weeks, depending on the speed
ŸŸ Commencement of suit. at which evidence is marshalled and the court issues the
ŸŸ Writ summons. writ. Service of cause papers may take up to one month,
ŸŸ Statement of claim. depending on the availability of the defendant(s).
ŸŸ Service of cause papers.

Application for interim reliefs

Injunction, Anton Piller and discovery.

Ex parte order
If the matter is urgent, clients may apply for an ex parte order Between one and three weeks, depending on available
(valid for 21 days). court dates.

Inter partes order

This order must be applied for whether or not an ex parte Between one and three weeks, depending on available court
order has been applied for. The term is the same as the dates and directions.
ex parte order (valid from the date of grant to disposal or
completion of trial).

Anton Piller order As above.

Stage two Within two weeks.

ŸŸ Subsequent pleadings.
ŸŸ Reply.
ŸŸ Defence to counter-claim (if any).

Stage three Between three and nine months.

Pre-trial matters, applications and proceedings

Stage four Between three and 12 months (depending on the

ŸŸ Preparation for trial. court’s directions).
ŸŸ Case management.
ŸŸ Brief.
ŸŸ Getting up.

Stage five Depending on the court’s free dates and directions.

ŸŸ Trial (proper).
ŸŸ Refresher.

Stage six Depending on the court’s free dates.

ŸŸ Execution of judgment.
ŸŸ Assessment of damages.
ŸŸ Taxation of cost.
Oon Yen Yen
Patent manager
scope and infringement of patent claims. To date, pleaded in the statement of claim. The injunction [email protected]
there has been no application of any doctrine will be awarded if on the balance of probabilities
of equivalents, though this may change if the the court finds that there has been infringement of As patent manager, Oon Yen Yen
UK Supreme Court’s decision in Actavis UK the patent. oversees patent operations, including
Limited v Eli Lilly and Company is accepted as a staff training and education.
persuasive precedent. Damages: The principle of damages is to make good She holds an honours degree in
or replace the loss caused by the wrongful act. The microbiology from the University of
Remedies: The remedies must be pleaded in the following factors are used to assess damages: Malaya and a master’s in law from
statement of claim. The typical remedies that will be • direct causation – the damages suffered arose as a the University of London. A registered
requested and granted are: direct consequence of infringement; Malaysian patent, industrial design
• permanent injunction; • evidence surrounding causation; and trademark agent, she advises
• full discovery; • market demand for the patented product; on identification of patentable
• delivery up; • lack of comparable products; and inventions, drafting of patent
• declarations; • plaintiff ’s or its licensees’ ability to manufacture specifications and prosecution
• general and punitive damages (if any); and and market the product must be demonstrated. of Malaysian and overseas patent
• costs. applications. Her opinions on
Elements for calculating lost profits include: patentability, infringement, freedom
Permanent injunctions: It is common for courts • loss or diverted sales and increased expenditure to operate and validity play key roles
to grant a permanent injunction but this must be caused by infringement; in clients’ decision making.
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• potential or actual loss of profits attributable to • the invention claimed in a patent cannot be
past and present infringement; and worked in Malaysia without infringing a granted
• profits likely to be lost in the future. patent having an earlier priority date and if
the invention of the later patent constitutes an
Punitive damages are known as exemplary important technical advance of considerable
damages in Malaysia. They must be specifically economic significance.
pleaded, with the facts being relied upon set out.
The amount awarded is usually arbitrary. The Additionally, Section 84 of the Patents Act
factors taken into account for a plea in exemplary provides for the government to allow the exploitation
damages include: of a patented invention by a government agency
• whether the defendant had deliberately infringed; or a third party in the following circumstances,
• whether the infringer knew of the plaintiff ’s predominantly for domestic market supply, without
registered rights; the consent of the patent owner but with adequate
• the extent of the defendant’s business activities remuneration to it:
and financial position; • a national emergency or where there is public
• the duration of the defendant’s infringing interest, in particular, related to national security,
activities; and nutrition, health or the development of vital
• the extent to which the defendant’s infringing sectors of the national economy; and
conduct offends the public sense of justice • a judicial or relevant authority has determined that
and propriety. the manner of exploitation by the patent owner or
its licensee is anti-competitive.
Expert witness: Expert witnesses are appointed to
support the respective parties’ contention (ie, either Before the issuance of a decision under Section 84,
in the assertion of infringement or in the defence the patent owner has the right to be heard together
that there is no infringement). They usually comprise with any other interested party – if it so wishes. In
patent agents and persons skilled in the relevant addition, the patent owner may appeal any such
art. Industry experts are encouraged and experts decision issued by the government to the court.
may come from foreign jurisdictions or within the
country. The expert witnesses from each side will be Limitation of rights: On 1 August 2001 a limitation
subject to cross examination when giving testimony. on patent rights – similar to Section 271(e)(1) of
the US Hatch-Waxman Act – was introduced into
the Malaysian Patents Act: “The rights under the
patent shall not extend to acts done to make, use,
offer to sell or sell a patented invention solely for
“There is no provision in Malaysian uses reasonably related to the development and
patent law that compels the patent submission of information to the relevant authority
which regulates the manufacture, use or sale
owner to use or work their invention” of drugs.”

Inventor remuneration issues

Section 20 of the Patents Act provides that inventors
Appeals: The losing party has an automatic right to are entitled to equitable remuneration if the
appeal; any appeal must be filed within 30 days of invention acquires an economic value much greater
judgment. The grounds of appeal must be based on than the parties concerned could reasonably have
questions of law and not questions of fact. The appeal foreseen at the time of concluding the employment
will normally take between 12 and 15 months to be contract. There are no official guidelines for
heard. If an appeal goes all the way to Federal Court, calculating equitable remuneration. If the terms
it can take between two and three years for disposal. of the employment contract do not dictate the
compensation amount, the amount will be fixed by
How are patents commercialised in your the courts.
jurisdiction? It is possible for employers to have rights in an
Patent working requirements and pharma-specific invention patent for free by virtue of the terms of
rules an employment contract. However, the employee
Working requirements: There is no provision in (inventor) can still seek compensation through the
Malaysian patent law that compels the patent owner courts as Section 20 is not restricted by contract.
to use or work their invention. However, it does
provide for the issuance of compulsory licences if: Henry Goh & Co Sdn Bhd
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but they are sold at unreasonably high prices or Tel +60 3 9771 8688
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reason; or Web www.henrygoh.com