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What are the requirements and timings to file Patent Prosecution Highway in Malaysia for PCT-PPH with the Japan Patent Office?
To expedite prosecution of a National Phase application filed at the Malaysia Intellectual Property Office (MyIPO), a request for Patent Prosecution Highway in Malaysia can be filed, as long as the latest work product in the international phase of a PCT application corresponding to the application indicates at least one claim as patentable/allowable (under the criteria of novelty, inventive step and industrial applicability).
The PCT-PPH route can only be taken if the Malaysian application has at least one corresponding application in Japan through the Japan Patent Office (JPO).
To file a request for Patent Prosecution Highway in Malaysia, the following documents must be submitted:
(a) A copy of the Written Opinion of the International Search Authority together with its English Translation.
(b) A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable and their English translations if they are not in English.
(c) A copy of references cited in the International Preliminary Report on Patentability of the corresponding international application.
(d) A claims correspondence table which indicates how all claims in the application sufficiently correspond to the claims indicated to be patentable/allowable (please complete the table below)
Should documents (a), (b) and (c) be available – together with corresponding English translations – at WIPO, only document (d) needs to be provided.
Procedure for filing a request for PPH
A request for Substantive Examination (Form 5) must be filed at MyIPO either at the time of the PCT-PPH request or earlier.
A request for PCT-PPH attached with the relevant documents must also be filed, and applicants must await the issuance of an examination report from MyIPO.
For Malaysian applications whereby a PPH request is made based on a granted Japanese patent, we expect to receive the first examination report within 3 months from the PPH request date.
For Malaysian applications whereby the PPH request is made based on a pending Japanese patent application/ combination of several Japanese patents, we expect to receive the first examination report within 3 – 6 months from the PPH request date.
What is the requirement and time frame for filing a request for expedited examination in Malaysia?
A request for expedited examination in Malaysia can be made after 18 months from priority date or filing date, or upon filing a request for substantive examination.
The request for expedited examination in Malaysia must be accompanied with:
a) A Statutory Declaration stating the grounds for requesting the expedited examination;
b) The prescribed fees.
The Statutory Declaration can be made on the basis of the following grounds:
1) It is in the national or public interest;
2) There are infringement proceedings taking place;
3) The applicant has already commercialized – or plans to commercialize – the invention;
4) The invention relates to green technologies;
5) To obtain funds or monetary benefits from the government or recognized institutions;
6) Any other reasonable grounds.
Summary of filing a request for expedited examination in Malaysia:
1) A request for Full Substantive Examination (Form 5) is to be made.
2) A request for approval of expedited examination (Form 5H) is required to be filed with the Patent Office after 18 months from the priority date/filing date; and
3) A request for expedited examination (Form 5I) should be filed upon approval of the above-mentioned request (within one (1) week from the date of approval).
The time frame for the application to grant for a clear cut case after filing a request for expedited examination is within 3 months from the date of filing said request.
See Malaysia Patent System for more details.
Can multi-class trademark applications be filed in Malaysia?
No. Multiple-class trademark applications are not currently possible in Malaysia.
Would it be better to file a trademark in Malaysia with a colour claim?
If the Applicant does not necessarily require a specific colour to be a key feature in their mark, a better option would be to file without a colour claim.
In order to afford a broader protection, the Applicant may consider filing the subject marks in black and white. When applied in black and white, the Applicant has the option to use the marks in any colours.
Can I have joint owners as the applicant of one trademark in Malaysia?
Yes, Section 21 of the Trade Marks Act 1976 allows for a trademark with two applicants to be registered as joint proprietors.
Can I amend my trademark after the trademark is registered in Malaysia?
Yes, Section 44 of the Trade Marks Act 1976 permits the registered proprietor of a trade mark to apply to the Registrar for leave to make addition to, or alter the trade mark in any manner not substantially affecting the identity thereof. The discretion to grant or refuse will be with the Registrar.
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