How To Protect A Patent With Intellectual Property Corporation Of Malaysia (MyIPO)

January 20, 2018

From my last post, I have shared regarding Intellectual Property Corporation of Malaysia (MyIPO) background and function. For those that has not read the post, please refer to click here. MyIPO not only providing information to the public regarding intellectual property but also create an awareness to the public regarding the importance of intellectual property. As you can see below chart, the objective of MyIPO is wide whereby they do strengthen intellectual property laws to protect creator/designer/ owner of the brand like us.

As a creator/designer or owner of the brand, we need to know what is our right and how we can protect our copyright/patent/trademark and etc with MyIPO. In this post, I will focus more about patent. 

What is Patent / Utility Innovation? 

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.

Utility Innovation is an exclusive right granted for a "minor" invention which does not require to satisfy the test of inventiveness as required of a patent.

There are 2 different type of patents: Patentable Inventions and Non-Patentable Inventions . Let's understand more the different.

Patentable Inventions

  • New, which means that the invention has not been publicly disclosed in any form, anywhere in the world.
  • Involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and
  • Industrially applicable, meaning it can be mass produced.
Non-Patentable Inventions

  • Discoveries, scientific theories and mathematical methods;
  • Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro- organisms, micro-biological processes and the products of such micro-organism processes;
  • Schemes, rules or methods for doing business, performing purely mental acts or playing games;
  • Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.

Do you know the important of patent registration?

By register your patent, you can acquire monopoly rights to exploit the patented invention, to assist or transmit the patent and lastly is to conclude license contracts. The patent will be protected 20 years from the date it register. 

Who can apply?

Any person may make an application for a patent or for a utility innovation either alone or jointly with another person. The word “person” is not limited to natural persons and thus also includes, for example, a company.

You either can filling your patent manually or by online. 

1) Manual filling of patent

- First of all the owner need to request for grant of patent
- Then owner need to proceed for application for grant of certificate of utility innovation
- Lastly, request for substantive examination

2) Online filing of patent

IP Online Portal provides filing of new Patent application, which consists of Patent Form 1 to Patent Form 21. Other supporting documents and forms can be uploaded during the filing process.

Is advisable to prepared before proceed with submission. Below are the steps:-
  1. Prepare all documents in digital format, e.g. Priority Data, Form 17, Form 5 or Form 5A etc.
  2. Description and Claims are compulsory documents. They must be uploaded during the filing.
  3. Separate the specifications into separate files: Claims, Abstract, Description, Drawings.
  4. Please ensure that your attachments are in these formats: DOC, PDF and TIF.
  5. If you are an agent, please prepare your Form 17 to be uploaded to IP Online Portal.
  6. Get your own Digital ID from MyIPOhttps://digitalid.msctrustgate.com/MyIPO
  7. Install your digital ID into your PC or save it to your secondary storage device e.g. thumb drive.
  8. Digital ID must be attached to your application.
  9. Proceed with the payment. Check the fees in Pricing Scheme table.
  10. Print a copy of Patent Form 1 form before you make the payment.
  11. Print your Confirmation page upon successful filing.
For better understanding, you may refer to below flow chart for the process:-

Beside filing up the application form, owner need to request for approval of expedited examination by filling up "Form 5H" and request for expedited examination by fill up "Form 5I". You may refer to below flow chart for more information of the process.




Patent Form and Fees

Part I


Matter/ Proceeding
E- Filing Fee (RM)
Manual Fee (RM)
Form
icon pdf
icon word
a. Request for grant of patent
260.00
290.00
1
1
b. Claims
  • for 1st ten claim
Nil
Nil
  • for every additional claim (per claim)
20.00
20.00
Declaration of withdrawal of application
Nil
Nil
2
2
Entering national phase
260.00
290.00
  • for first ten claims
20.00
20.00
  • for every additional claim (per claim)
Request for reinstatement under section 78OA
650.00 per month of delay
690.00 per month of delay
Request for substantive examination
950.00
1,100.00
5
5
Request for modified substantive examination
600.00
640.00
Request for deferment of filing of request for examination or provision of information
Nil
Nil
Request for certified copies or extracts
70.00
80.00
Request to amend register
70.00
80.00
Request for reinstatement of lapsed patent
130.00
140.00
Request for license to exploit patented invention
Nil
Nil
Request to convert application for patent into application for certificate of utility innovation or vice versa
260.00
290.00
Request for approval of expedited examination
200.00
250.00
Request for Expedited examination
2,000.00
2,200.00
Application for recording of assignment or transmission
130.00
140.00
6
6
Application for entry in Register that any person may obtain a license
70.00
80.00
7
7
Application for cancellation of entry in Register that any person may obtain a license
70.00
80.00
8
8
Request for recording of particulars of license contract in Register
130.00
140.00
9
9
Request for recording expiry or termination of license contract in Register
100.00
110.00
Application for compulsory license
100.00
110.00
Request for amendment of decision
100.00
110.00
Request for cancellation of compulsory license
100.00
110.00
Application for grant of certificate of utility innovation
130.00
140.00
Application to extend term of certificate for utility innovation
130.00
140.00
Request to amend application for grant of patent
70.00
80.00
Request to amend patent
70.00
80.00
Appointment or change of patent agent
70.00
80.00
Application for registration of patent agent
2,600.00
2,670.00
Application for registration as candidate for examination
130.00
140.00
Application to re-sit examination
130.00
140.00
Application for renewal of registration of patent agent
550.00
590.00
Furnishment of address for service
130.00
140.00
Request for extension of time
260.00
290.00
Statement justifying the applicant’s rights to the patent/certificate
70.00
80.00
Part II

Item
Matter/Proceeding
E-Filing Fee
(RM)
Manual Fee
(RM)
1.
Copy of patent
40.00
40.00
2.
Copy of search report
30.00
30.00
3.
Examination of register
15.00 per hour
15.00 per hour
4.
Certified copies or extract from Register
15.00 per page
15.00 per page
5.
Copy extract from Register
3.00 per page
3.00 per page
6.
Fee for public inspection of information relating to patent application
30.00 per hour
30.00 per hour
7.
Certified copies or extract of any information :-
(a) for first five pages
100.00 per page
100.00 per page
(b) for every additional page
3.00 per page
3.00 per page
8.
Annual fee for patent:
a) for second year after grant of patent
260
290
b) for third year after grant of patent
330
360
c) for fourth year after grant of patent
390
420
d) for fifth year after grant of patent
460
490
e) for sixth year after grant of patent
520
560
f) for seventh year after grant of patent
600
640
g) for eighth year after grant of patent
650
690
h) for ninth year after grant of patent
720
760
i) for tenth year after grant of patent
780
820
j) for eleventh year after grant of patent
850
890
k) for twelfth year after grant of patent
900
940
l) for thirteenth year after grant of patent
1,050.00
1,100.00
m) for fourteenth year after grant of patent
1,200.00
1,250.00
n) for fifteenth year after grant of patent
1,300.00
1,350.00
o) for sixteenth year after grant of patent
1,600.00
1,660.00
p) for seventeenth year after grant of patent
1,850.00
1,900.00
q) for eighteenth year after grant of patent
2,100.00
2,200.00
r) for nineteenth year after grant of patent
2,400.00
2,500.00
s) for twentieth year after grant of patent
2,600.00
2,700.00
9.
Surcharge for reinstatement
100 % of fee for year concerned
100 % of fee for year concerned
10.
Surrender of compulsory licence
80.00
90.00
11.
Surrender of patent
80.00
90.00
12.
Annual fee for certificate for utility innovation :
(a) for third year after grant of certificate
160
170
(b) for fourth year after grant of certificate
210
240
(c) for fifth year after grant of certificate
210
240
(d) for sixth year after grant of certificate
260
290
(e) for seventh year after grant of certificate
260
290
(f) for eighth year after grant of certificate
320
350
(g) for ninth year after grant of certificate
320
350
(h) for tenth year after grant of certificate
370
400
(i) for eleventh year after grant of certificate
520
560
(j) for twelfth year after grant of certificate
780
820
(k) for thirteenth year after grant of certificate
910
950
(l) for fourteenth year after grant of certificate
1,050.00
1,100.00
(m) for fifteenth year after grant of certificate
1,300.00
1,350.00
(n) for sixteenth year after grant of certificate
1,450.00
1,500.00
(o) for seventeenth year after grant of certificate
1,600.00
1,650.00
(p) for eighteenth year after grant of certificate
1,700.00
1,750.00
(q) for nineteenth year after grant of certificate
1,850.00
1,900.00
(r) for twentieth year after grant of certificate
1,950.00
2,000.00
13.
Holding of hearing
130.00
140.00
14.
Certificate of grant of a patent
Nil
Nil
15.
Certificate for a utility innovation
Nil
Nil
15A.
Examination fee
130.00 per subject
140.00 per subject
16.
Appeal against examination results
260.00 per subject
290.00 per subject
17.
Extension of time for every month or part of a month)
70.00
80.00
18.
Surcharge for late payment of annual fee
100 % of fee for year concerned
100 % of fee for year concerned
19.
Public search through computer
30.00
30.00
20.
Computer print-out (Bibliography data)
10.00
10.00
21.
Permitted information (upon request)
(a) for less than 10 pages
130.00
140.00
(b) for the subsequent pages
7.00
7.00
22.
Fee for preparing international application
3.00 per page
3.00 per page

Part III

Item
Matter/Proceeding
E-Filing Fee
(RM)
Manual Fee
(RM)
1.
Transmittal fee under Rules 14 and 19 of the Regulations under the Treaty :
(a) for the first 30 sheets
500.00
550.00
(b) for each sheet in excess 30 sheets (per sheet)
60.00
70.00
2.
Fee for the late furnished of transliteration for the purposes of international sear
25% of the international filing fee prescribed under the Treaty
25% of the international filing fee prescribed under the Treaty
3.
Fee for the late furnished of transliteration for the purposes of international publication
25% of the international filing fee prescribed under the Treaty
25% of the international filing fee prescribed under the Treaty
4.
Late payment fee under Rule 16 bis.2 of the Regulations under the Treaty(i) 50% of the amount unpaid fees or
(ii) an amount equal to the transmittal fee ;
whichever is the higher provided that the amount of late payment fees shall not exceed 50% of the international filing fee prescribed under the Treaty
5.
Fee for complying with National requirement in response to the invitation
130.00
140.00

PCT Fees

Patent Cooperation Treaty Fees for December 2017 and January 2018
A. Transmittal Fee (Effective 15 Feb 2011)

Item
Amount (RM)
e-Filing
Manual
Transmittal Fee for the first 30 sheets500.00550.00
For each sheet in excess of 30 sheets
60.00
70.00

B. International Filing Fee

Item
Amount (RM)
December 2017
January 2018
International Filing Fee for the first 30 Sheets
5,826.00
5,708.00
Reductions
a) The international filing fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, filed: in electronic form, the request being not in character coded format: (e.g only request in XML)
4,950.00
4,849.00
b) The international filing fee is reduced to the following amount if the international application is, as provided for in the Administrative Instructions, filed: in electronic form, the request, description, claims and abstract being in character coded: (e.g XML)
4,512.00
4,420.00
For each sheet in excess of 30 sheets.
66.00 per sheet
64.00 per sheet
International Filing Fee with reduction of 90% if the international application is filed by an applicant who is natural person.
583.00
571.00
a) The international filing fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, filed:in electronic form, the request being not in character coded format: (e.g only request in XML)
495.00
485.00
b) The international filing fee is reduced to the following amount if the international application is, as provided for in the Administrative Instructions, filed: in electronic form, the request, description, claims and abstract being in character coded : (e.g XML)
451.00
442.00
For each sheet in excess of 30 sheets.
7.00 per sheet
6.00 per sheet

C. Search Fees

Item
Australia (RM)
Korea (RM)
EPO (RM)
JPO (RM)
Dec’17
 Jan’18
Dec’17
Jan’18
Dec’17
Jan’18
  Dec’17
Jan’18
Search fee under Rule 16/Rule 40.2
7,298.00
7,113.00
5,958.00
5,909.00
9,555.00
9,398.00
6,995.00
6,824.00

D. Priority Documents

Item
Amount (RM)
Fixed Amount (First 5 sheets)
500.00
For every additional pages
3.00 per sheet


Patents are governed by the following:-

1) The Patents Act 1983
2) The Patents Regulations 1986

For more information regarding The Patents Act 1983 and The Patents Regulations 1986, you may refer to this link.

There are 2 ways to managing patent either through Patent Renewal or Patent Agent

For more information regarding patent, always refer to MyIPO official website at http://www.myipo.gov.my

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