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

Non-Patentable Inventions

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:-

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
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	2A	2A
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	2A	2A
Request for substantive examination	950.00	1,100.00	5	5
Request for modified substantive examination	600.00	640.00	5A	5A
Request for deferment of filing of request for examination or provision of information	Nil	Nil	5B	5B
Request for certified copies or extracts	70.00	80.00	5C	5C
Request to amend register	70.00	80.00	5D	5D
Request for reinstatement of lapsed patent	130.00	140.00	5E	5E
Request for license to exploit patented invention	Nil	Nil	5F	5F
Request to convert application for patent into application for certificate of utility innovation or vice versa	260.00	290.00	5G	5G
Request for approval of expedited examination	200.00	250.00	5H	5H
Request for Expedited examination	2,000.00	2,200.00	5I	5I
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	10	10
Application for compulsory license	100.00	110.00	11	11
Request for amendment of decision	100.00	110.00	12	12
Request for cancellation of compulsory license	100.00	110.00	13	13
Application for grant of certificate of utility innovation	130.00	140.00	14	14
Application to extend term of certificate for utility innovation	130.00	140.00	15	15
Request to amend application for grant of patent	70.00	80.00	16	16
Request to amend patent	70.00	80.00	16A	16A
Appointment or change of patent agent	70.00	80.00	17	17
Application for registration of patent agent	2,600.00	2,670.00	18	18
Application for registration as candidate for examination	130.00	140.00	18A	18A
Application to re-sit examination	130.00	140.00	18B	18B
Application for renewal of registration of patent agent	550.00	590.00	19	19
Furnishment of address for service	130.00	140.00	20	20
Request for extension of time	260.00	290.00	21	21
Statement justifying the applicant’s rights to the patent/certificate	70.00	80.00	22	22

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)

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