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.
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:-
- Prepare all documents in digital format, e.g. Priority Data, Form 17, Form 5 or Form 5A etc.
- Description and Claims are compulsory documents. They must be uploaded during the filing.
- Separate the specifications into separate files: Claims, Abstract, Description, Drawings.
- Please ensure that your attachments are in these formats: DOC, PDF and TIF.
- If you are an agent, please prepare your Form 17 to be uploaded to IP Online Portal.
- Get your own Digital ID from MyIPO – https://digitalid.msctrustgate.com/MyIPO
- Install your digital ID into your PC or save it to your secondary storage device e.g. thumb drive.
- Digital ID must be attached to your application.
- Proceed with the payment. Check the fees in Pricing Scheme table.
- Print a copy of Patent Form 1 form before you make the payment.
- 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
| |
---|---|---|---|---|
![]() | ![]() | |||
a. Request for grant of patent |
260.00
|
290.00
| ||
b. Claims | ||||
|
Nil
|
Nil
| ||
|
20.00
|
20.00
| ||
Declaration of withdrawal of application |
Nil
|
Nil
| ||
Entering national phase |
260.00
|
290.00
| ||
|
20.00
|
20.00
| ||
| ||||
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
| ||
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
| ||
Application for entry in Register that any person may obtain a license |
70.00
|
80.00
| ||
Application for cancellation of entry in Register that any person may obtain a license |
70.00
|
80.00
| ||
Request for recording of particulars of license contract in Register |
130.00
|
140.00
| ||
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
|
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)
B. International Filing Fee
C. Search Fees
D. Priority Documents
A. Transmittal Fee (Effective 15 Feb 2011)
Item
| Amount (RM) | |
e-Filing
|
Manual
| |
Transmittal Fee for the first 30 sheets | 500.00 | 550.00 |
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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