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INTELLECTUAL
PROPERTY - Patent Law
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| Related Topics : Communications Law . Computer Law . Copyright Law . Patent Law . Trade Secrets . Trademark Law . Industrial Design |
| Citation and commencement | 1. These regulations may be cited as the Patents (Amendment) Regulations 1995 and shall come into force on the 1st August 1995. |
| General amendment P.U.(A)327/86 | 2. The Patents Regulations 1986, which in these Regulations are referred to as the "principal Regulations", are amended in the English language text by substituting for the words "sub-regulation" and "sub-regulations" wherever they appear the words "subregulation" and "subregulations" respectively. |
| Amendment of regulation 2. | 3. The English language text of subregulation 2(2) of the principal Regulations is amended by inserting after the word "means" the word "and". |
| Amendment of regulation 7. | 4. Regulation 7 of the principal Regulations
is amended - (a) by renumbering regulation 7 as subregulation (1) of regulation 7; and (b) by inserting after subregulation (1) the following subregulation: "(2) The title of the invention shall indicate clearly and concisely the subject- matter to which the invention relates.". |
| Amendment of regulation 14. | 5. Regulation 14 of the principal Regulations is amended by deleting subregulation (2). |
| Amendment of regulation 16. | 6. Regulation 16 of the principal Regulations
is amended - (a) in subregulation (3) by substituting for the words "paragraph (a) subregulation (2)" the words "subregulation (2)(a)"; (b) in the English language text in subregulation (5) by substituting for the word "abstracts" the word "abstract"; and (c) in subregulation (6) by deleting the word "and" appearing after the word "drawing". |
| Amendment of regulation 17. | 7. The English language text of subregulation of subregulation 17 of the principal Regulations is amended by substituting for the word "weights" the word "weight". |
| Amendment of regulation 18. | 8. Regulation 18 of the principal Regulations
amended - (a) in the English language text in subregulation (3) by inserting after the words "All sheets" the word "shall"; (b) in subregulation (7) by substituting for the words "sheet," the words "sheet and"; (c) in subregulation (8) by substituting for the words "and in at least 1 1/2 lines spacing" the words "in at least 1 1/2 line spacing"; and (d) in the English language text in subregulation (10) by substituting for the word "colourings" the word "colouring". |
| Amendment of regulation 19. | 9. Regulation 19 of the principal Regulations
is amended - (a) in the national language text by inserting after the figures "19." the figures "(1)"; and (b) in the English language text in paragraph 19(1)(c) by inserting before the word "apparatus" the word "an". |
| New regulation 19A | 10. The principal Regulations are amended
by inserting after regulation 19 the following regulation: "Division of19A. For the purposes of section application. 26B(1) of the Act - (a) where an application is divided pursuant to an objection in an Examiner's report made under section 30(1) or 30(2) of the Act for non-compliance with section 26 of the Act, the request for the division of the application shall be made within three months from the date of mailing of such report; (b) in any other case, the applicant may, of his own volition, request for the division of the application not later than three months from the date of mailing of the Examiner's first report made under section 30(1) or 30(2) of the Act.". |
| Amendment of regulation 21. | 11. Regulation 21 of the principal Regulations
is amended - (a) in the national language text by substituting for the word "penetapan" wherever it appears the word "akuan"; and (b) by deleting subregulation (5). |
| Amendment of regulation 24. | 12. The English language text of subregulation 24(2) of the principal Regulations is amended by substituting for the word "authorised" the word "authorized". |
| Amendment of regulation 26. | 13. The principal Regulations are amended
by substituting for regulation 26 the following regulation: "Preliminary 26. (1) The requirements of examination. regulations 5, 6, 7(1), 8, 9, 11, 18 and 51 shall be formal requirements for the purposes of section 29(1) of the Act. (2) Where section 29(2) of the Act applies, the Registrar shall notify the applicant of his findings and the applicant shall make any observation on such finding or any amendment to the application or both within three months from the date of mailing of the Registrar's notification.". |
| Amendment of regulation 27. | 14. The principal Regulations are amended
by substituting for regulation 27 the following regulations: "Request for 27. (1) A request for a substantive substantive examination shall be examination made to the Registrar on Form 5 together with the payment of the prescribed fee within two years from the filing date of the application. (2) Where an application is divided under regulation 19A more than two years from the filing date of the application, a further request for a substantive examination shall be made at the time of the filing of the request for the division of the application. (3) A request for a substantive examination shall, where appropriate, be accompanied by - (a) information relating to the application number and filing date of any application for a patent or other title of industrial property protection filed with any prescribed industrial property office relating to the same or essentially the same invention as that claimed in the application; (b) information relating to the number assigned to a patent or other title of industrial property protection granted for the same or essentially the same invention as that claimed in the application by any prescribed industrial property office; (c) the results of any searches or examinations carried out by any prescribed industrial property office relating to the same or essentially the same invention as that claimed in the application. (4) The Registrar may waive, as he deems fit, any requirement under subregulation (3). (5) Where an application is deemed to be withdrawn under section 29A(5) of the Act, the Registrar shall inform the applicant in writing of that fact and shall state the reasons therefor. (6) For the purposes of these Regulations, "prescribed industrial property office" means the Patent Office of Australia, the Patent Office of the United Kingdom, the Patent Office of the United States of America or the European Patent Office, as the case may require, in its capacity as a national office or, where appropriate, as an International Searching Authority or as an International Preliminary Examination Authority under the Patent Cooperation Treaty. |
| Request for 27A. modified sub-examination. | (1) A request for a modified substantive
examination shall be to the Registrar on Form 5A together with the payment
of the prescribed fee within two years from the filing date of the application.
(2) Where an application is divided under regulation 19A more than two years from the filing date of the application, a further request for a modified substantive examination shall be made at the time of the filing of the request for the division of the application. (3) A request for a modified substantive examination shall be accompanied by - (a) a certified true copy of the patent or other title of industrial property protection granted to the applicant or his predecessor in title in the prescribed country or under the prescribed treaty or Convention, and where the patent or other title of industrial property protection is not in the English language, a certified translation in the English language thereof; (b) where the description, claims or drawings of the invention granted a patent or other title of industrial property protection by the prescribed country or under the prescribed treaty or Convention are not, apart from matters of form, substantially the same as the description, claims or drawings of the invention claimed in the application, the amendments required for the purpose of bringing them into conformity. (4) Where an application is deemed to be withdrawn under section 29A(5) of the Act, the Registrar shall inform the applicant in writing of that fact and shall state the reasons therefor. (5) For the purposes of these Regulations - "prescribed country" means Australia, the United Kingdom or the United States of America, as the case may require; "prescribed treaty or Convention" means the European Patent Convention. |
| Deferment of filing of request for substantive examination and modified substantive examination. | 27B. (1) A request for a deferment of the
filing of a request for a substantive examination under regulation 27 or
a modified substantive examination under regulation 27A or a deferment of
the provision of information or documents required under regulation 27(3)
shall be made to the Registrar on Form 5B. (2) For the purposes of section 29A(7) of the Act, the maximum period of deferment allowed - (a) for the filing of a request under regulation 27, shall be three years from the filing date of the application; (b) for the filing of a request under regulation 27A, shall be four years from the filing date of the application; (c) for the provision of the information or documents required under regulation 27(3), shall be three years from the filing date of the application. |
| Substantive 27C. examination | (1) The requirements of sections 13, 14,
15 and 16, Part V, and sections 26, 26A, 26B and 27 of the Act and regulations
7(2), 10, 12 to 17, 21 and 50 shall be substantive requirements for the
purposes of section 30(1) of the Act. (2) For the purpose of deter mining whether the application complies with the substantive requirements, in particular sections 14 and 15 of the Act, the Examiner shall search such documents as the Registrar deems necessary. (3) Upon receipt of the Examiner's report under section 30(1)(b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of sections 14 and 15 of the Act have been satisfied and subregulation (2) shall apply in relation to such further search or other investigation. (4) Where section 30(3) of the Act applies, the Registrar shall send a copy of the Examiner's report to the applicant and the applicant shall make any observation on such report or any amendment to the application or both within three months from the date of mailing of the report. (5) Where the applicant makes any observation on the Examiner's report or any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shall report his determination to the Registrar. (6) Without prejudice to the foregoing provisions, the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application. |
| Modified substantive examination | 27D. (1) The requirements of sections 13
and 14, Part V, and sections 26A, 26B and 27 of the Act and regulations
10, 21 and 50 shall be substantive requirements for the purposes of section
30(2) of the Act. (2) In addition, it shall also be a substantive requirement that the description, claims and drawings of the invention claimed in the application, whether as filed or as amended under the Act or these Regulations, apart from matters of form, shall be the same or substantially the same as the description, claims and drawings of the invention granted a patent or other title of industrial property protection by the prescribed country or under the prescribed treaty or Convention. (3) For the purpose of deter mining whether the application complies with the substantive requirements, in particular section 14 of the Act, the Examiner shall search such documents as the Registrar deems necessary. (4) Upon receipt of the Examiner's report under section 30(2)(b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of section 14 of the Act have been satisfied and subregulation (3) shall apply in relation to such further search or other investigation. (5) Where section 30(3) of the Act applies, the Registrar shall send a copy of the Examiner's report to the applicant and the applicant shall make any observation on such report or any amendment to the application or both within three months from the date of mailing of the report. (6) Where the applicant makes any observation on the Examiner's report or any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shall report his determination to the Registrar. (7) Without prejudice to the foregoing provisions, the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application.". |
| Amendment of regulation 28. | 15. The principal Regulations are amended
by substituting for regulation 28 the following regulation: "28. Where an application is refused under section 29(2), 30(3), 30(6), 31(1) or 85 of the Act, the Registrar shall notify the applicant in writing of that decision and shall state the reasons therefor.". |
| Amendment of regulation 29. | 16. Regulation 29 of the principal Regulations
is amended by deleting subregulation (2). |
| Amendment of regulation 31. | 17. The principal Regulations are amended
by substituting for regulation 31 and the marginal note thereto the following
regulation and marginal note: "Register. 31. (1) The Register shall be kept in such form and on such medium as the Registrar may determine. (2) The Register shall contain the particulars specified in paragraphs (a) to (j) of regulation 30.". |
| New regulations 31A and 31B. | 18. The principal Regulations are amended
by inserting after regulation 31 the following regulations: "Request for certified copies of or extracts from Register, etc. 31A. A request for certified copies or extracts for the purposes of sections 33, 33A(2),34 and 83A of the Act shall be made to the Registrar on Form 5C together with the payment of the prescribed fee. Amendment of Register 31B. (1) A request under section 33B of the Act to amend the Register shall be made to the Registrar on Form 5D together with the payment of the prescribed fee. (2) The Registrar may require the submission of such information or documents, including a written explanation by the owner of the patent, in support of the request for the amendment.". |
| Amendment of regulation 32. | 19. Regulation 32 of the principal Regulations is amended by substituting for the words "(a) to (j) in" the words "specified in paragraphs (a) to (j) of". |
| Amendment of regulation 33. | 20. Subregulation 33(2) of the principal Regulations is amended by deleting the words "and reference thereto shall be published in the Gazette". |
| New regulations 33A,33B and 33C. | 21. The principal Regulations are amended
by inserting after regulation 33 the following regulations: "Reinstatement of lapsed patent. 33A. (1) A request under section 35A(1) of the Act for the reinstatement of a lapsed patent shall be made to the Registrar on Form 5E together with the payment of the prescribed fee. (2) The Registrar may require the submission of such information or documents, including a written explanation by the person making the request, in support of the request for the reinstatement. (3) Where a case for reinstatement has not been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact and shall state the reasons therefor and shall give the person making the request an opportunity to be heard. (4) Upon receipt of a notification under subregulation (3), the person making the request may, within one month from the date of the mailing of the notification, request for a hearing. (5) Where the Registrar receives a request for a hearing under subregulation (4), he shall give the person making the request an opportunity to present his case and shall thereafter give his decision. (6) Where no request for a hearing is received within the prescribed period or where the person making the request does not appear on the date fixed for the hearing of the request the Registrar shall refuse the request for reinstatement and shall inform the person making the request in writing of that decision. (7) Where a case for reinstatement has been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact. (8) Upon receipt of a notification under subregulation (7), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar all annual fees due and the prescribed surcharge for reinstatement. (9) The Registrar shall, upon receipt of the annual fees due and the prescribed surcharge for reinstatement, reinstate the patent; and the date of reinstatement shall be recorded in the Register. |
| Protection of persons who exploit lapsed patent. | 33B. (1) Any person who has exploited or
taken definite steps, by contract or otherwise, to exploit a patent after
it is notified in the Gazette that the patent has lapsed and before it is
notified in the Gazette that the patent has been reinstated may request
for a licence to exploit the patented invention. (2) A request under subregulation (1) shall be made to the Registrar on Form 5F. (3) A copy of the request shall be served on the owner of the patent. (4) The Registrar may require the person making the request or the owner of the patent or both to appear before him for the purpose of giving a statement or submitting any document or other information. (5) The Registrar may, where he is satisfied that a licence to exploit the patented invention should be granted, grant a licence to the person making the request subject to such terms and conditions as the Registrar deems fit and the owner of the patent shall be deemed to have consented to such grant. (6) The Registrar shall inform the person making the request and the owner of the patent in writing of his decision. |
| Conversion of applications. | 33C. (1) A request under section 17B(3) of
the Act to convert an application for a patent into an application for a
certificate for a utility innovation or to convert an application for a
certificate for a utility innovation into an application for a patent shall
be made to the Registrar on Form 5G together with the payment of the prescribed
fee. (2) Where a case for conversion has been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact. (3) Upon receipt of a notification under subregulation (2), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar - (a) in the case of a request to convert an application for a patent into an application for a certificate for a utility innovation, the prescribed fee payable under regulation 45; (b) in the case of a request to convert an application for a certificate for a utility innovation into an application for a patent, the prescribed fee payable under regulation 7. (4) For the avoidance of doubt it is declared that where an application has been converted in accordance with this regulation, the prescribed fee paid on the original application shall not be refundable.". |
| Amendment of regulation 34. | 22. The English language text of subregulation 34(1) of the principal Regulations is amended by inserting before the words "prescribed fee" the words "payment of the". |
| Amendment of the regulation 40. | 23. The English language text of regulation
40 principal Regulations is amended - (a) in subregulation (2) by substituting for the word "decison" the word "decision"; and (b) in subregulation (3) by substituting for the word "paragraph" the word "paragraphs". |
| New Part VIA. | 24. The principal Regulations are amended
by inserting after Part VI the following Part: "PART VIA PATENT AGENTS Interpretation 45A. In this Part, unless the context otherwise requires - "Board of Examiners" means the Board of Examiners of Patent Agents established under regulation 45G; "Secretary-General" means the Secretary-general of the Ministry charged with the responsibility for the development of industrial property. Representation in proceedings 45B. (1) Unless the Act or any regulation made thereunder otherwise prescribes, or the Registrar otherwise directs, any person may be represented in proceedings before the Patent Registration Office by a patent agent who may attend, file documents and sign documents on that person's behalf. (2) The appointment or change of a patent agent shall be made on Form 17, signed by the person or persons to be represented by the agent and submitted to the Registrar. Registration of patent agents 45C. (1) An application to be registered as a patent agent in the Register of Patents Agents shall be made to the Registrar on Form 18 together with the payment of the prescribed fee. (2) In order to be registered in the Register of Patents Agents, the applicant shall satisfy the Registrar - (a) that he is domiciled in or is a permanent resident of Malaysia; (b) that he is an advocate and solicitor of the High Court in Malaya or an advocate of the High Court in Sabah and Sarawak, or has a relevant degree or its equivalent in an appropriate branch of engineering or science from an institution of higher learning approved by the Board of Examiners, or has qualifications entitling him to graduate membership of a professional engineering or scientific institution or the like recognized by the Board of Examiners; and (c) that he has passed the examination specified in regulation 45D. (3) The Registrar may, at any time, require proof of the matters specified in paragraphs (a), (b) and (c) of subregulation (2). (4) The Registrar may refuse to register any person who has been convicted of an offense involving fraud or dishonesty. (5) The Registrar, upon being satisfied that the applicant qualifies to be registered in the Register of Patents Agents, shall register the applicant for a term expiring on the 31st December of that year. Examination for patent agents. 45D. (1) For the purposes of regulation 45C(2)(c), the Board of Examiners shall conduct an examination which shall consist of the following subjects: (a) technology; (b) Malaysian patent law and practice; (c) Malaysian trade mark and designs law and practice; and (d) foreign industrial property law and practice. (2) An application for registration as a candidate for the examination specified in subregulation (1) shall be made to the Board of Examiners on Form 18A together with the payment of the prescribed fee. (3) An application under subregulation (2) shall be sent to the Secretary to the Board of Examiners at the Patent Registration Office on or before the date determined by the Board of Examiners for the submission of such applications. (4) A candidate shall be required to sit for each of the subjects specified in subregulation (1) at a sitting of the examination. (5) A candidate who has sat for and failed to pass any of the subjects specified in subregulation (1) may, if he is dissatisfied with his results, appeal to the Secretary-general for re-scrutiny of the results within fourteen days from the date of the notification of such results together with the payment of the prescribed fee. (6) Upon receipt of an appeal under subregulation (5), the Secretary-general shall consider the appeal and make a decision thereon. (7) The decision of the Secretary-general shall be final and conclusive. (8) A candidate who has sat for and failed to pass any or all of the subjects specified in subregulation (1) at an examination may apply to re-sit such subject or subjects, as the case may be, at the next sitting of the examination and such application shall be made to the Board of Examiners on Form 18B together with the payment of the prescribed fee. (9) Any candidate who has failed to pass all of the subjects specified in subregulation (1) after three attempts shall be deemed to have failed the overall examination and subregulations (5), (6), (7) and (8) shall not apply thereto. (10) Any candidate who is deemed to have failed the overall examination under subregulation (9) may re-apply to be registered as a candidate under subregulation (2). Renewal of registration of patent agents. 45E. (1) An application for the renewal of registration as a patent agent shall be made to the Registrar on Form 19 together with the payment of the prescribed fee by the 31st January of each year: Provided that in the case of a person who immediately before the date of coming into force of this regulation was registered as a patent agent the application for the renewal of registration as a patent agent shall be made within thirty days of the expiry of the registration. (2) The Registrar shall, upon being satisfied that the conditions specified in regulation 45C continue to be satisfied, renew the registration of the patent agent for a term expiring on the 31st December of that year: Provided that a person who immediately before the date of coming into force of this regulation was registered as a patent agent shall be deemed to have satisfied the conditions specified in regulation 45C(2)(c). (3) Notwithstanding subregulation (2), the Registrar may refuse to renew the registration of any person who has been convicted of an offense involving fraud or dishonesty. Cancellation of registration of patent agents. 45F. (1) The Registrar may cancel the registration of any person who has been convicted of an offense involving fraud or dishonesty. (2) Where the registration of any person is cancelled under this regulation no fees paid for the purpose of registration or renewal of registration shall be refundable. Board of Examiners of Patent Agents. 45G. (1) There is established a Board of Examiners of Patent Agents which shall consist of - (a) the Registrar of Patents, who shall be Chairman; and (b) four other persons proficient in the field of industrial property appointed by the Secretary-general (2) An officer of the Patent Registration Office shall be Secretary to the Board of Examiners. (3) A member of the Board of Examiners appointed under subregulation (1)(b) shall, unless his appointment is sooner revoked or he sooner resigns, hold office for such period not exceeding three years as the Secretary-general may determine and shall be eligible for reappointment. (4) At a meeting of the Board of Examiners three members shall form a quorum. (5) In the absence of the Chairman, a member nominated by the Chairman shall preside at the meeting and such member may exercise all the powers of the Chairman in respect of that meeting. (6) If on any question to be determined there is an equality of votes, the Chairman shall have the casting vote in addition to his deliberative vote. (7) The Board of Examiners shall be responsible for - (a) the conduct of the examination specified in regulation 45D; (b) preparing and publishing the examination syllabus and deter mining the study material to be recommended; (c) preparing examination papers; (d) registering and admitting candidates; (e) determining the time, date and place for the examination; (f) awarding certificates; and (g) advising the Registrar as to the persons who have satisfied the requirements of paragraphs (b) and (c) of sub regulation 45C(2). (8) The Board of Examiners shall enjoy the prerogative of awarding and withdrawing certificates, withholding and cancelling the results of any candidate, and barring any person from taking the examination. Setting, assessing and marking of examinations questions and answers. 45H. (1) The Board of Examiners may appoint suitably qualified persons to be examiners for the purpose of setting, assessing and marking questions or answers for the examination specified in regulation 45D. (2) The Board of Examiners may give such instructions in relation to the setting, assessing and marking of questions or answers as it considers necessary. (3) The examiners appointed under subregulation (1) shall be paid such allowances as the Minister may direct.". |
| Amendment of regulation 46. | 25. The principal Regulations are amended
by substituting for regulation 46 and the marginal note thereto the following
regulation and marginal note: "Amendment of application. 46. A request under section 79(1) of the Act to correct a clerical error or obvious mistake in an application for the grant of a patent shall be made to the Registrar on Form 16 together with the payment of the prescribed fee.". |
| New regulation 46A. | 26. The principal Regulations are amended
by inserting after regulation 46 the following regulation: "Amendment of patent. 46A. A request under section 79A(1) of the Act to correct a clerical error or obvious mistake in a patent or any other document associated with the patent, or to amend a patent or any other document associated with the patent for any other reason shall be made to the Registrar on Form 16A together with the payment of the prescribed fee.". |
| Deletion of regulations 48 and 49. | 27. The principal Regulations are amended by deleting regulations 48 and 49. |
| Amendment of Schedule I. | 28. The principal Regulations are amended
by substituting for Schedule I the following Schedule: |
| Amendment of Schedule II | 29. Schedule II to the principal Regulations
is amended - (a) by substituting for Forms 1 and 2 the forms set out in the Schedule; (b) by deleting Forms 3 and 4; (c) by substituting for Form 5 the form set out in the Schedule; (d) by inserting after Form 5, Forms 5A, 5B, 5C, 5D, 5E, 5F and 5G set out in the Schedule; (e) by substituting for Forms 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16 the forms set out in the Schedule; (f) by inserting after Form 16, Form 16A set out in the Schedule; (g) by substituting for Forms 17 and 18 the forms set out in the Schedule; (h) by inserting after Form 18, Forms 18A and 18B set out in the Schedule; and (i) by substituting for Forms 19, 20 and 21 the forms set out in the Schedule. |
| Saving and transition 30. | (1) Any registration as a patent
agent granted under the principal Regulations and in force immediately before
the commencement of these Regulations shall, in so far as its grant is not
inconsistent with these Regulations, be deemed to have been granted under
these Regulations and shall continue in force until it expires. (2) Any application for registration as a patent agent or application for renewal of registration as a patent agent made or pending before the date of coming into force of these Regulations shall be deemed to have been made under the principal Regulations and the principal Regulations shall continue to apply to such applications as if the principal Regulations had not been amended: Provided that the registration of such person as a patent agent shall be for a term expiring on the 31st December 1995 and for the purposes of this proviso the prescribed fee payable shall be proportionate to the term to be renewed. |
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