LAWS OF MALAYSIA
REPRINT
Act 291
PATENTS ACT 1983
Incorporating all amendments up to 1 May 2006
PUBLISHED BY
THE COMMISSIONER OF LAW REVISION, MALAYSIA
UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968
IN COLLABORATION WITH
PERCETAKAN NASIONAL MALAYSIA BHD
2006
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Laws of Malaysia
ACT 291
PATENTS ACT 1983
Date of Royal Assent
... ... ... ... ... 28 November 1983
Date of publication in the Gazette
... 15 December 1983
PREVIOUS REPRINT
First Reprint
... ... ... ... ...
2001
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LAWS OF MALAYSIA
Act 291
PATENTS ACT 1983
ARRANGEMENT OF SECTIONS
PART I
PRELIMINARY
Section
1.
Short title application
2.
Extent of application
3.
Interpretation
PART II
PATENTS BOARD
4-7A.
(Deleted)
PART III
ADMINISTRATION
8.
Registrar, Deputy Registrars and Assistant Registrars
9.
Patent Registration Office
9A.
Examiners
10.
Patent information service
PART IV
PATENTABILITY
11.
Patentable inventions
12.
Meaning of "invention"
13.
Non-patentable inventions
14.
Novelty
15.
Inventive step
16.
Industrial application
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PART IVA
UTILITY INNOVATIONS
Section
17.
Definition
17A. Application
17B. Conversion from an application for a patent into an application for a
certificate for a utility innovation, and vice versa
17C. Patent and certificate for a utility innovation cannot both be granted
for the same invention
PART V
RIGHTS TO A PATENT
18.
Right to a patent
19.
Judicial assignment of patent application or patent
20.
Inventions made by an employee or pursuant to a commission
21.
Inventions by Government employee
22.
Joint owners
PART VI
APPLICATION, PROCEDURE FOR GRANT
AND DURATION
23.
Requirements of application
23A. Applications by residents to be filed in Malaysia first
24.
Application fee
25.
Withdrawal of application
26.
Unity of invention
26A. Amendment of application
26B. Division of application
27.
Right of priority
27A. Priority date
28.
Filing date
29.
Preliminary examination
29A. Request for substantive examination or modified substantive examination
30.
Substantive examination and modified substantive examination
30A. Prohibition of publication of information which might be prejudicial
to the nation
31.
Grant of patent
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Section
32.
Register of Patents
32A. Notice of a trust not to be registered
33.
Examination of Register and certified copies
33A. Certified copies of or extracts from Register, etc., admissible as evidence
in court
33B. Amendments to the Register
33C. Court may order rectification of the Register
34.
Public inspection
35.
Duration of patent
35A. Reinstatement of a lapsed patent
PART VII
RIGHTS OF OWNER OF PATENT
36.
Rights of owner of patent
37.
Limitation of rights
38.
Rights derived from prior manufacture or use
PART VIII
ASSIGNMENT AND TRANSMISSION OF PATENT
APPLICATIONS AND PATENTS
39.
Assignment and transmission of patent applications and patents
40.
Joint ownership of patent applications or patents
PART IX
LICENCE CONTRACTS
41.
Meaning of licence contract
42.
Entry in the Register
43.
Rights of the licensee
44.
Rights of the licensor
45.
Invalid clauses in licence contracts
46.
Effect of patent application not being granted or patent being declared
invalid
47.
Expiry, termination or invalidation of licence contract
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PART X
COMPULSORY LICENCES
Section
48.
Definition
49.
Application for compulsory licences
49A. Application for compulsory licence based on interdependence of patents
50.
Request for grant of compulsory licence
51.
Decision by the Corporation
52.
Scope of compulsory licence
53.
Limitation of compulsory licence
54.
Amendment, cancellation and surrender of compulsory licence
PART XI
SURRENDER AND INVALIDATION OF PATENT
55.
Surrender of patent
56.
Invalidation of patent
57.
Date and effect of invalidation
PART XII
INFRINGEMENT
58.
Acts deemed to be infringement
58A. Acts deemed to be non-infringement
59.
Infringement proceedings
60.
Injunction and award of damages
61.
Infringement proceedings by licensee and beneficiary of compulsory
licence
62.
Declaration of non-infringement
PART XIII
OFFENCES
62A. Applications in contravention of section 23A
62B. Publication of information in contravention of Registrar's directions
63.
Falsification of Register, etc.
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Section
64.
Unauthorized claim or patent
65.
Unauthorized claim that patent has been applied for
66.
Misuse of title "Patent Registration Office"
66A. Unregistered persons practising, etc., as a patent agent
67.
Offences by corporations
PART XIV
POWERS RELATING TO ENFORCEMENT
68.
Authorization of officer to exercise powers under this Part
69.
Powers of arrest
70.
Search with warrant
71.
List of things seized
72.
Return of things seized
73.
Power of investigation
74.
Examination of witnesses
75.
Admission of statements in evidence
76.
Obstruction to search, etc.
77.
Institution of prosecution
78.
Jurisdiction of subordinate Court
PART XIVA
INTERNATIONAL APPLICATIONS UNDER THE PATENT
COOPERATION TREATY
78A. Interpretation
78B. Application
78C. Patent Registration Office as receiving office
78D. Patent Registration Office as designated office
78E. Patent Registration Office as elected office
78F. Persons eligible for international application
78G. Filing of an international application
78H. Filing date and the effect of filing an international application
78I. Defects in international application
78J. International application considered withdrawn
78K. Processing of international applications
78L. International Searching Authority
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Section
78M. International Preliminary Examination Authority
78N. International publication of international application and its effect
78O. Entering the national phase
78P. Search similar to international search for national applications
78Q. Conversion of an international application into a national application
PART XV
MISCELLANEOUS
79.
Powers of Registrar to amend patent application
79A. Power of Registrar to amend patent
80.
Other powers of Registrar
81.
Exercise of discretionary power
82.
Extension of time
83.
Extension of time by reason of error in Patent Registration Office
83A. Certificate by the Registrar
84.
Rights of Government
85.
Refusal to grant patent by the Registrar
86.
Patent agents
87.
Regulations
88.
Appeal
89.
Repeal and saving provisions
90.
Transitional
FIRST SCHEDULE (Deleted)
SECOND SHEDULE
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LAWS OF MALAYSIA
Act 291
PATENTS ACT 1983
An Act to make better provisions in the law relating to patents and
for other matters connected therewith.
[1 October 1986--P.U. (B) 500/1986]
BE IT ENACTED by the Seri Paduka Baginda Yang di-Pertuan
Agong with the advice and consent of the Dewan Negara and
Dewan Rakyat in Parliament assembled, and by the authority of
the same, as follows:
PART I
PRELIMINARY
Short title and application
1. (1) This Act may be cited as the Patents Act 1983.
(2) This Act shall apply throughout Malaysia.
Extent of application
2.  This Act shall apply to patent applications made after the
commencement of this Act and to the registration of patents made
on such applications.
Interpretation
3.
In this Act, unless the context otherwise requires--
"appointed date" has the same meaning as is assigned to that
expression in the Intellectual Property Corporation of Malaysia
Act 2002;
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"Assistant Registrar" means the person appointed or deemed to
have been appointed to be an Assistant Registrar under subsection
8(2) or (3);
" a u t h o r i z e d officer" means an officer authorized under
section 68;
"Corporation" means the Intellectual Property Corporation of
Malaysia established under the Intellectual Property Corporation
of Malaysia Act 2002;
"Court" means the High Court, or Judge thereof;
"Deputy Registrar" means the person appointed or deemed to
h a v e been appointed to be a Deputy Registrar under
subsection 8(2) or (3);
"employee" means a person who works or has worked under a
contract of employment, or who is in employment under, or for
the purposes of, any individual or organization;
"employer", in relation to an employee, means the person by
whom the employee is or was employed;
"Examiner" means any person, government department, unit or
organization, or any foreign or international patent office or
organization, appointed by the Corporation under section 9A;
"filing date" means the date recorded by the Registrar as the
filing date under section 28;
"Minister" means the Minister for the time being charged with
the responsibility for intellectual property;
"owner of the patent" or "owner of a patent" means the person
for the time being recorded in the Register as the grantee of a
patent;
"patented invention" means an invention for which a patent is
granted and "patented process" shall be construed accordingly;
"patented product" means a product which is a patented invention
or, in relation to a patented process, a product obtained directly
by means of the process or to which the process has been applied;
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"prescribed" means prescribed by regulations made under this
Act;
"priority date" means the date prescribed in section 27A;
"process" includes an art or a method;
"product" means any thing which appears in tangible form, and
includes any apparatus, article, device, equipment, handicraft,
implement, machine, substance and composition;
"Register" means the Register of Patents and the Register for
Certificates for Utility Innovations kept under this Act;
"Registrar" means the Registrar of Patents as designated in
subsection 8(1);
"right", in relation to any patent application or patent, includes
an interest in the patent application or patent and, without prejudice
to the foregoing, any reference to a right in a patent includes a
reference to a share in the patent.
PART II
PATENTS BOARD
(4)-(7A)
(Deleted by Act A1137).
PART III
ADMINISTRATION
Registrar, Deputy Registrars and Assistant Registrars
8. (1) The Director General of the Corporation shall be the Registrar
of Patents.
(2) The Corporation may appoint, on such terms and conditions
as it may determine, from amongst persons in the employment of
the Corporation, such number of Deputy Registrars of Patents,
Assistant Registrars of Patents and other officers as may be necessary
for the proper administration of this Act, and may revoke the
appointment of any person so appointed or deemed to have been
so appointed under subsection (3).
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(3) The persons holding office as Deputy Registrars, Assistant
Registrars and other officers under this Act before the appointed
date who were given an option by the Government of Malaysia to
serve as employees of the Corporation and have so opted shall on
the appointed date be deemed to have been appointed as Deputy
Registrars, Assistant Registrars and such other officers under
subsection (2).
(4) Subject to the general direction and control of the Registrar
and to such conditions or restrictions as may be imposed by the
Registrar, a Deputy Registrar or an Assistant Registrar may exercise
any function of the Registrar under this Act, and anything by this
Act appointed or authorized or required to be done or signed by
the Registrar may be done or signed by any Deputy Registrar or
Assistant Registrar and the act or signature of a Deputy Registrar
or an Assistant Registrar shall be as valid and effectual as if done
or signed by the Registrar.
(5) The Registrar shall have a seal of such device as may be
approved by the Corporation and the impressions of such seal shall
be judicially noticed and admitted in evidence.
Patent Registration Office
9. (1) A Patent Registration Office and such number of branch
offices of the Patent Registration Office as may be necessary for
the purposes of this Act shall be established.
(2)-(4) (Deleted by Act A1137).
(5) Any application or other document required or permitted to
be filed at the Patent Registration Office may be filed at any
branch office of the Patent Registration Office and such application
or other document shall be deemed to have been filed at the Patent
Registration Office.
Examiners
9  A.  T h e Corporation may appoint any person, government
department, unit or organization, or any foreign or international
patent office or organization to be an Examiner for the purposes
of this Act.
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Patent information service
10.  There shall be a patent information service which provides
information to the public upon payment of the prescribed fee.
PART IV
PATENTABILITY
Patentable inventions
11.  An invention is patentable if it is new, involves an inventive
step and is industrially applicable.
Meaning of "invention"
12. (1) An invention means an idea of an inventor which permits
in practice the solution to a specific problem in the field of technology.
(2) An invention may be or may relate to a product or process.
Non-patentable inventions
13. (1) Notwithstanding the fact that they may be inventions within
the meaning of section 12, the following shall not be patentable:
(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes
for the production of plants or animals, other than manmade
living micro-organisms, micro-biological processes and
the products of such micro-organism processes;
(c) schemes, rules or methods for doing business, performing
purely mental acts or playing games;
(d) methods for the treatment of human or animal body by
surgery or therapy, and diagnostic methods practised on
the human or animal body:
Provided that this paragraph shall not apply to products used in
any such methods.
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(2) For the purpose of subsection (1), in the event of uncertainty
as to whether the items specified therein shall be patentable or not,
the Registrar may refer the matter to the Examiner for an opinion
and the Registrar shall thereafter give a decision as to whether to
include or exclude such item as being patentable, as the case may
be.
Novelty
14. (1) An invention is new if it is not anticipated by prior art.
(2) Prior art shall consist of--
(a) everything disclosed to the public, anywhere in the world,
by written publication, by oral disclosure, by use or in
any other way, prior to the priority date of the patent
application claiming the invention;
(b) the contents of a domestic patent application having an
earlier priority date than the patent application referred
to in paragraph (a) to the extent that such contents are
included in the patent granted on the basis of the said
domestic patent application.
( 3 ) A disclosure made under paragraph (2) (a) shall be
disregarded--
(a) if such disclosure occurred within one year preceding the
date of the patent application and if such disclosure was
by reason or in consequence of acts committed by the
applicant or his predecessor in title;
(b) if such disclosure occurred within one year preceding the
date of the patent application and if such disclosure was
by reason or in consequence of any abuse of the rights
of the applicant or his predecessor in title;
(c) if such disclosure is by way of a pending application to
register the patent in the United Kingdom Patent Office
as at the date of coming into force of this Act.
(4) Subsection (2) shall not exclude the patentability of any
substance or composition, comprised in the prior art, for use in a
method referred to in paragraph 13(1)(d), if its use in any such
method is not comprised in the prior art.
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Inventive step
15.  An invention shall be considered as involving an inventive
step if, having regard to any matter which forms part of the prior
art under paragraph 14(2)(a), such inventive step would not have
been obvious to a person having ordinary skill in the art.
Industrial application
16.  An invention shall be considered industrially applicable if it
can be made or used in any kind of industry.
PART IVA
UTILITY INNOVATIONS
Definition
17.  For the purposes of this Part and any regulations made under
this Act in relation to this Part, "utility innovation" means any
innovation which creates a new product or process, or any new
improvement of a known product or process, which is capable of
industrial application, and includes an invention.
Application
17A. (1) Except as otherwise provided in this Part, the provisions
of this Act, subject to the modifications in the Second Schedule,
shall apply to utility innovations in the same manner as they apply
to inventions.
(2) Sections 11, 15, 26, Part X, and sections 89 and 90 shall
not apply to utility innovations.
Conversion from an application for a patent into an application
for a certificate for a utility innovation, and vice versa
17B. (1) An application for a patent may be converted into an
application for a certificate for a utility innovation.
(2) An application for a certificate for a utility innovation may
be converted into an application for a patent.
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(3) A request 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 filed by the applicant and shall
comply with regulations made under this Act.
(4) A request for conversion under this section shall be filed not
later than six months from the date the Registrar makes known to
the applicant the report made by the Examiner in accordance with
subsection 30(1) or (2).
(5) A request for conversion under this section shall not be
entertained unless the prescribed fee has been paid to the Registrar.
(6) An application which has been converted shall be deemed
to have been filed at the time the initial application was filed.
Patent and certificate for a utility innovation cannot both be
granted for the same invention
17C. (1) If an applicant for a patent has also--
(a) made an application for a certificate for a utility innovation;
or
(b) been issued with a certificate for a utility innovation,
and the subject matter of the application for a patent is the same
as the subject matter of the application mentioned in paragraph (a)
or of the certificate mentioned in paragraph (b), a patent shall not
be granted until the application mentioned in paragraph (a) has
been withdrawn or the certificate mentioned in paragraph (b) has
been surrendered.
(2) If an applicant for a certificate for a utility innovation has
also--
(a) made an application for a patent; or
(b) been granted a patent,
and the subject matter of the application for a certificate for a
utility innovation is the same as the subject matter of the application
mentioned in paragraph (a) or of the patent mentioned in paragraph
(b), a certificate for a utility innovation shall not be granted until
the application mentioned in paragraph (a) has been withdrawn or
the patent mentioned in paragraph (b) has been surrendered.
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PART V
RIGHTS TO A PATENT
Right to a patent
18. (1) Any person may make an application for a patent either
alone or jointly with another.
(2) Subject to section 19, the rights to a patent shall belong to
the inventor.
(3) Where two or more persons have jointly made an invention,
the rights to a patent shall belong to them jointly.
(4) If two or more persons have separately and independently
made the same invention, and each of them has made an application
for a patent, the right to a patent for that invention shall belong
to the person whose application has the earliest priority date.
Judicial assignment of patent application or patent
19.  Where the essential elements of the invention claimed in a
patent application or patent have been unlawfully derived from an
invention for which the right to the patent belongs to another
person, such other person may apply to the Court for an order that
the said patent application or patent be assigned to him:
Provided that the Court shall not entertain an application for the
assignment of a patent after five years from the date of the grant
of the patent.
Inventions made by an employee or pursuant to a commission
20. (1) In the absence of any provisions to the contrary in any
contract of employment or for the execution of work, the rights
to a patent for an invention made in the performance of such
contract of employment or in the execution of such work shall be
deemed to accrue to the employer, or the person who commissioned
the work, as the case may be:
Provided that where the invention acquires an economic value
much greater than the parties could reasonably have foreseen at
the time of concluding the contract of employment or for the
execution of work, as the case may be, the inventor shall be
entitled to equitable remuneration which may be fixed by the
Court in the absence of agreement between the parties.
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(2) Where an employee whose contract of employment does not
require him to engage in any inventive activity makes, in the field
of activities of his employer, an invention using data or means
placed at his disposal by his employer, the right to the patent for
such invention shall be deemed to accrue to the employer in the
absence or any provision to the contrary in the contract of
employment:
P r o v i d e d that the employee shall be entitled to equitable
remuneration which, in the absence of agreement between the
parties, may be fixed by the Court taking into account his emoluments,
the economic value of the invention and any benefit derived from
it by the employer.
(3) The rights conferred on the inventor under subsections (1)
and (2) shall not be restricted by contract.
Inventions by Government employee
21.  Notwithstanding subsection 20(3), the provisions of that section
shall apply to a Government employee or an employee of a
Government organization or enterprise unless otherwise provided
by rules or regulations of such Government organization or enterprise.
Joint owners
22.  Where the right to obtain a patent is owned jointly, the patent
may only be applied for jointly by all the joint owners.
PART VI
APPLICATION, PROCEDURE FOR GRANT AND DURATION
Requirements of application
23.  Every application for the grant of a patent shall comply with
the regulations as may be prescribed by the Minister under this
Act.
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Applications by residents to be filed in Malaysia first
23A. (1) No person resident in Malaysia shall, without written
authority granted by the Registrar, file or cause to be filed outside
Malaysia an application for a patent for an invention unless--
(a) an application for a patent for the same invention has
been filed in the Patent Registration Office not less than
two months before the application outside Malaysia; and
(b) either no directions have been issued by the Registrar
under section 30A in relation to the application or all
such directions have been revoked.
Application fee
24.  An application for the grant of a patent shall not be entertained
unless the prescribed fee has been paid to the Registrar.
Withdrawal of application
25.  An applicant may withdraw his application at any time during
its pendency by submitting a declaration in the prescribed form to
the Registrar, and such withdrawal may not be revoked.
Unity of invention
26.  An application shall relate to one invention only or to a
group of inventions so linked as to form a single general inventive
concept.
Amendment of application
26A.
The applicant may amend the application:
Provided that the amendment shall not go beyond the disclosure
in the initial application.
Division of application
26B. (1) The applicant may, within the prescribed time, divide
t h e application into two or more applications ("divisional
applications"):
Provided that each divisional application shall not go beyond
the disclosure in the initial application.
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(2) Each divisional application shall be entitled to the priority
date of the initial application.
Right of priority
27. (1) An application may contain a declaration claiming the
priority, pursuant to any international treaty or Convention, of one
or more earlier national, regional or international applications filed,
during the period of twelve months immediately preceding the
filing date of the application containing the declaration, by the
applicant or his predecessor in title in or for any party to the said
international treaty or Convention.
(1A) The period of twelve months mentioned in subsection (1)
may not be extended under section 82.
(2) Where the application contains a declaration under subsection
(1), the Registrar may require that the applicant furnish, within the
prescribed time, a copy of the earlier application, certified as
correct by the office with which it was filed or where the earlier
application is an international application filed under any international
treaty, by the International Bureau of the World Intellectual Property
Organization.
(3) The effect of the declaration referred to in subsection (1)
shall be as provided in the treaty or Convention referred to therein.
(4) Where any of the requirements of this section or any regulations
pertaining thereto have not been complied with, the declaration
referred to in subsection (1) shall be deemed to be invalid.
Priority date
27A. (1) Subject to subsection (2), the priority date of an application
for a patent is the filing date of the application.
(2) Where an application contains the declaration mentioned in
section 27, the priority date of the application shall be the filing
date of the earliest application whose priority is claimed in that
declaration.
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Filing date
28. (1) The Registrar shall record as the filing date the date of
receipt of the application:
Provided that the application contains--
(a) the name and address of the applicant;
(b) the name and address of the inventor;
(c) a description;
(d) a claim or claims; and
(e) that at the time of receipt of the application the prescribed
fee has been paid.
(2) Where the Registrar finds that, at the time of receipt of the
application, subsection (1) are not fulfilled, he shall request the
applicant to file the required correction.
(3) Where the applicant complies with the request referred to
in subsection (2), the Registrar shall record as the filing date the
date of receipt of the required correction and where the applicant
does not so comply, the Registrar shall treat the application as
invalid.
(4) Where the application refers to drawings which in fact are
not included in the application, the Registrar shall request the
applicant to furnish the missing drawings.
(5) Where the applicant complies with the request referred to
in subsection (4), the Registrar shall record as the filing date the
date of receipt of the missing drawings and where the applicant
does not so comply, the Registrar shall record as the filing date
the date of receipt of the application and make no reference to the
said drawings.
Preliminary examination
29. (1) Where an application for a patent has a filing date and is
not withdrawn, the Registrar shall examine the application and
determine whether it complies with the requirements of this Act
and the regulations made under this Act which are designated by
such regulations as formal requirements for the purposes of this
Act.
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(2) If the Registrar, as a result of the examination under
subsection (1), finds that not all the formal requirements are complied
with, he shall give an opportunity to the applicant to make any
observation on such finding and to amend the application within
the prescribed period so as to comply with those requirements, and
if the applicant fails to do so the Registrar may refuse the application.
Request for substantive examination or modified substantive
examination
29A. (1) If an application for a patent has been examined under
section 29 and is not withdrawn or refused, the applicant shall file,
within the prescribed period, a request for a substantive examination
of the application.
(2) If a patent or other title of industrial property protection has
been granted to the applicant or his predecessor in title in a prescribed
country outside Malaysia or under a prescribed treaty or Convention
for an invention which is the same or essentially the same as the
invention claimed in the application, the applicant may, instead of
requesting for a substantive examination, request for a modified
substantive examination.
(3) A request for a substantive examination or a modified
substantive examination shall be made in the prescribed form and
shall not be deemed to have been filed until the prescribed fee has
been paid to the Registrar and any other prescribed requirement
has been complied with.
(4) The Registrar may require the applicant to provide, at the
time of filing a request for a substantive examination--
(a)
any prescribed information or prescribed supporting
document concerning the filing of any application for a
patent or other title of industrial property protection filed
outside Malaysia by such applicant or his predecessor in
title with a national, regional or international industrial
property office;
(b)
any prescribed information concerning the results of any
search or examination carried out by an International
Searching Authority under the Patent Cooperation Treaty,
relating to the same or essentially the same invention as
that claimed in the application for which the request for
a substantive examination is being filed.
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(5) If the applicant--
(a)
fails to file either a request under subsection (l) for a
substantive examination or a request under subsection
(2) for a modified substantive examination; or
(b)
fails to provide the information or document referred to
in subsection (4) as required by the Registrar,
within the prescribed period, the application for a patent shall,
subject to subsection (6), be deemed to be withdrawn at the end
of that period.
(6) Notwithstanding subsection (5), the Registrar may, upon the
request of the applicant, grant a deferment of the filing of a request
for examination referred to in subsection (1) or (2) or a deferment
of the provision of the information or document referred to in
subsection (4), and such deferment may be granted only on the
grounds that--
(a)
the patent or title referred to in subsection (2) has not
been granted or is not available; or
(b)
the information or document referred to in subsection (4)
would not be available,
by the expiration of the prescribed period for the filing of a request
under subsection (1) or (2).
(7) No deferment shall be granted under subsection (6) unless
the request for such deferment is filed before the expiration of the
prescribed period for the filing of a request under subsection (1)
or (2) and no deferment may be sought nor granted for a period
greater than that prescribed in the regulations made under this Act.
(8) Without prejudice to the power of the Registrar to grant a
deferment, the period prescribed for the purposes of this section
may not be extended under section 82.
Substantive examination and modified substantive examination
30. (1) Where a request for substantive examination has been
filed under subsection 29A(1), the Registrar shall refer the application
to an Examiner who shall--
(a) determine whether the application complies with those
requirements of this Act and the regulations made under
this Act which are designated by such regulations as
substantive requirements for the purposes of this Act;
and
(b) report his determination to the Registrar.
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(2) Where a request for a modified substantive examination has
been filed under subsection 29A(2), the Registrar shall refer the
application to an Examiner who shall--
(a) determine whether the application complies with those
requirements of this Act and the regulations made under
this Act which are designated by such regulations as
modified substantive requirements for the purposes of
this Act; and
(b) report his determination to the Registrar.
(3) If the Examiner reports, in accordance with subsection (1)
or (2), that any of the requirements referred to in subsection (1)
or (2), as the case may be, are not complied with, the Registrar
shall give the applicant an opportunity to make observations on
the report and to amend the application so as to comply with those
requirements, within the prescribed period, and if the applicant
fails to satisfy the Registrar that those requirements are complied
with, or to amend the application so as to comply with them, the
Registrar may refuse the application.
(4) The Registrar may grant an extension of the prescribed
period referred to in subsection (3) but such extension may be
granted only once and no subsequent extension may be granted
under section 82.
(5) If the Examiner reports, in accordance with subsection (1)
or (2), that the application, whether as originally filed or as amended,
complies with the requirements referred to in subsection (1) or (2),
as the case may be, the Registrar shall notify the applicant of that
fact and, subject to subsection (6), shall process the application
accordingly.
(6) Where two or more applications for a patent for the same
invention having the same priority date are filed by the same
applicant or his successor in title, the Registrar may on that ground
refuse to grant a patent in pursuance of more than one of the
applications.
(7) The Registrar may waive, as he deems fit, the requirement
of referring an application or any part of it for substantive examination
under subsection (1):
Provided that he shall notify in the Gazette his intention to
waive such requirement and shall allow any party who would be
aggrieved by such waiver to be heard on the matter.
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Patents
Prohibition of publication of information which might be
prejudicial to the nation
30A. (1) Subject to any direction of the Minister, where an
application for a patent is filed or is deemed to have been filed
at the Patent Registration Office and it appears to the Registrar
that the application contains information the publication of which
might be prejudicial to the interest or security of the nation, he
may issue directions prohibiting or restricting the publication of
that information or its communication whether generally or to a
particular person or class of persons.
(2) Subject to any direction by the Minister, the Registrar may
revoke any direction issued by him under subsection (1) prohibiting
or restricting the publication or communication of any information
contained in an application for a patent if he is satisfied that such
publication or communication is no longer prejudicial to the interest
or security of the nation.
(3) Where directions issued by the Registrar under subsection
(1) are in force in respect of an application, the application may
proceed to the stage where it is in order for the grant of a patent
but no patent shall be granted in pursuance of such application.
(4) Nothing in this section prevents the disclosure of information
concerning an invention to a Ministry or a Government department
or authority for the purpose of obtaining advice as to whether
directions under this section should be made, amended or revoked.
Grant of patent
31. (1) The grant of a patent shall not be refused and a patent
shall not be invalidated on the ground that the performance of any
act in respect of the claimed invention is prohibited by any law
or regulation, except where the performance of that act would be
contrary to public order or morality.
(2) Where the Registrar is satisfied that the application complies
with sections 23, 29 and 30, he shall grant the patent and shall
forthwith--
(a) issue to the applicant a certificate of grant of the patent
and a copy of the patent together with a copy of the
Examiner's final report; and
(b) record the patent in the Register.
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(2A) Where two or more persons have separately and independently
made the same invention and each of them has made an application
for a patent having the same priority date, a patent may be granted
on each application.
(3) As soon as possible thereafter the Registrar shall--
(a) cause to be published in the Gazette a reference to the
grant of the patent; and
(b) make available to the public, on payment of the prescribed
fee, copies of the patent.
(4) The patent shall be deemed to be granted on the date that
the Registrar performs the acts referred to in subsection (2).
Register of Patents
32. (1) The Registrar shall keep and maintain a register called the
Register of Patents.
(2) The Register of Patents shall contain all such matters and
particulars relating to patents as may be prescribed.
(3) The Register of Patents shall be kept in such form and on
such medium as may be prescribed.
Notice of a trust not to be registered
32A.  Notice of a trust, express, implied or constructive, shall not
be entered in the Register or be accepted by the Registrar.
Examination of Register and certified copies
33.  Any person may examine the Register and may obtain certified
extracts therefrom on payment of the prescribed fee.
Certified copies of or extracts from Register, etc., admissible
as evidence in court
33A. (1) The Register shall be prima facie evidence of all matters
required or authorized by this Act to be entered therein.
(2) Copies of or extracts from the Register, or of or from any
document or publication in the Patent Registration Office, if certified
by the Registrar in writing under his hand, shall be admissible in
evidence in all courts without further proof or production of the
original.
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Patents
Amendments to the Register
33B. (1) The Registrar may, on request made in the prescribed
manner by the owner of a patent, amend the Register--
(a) by correcting any error in the name or address of the
owner of the patent; or
(b) by entering any change in the name or address of the
owner of the patent.
(2) Where the Register has been amended under this section,
the Registrar may require the certificate of grant of the patent to
be submitted to him, and may--
(a) revoke the certificate of grant of the patent and issue a
new certificate of grant of the patent; or
(b) make any consequential amendments in the certificate of
grant of the patent as are rendered necessary by the
amendment of the Register.
(3) Notwithstanding any other provision of this Act or the
regulations made under this Act, no fee shall be payable by the
owner of a patent in respect of a request to correct any error in
the name or address of such owner unless such error is caused or
contributed to by such owner.
Court may order rectification of the Register
33C. (1) The Court may, on the application of any aggrieved
person, order the rectification of the Register by directing--
(a) the making of any entry wrongly omitted from the Register;
(b) the expunging or amendment of any entry wrongly made
in or remaining in the Register; or
(c) the correcting of any error or defect in the Register.
(2) Notice of every application under this section shall be served
on the Registrar who shall have the right to appear and be heard,
and who shall appear if so directed by the Court.
(3) Unless otherwise directed by the Court, the Registrar, in
lieu of appearing and being heard, may submit to the Court a
statement in writing signed by him--
(a) giving particulars in relation to the matter in issue;
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(b) of the grounds of any decision given by him affecting the
matter in issue;
(c) of the practice of the Patent Registration Office in like
cases; or
(d) of such other matters relevant to the issues and within his
knowledge as Registrar, as he thinks fit,
and such statement shall be deemed to form part of the evidence
in Court.
(4) A sealed copy of an order under this section shall be served
on the Registrar who shall, upon receipt of the order, take such
steps as are necessary to give effect to the order.
Public inspection
34. (1) The Registrar shall make available for public inspection
after eighteen months from the priority date or filing date of a
patent application and upon payment of the prescribed fee--
(a) the name, address and description of the applicant and
the name and address of his agent, if any;
(b) the application number;
(c) the filing date of application and, if priority is claimed,
the priority date, the number of the earlier application
and the name of the State in which the earlier application
is a regional or an international application, the name of
the country or countries for which and the office at which
it was filed;
(d) the particulars of the application including the description,
claim or claims, drawings, if any, and the abstract and
any amendments to the application, if any; and
(e) any change in ownership of the application and any
reference to a licence contract appearing in the file relating
to the application.
(2) Notwithstanding subsection (1) a patent application shall
not be made available for public inspection if--
(a) the patent application is withdrawn or refused or deemed
to be withdrawn or refused before the expiry of the period
of eighteen months from the priority date or filing date
of the patent application; or
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Patents
(b) it appears to the Registrar that the application contains
information which contravenes public order or morality.
(3) Information relating to a patent application may be inspected
only with the written permission of the patent applicant if the
information is requested within eighteen months from the priority
date or filing date of the patent application.
(4) A certified extract of the information may be obtained upon
payment of the prescribed fee.
(5) After an application is made available for public inspection,
an applicant may in writing warn a person who has commercially
or industrially worked the invention which is the subject matter
of the application that a patent application for the invention has
been filed.
(6) An applicant may demand that a person who has commercially
or industrially worked the invention pay as compensation to the
applicant in respect of the invention--
(a) from the time the person is given the warning under
subsection (5); or
(b) in the absence of a warning, after the patent application
in respect of the invention has been made available for
public inspection,
an amount equivalent to what he would have normally received
for the working of the invention to the time of the grant of the
patent.
(7) The right to demand compensation as provided for in subsection
(6) shall be exercised only after the grant of the patent.
(8) The exercise of the right to demand compensation under
subsection (6) shall not prevent the applicant from exercising his
rights as the owner of the patent in respect of the invention after
the grant of the patent.
(9) Where a patent application is withdrawn or refused after the
application is made available for public inspection, the right under
subsection (6) shall be deemed never to have existed.
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Duration of patent
35. (1) Subject to subsections (1B) and (1C), the duration of a
patent shall be twenty years from the filing date of the application.
(1A) Without prejudice to subsection (1) and subject to the
other provisions of this Act, a patent shall be deemed to be granted
and shall take effect on the date the certificate of grant of the
patent is issued.
(1B) Where a patent application was filed before 1 August 2001,
and was pending on that date, the duration of the patent granted
on that application shall be twenty years from the date of filing
or fifteen years from the date of grant, whichever is the longer.
(1C) The duration of a patent granted before 1 August 2001 and
still in force on that date shall be twenty years from the date of
filing or fifteen years from the date of grant whichever is the
longer.
(2) Where a patentee intends at the expiration of the second
year from the date of grant of the patent to keep the same in force
he shall, twelve months before the date of expiration of the second
and each succeeding year during the term of the patent, pay the
prescribed annual fee:
Provided, however, that a period of grace of six months shall
be allowed after the date of such expiration, upon payment of such
surcharge as may be prescribed.
(3) If the prescribed annual fee is not paid in accordance with
subsection (2), the patent shall lapse, and a notice of the lapsing
of the patent for non-payment of any annual fee shall be published
in the Gazette.
Reinstatement of a lapsed patent
35A. (1) Within two years from the date on which a notice of the
lapsing of a patent is published in the Gazette--
(a) the owner of the patent or his successor in title; or
(b) any other person who would, if the patent had not lapsed,
have been entitled to the patent,
may apply to the Registrar in the prescribed form to have the
patent reinstated.
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Patents
(2) The Registrar may reinstate a patent on an application made
under subsection (1)--
(a) upon payment of all annual fees due and of a prescribed
surcharge for reinstatement; and
(b) upon being satisfied that the non-payment of annual fees
was due to accident, mistake or other unforeseeable
circumstances.
(3) Where the Registrar reinstates a lapsed patent, he shall cause
notice of the reinstatement to be published in the Gazette.
(4) The reinstatement of a lapsed patent shall not prejudice the
rights acquired by third parties 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.
(5) The Minister may make regulations to provide for the protection
or compensation of persons who have 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, but any
such protection shall not extend beyond such exploitation of the
lapsed patent as such persons have availed themselves of or have
taken definite steps to avail themselves of.
(6) No proceedings shall be taken in respect of an infringement
of a patent committed 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.
PART VII
RIGHTS OF OWNER OF PATENT
Rights of owner of patent
36. (1) Subject and without prejudice to the other provisions of
this Part, the owner of a patent shall have the following exclusive
rights in relation to the patent:
(a) to exploit the patented invention;
(b) to assign or transmit the patent;
(c) to conclude licence contracts.
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(2) N o person shall do any of the acts referred to in
subsection (1) without the consent of the owner of the patent.
(3) For the purposes of this Part, "exploitation" of a patented
invention means any of the following acts in relation to a patent:
(a) when the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling or using
the product;
(ii) stocking such product for the purpose of offering
for sale, selling or using;
(b) when the patent has been granted in respect of a process:
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a),
in respect of a product obtained directly by means
of the process.
(4) For the purposes of this section, if the patent has been
granted in respect of a process for obtaining a product, the same
product produced by a person other than the owner of the patent
or his licensee shall, unless the contrary is proved, be taken in any
proceedings to have been obtained by that process.
Limitation of rights
37. (1) The rights under the patent shall extend only to acts done
for industrial or commercial purposes and in particular not to acts
done only for scientific research.
(1A) The rights under the patent shall not extend to acts done
to make, use, offer to sell or sell a patented invention solely for
uses reasonably related to the development and submission of
information to the relevant authority which regulates the manufacture,
use or sale of drugs.
(2) Without prejudice to section 58A, the rights under the patent
shall not extend to acts in respect of products which have been put
on the market--
(i) by the owner of the patent;
(ii) by a person having the right referred to in section 38;
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Patents
(iii) by a person having the right referred to in section 43;
(iv) by the beneficiary of a compulsory licence within the
meaning of section 48.
(3) The rights under the patent shall not extend to the use of
the patented invention on any foreign vessel, aircraft, spacecraft
or land vehicle temporarily in Malaysia.
(4) The rights under the patent shall be limited in duration as
provided for in section 35.
(5) The rights under the patent shall be limited by section 35A
by the provisions on compulsory licences as provided in
sections 51 and 52 and by the provisions on the rights of Government
or any person authorized by the Government as provided in
section 84.
Rights derived from prior manufacture or use
38. (1) Where a person at the priority date of the patent application--
(a) was in good faith in Malaysia making the product or
using the process which is the subject of the invention
claimed in the application;
(b) had in good faith in Malaysia made serious preparations
towards the making of the product or using the process
referred to in paragraph (a),
he shall have the right, despite the grant of the patent, to exploit
the patented invention:
Provided that the product in question is made, or the process in
question is used, by the said person in Malaysia:
Provided further that he can prove, if the invention was disclosed
under the circumstances referred to in paragraph 14(3) (a), (b) or
(c) that his knowledge of the invention was not a result of such
disclosure.
(2) The right referred to in subsection (1) shall not be assigned
or transmitted except as part of the business of the person concerned.
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PART VIII
ASSIGNMENT AND TRANSMISSION OF PATENT
APPLICATIONS AND PATENTS
Assignment and transmission of patent applications and patents
39. (1) A patent application or patent may be assigned or transmitted.
(2) Any person becoming entitled by assignment or transmission
to a patent application or patent may apply to the Registrar in the
prescribed manner to have such assignment or transmission recorded
in the Register.
(3) No such assignment or transmission shall be recorded in the
Register unless--
(a) the prescribed fee has been paid to the Registrar;
(b) in the case of an assignment, it is in writing signed by
or on behalf of the contracting parties.
(4) No such assignment or transmission shall have effect against
third parties unless so recorded in the Register.
Joint ownership of patent applications or patents
40.  In the absence of any agreement to the contrary between the
parties, joint owners of a patent application or patent may, separately,
assign or transmit their rights in the patent application or patent,
exploit the patented invention and take action against any person
exploiting the patented invention without their consent, but may
only jointly withdraw the patent application, surrender the patent
or conclude a licence contract.
PART IX
LICENCE CONTRACTS
Meaning of licence contract
41. (1) For the purposes of this Part, a "licence contract" means
any contract by which the owner of a patent (the "licensor") grants
to another person or enterprise (the "licensee") a licence to do any
o r all of the acts referred to in paragraph (1) (a) , and
subsection 36(3).
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Patents
(2) A licence contract shall be in writing signed by or on behalf
of the contracting parties.
Entry in the Register
42. (1) A licensor may in accordance with the regulations as
prescribed by the Minister apply to the Registrar for an entry to
be made in the Register to the effect that any person may obtain
a licence.
(2) At any time after an entry has been made in the Register,
any person may apply to the licensor through the Registrar for a
licence.
(3) Where a licence contract is concluded between the parties,
the contracting parties shall inform the Registrar accordingly and
the Registrar shall record such fact in the Register.
(4) Upon a request in writing signed by or on behalf of the
contracting parties, the Registrar shall, on payment of the prescribed
fee, record in the Register such particulars relating to the contract
as the parties thereto might wish to have recorded:
Provided that the parties shall not be required to disclose or
have recorded any other particulars relating to the said contract.
(5) Where a licence contract is terminated, the contracting parties
shall inform the Registrar of the termination and the Registrar
shall record such termination in the Register.
(6) The licensor may in accordance with the regulations as
prescribed by the Minister apply to the Registrar for the cancellation
of the entry made under subsection (1).
Rights of the licensee
43. (1) In the absence of any provision to the contrary in the
licence contract, the licensee shall be entitled to do any or all of
the acts referred to in paragraph (1)(a), and subsection 36(3) within
the whole geographical area of Malaysia without limitation as to
time and through any application of the invention.
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(2) In the absence of any provision to the contrary in the licence
contract, the licensee may not give to a third person his agreement
to perform in Malaysia in respect of the invention any of the acts
referred to in paragraph (1)(a), and subsection 36(3).
Rights of the licensor
44. (1) In the absence of any provision to the contrary in the
licence contract, the licensor may grant a further licence to a third
person in respect of the same patent or himself do any or all of
the acts referred to in paragraph (1)(a), and subsection 36(3).
(2) Where the licence contract provides that the licence is exclusive
and unless it is expressly provided otherwise in such contract, the
licensor shall not grant a further licence to a third person in respect
of the same patent or himself do any of the acts referred to in
paragraph (1)(a), and subsection 36(3).
Invalid clauses in licence contracts
45.  Any clause or condition in a licence contract shall be invalid
in so far as it imposes upon the licensee, in the industrial or
commercial field, restrictions not derived from the rights conferred
by this Part on the owner of the patent, or unnecessary for the
safeguarding of such rights:
Provided that--
(a) restrictions concerning the scope, extent or duration of
exploitation of the patented invention, or the geographical
area in, or the quality or quantity of the products in
connection with, which the patented invention may be
exploited; and
(b) obligations imposed upon the licensee to abstain from all
acts capable of prejudicing the validity of the patent,
shall not be deemed to constitute such restrictions.
Effect of patent application not being granted or patent being
declared invalid
46.  Where, before the expiration of the licence contract, any of
the following events occur in respect of the patent application or
patent referred to in such contract:
(a) the patent application is withdrawn;
(b) the patent application is finally rejected;
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Patents
(c) the patent is surrendered;
(d) the patent is declared invalid;
(e) the licence contract is invalidated,
the licensee shall no longer be required to make any payment to
the licensor under the licence contract, and shall be entitled to
repayment of the payment already made:
Provided that the licensor shall not be required to make any
repayment, or shall be required to make repayment only in part,
to the extent that he can prove that any such repayment would be
inequitable under all the circumstances, in particular if the licensee
has effectively profited from the licence.
Expiry, termination or invalidation of licence contract
47.
The Registrar shall--
(a) if he is satisfied that a recorded licence contract has
expired or been terminated, record that fact in the Register
upon a request in writing to that effect signed by or on
behalf of the parties thereto;
(b) record in the Register the expiry, termination or invalidation
of a licence contract under any provision of this Part.
PART X
COMPULSORY LICENCES
Definition
48.
For the purpose of this Part--
"beneficiary of the compulsory licence" means the person to
whom a compulsory licence has been granted in accordance with
this Part; and
"compulsory licence" means the authorization to perform in
Malaysia without the agreement of the owner of the patent in
respect of the patented invention any of the acts referred to in
paragraph (1)(a), and subsection 36(3).
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Application for compulsory licences
49. (1) At any time after the expiration of three years from the
grant of a patent, or four years from the filing date of the patent
application, whichever is the later, any person may apply to the
Registrar for a compulsory licence under any of the following
circumstances:
(a) where there is no production of the patented product or
application of the patented process in Malaysia without
any legitimate reason;
(b) where there is no product produced in Malaysia under the
patent for sale in any domestic market, or there are some
but they are sold at unreasonably high prices or do not
meet public demand without any legitimate reason.
(2) A compulsory licence shall not be applied for unless the
person making the application has made efforts to obtain autho-
rization from the owner of the patent on reasonable commercial
terms and conditions but such efforts have not been successful
within a reasonable period of time.
(3) The application for a compulsory licence shall be in compliance
with such regulations as may be prescribed by the Minister.
Application for compulsory licence based on interdependence
of patents
49A. (1) If the invention claimed in a patent ("later patent") cannot
be worked in Malaysia without infringing a patent granted on the
basis of an application benefiting from an earlier priority date
("earlier patent"), and if the invention claimed in the later patent
constitutes, in the opinion of the Corporation, an important technical
advance of considerable economic significance in relation to the
invention claimed in the earlier patent, the Corporation, upon the
request of the owner of the later patent, the licensee of a licence
contract under the later patent or the beneficiary of a compulsory
licence under the later patent, may grant a compulsory licence to
the extent necessary to avoid infringement of the earlier patent.
(2) If a compulsory licence is granted under subsection (1), the
Corporation, upon the request of the owner of the earlier patent,
the licensee of a licence contract under the earlier patent or the
beneficiary of a compulsory licence under the earlier patent, may
grant a compulsory licence under the later patent.
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Patents
Request for grant of compulsory licence
50. (1) In an application for a compulsory licence under section
49 or section 49A, the applicant shall set forth the amount of
royalty, the conditions of the exploitation of the patent and the
restrictions of the rights of the licensor or the licensee, as the case
may be, and a request for the said licence.
(2) Where an application for a compulsory licence is filed pursuant
to section 49 or section 49A, and this section, the Registrar shall
notify the applicant, the licensor or the licensee, as the case may
be, of the date the application shall be considered by the Corporation.
(3) The licensor or the licensee, as the case may be, shall be
f u r n i s h e d with a copy of the application as mentioned in
subsection (1).
Decision by the Corporation
51. (1) In considering the application for a compulsory licence
under section 49 or section 49A, the Corporation may require the
applicant, the licensor or the licensee, as the case may be, to
appear before the Corporation to give a statement or to hand to
the Corporation any document or any other item.
(2) When the application has been considered by the Corporation
and a decision has been made, the applicant, the licensor or the
licensee, as the case may be, shall be notified of the decision.
Scope of compulsory licence
52.  Upon the granting of the compulsory licence to the applicant
the Corporation shall fix--
(a) the scope of the licence specifying in particular the period
for which licence is granted;
(b) the time limit within which the beneficiary of the
compulsory licence shall begin to work the patented
invention in Malaysia; and
(c) the amount and conditions of the royalty due from the
beneficiary of the compulsory licence to the owner of the
patent.
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Limitation of compulsory licence
53. (1) A compulsory licence granted by the Corporation--
(a) shall not be assigned otherwise than in connection with
the goodwill or business or that part of the goodwill or
business in which the patented invention is used;
(b) shall be limited to the supply of the patented invention
predominantly in Malaysia.
(2) The beneficiary of the compulsory licence shall not conclude
licence contracts with third persons under the patent in respect of
which the compulsory licence was granted.
Amendment, cancellation and surrender of compulsory licence
54. (1) Upon the request of the owner of the patent or of the
beneficiary of the compulsory licence, the Corporation may amend
the decision granting the compulsory licence to the extent that new
facts justify such amendment.
(2) Upon the request of the owner of the patent, the Corporation
shall cancel the compulsory licence--
(a) if the ground for the grant of the compulsory licence no
longer exists;
(b) if the beneficiary of the compulsory licence has, within
the time limit fixed in the decision granting the licence,
neither begun the working of the patented invention in
Malaysia nor made serious preparations towards such
working;
(c) if the beneficiary of the compulsory licence does not
respect the scope of the licence as fixed in the decision
granting the licence;
(d) if the beneficiary of the compulsory licence is in arrears
of the payment due, according to the decision granting
the licence.
(3) The beneficiary of the compulsory licence may surrender
the licence by a written declaration submitted to the Registrar who
shall record the surrender in the Register, publish it, and notify the
owner of the patent.
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Patents
(4) The surrender shall take effect from the date the Patent
Registration Office receives the declaration of the surrender.
PART XI
SURRENDER AND INVALIDATION OF PATENT
Surrender of patent
55. (1) The owner of the patent may surrender the patent by a
written declaration submitted to the Registrar.
(2) The surrender may be limited to one or more claims of the
patent.
(3) Where a licence contract in respect of a patent is recorded
in the Register, the Registrar shall not, in the absence of any
provision to the contrary in the licence contract, accept or record
the said surrender except upon receipt of a signed declaration by
which every licensee or sub-licensee on record consents to the said
surrender unless the requirement of his consent is expressly waived
in the licence contract.
(3A) Where a compulsory licence has been granted in respect
of a patent, the Registrar shall not accept or record the said surrender
except upon receipt of a signed declaration by which the beneficiary
of the compulsory licence consents to the said surrender.
(4) The Registrar shall record the surrender in the Register and
cause it to be published in the Gazette.
(5) The surrender shall take effect from the date the Registrar
receives the declaration.
Invalidation of patent
56. (1) Any aggrieved person may institute Court proceedings
against the owner of the patent for the invalidation of the patent.
(2) The Court shall invalidate the patent if the person requesting
the invalidation proves--
(a) that what is claimed as an invention in the patent is not
an invention within the meaning of section 12 or is excluded
from protection under section 13 or subsection 31(1) or
is not patentable because it does not comply with the
requirements of sections 11, 14, 15 and 16;
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(b) that the description or the claim does not comply with
the requirements of section 23;
(c) that any drawings which are necessary for the understanding
of the claimed invention have not been furnished;
(d) that the right to the patent does not belong to the person
to whom the patent was granted; or
(e) that incomplete or incorrect information has been
deliberately provided or caused to be provided to the
Registrar under subsection 29A(4) by the person to whom
the patent was granted or by his agent.
(2A) Notwithstanding subsection (2), the Court shall not invalidate
the patent on the ground mentioned in paragraph (2)(d) if the
patent has been assigned to the person to whom the right to the
patent belongs.
(3) Where subsection (1) apply on only some of the claims or
some parts of a claim, such claims or parts of a claim may be
declared invalid by the Court and the invalidity of part of a claim
shall be declared in the form of a corresponding limitation of the
claim in question.
Date and effect of invalidation
57. (1) Any invalidated patent or claim or part of a claim shall
be regarded as null and void from the date of the grant of the
patent.
(2) When the decision of the Court becomes final, the Registrar
of the Court shall notify the Registrar who shall record the said
declaration in the Register and cause it to be published in the
Gazette.
PART XII
INFRINGEMENT
Acts deemed to be infringement
58.  Subject to subsections 37(1), (2) and (3) and section 38, an
infringement of a patent shall consist of the performance of any
act referred to in subsection 36(3) in Malaysia by a person other
than the owner of the patent and without the agreement of the
latter in relation to a product or a process falling within the scope
of protection of the patent.
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Acts deemed to be non-infringement
58A. (1) It shall not be an act of infringement to import, offer for
sale, sell or use--
(a) any patented product; or
(b) any product obtained directly by means of the patented
process or to which the patented process has been applied,
which is produced by, or with the consent, conditional or otherwise,
of the owner of the patent or his licensee.
(2) For the purposes of this section, "patent" includes a patent
granted in any country outside Malaysia in respect of the same or
essentially the same invention as that for which a patent is granted
under this Act.
Infringement proceedings
59. (1) The owner of the patent shall have the right to institute
Court proceedings against any person who has infringed or is
infringing the patent.
(2) The owner of the patent shall have the same right against
any person who has performed acts which make it likely that an
infringement will occur, which in this Part is referred to as an
"imminent infringement".
(3) The proceedings in subsections (1) and (2) may not be
instituted after five years from the act of infringement.
Injunction and award of damages
60. (1) If the owner of the patent proves that an infringement has
been committed or is being committed, the Court shall award
damages and shall grant an injunction to prevent further infringement
and any other legal remedy.
(2) If the owner of the patent proves imminent infringement the
Court shall grant an injunction to prevent infringement and any
other legal remedy.
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(3) The defendant in any proceedings referred to in this section
may request in the same proceedings the invalidation of the patent,
in which case subsections 56(2) and (3) shall apply.
Infringement proceedings by licensee and beneficiary of
compulsory licence
61. (1) For the purposes of this section, "beneficiary" means--
(a) any licensee unless the licence contract provides that the
provisions of this subsection do not apply or provides
different provisions;
(b) the beneficiary of a compulsory licence granted under
section 51.
(2) Any beneficiary may request the owner of the patent to
institute Court proceedings for any infringement indicated by the
beneficiary, who shall specify the relief desired.
(3) The beneficiary may, if he proves that the owner of the
patent received the request but refuses or fails to institute the
proceedings within three months from the receipt of the request,
institute the proceedings in his own name, after notifying the
owner of the patent of his intention but the owner shall have the
right to join in the proceedings.
(4) Notwithstanding that the three month period referred to
subsection (3) has not been satisfied, the Court shall, on the request
of the beneficiary, grant an appropriate injunction to prevent
infringement or to prohibit its continuation, if the beneficiary
proves that immediate action is necessary to avoid substantial
damage.
Declaration of non-infringement
62. (1) Subject to subsection (4), any interested person shall have
the right to request, by instituting proceedings against the owner
of the patent, that the Court declare that the performance of a
specific act does not constitute an infringement of the patent.
(2) If the person making the request proves that the act in
question does not constitute an infringement of the patent, the
Court shall grant the declaration of non-infringement.
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(3) (a) The owner of the patent shall have the obligation to
notify the licensee of the proceedings and the licensee shall have
the right to join in the proceedings in the absence of any provision
to the contrary in the licence contract.
(b) The person requesting the declaration of non-infringement
shall have the obligation to notify the beneficiaries of the compulsory
licence granted under section 51 of the proceedings and the said
beneficiaries shall have the right to join in the proceedings.
(4) If the act in question is already the subject of infringement
proceedings, the defendant in the infringement proceedings may
not institute proceedings for a declaration of non-infringement.
(5) Proceedings for a declaration of non-infringement may be
instituted together with proceedings to invalidate the patent,
e x c e p t where invalidation of the patent is requested under
subsection 60(3).
PART XIII
OFFENCES
Applications in contravention of section 23A
62A.  Any person who files or causes to be filed an application
for a patent in contravention of section 23A commits an offence
and is liable on conviction to a fine not exceeding fifteen thousand
ringgit or to imprisonment for a term not exceeding two years or
to both.
Publication of information in contravention of Registrar's
directions
62B.  Any person who publishes or communicates information in
contravention of any direction issued by the Registrar under section
30A commits an offence and is liable on conviction to a fine not
exceeding fifteen thousand ringgit or to imprisonment for a term
not exceeding two years or to both.
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Falsification of Register, etc.
63.  Any person who makes or causes to be made a false entry
in any Register kept under this Act, or makes or causes to be made
a writing falsely purporting to be a copy or reproduction of an
entry in any such Register, or produces or tenders or causes to be
produced or tendered in evidence any such false writing, commits
an offence and is liable on conviction to a fine not exceeding
fifteen thousand ringgit or to imprisonment for a term not exceeding
two years or to both.
Unauthorized claim or patent
64. (1) Any person who falsely represents that anything disposed
of by him for value is a patented product or process commits an
offence and, subject to the following provisions of this section, is
liable on conviction to a fine not exceeding fifteen thousand ringgit
or to imprisonment for a term not exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value
disposes of an article having stamped, engraved or impressed on
it or otherwise applied to it the word "patent" or "patented" or
anything expressing or implying that the article is a patented product,
shall be taken to represent that the article is a patented product.
(3) Subsection (1) does not apply where the representation is
made in respect of a product after the patent for that product or,
as the case may be, the process in question has, expired or been
invalidated and before the end of a period which is reasonably
sufficient to enable that person to take steps to ensure that the
representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be
a defence for any person to prove that he used due diligence to
prevent the commission of the offence.
Unauthorized claim that patent has been applied for
65. (1) Any person who represents that a patent has been applied
for in respect of any article disposed of for value by him and--
(a) no such application has been made; or
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(b) any such application has been refused or withdrawn,
commits an offence and, subject to the following provisions of this
section, is liable on conviction to a fine not exceeding fifteen
thousand ringgit or to imprisonment for a term not exceeding two
years or to both.
(2) Paragraph (1)(b) does not apply where the representation is
made or continues to be made before the expiry of a period which
commences with the refusal or withdrawal and which is reasonably
sufficient to enable that person to take steps to ensure that the
representation is not made or does not continue to be made.
(3) For the purposes of subsection (1), a person who for value
disposes of an article having stamped, engraved or impressed on
it or otherwise applied to it the words "patent pending", or anything
expressing or implying that a patent has been applied for in respect
of the article, shall be taken to represent that a patent has been
applied for in respect of the article.
(4) In any proceedings for an offence under this section, it shall
be a defence for any person to prove that he used due diligence
to prevent the commission of the offence.
Misuse of title "Patent Registration Office"
66.  Any person who uses on his place of business or any document
issued by him or otherwise, the words "Patent Registration Office"
or any other words suggesting that his place of business is, or is
officially connected with, the Patent Registration Office commits
an offence and is liable on conviction to a fine not exceeding
fifteen thousand ringgit or to imprisonment for a term not exceeding
two years or to both.
Unregistered persons practising, etc., as a patent agent
66A.  Any person who carries on business, practices, acts, describes
himself, holds himself out, or permits himself to be described or
held out, as a patent agent without being registered under this Act
commits an offence and is liable on conviction to a fine not exceeding
fifteen thousand ringgit or to imprisonment for a term not exceeding
two years or to both.
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Offences by corporation
67. (1) Where an offence under this Act which has been committed
by a body corporate is proved to have been committed with the
consent or connivance of, or to be attributable to any neglect on
the part of a director, manager, secretary or other similar officer
of the body corporate, or any person who was purporting to act
in any such capacity, he, as well as the body corporate, commits
that offence and is liable to be prosecuted against and punished
accordingly as provided by the Act.
(2) Where the affairs of a body corporate are managed by its
members, subsection (1) shall apply in relation to the acts and
defaults of a member in connection with his functions of management
as if he was a director of a body corporate.
PART XIV
POWERS RELATING TO ENFORCEMENT
Authorization of officer to exercise powers under this Part
68. (1) The Minister may authorize in writing any public officer
to exercise the powers under this Part.
(2) Any such officer shall be deemed to be a public servant
within the meaning of the Penal Code [Act 574].
(3) In exercising any of the powers under this Part, an officer
shall on demand produce to the person against whom he is acting
under this Act the authority issued to him by the Minister.
Powers of arrest
69. (1) Any authorized officer or police officer may arrest without
warrant any person whom he sees or finds committing or attempting
to commit or abetting the commission of an offence or whom he
reasonably suspects of being engaged in committing or attempting
to commit or abetting, the commission of any offence against this
Act if such person refuses or fails to furnish his name and residence
or there are reasonable grounds for believing in that he has furnished
a false name or residence or that he is likely to abscond.
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(2) Any authorized officer or police officer making an arrest
without warrant shall, without unnecessary delay, bring the person
arrested to the nearest police station.
(3) No person who has been arrested by an authorized officer
or police officer shall be released except on his own bond or on
bail or on the special order in writing of a Magistrate.
Search with warrant
70. (1) Whenever it appears to any Magistrate upon written
information on oath and after any enquiry which he may think
necessary that there is reasonable cause to believe that in any
dwelling house, shop, building or place there is being committed
an offence against this Act, or any regulations made thereunder,
he may issue a warrant authorizing any authorized officer or police
officer named therein, by day or night and with or without assistance
to enter the dwelling house, shop, building or place and there
search for and seize or take copies of all books, accounts, documents
or other articles which contain or are suspected to contain information
as to any offence so suspected to have been committed or any
other thing relating to the offence.
(2) Any such officer may if it is necessary so to do--
(a) break open any outer or inner door of the dwelling house,
shop, building or place, and enter thereinto;
(b) forcibly enter the dwelling house, shop, building or place
and every part thereof;
(c) remove by force any obstruction to enter, search, seize
and remove as he is empowered to effect; and
(d) detain every person found therein until the dwelling house,
shop, building or place has been searched.
List of things seized
71.  The authorized officer or police officer seizing any books,
accounts, documents or other articles under this Part shall prepare
a list of the things seized and forthwith deliver a copy signed by
him to the occupier or his agents or servants present in the premises.
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Return of things seized
72.  Where under this Part possession has been taken of any
books, accounts, documents or other articles, then the authorized
officer or police officer shall within four weeks of the seizure,
where no criminal proceedings have been instituted, restore possession
to the owner.
Power of investigation
73. (1) An authorized officer or police officer shall have the
power to investigate the commission of any offence under this Act
or regulations made thereunder.
(2) Every person required by an authorized officer or police
officer to give information or produce any book, account, document
or other article relating to the commission of such offence which
it is in the person's power to give shall be legally bound to give
the information or to produce the book, account, document or
other article.
Examination of witnesses
74. ( 1 ) A n authorized officer or police officer making an
investigation under section 73 may examine orally any person
supposed to be acquainted with the facts and circumstances of the
case and shall reduce into writing any statement made by the
person so examined.
(2) Such person shall be bound to answer all questions relating
to such case put to him by such officer:
Provided that such person may refuse to answer any question
the answer to which have a tendency to expose him to a criminal
charge or penalty or forfeiture.
(3) A person making a statement under this section shall be
legally bound to state the truth, whether or not such statement is
made wholly or partly in answer to questions.
(4) An authorized officer or police officer examining a person
under subsection (1) shall first inform that person of subsections
(2) and (3).
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(5) A statement made by any person under this section whether
or not a caution has been administered to him under section 75
shall, whenever possible, be reduced into writing and signed by
the person making it or affixed with his thumb-print, as the case
may be, after it has been read to him in the language in which he
made it and after he has been given an opportunity to make any
correction he may wish.
Admission of statements in evidence
75.  Where any person is charged with any offence under this Act
or any regulations made thereunder, any statement whether the
statement amounts to a confession or not or is oral or in writing,
made at any time, whether before or after the person is charged
and whether in the course of investigations made under section 74
or not and whether or not wholly or partly in answer to questions
by that person to or in the hearing of any authorized officer or
police officer of or above the rank of Inspector and whether or not
interpreted to him by another authorized officer, police officer or
other person, shall be admissible in evidence at his trial and, if the
person charged tenders himself as a witness, any such statement
may be used in cross-examination and for the purpose of impeaching
his credit:
Provided that--
(a) no such statement shall be admissible or used as aforesaid--
(i) if the making of the statement appears to the Court
to have been caused by any inducement, threat or
promise having reference to the charge proceeding
from a person in authority and sufficient in the
opinion of the Court to give the person charged
grounds which would appear to him reasonable for
supposing that by making it he would gain any
advantage or avoid any evil of a temporal nature
in references to the proceedings against him; or
(ii) in the case of a statement made by the person after
his arrest, unless the Court is satisfied that a caution
was administered to him in the following words or
words to the like effect:
"It is my duty to warn you that you are not
obliged to say anything or to answer any question,
but anything you say, whether or not in answer
to a question, may be given in evidence"; and
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(b) a statement made by any person before there is time to
caution him shall not be rendered inadmissible in evidence
m e r e l y by reason of no such caution having been
administered if it had been administered as soon as possible.
(2) Notwithstanding anything to the contrary contained in any
w r i t t e n law, a person accused of an offence to which
subsection (1) applies shall not be bound to answer any questions
relating to the case after any such caution as aforesaid has been
administered to him.
Obstruction to search, etc.
76.
Any person who--
(a) refuses any authorized officer or police officer access to
any place;
(b) assaults, obstructs, hinders or delays any authorized officer
or police officer in effecting any entrance which he is
entitled to effect under this Act, or in the execution of
any duty imposed or power conferred by this Act; or
(c) refuses or neglects to give any information which may
reasonably be required of him and which he has it in his
power to give,
commits an offence and is liable on conviction to a fine not exceeding
three thousand ringgit or to imprisonment for a term not exceeding
one year or to both.
Institution of prosecution
77.  No prosecution for any offence under this Act shall be
instituted except by or with the consent in writing of the Public
Prosecutor.
Jurisdiction of subordinate Court
78. (1) Notwithstanding any other written law, a subordinate Court
shall have power to try any offence under this Act and on conviction
to impose the full penalty therefor.
(2) For the purpose of subsection (1), "subordinate Court" means
a Sessions Court or a Magistrate's Court.
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PART XIVA
INTERNATIONAL APPLICATIONS UNDER THE PATENT
COOPERATION TREATY
Interpretation
78A.
For the purposes of this Part--
"International Bureau" means the International Bureau of the
World Intellectual Property Organization and, as long as it subsists,
the United International Bureau for the Protection of Intellectual
Property (BIRPI);
" i n t e r n a t i o n a l search" means a search conducted by the
International Searching Authority appointed under Article 16 of
the Treaty to discover relevant prior art with respect to the invention;
"international phase" means the period beginning from the filing
of an international application to the time the international application
enters the national phase;
"national phase" means the period beginning from the performance,
by the applicant, of the acts specified in subsection 78O(1);
" r e c e i v i n g office" means the national office or the
i n t e r g o v e r n m e n t a l organization with which the international
application has been filed;
"elected office" means the national office of or acting for the
State elected by the applicant under Chapter II of the Treaty;
"designated office" means the national office of or acting for the
State designated by the applicant under Chapter I of the Treaty;
"international preliminary examination" means a preliminary
and non-binding examination carried out by the International
Preliminary Examination Authority appointed under Article 32 of
the Treaty on the questions of whether the invention appears to
be novel, involves an inventive step and is industrially applicable;
"international application" means an application for a patent
filed under the Treaty.
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"Treaty" means the Patent Cooperation Treaty done at Washington
on 19 June 1970;
Application
78B.  The provisions of this Part shall apply to an international
application filed under the Treaty.
Patent Registration Office as receiving office
78C.  The Patent Registration Office shall act as a receiving office
for an international application.
Patent Registration Office as designated office
78D.  The Patent Registration Office shall act as a designated
office for an international application in which Malaysia is designated
for the purposes of obtaining a patent or utility innovation under
Part VI.
Patent Registration Office as elected office
78E.  The Patent Registration Office shall act as an elected office
for an international application if the applicant elects Malaysia as
a State in which he intends to use the results of the international
preliminary examination.
Persons eligible for international application
78F.  Any person who is a citizen or resident of Malaysia shall
be entitled to file an international application for a patent with the
Patent Registration Office.
Filing of an international application
78G. (1) An international application shall be filed by submitting
to the Patent Registration Office a request in the prescribed form
together with a description, one or more claims, drawings, if any,
and an abstract.
(2) The request shall contain--
(a) a petition to the effect that the international application
be processed according to the Treaty;
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(b) the designation of the State or States in which protection
for the invention is desired;
(c) the name, nationality and residence of the applicant;
(d) the name and the place of business of the applicant's
agent, if any;
(e) the title of the invention; and
(f) the name and address of the inventor.
( 3 ) T h e application shall be submitted together with the
prescribed fee.
Filing date and the effect of filing an international application
78H. (1) The Registrar shall accord as the international filing
date the date of receipt of the international application, if at the
time of receipt--
(a) the applicant, or if the application is made by more than
one applicant, at least one of them, is a citizen or resident
of Malaysia;
(b) the international application is in the national language
or English language;
(c) the international application contains at least the follow-
ing elements:
(i) an indication that it is intended as an international
application;
(ii) the designation of the State in which the protection
for the invention is desired;
(iii) the name of the applicant;
(iv) a description; and
(v) a claim or claims.
(2) If the Registrar finds that the international application does
not, at the time of receipt, contain the elements listed in paragraph
(1)(c), the Registrar shall request the applicant to file a correction
within thirty days from the date of the request.
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(3) The Registrar shall accord as the international filing date
the date of receipt of correction if the applicant complies within
the time specified in subsection (2).
(4) If the applicant does not comply with the request for correction
within the time specified in subsection (2), the registrar shall
notify the applicant that his application is considered to have been
withdrawn.
(5) The international application which fulfills the requirements
as listed in paragraphs (1)(a) to (c) and has been accorded an
international filing date shall have the effect of a patent application
under Part VI if Malaysia is a designated State in the application
and the international filing date shall be considered to be the filing
date.
Defects in international application
78I. (1) If an international application--
(a) does not contain the title;
(b) is not signed as provided for in the regulations;
(c) does not contain the prescribed indications concerning
the applicant;
(d) does not contain an abstract; or
(e) does not comply with the physical requirements as
prescribed under the Treaty,
the Registrar shall request the applicant to make amendments
within the time prescribed in the request.
(2) If the international application refers to a drawing or drawings
which is or are not included in that application, the Registrar shall
request the applicant to furnish the drawing or drawings within the
prescribed time.
(3) The Registrar shall accord as the international filing date
the date of receipt of the drawing or drawings if the applicant
complies within the prescribed time.
(4) If the applicant fails to furnish the drawings within the
prescribed time, any reference to the drawing or drawings shall be
considered non-existent.
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International application considered withdrawn
7 8  J . ( 1 ) A n international application shall be considered
withdrawn if--
(a) the applicant has failed to make the amendments within
the prescribed time;
(b) the prescribed fee has not been paid; or
(c) the Registrar finds that any of the requirements as listed
in paragraphs 78H(1)(a) to (c) are not complied with,
after an international filing date has been accorded to
the international application.
(2) The Registrar shall inform the applicant in writing of the
withdrawal and the reasons for the withdrawal.
Processing of international applications
78K.  The Treaty and its rules shall apply to the processing of an
international application during the international phase of the
application.
International Searching Authority
78L. (1) The Registrar shall, by notification published in the Gazette,
specify the International Searching Authority which is competent
to carry out the international search for international applications
filed with the Patent Registration Office.
(2) When there is more than one competent International Searching
Authority, the applicant shall indicate his choice of International
Searching Authority in the request.
International Preliminary Examination Authority
78M. (1) The Registrar shall, by notification published in the Gazette,
specify the International Preliminary Examination Authority which
is competent to carry out international preliminary examination
for international applications filed with the Patent Registration
office.
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(2) The applicant may request for an international preliminary
examination to be carried out in respect of the application by
submitting a demand in the prescribed form and paying the prescribed
fee.
International publication of international application and its
effect
78N. (1) The international publication of an international application
by the International Bureau designating Malaysia as a designated
office shall have the same effect as the making available for public
inspection under section 34 of a patent application if the international
publication is transmitted to and received by the Patent Registration
Office.
(2) The Patent Registration Office shall make available the
international publication of the international application designating
Malaysia as a designated office for public inspection as soon as
possible.
Entering the national phase
78O. (1) The applicant in respect of an international application
designating Malaysia as a designated office shall before the expiration
of thirty months from the priority date--
(a) submit to the Patent Registration Office in the national
language or English language--
(i) a request in the prescribed form;
(ii) a description;
(iii) a claim or claims;
(iv) a drawing or drawings, where required; and
(v) an abstract; and
(b) pay the prescribed fee to the Patent Registration Office.
(2) If the applicant does not comply with the requirements of
subsection (1) the application shall be considered to be withdrawn.
(3) Applications which have entered the national phase shall
comply with the requirements of this Act.
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( 4 ) T h e Patent Registration Office shall not examine an
international application designating the Patent Registration Office
as designated office or elected office prior to the expiration of
thirty months from the priority date.
(5) Notwithstanding subsection (4), the Patent Registration Office
may, on the express request of the applicant, examine the international
application at any time, if the applicant has fulfilled the requirements
in subsection (1).
Search similar to international search for national applications
78P. (1) Any applicant who files a national application with the
Patent Registration Office may request that a search similar to an
international search be carried out on such application.
(2) The Patent Registration Office may subject a national
application filed with it to an international search.
(3) In such cases, the description and the claims contained in
the application shall be presented in the languages specified by the
International Searching Authority, and the search fees shall be
paid for by the applicant.
Conversion of an international application into a national
application
78Q. (1) Where a foreign receiving office has refused to accord
a filing date to an international application, or the foreign receiving
office has declared that the international application is considered
withdrawn or the designation of Malaysia is considered withdrawn
and copies of any document in the application have been sent to
the Patent Registration Office at the request of the applicant, the
Patent Registration Office shall decide whether such refusal or
declaration is justified under the Treaty or its rules.
(2) If the Patent Registration Office finds that the refusal or
declaration referred to in subsection (1) was the result of an error
or omission, it shall treat the international application as if such
error or omission had not occurred and shall treat the application
as a patent application in accordance with the provisions of
this Act.
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(3) This procedure shall apply to an international application
incorrectly declared by the International Bureau as having been
withdrawn.
PART XV
MISCELLANEOUS
Power of Registrar to amend patent application
79. (1) The Registrar may, upon a request made by an applicant
for a patent in accordance with patent regulations made under this
Act, amend the applicant's patent application, or any document
submitted at the Patent Registration Office in connection with the
application, for the purpose of correcting a clerical error or an
obvious mistake.
(2) Every request under subsection (1) shall be accompanied by
the prescribed fee.
Power of Registrar to amend patent
79A. (1) The Registrar may, upon a request made by the owner
of a patent in accordance with regulations made under this Act,
amend the description, the claim or claims, or the drawings, of the
patent, or amend any other document associated with the patent,
for the purpose of correcting a clerical error or an obvious mistake
or for any other reason acceptable to the Registrar.
(2) The Registrar shall not make an amendment under this section
if the amendment would have the effect of disclosing a matter
which extends beyond that disclosed before the amendment or if
the amendment would have the effect of extending the protection
conferred at the time of grant of the patent.
(3) The Registrar shall not make an amendment under this section
if there are pending before any Court proceedings in which the
validity of the patent may be put in issue.
(4) Every request under subsection (1) shall be accompanied by
the prescribed fee.
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(5) Notwithstanding subsection (4), no fee shall be payable by
the owner of a patent in respect of a request to correct a mistake
or an error in any document issued by the Patent Registration
Office unless such mistake or error is caused or contributed to by
such owner.
Other powers of Registrar
80. (1) The Registrar may, for the purpose of this Act--
(a) summon witnesses;
(b) receive evidence on oath;
(c) require the production of any document or article; and
(d) amend costs as against a party to proceedings before him.
(2) Any person who without any lawful excuse fails to comply
with any summons, order or direction made by the Registrar under
paragraphs (1)(a), (b) and (c) commits an offence and is liable on
conviction to a fine not exceeding two thousand ringgit or to
imprisonment for a term not exceeding six months or to both.
(3) Costs awarded by the Registrar may in default of payment
be recovered in a Court of competent jurisdiction as a debt due
by the person against whom the costs were accorded to the person
in whose favour they were accorded.
Exercise of discretionary power
81.  Where any discretionary power is given to the Registrar by
this Act or any regulations made thereunder, he shall not exercise
the power on any person who may be adversely affected by his
decision without giving to the person an opportunity of being
heard.
Extension of time
8 2 .  S u b j e c t to subsection 27(1A), subsection 29A(8) and
subsection 30(4), where, by this Act or any regulations made
thereunder a time is specified within which an act or thing is to
be done, the Registrar may, unless otherwise expressly directed by
the Court, extend the time either before or after its expiration,
upon payment of the prescribed fee.
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Extension of time by reason of error in Patent Registration
Office
83. (1) Where by reason of--
(a) circumstances beyond the control of the person concerned;
or
(b) an error or action on the part of the Patent Registration
Office,
an act in relation to an application for a patent or in proceedings
under this Act, not being proceedings in a Court, required to be
done within a certain time has not been so done, the Registrar may
extend the time for doing the act.
(2) The time required for doing an act may be extended under
this section although that time has expired.
Certificate by the Registrar
83A.  The Registrar may certify, by writing under his hand, that
an entry, matter or thing required by or under this Act to be made
or done, or not to be made or done, has or has not been made or
done, as the case may be, and such certificate shall be prima facie
evidence of the truth of the facts stated therein and shall be admissible
in evidence in all courts.
Rights of Government
84. (1) Notwithstanding anything contained in this Act--
(a) where there is national emergency or where the public
interest, in particular, national security, nutrition, health
or the development of other vital sectors of the national
economy as determined by the Government, so requires;
or
(b) where a judicial or relevant authority has determined that
the manner of exploitation by the owner of the patent or
his licensee is anti-competitive,
the Minister may decide that, even without the agreement of the
owner of the patent, a Government agency or a third person designated
by the Minister may exploit a patented invention.
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Patents
(2) The owner of the patent shall be notified of the decision of
the Minister as soon as is reasonably practicable.
(3) The exploitation of the patented invention shall be limited
to the purpose for which it was authorized and shall be subject to
the payment to the owner of the patent of an adequate remuneration
for such exploitation, taking into account--
(a) the economic value of the Minister's authorization as
determined in the decision; and
(b) where a decision has been taken under paragraph (1)(b),
the need to correct anti-competitive practices.
(4) The Minister shall make his decision under subsection (3)
after hearing the owner of the patent and any other interested
person if they wished to be heard.
(5) The exploitation of a patented invention in the field of semi-
conductor technology shall only be authorized either--
(a) for public non-commercial use; or
(b) where a judicial or relevant authority has determined that
the manner of exploitation of the patented invention, by
the owner of the patent or his licensee, is anti-competitive
and if the Minister is satisfied that the authorization
would remedy such anti-competitive practice.
(6) The authorization shall not exclude--
(a) the continued exercise by the owner of the patent of his
rights under subsection 36(1); or
(b) the issuance of compulsory licences under Part X.
(7) Where a third person has been designated by the Minister,
the authorization may only be transferred with the goodwill or
business of that person or with that part of the goodwill or business
in which the patented invention is being exploited.
(8) The exploitation of the invention by the Government agency
or the third person designated by the Minister shall be predominantly
for the supply of the market in Malaysia.
(9) Upon the request of--
(a) the owner of the patent; or
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(b) the Government agency or the third person authorized to
exploit the patented invention,
the Minister may, after hearing the parties, if either or both wish
to be heard, vary the terms of the decision authorizing the exploitation
of the patented invention to the extent that changed circumstances
justify such variation.
(10) Upon the request of the owner of the patent, the Minister
shall terminate the authorization if he is satisfied, after hearing the
parties, if either or both wish to be heard, that the circumstances
mentioned in subsection (1) which led to his decision have ceased
to exist and are unlikely to recur or that the Government agency
or the third person designated by him has failed to comply with
the terms of the decision.
(11) Notwithstanding subsection (10), the Minister shall not
terminate the authorization if he is satisfied that the need for
adequate protection of the legitimate interests of the Government
agency or the third person designated by him justifies the maintenance
of the decision.
(12) The owner of a patent, a Government agency or the third
person authorized to exploit a patented invention may appeal to
the Court against the decision of the Minister under this section.
(13) In this section "Government agency" means the Federal
Government or the Government of a State and includes a Ministry
or Department of that Government.
Refusal to grant patent by the Registrar
85.  The Registrar in the exercise of his powers shall have the
right to refuse to grant a patent for products or processes scheduled
under regulations made by the Minister under this Act where it
appears to the Registrar that the granting of such a patent would
be prejudicial to the interest or security of the nation.
Patent agents
86. (1) There shall be kept at the Patent Registration Office a
Register of Patents Agents.
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Patents
(2) No person shall carry on business, practice, act, describe
himself, hold himself out, or permit himself to be described or held
out, as a patent agent unless he is registered in the Register of
Patents Agents.
(3) The registration of a patent agent mentioned in subsection
(2) shall be in accordance with the regulations as may be prescribed
by the Minister under this Act.
(4) The appointment or change of a patent agent shall not be
effective against any third person unless it is registered in the
Register of Patents Agents.
(5) A person who has neither his domicile nor residence in
Malaysia may not proceed before the Patent Registration Office
under the provisions of this Act in respect of his patent except
through a patent agent.
Regulations
87. (1) Subject to the provisions of this Act, the Minister may
make regulations for the purpose of carrying into effect the provisions
of this Act.
(2) In particular and without prejudice to the generality of
subsection (1), such regulations may provide for all or any of the
following:
(a) to regulate the procedure to be followed in connection
with any proceeding or other matter before the Registrar
or the Patent Registration Office under this Act including
the service of documents;
(b) to classify goods including methods and processes for
the purpose of registration of patents;
(c) to make or require duplication of patents or other
documents;
(d) to secure and regulate the publishing, selling or distributing,
in such manner as the Minister may think fit, of copies
of patents and other documents;
(e) to prescribe the fees payable for applications for patents
and other fees payable for other matters prescribed under
this Act;
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(f) to prescribe forms, books, registers, documents and other
matters to be used under this Act;
(g) to regulate generally on matters pertaining to the business
of patents carried on in the Patent Registration Office
whether or not specially prescribed under this Act.
Appeal
88. (1) Any person aggrieved by any decision or order of the
Registrar or the Corporation may appeal to the Court.
(2) The same rules of procedure on appeal shall apply to ap-
peals made under subsection (1) as to appeals to the High Court
from a decision of a subordinate Court in civil matters.
Repeal and saving provisions
89.  The Registration of United Kingdom Patents Act 1951 [Act
215], the Patents Ordinance of Sarawak [Sarawak Cap. 61], the
Registration of United Kingdom Patents Ordinance of Sabah [Sabah
Cap. 124] and the Patents (Rights of Government) Act 1967 [Act
53 of 1967] are repealed:
Provided that:
(a) any subsidiary legislation made under the repealed laws
shall in so far as such subsidiary legislation is not
inconsistent with the provisions of this Act continue in
force and have effect as if it had been made under this
Act and may be repealed, extended, varied or amended
accordingly;
(b) any appointment made under the repealed laws or subsidiary
legislation made thereunder shall continue in force and
have effect as if it had been made under this Act unless
the Minister otherwise directs;
*(c) any certificate or grant issued or made, in respect of a
patent, under the repealed laws and in force immediately
prior to the coming into force of this Act shall remain
in force--
(i) so long as the original patent remains in force in
the United Kingdom; or
*NOTE--Paragraph 89(c) shall be deemed to be and to have always been an integral part of section
89 from the date of coming into force of the principal Act--see subsection 45(2) of the Patents
(Amendment) Act 1993 [Act A863].
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Patents
(ii) until the expiration of twenty years from the date
of application,
whichever is the earlier.
Transitional
*90. (1) Where an application has been made under an Act or
Ordinance repealed under section 89, the Registrar may issue a
certificate or make a grant on such application as if the Act or
Ordinance had not been repealed, and such certificate or grant
shall remain in force--
(a) so long as the original patent remains in force in the
United Kingdom; or