PATENTS ACT 1983

LAWS OF MALAYSIA ONLINE VERSION OF UPDATED TEXT OF REPRINT Act 291 PATENTS ACT 1983 As at 1 November 2023 This text is ONLY AN UPDATED TEXT of the Patents Act 1983 by the Attorney General’s Chambers. Unless and until reprinted pursuant to the powers of the Commissioner of Law Revision under subsection 14(1) of the Revision of Laws Act 1968 [Act 1], this text is NOT AN AUTHENTIC TEXT. 2 PATENTS ACT 1983 … … … … 28 November 1983 Date of publication in the Gazette … … … … 15 December 1983 English text authoritative P.U. (B) 198/2022 Date of Royal Assent to be … … … … Latest amendment made by Act A1649 which came into operation on … … … … 18 March 2022; except sections 14 and 55, 30 June 2022 PREVIOUS REPRINT First Reprint … … … … … 2001 Second Reprint … … … … … 2006 3 LAWS OF MALAYSIA Act 291 PATENTS ACT 1983 ARRANGEMENT OF SECTIONS PART 1 PRELIMINARY Section 1. Short title, commencement and 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 4 Laws of Malaysia ACT 291 Section 12. Meaning of “invention” 13. Non-patentable inventions 14. Novelty 15. Inventive step 16. Industrial application PART IVA UTILITY INNOVATIONS 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. (Deleted) Patents 5 Section 26B. Division of application 26C. Deposit of microorganisms 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 31A. Certified or non-certified copy of patent application or patent 32. Register of Patents 32A. Notice of trust in Register 33. Examination of Register and copies of or extracts from Register 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 33D. Publication of application 34. Public inspection 34A. Third party observation 35. Duration of patent 35A. Reinstatement of a lapsed patent 35B. Applicant or Patent Registration Office may request for international search 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 6 Laws of Malaysia ACT 291 PART VIII PATENT APPLICATION AND PATENT AS OBJECT OF PROPERTY Section 39. Assignment, transmission and security interest transaction 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 PART X COMPULSORY LICENCES 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 Registrar 52. Scope of compulsory licence 52A. Grant of compulsory licence shall not give rise to breach of contract 53. Limitation of compulsory licence 54. Amendment, cancellation and surrender of compulsory licence Patents 7 PART XI SURRENDER, OPPOSITION AND INVALIDATION OF PATENT Section 55. Surrender of patent 55A. Opposition of patent 56. Invalidation of patent 56A. Invalidation proceedings after filing notice of opposition 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 23 A 62B. Publication of information in contravention of Registrar’s directions 63. Falsification of Register, etc. 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 8 Laws of Malaysia ACT 291 PART XIV POWERS RELATING TO ENFORCEMENT Section 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. 76A. Compounding of offences 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. Person eligible for international application 78G. Filing of an international application 78H. (Deleted) 78I. (Deleted) 78J. (Deleted) 78K. Processing of international applications 78KA. Fees Patents Section 78L. International Searching Authority 78M. International Preliminary Examination Authority 78N. International publication of international application and its effect 78O. Entering the national phase 78OA. Reinstatement 78P. (Deleted) 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 86A. Intellectual Property Official Journal 87. Regulations 87A. Directive or practice notice by Registrar 88. Appeal 88A. Costs of proceedings before court 88B. Protection against suit and legal proceedings 88C. Service of application, order or judgement on Registrar 88D. Registrar not to be made party to certain proceedings 88E. Power to amend Schedule 89. Repeal and saving provisions 90. Transitional 9 10 Laws of Malaysia Section FIRST SCHEDULE (Deleted) SECOND SCHEDULE ACT 291 11 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, commencement and application 1. (1) This Act may be cited as the Patents Act 1983 and shall come into force on such date as the Minister may, by notification in the Gazette, appoint. (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. 12 Laws of Malaysia ACT 291 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 [Act 617]; “Assistant Registrar” means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection 8(2) or (3); “authorized 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; “Council for TRIPS” means the council established under the TRIPS Agreement; “Court” means the High Court, or Judge thereof; “Deputy Registrar” means the person appointed or deemed to have 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; Patents 13 “International Depositary Authority” means a depositary institution which has acquired the status of international depositary authority under the Budapest Treaty; “microorganism” means any organism of microscopic size and parts of an organism of microscopic size, including sterile organism, virus and viroid; “Minister” means the Minister for the time being charged with the responsibility for intellectual property; “Official Journal” means the Intellectual Property Official Journal published by the Registrar under section 86A; “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; “pharmaceutical product” means— (a) any patented product; or (b) any product manufactured through a patented process, of the pharmaceutical sector that includes active ingredient necessary for its manufacture and diagnostic kit needed for its use; “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; 14 Laws of Malaysia ACT 291 “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); “resident” includes— (a) a citizen of Malaysia who is residing in Malaysia; (b) a non-citizen of Malaysia who— (i) has obtained permanent resident status in Malaysia and is ordinarily residing in Malaysia; or (ii) is residing in Malaysia by virtue of a valid pass lawfully issued to him under the Immigration Act 1