The Intellectual Property Corporation of Malaysia (MyIPO) has announced a Patents (Amendment) Act 2022 that comes into force on 18 March 2022. The amendments take into account Malaysia's commitments in the TRIPS Agreement (on public health), the Regional Comprehensive Economic Partnership Agreement (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), as well as to comply with the provisions of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of the Patent Procedure.
Some of the notable key changes under the amended Act are as follows:
- deferment of substantive examination is no longer available, only deferment of modified substantive examination is available on the basis that the prescribed corresponding patent to be used for modified substantive examination has not been granted;
- for post-grant amendment, the Registrar may require patentee to file a request for re-examination of the amendment, or the patentee may make such a request on his own volition;
- any person may, within the prescribed period, make observations on any matter relating to patentability of a patent application;
- certain deadlines can no longer be extended;
- it is now made clear that a divisional application cannot be filed once an application is granted, refused, deemed to be withdrawn, withdrawn, or abandoned;
- the period for reinstatement of lapsed patent (due to non-payment of renewal fee) has been shortened to 12 months instead of 2 years from the date on which a notice of the lapsing of a patent is published; and
- any interested person may now initiate opposition proceedings within the prescribed period from the date of publication of the grant of a patent by filing a notice of opposition.
We will keep you updated on the above provisions once we have more clarity and information from MyIPO.
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