Patent Prosecution in Malaysia: A Guide to Substantive Examination

 

Patent Prosecution in Malaysia: A Guide to Substantive Examination

1. Introduction: The Malaysian Patent Landscape

The protection of intellectual property rights, particularly patents, serves as a cornerstone for economic development and technological advancement in Southeast Asia. For a layperson or a client entering this jurisdiction for the first time, the Malaysian patent system offers a robust framework governed by the Patents Act 1983 and the Patents Regulations 1986, both of which underwent significant transformation via the Patents (Amendment) Act 2022. This article serves as an exhaustive guide to navigating the critical phase of patent prosecution known as "Substantive Examination."

Unlike copyright, which arises automatically upon creation, or trademarks, which protect brand identity, a patent is a state-granted monopoly for a technical invention. This monopoly is not given lightly. It must be "earned" through a rigorous process of scrutiny known as examination. In Malaysia, the Intellectual Property Corporation of Malaysia (MyIPO) acts as the regulatory gatekeeper. Their role is to ensure that a patent is only granted if the invention is novel (new to the world), involves an inventive step (not obvious to an expert), and is industrially applicable.

For the applicant, the prosecution process is not merely a bureaucratic hurdle but a strategic negotiation. The choices made regarding when to request examination, and whether to defer that request can determine not only the costs incurred but the very validity and enforceability of the final patent. The 2022 amendments have fundamentally altered this strategic landscape, removing the flexibility that once allowed applicants to indefinitely pause their applications. Today, the system demands proactive management and a clear understanding of strict statutory deadlines.

This article will dissect the mechanisms of Substantive Examination, analyze the new restrictions on deferment, and provide a roadmap for managing the critical 18-month or 4-year deadlines that define the pulse of a Malaysian patent application.

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A substantive examination is the critical "make or break" phase of the patent application process where a patent examiner conducts a rigorous technical and legal review of your invention. Unlike the initial formal examination—which just checks if you filled out the paperwork correctly—this stage dives into the actual essence of your claims to determine if the invention deserves a legal monopoly. The examiner searches global databases for prior art (any existing evidence that your invention was already known) to ensure the application isn't overstepping its bounds or claiming something that already exists.

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2. What Do Examination Covers: The Patentability Requirements

To pass this phase, the examiner verifies that your application meets several strict legal criteria:

• Novelty: The invention must be "new." If even a single piece of prior art shows your exact invention before your filing date, it fails this test.
• Inventive Step (Non-Obviousness): This is often the highest hurdle. The examiner checks if your invention would have been "obvious" to a person having ordinary skill in the art (PHOSITA). It shouldn’t just be a logical next step or a simple combination of two known things.
• Industrial Applicability: The invention must be capable of being made or used in some kind of industry. It cannot be purely theoretical or a violation of the laws of physics (like a perpetual motion machine).
• Sufficiency of Disclosure: You must describe the invention clearly enough that someone else in your field could actually build and use it based solely on your written description.
• Clarity and Conciseness: The "claims"—the specific legal boundaries of your invention—must be clearly defined so the public knows exactly what they are prohibited from infringing upon.

 

3. The Architecture of Patent Deadlines

In the realm of patent law, time is the most unforgiving variable. A missed deadline typically results in the irrevocable loss of rights. To understand the strategy of examination, one must first master the timeline that governs a Malaysian patent application. This timeline varies significantly depending on the route of entry: the Direct National Filing or the PCT National Phase Entry.

3.1 The Direct National Filing Route

A "Direct" filing occurs when an applicant files a patent application directly with MyIPO, without going through the international Patent Cooperation Treaty (PCT) system. This often happens when a Malaysian company files locally first, or a foreign company files in Malaysia claiming priority under the Paris Convention within 12 months of their home filing.

For these applications, the clock ticks rapidly. The most critical deadline for prosecution is the request for examination.

The 18-Month Guillotine

Under the Malaysian system, a request for substantive examination must be filed within 18 months from the filing date of the application. This is a distinct departure from many other jurisdictions where the examination deadline is calculated from the "priority date" (the date of the first filing abroad). In Malaysia, the countdown starts from the moment the application lands at MyIPO.

• The Calculation: If an application is filed on January 1, 2024, the deadline to request examination is July 1, 2025.
• The Pressure: This 18-month window is relatively short. In many cases, if the applicant has filed a corresponding application in the US or Europe, those foreign patent offices may not have issued a search report or examination result within 18 months. This forces the direct applicant in Malaysia to make a "blind" decision—investing in the Malaysian examination process before knowing if the invention is truly patentable globally.

3.2 The PCT National Phase Route

The Patent Cooperation Treaty (PCT) is a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent applicant who files a "PCT application" gets a significant extension of time before they must enter the "National Phase" in individual countries like Malaysia.

The 4-Year Strategic Window

For applications entering Malaysia via the PCT route, the deadline to request substantive examination is 4 years (48 months) from the International Filing Date.

• The Calculation:
• International Filing Date: January 1, 2020.
• National Phase Entry Deadline (30 months): July 1, 2022.
• Examination Request Deadline (48 months): January 1, 2024.
• The Advantage: This timeline offers a massive strategic advantage. By the time the 4-year mark arrives, the applicant has likely received the corresponding Clear Examination Report from the “Prescribed Countries” (Australia, UK, Japan, Republic of Korea, USA, and the European Patent Office).

3.3 Visualizing the Deadlines

The following table contrasts the critical dates for a layperson to visualize the urgency difference between the two routes.

Milestone	Direct National Filing	PCT National Phase Entry
Trigger Event	Filing Date in Malaysia	International Filing Date (PCT Filing)
Priority Deadline	12 months (to claim foreign priority)	N/A (Already claimed in PCT)
National Entry Deadline	N/A	30 months from Priority Date
Exam Request Deadline	18 Months from Filing	48 Months from International Filing
Consequence of Miss	Application Deemed Withdrawn	Application Deemed Withdrawn

3.4 The Consequences of Inaction: "Deemed Withdrawn"

If the 18-month or 4-year deadline passes without a request for examination (Form 5) or a request for deferment (Form 5B, only for MSE), the application status changes to "Deemed Withdrawn".

 

4. The Examination Dichotomy: Standard vs. Modified

Once the applicant decides to proceed, they face a pivotal choice. Malaysia operates a dual-track examination system. The applicant must choose between Substantive Examination (SE) and Modified Substantive Examination (MSE). This choice is not merely procedural; it dictates the scope of the patent, the speed of the grant, and the future defensibility of the rights.

4.1 Standard Substantive Examination (SE)

The Mechanism: Standard SE is the traditional route. It involves a full, independent review by a MyIPO examiner. The examiner conducts their own search of the prior art (existing technology) and assesses whether the invention meets the Malaysian requirements for novelty, inventive step, and industrial applicability.

The Obligation to Disclose (Form 5): Even though SE is an independent review, the Patents Act places a burden on the applicant to assist MyIPO. When filing Form 5, the applicant must provide information regarding corresponding applications filed in "Prescribed Countries" (Australia, UK, Japan, Republic of Korea, USA, and the European Patent Office).

• Applicants must submit the status of these applications, specifically any search results or patent numbers if granted.
• Strategic Note: This does not mean the Malaysian examiner will blindly follow the US or UK examiner. They may disagree. However, they use the foreign search results as a starting point to avoid duplicating work.

When to Choose SE:

1. No Foreign Grant Exists: If the application is unique to Malaysia or the foreign applications are still pending/rejected, SE is the only option.
2. Divergent Claims: An applicant may want broader claims in Malaysia than were allowed in the US or Europe. For example, the US might have cited a piece of "prior art" that is not valid in Malaysia (due to different grace period rules). SE allows the applicant to argue for broader protection based strictly on Malaysian law.
3. Independence: A patent granted via SE is standalone. It is harder for a competitor to attack it solely based on the invalidation of a foreign patent.

4.2 Modified Substantive Examination (MSE)

The Mechanism: MSE is a streamlined route designed to facilitate the grant of patents that have already been vetted by major patent offices. It is based on the principle of reliance. If a patent has already been granted for the same invention in a "Prescribed Country" (AU, UK, JP, KR, US, EP), MyIPO allows the applicant to request MSE.

The Requirement (Form 5A):

To file for MSE, the applicant submits Form 5A along with a Certified Copy of the foreign patent.

• The Catch: The claims in the Malaysian application must be amended to be "substantially the same" as the claims in the granted foreign patent. This is a strict conformity requirement. If the US patent was granted with 5 narrow claims, the Malaysian application must be amended to match those 5 narrow claims.

When to Choose MSE:

1. Cost Efficiency: The official fee for MSE (RM 640) is significantly lower than SE (RM 1,100). Furthermore, professional fees are often lower because the patent agent does not need to draft complex responses to examiner objections; the process is largely administrative.
2. Speed: Since the substantive patentability question has already been settled abroad, MyIPO examiners typically process MSE requests much faster, often leading to a grant within 12-18 months of the request.
3. Simplicity: It avoids the risk of a Malaysian examiner finding new prior art that the US examiner missed.

4.3 Comparative Analysis: Pros and Cons

Feature	Standard Substantive Examination (SE)	Modified Substantive Examination (MSE)
Official Form	Form 5	Form 5A
Official Fee	RM 1,100	RM 640
Prerequisite	None (can be first filing)	Must have a granted patent in AU, US, UK, JP, KR, or EP
Claim Scope	Flexible (Independent of foreign results)	Strict (Must match foreign grant)
Speed	Slower (Full search & exam)	Faster (Administrative check)
Risk Factor	Examiner may find new objections.	Tied to foreign patent's fate. If foreign patent is weak, Malaysian patent is weak.

Strategic Warning: Clients must be wary of the "MSE Trap." If a foreign patent is used as the basis for MSE, and that foreign patent is later revoked in its home country (e.g., via Inter Partes Review in the US), the Malaysian patent remains valid technically, but the groundwork of its grant is compromised. A savvy competitor might use the same arguments that killed the US patent to invalidate the Malaysian patent in court. SE provides a layer of insulation against this domino effect.

5. The 2022 Amendment: The New Deferment Regime

Perhaps the most critical update for any client entering the Malaysian market in 2024-2025 is the drastic change in deferment rules introduced by the Patents (Amendment) Act 2022. Prior to March 18, 2022, the system was forgiving. Applicants could request to defer any examination (SE or MSE) for almost any reason, often buying years of time to delay costs.

This option has been abolished. The new regime reflects a policy shift towards efficiency and reducing backlog. MyIPO now demands that applicants commit to the prosecution process unless there is a specific, statutorily valid reason to wait.

5.1 The Abolition of SE Deferment

Under the amended Section 29A(6) of the Patents Act, deferment of the filing of a request for examination is now only available for Modified Substantive Examination (MSE).

• The Implication: An applicant cannot request to defer a Standard Substantive Examination (Form 5).
• The Deadlines are Absolute: The 18-month (Direct) and 4-year (PCT) deadlines for Form 5 are now hard ceilings. You cannot file a "Form 5B" to delay a standard exam request simply because you are short on funds or undecided on strategy. You must file the request or lose the application.

5.2 The MSE Deferment Exception (Form 5B)

The legislature recognized a practical problem: MSE requires a foreign grant. Foreign patent offices (especially the USPTO or EPO) can take 3, 5, or even 7 years to grant a patent. If the Malaysian deadline is 4 years, an applicant might be forced to abandon the MSE route simply because the US office is slow.

To solve this, deferment is still permitted for MSE candidates.

• The Mechanism: The applicant files Form 5B (Request for Deferment).
• The Justification: The applicant must declare that they are waiting for a patent to be granted in a Prescribed Country for the same invention.
• The Fee: RM 150.
• The Result: The deadline to request examination is extended to 5 years from the Malaysian Filing Date (or International Filing Date).

5.3 The "Switch" Safety Net: Regulation 27B

A common strategic fear arises: "I deferred my Malaysian application to Year 5, waiting for a US patent. But at Year 4.9, the US patent is rejected. Now I can't file MSE, and I missed the deadline for SE. Is my application dead?"

The 2022 Amendments anticipate this. Regulation 27B introduces a "switch" mechanism or grace period.

• The Rule: If an applicant deferred filing for MSE but, by the end of the deferment period (5 years), the foreign patent has not been granted or is not available, the applicant may file a request for Standard Substantive Examination (Form 5).
• The Window: This request must be filed within 3 months from the expiry of the deferment period.
• The Procedure:
1. Deferment expires (e.g., at Year 5).
2. Applicant realizes no foreign grant is coming.
3. Applicant files Form 5 + Fee (RM 1,100) within the next 3 months.
4. Prosecution proceeds as a normal, independent examination.

Strategic Pivot: This 3-month window acts as a crucial safety net. It allows applicants to gamble on the cheaper/faster MSE route without risking total loss if the foreign patent fails to materialize. However, this requires meticulous docketing. Missing this 3-month post-deferment window is fatal.

6. Strategies for Acceleration: PPH and Expedited Exam

For some clients, deferment is the opposite of what they need. Startups seeking venture capital, or companies facing infringement, often need a granted patent immediately. Malaysia offers two powerful acceleration tools: the Patent Prosecution Highway (PPH) and Expedited Examination.

6.1 The Patent Prosecution Highway (PPH)

The PPH is a work-sharing arrangement between MyIPO and other major patent offices. It allows MyIPO to reuse the positive search and examination results from a partner office to speed up the Malaysian process.

• Partner Offices: MyIPO has PPH agreements with the Japan Patent Office (JPO), United States Patent and Trademark Office (USPTO), European Patent Office (EPO), China National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO).
• How it Works:
1. You receive a "Notice of Allowance" or a positive examination report in the US or Japan.
2. You file a request for PPH at MyIPO (often concurrent with Form 5).
3. You submit the claims allowed by the US/Japan office and a claims correspondence table showing how the Malaysian claims match.
• The Benefit: The MyIPO examiner fast-tracks the application. While they are not legally bound to grant it, the existence of a positive foreign report makes acceptance highly likely and significantly faster (often reducing the wait from years to months).

6.2 Expedited Examination (Rule 27E)

If an applicant does not have a foreign grant (and thus cannot use PPH), they can pay for speed via the Expedited Examination provision.

• The Cost: This is the premium option.
• Form 5H (Request for Approval): RM 250.
• Form 5I (Expedited Exam Fee): RM 2,800. (Total: RM 3,050 vs RM 1,100 for standard).
• The Criteria: Acceleration is not granted on demand; it must be justified on specific grounds:

1. National Interest: The invention relates to national security or public health.
2. Green Technology: The invention promotes environmental sustainability.
3. Infringement: There is evidence that a third party is infringing or preparing to infringe the invention.
4. Commercialization: The applicant needs the grant to secure funding or commercialize the product within 2 years.
5. Government Grants: The patent is a requirement for a university or research grant.

• The Trade-off: Speed cuts both ways. While the examiner issues a report quickly (often within 4 weeks of approval), the applicant is also placed on a "shot clock." The response time to examiner objections is shortened (e.g., to 3 weeks), requiring the legal team to be highly responsive.

7. Financial Planning: Fee Schedules and Management

Navigating the patent system requires budget forecasting. The costs involve Official Fees (paid to the government) and Professional Fees (paid to the patent agent). While professional fees vary, official fees are statutory.

7.1 Comprehensive Official Fee Schedule (2024/2025)

The following table details the key costs associated with examination and deferment management.

Action	Form No.	Official Fee (RM)	Strategic Note
Request for Substantive Exam	Form 5	1,100.00	Standard route.
Request for Modified Exam	Form 5A	640.00	Requires certified foreign grant.
Deferment of MSE Request	Form 5B	150.00	Extends deadline to 5 years.
Request for Expedited Exam	Form 5H + 5I	3,050.00	(250 + 2800). For urgent cases.
Reinstatement of Lapsed Patent	Form 5E	150.00	Plus surcharges; high risk.
Voluntary Amendment	Form 5B/Other	varies	Can be filed to align claims.
Restoration of Priority	Form 1A	150.00	If 12-month priority missed.
Certificate of Grant	N/A	Included	No separate grant fee (usually).
Annual Renewal (Year 2)	N/A	290.00	Fees rise annually.

7.2 The Hidden Costs of "Deemed Withdrawn"

While the RM 150 fee for Form 5E (Reinstatement) seems low, the true cost of missing a deadline is much higher.

1. Surcharges: Late payment often attracts a 100% surcharge on the original fee.
2. Legal Costs: Proving "unintentional delay" requires drafting statutory declarations and affidavits, which incurs significant attorney fees.
3. Risk of Loss: There is no guarantee MyIPO will accept the reinstatement. The cost of a lost patent is the potential loss of market exclusivity.

8. Strategic Case Studies

To contextualize these rules, we examine two hypothetical scenarios for a layperson client.

Case Study A: The "Tech Giant" (US-First Strategy)

Profile: A US software company files a PCT application, then enters Malaysia. They have a pending US application.

• Timeline:
• PCT Filing: Jan 2020.
• Malaysia Entry: July 2022 (30 months).
• Exam Deadline: Jan 2024 (48 months).
• Dilemma: By Jan 2024, the US patent is not yet granted.
• Strategy:

1. File Form 5B (Deferment) before Jan 2024. Pay RM 150.
2. This extends the deadline to Jan 2025 (5 years from filing).
3. Scenario 1: US Patent grants in Dec 2024. -> File Form 5A (MSE) immediately.
4. Scenario 2: US Patent still pending in Jan 2025. -> Utilize Regulation 27B. File Form 5 (SE) within 3 months (by April 2025). The application proceeds to full examination, ensuring it is not lost.

Case Study B: The "Local SME" (Direct Filing)

Profile: A Malaysian manufacturing company files directly with MyIPO.

• Timeline:
• Filing: Jan 2024.
• Exam Deadline: July 2025 (18 months).
• Constraint: Limited budget.
• Strategy:
• The SME cannot defer. Form 5B is not available because they have no foreign application to rely on.
• They must file Form 5 (RM 1,100) by July 2025.
• Cost Saving Tip: If the SME decides to abandon the application, the SME could save the RM 1,100 fee and future prosecution costs.

9. Conclusion: The New Rules of Engagement

The Malaysian patent system has evolved from a flexible, permissive regime to one that prioritizes efficiency and decisiveness. For the client new to this jurisdiction, the key takeaways are clear:

1. Deadlines are Rigid: The 18-month (Direct) and 4-year (PCT) deadlines are the single most critical dates in the prosecution lifecycle.
2. Deferment is Restricted: You can no longer buy time for a standard examination. Deferment is exclusively a tool for those waiting to use the cheaper Modified Examination (MSE) route.
3. The Safety Net Exists: The Regulation 27B "switch" mechanism allows you to aim for MSE but fall back on SE if foreign grants are delayed—but only if you act within the strict 3-month window.
4. Speed is Available: PPH and Expedited Examination offer viable paths for urgent commercial needs, provided the budget and documentation are in order.

Success in Malaysian patent prosecution requires not just invention, but procedural vigilance. By aligning your strategy with these statutory milestones, you ensure that your intellectual property remains a secured asset rather than a procedural casualty.

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Disclaimer: This article provides general information based on the Patents Act 1983 and Regulations as of 2025. It does not constitute legal advice. Patent deadlines and fees are subject to change. Professional counsel from a registered Malaysian patent agent is strongly recommended for specific applications.

 

Don’t Be Fooled: How to Identify Unsolicited IP Services

It has come to our attention that several of our clients have recently received unsolicited letters and invoices regarding the renewal of their Intellectual Property (IP).

Please be aware that these requests often come from private companies that are not affiliated with our firm.

How to spot these unsolicited notices: These notices are designed to look official. They often use names, acronyms, and formatting that mimic government correspondence. They may:

• Create a false sense of urgency (e.g., "Your IP will expire immediately if not paid").

• Demand payment of fees.

• Imply that you must use their specific service to secure your rights.

Official Communication Channels Please remember that as your appointed patent and trademark agents, we track your deadlines and handle your renewals. If you receive a bill from a third party, do not pay it without verifying it first.

The Reality These companies are private entities. They have no authority over your IP rights. While they may technically offer to renew your IP, they may take your money without performing the renewal.

Our Advice You have already engaged us as your IP agents to manage your portfolio. We monitor your deadlines and will always notify you well in advance when a renewal is due.

If you receive a letter asking for payment:

1. Do not pay.

2. Check the sender. Is it from our firm? Is it from an official government email?

3. Forward it to us. We can confirm if it is a legitimate requirement or a solicitation to be discarded.

Innovation with Integrity: How Boon IP Aligns with SDG and ESG Standards

In today’s global economy, Intellectual Property (IP) is more than just a legal necessity—it is a driver of sustainable economic growth. At Boon IP Enterprise, we believe that Patent and Trademark Agents play a critical role in the global ecosystem. We don’t just file paperwork; we safeguard the infrastructure of innovation.

As we move into 2026, Boon IP is proud to formalize our commitment to the UN Sustainable Development Goals (SDGs) and ESG (Environmental, Social, and Governance) principles. Here is how we are driving impact through our daily work.

The "Why": Our Commitment to the UN SDGs

Our mission aligns directly with Goal 9 (Industry, Innovation, and Infrastructure) and Goal 8 (Decent Work and Economic Growth). We view IP protection as the bridge between a raw idea and a commercially viable asset.

Bridging innovation and integrity

1. Fostering Domestic Innovation (SDG 9)

• Target 9.5 & 9.b: We actively support technology development by providing high-quality, patent drafting. Our technical team works from "scratch" to ensure inventions are robustly protected.

• Our Track Record: Since 2008, we have assisted top research institutions like the University of Malaya and Monash University Malaysia in protecting inventions that contribute to the technological infrastructure.

2. Securing Economic Growth (SDG 8)

• Target 8.3: By helping entrepreneurs secure Trademarks and Patents, we enable them to formalize their creativity into tradable assets. This increases business valuation, attracts investment, and creates high-value jobs in the economy.

3. Enabling Partnerships (SDG 17)

• Target 17.6: Patents are the currency of technology transfer. Our rigorous work ensures that technology can be safely shared, licensed, and commercialized across borders, facilitating international cooperation.

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The "How": Our Focus on ESG Governance

While SDGs define our mission, ESG principles define our operations. As a professional service provider, our strongest contribution lies in the "G" (Governance).

Clients today—especially large corporations and government bodies—need partners who are low-risk and highly compliant. Boon IP stands on a foundation of strict professional ethics.

1. Regulatory Compliance & Ethics

• As a Registered Patent Agent, we adhere to a professional code of conduct that guarantees the integrity of the IP system.

2. Data Privacy & Information Security

• We prioritize the security of our clients' trade secrets. We utilize comprehensive Non-Disclosure Agreements (NDAs) and strict data handling protocols to ensure that your "Confidential Information"—from design logic to unfiled patent claims—remains secure.

3. Anti-Corruption & Transparency

• We maintain a zero-tolerance policy towards corruption and bribery. Our business engagements are transparent, ensuring that we meet the compliance standards required by multinational corporations and government tenders. We attended the Corporate Integrity Development Programme (CIDP) and pledged compliance with the guidelines set by the Malaysian Anti-Corruption Commission (MACC).

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The Boon IP Difference: "From Scratch" to Success

Our alignment with these global goals is not just theoretical; it changes how we work with you.

Because we are committed to SDG 9 (Innovation), we take the time to draft patents from zero (the "from scratch" approach), ensuring no technical nuance is lost. Because we are committed to ESG Governance, we ensure that this drafting process is handled with absolute confidentiality and legal rigor.

Ready to protect your innovation with a partner who values integrity? Contact Boon IP Enterprise today to discuss how we can secure your intellectual property assets for a sustainable future.

Protecting Your Brand: A Business Owner's Guide to Trademarks in Malaysia

As a business owner, you pour your heart and soul into building your brand. You meticulously craft a name, logo, and identity that represents your unique offerings and resonates with your customers. But have you truly protect this invaluable asset? This is where trademarks come in.

A trademark isn't just a fancy symbol; it's a legal shield for your brand, preventing others from using something similar and confusing your customers. Without it, you leave your brand vulnerable to copycats, counterfeiting, and a diluted market presence.

So, let's break down the essentials of trademark applications in Malaysia, and how we from Boon IP, can make this crucial process seamless for you.

What You Need: Trademark Application Requirements

Before embarking on the application journey, here's what you'll typically need to have in order:

1. Your Proposed Trademark: This can be a word, phrase, logo, symbol, design, sound, smell, or even a combination of these. It must be distinctive and not descriptive of your goods or services.

2. Applicant Details: This includes the full name, address, and nationality/country of incorporation of the individual or company applying for the trademark.

3. List of Goods and Services: You'll need to specify the exact goods and/or services your trademark will be used for. These are categorized according to the international Nice Classification system. A common mistake is to be too broad or too narrow, so getting this right is crucial.

4. Date of First Use (if applicable): If you've already been using the trademark in Malaysia, you'll need to provide the date of first use.

The Trademark Application Process in Malaysia

The journey from application to registration involves several key steps, each with its own nuances:

1. Trademark Search (The Crucial First Step): Before you even think about filing, we must conduct a search of the MyIPO database. This step is designed to discover if any identical or similar trademarks have already been registered or are pending registration. A search saves you from potential rejection down the line and ensures your proposed brand name is available for you to own.

2. Filing the Application: Once the search confirms your mark is clear, we proceed with filing the formal application with the Intellectual Property Corporation of Malaysia (MyIPO). It's crucial that all details are accurate and complete to avoid delays.

3. Formal Examination: MyIPO will check if your application meets all the formal requirements, such as correct classification and complete applicant details.

4. Substantive Examination: This is a critical stage where a MyIPO examiner assesses your trademark for distinctiveness and checks for any existing similar trademarks that might cause confusion. They will raise objections if there are any issues.

5. Publication: If your trademark passes the examination, it will be published in the MyIPO official gazette for a period of two months. This allows third parties who believe they might be negatively affected to file an opposition.

6. Opposition Period: During the publication period, any interested party can oppose your trademark registration. If an opposition is filed, it will lead to a formal hearing process.

7. Registration: If there are no oppositions, or if any oppositions are successfully overcome, your trademark will proceed to registration! You'll then receive a Certificate of Registration, confirming your exclusive rights for 10 years from the filing date.

The entire process can take anywhere from 9 months to several years, depending on various factors like objections or oppositions.

The Undeniable Benefits of Trademark Registration

Why go through this process? The benefits are significant and long-lasting:

• Exclusive Rights: You gain the exclusive right to use your trademark in relation to the registered goods and services. This means others cannot use it without your permission.

• Legal Protection: A registered trademark provides you with legal recourse to prevent infringement. You can take action against those who copy or imitate your brand.

• Brand Value and Asset: Your trademark becomes a valuable intellectual property asset that can be licensed, sold, or used as collateral. It significantly enhances your brand's equity and market value.

• Consumer Recognition & Trust: A registered trademark builds trust and confidence with your customers. They know they are buying genuine products or services from you.

• Deterrent to Infringement: The presence of a registered trademark (often indicated by the ® symbol) acts as a strong deterrent against potential infringers.

• Expansion Opportunities: With a registered trademark in Malaysia, it becomes easier to expand your brand internationally.

How We Can Help You – Why Choose Boon IP

Navigating the complexities of trademark law can be daunting for business owners who already have so much on their plate. This is where a dedicated and experienced trademark agent from Boon IP, becomes your invaluable partner.

• Expert Guidance: We will guide you through every step of the process, from initial search and filing to overcoming objections and handling oppositions.

• Strategic Advice: We don't just fill out forms. We provide strategic advice on the registrability of your trademark, the appropriate classification of goods and services, and the best way to protect your brand in the long term.

• Thorough Due Diligence: Before filing, we conduct trademark searches to assess the availability and distinctiveness of your proposed trademark, significantly reducing the risk of objections or oppositions.

• Efficient Process Management: We ensure all deadlines are met, all paperwork is meticulously prepared, and communication with MyIPO is handled promptly and effectively.

• Cost-Effective Solutions: By getting it right the first time, we help you avoid costly mistakes and delays that can arise from improperly filed applications.

• Personalized Service: At Boon IP, you're not just another case number. We provide personalized attention and am always available to answer your questions and address your concerns.

Your brand is your business's identity and future. Don't leave it unprotected. Let's work together to secure your brand's legacy.

Ready to protect your brand? Contact Boon IP today for a consultation! ---

The Myth of the 'International Trademark': A Malaysian Business Owner's Guide to the Madrid Protocol

As a trademark agent with 18 years of experience, one of the most exciting conversations I have with clients is about taking their brand global. Their business is thriving in Malaysia, and they have their sights set on markets like Singapore, China, the US, or Europe. Inevitably, the question arises: "How do I get an 'international trademark'?"

It's a question filled with ambition, but it's based on a fundamental misunderstanding. And today, I want to clarify it for every Malaysian business owner looking to expand.

The single most important thing to understand is this: There is no such thing as a single, worldwide trademark that protects you everywhere.

Trademark rights are, and always have been, territorial.

Think of it this way: your Malaysian company registration allows you to do business in Malaysia. It doesn't grant you the right to operate in Indonesia. Similarly, your trademark registration with the Intellectual Property Corporation of Malaysia (MyIPO) gives you exclusive rights to use that brand within the borders of Malaysia. It offers no protection in Thailand, Australia, or any other country.

To be protected in another country, you must register your trademark in that specific country, according to its national laws.

"So," my clients ask, "does that mean I have to hire lawyers in a dozen different countries and file a dozen different applications in different languages and currencies? That sounds like a nightmare."

Historically, yes. But today, there is a much more efficient solution: The Madrid Protocol.

What is the Madrid Protocol? A Centralised International Trademark Filing System, Not a Global Trademark

The Madrid Protocol is not a magic wand that grants you a global trademark. Instead, it is a highly efficient international filing procedure.

Administered by the World Intellectual Property Organization (WIPO) in Geneva, the Madrid Protocol is an international treaty that allows a trademark owner to seek protection in over 130 member countries by filing a single application through their home trademark office.

125 Years of Madrid System reached in 2016 (WIPO)

It's best to think of it as a central post office for trademarks. Instead of mailing separate application packages to every country yourself, you submit one package (your international application) to your local post office (MyIPO). You provide a list of addresses (the countries you want to be protected in), and the central post office (WIPO) ensures your application is dispatched to each of those national trademark offices.

To further deepen my understanding and expertise in this critical area, I undertook and successfully completed the WIPO course on the Madrid System for the International Registration of Marks, from May 4, 2021, to June 20, 2021. This certification reinforces my commitment to providing the most current and effective guidance on international trademark strategies.

Obtained Certificate in Madrid System in 2021

How it Works for a Malaysian Business

The process follows a clear path:

1. The Foundation: A Basic Mark in Malaysia. Before you can go international, you must have either filed an application or secured a registration for the same trademark with MyIPO. This is your "basic mark."

2. The International Application. You file a single international application through MyIPO, in one language (English), and pay one set of fees in one currency (Swiss Francs). In this application, you designate the specific Madrid Protocol member countries where you want to seek protection.

3. WIPO Formal Examination. MyIPO sends your application to WIPO. WIPO checks it to ensure it complies with all formal requirements and then records it in the International Register and publishes it. They then forward your application to the national IP offices of all the countries you designated.

4. The Crucial Step: National Examination. This is where the territorial nature of trademark law comes back into play. Each designated country's IP office will examine your application according to its own domestic laws and procedures.

   • The United States Patent and Trademark Office (USPTO) will treat it as if it were a US application.

   • The China National Intellectual Property Administration (CNIPA) will examine it under Chinese law.

   • The European Union Intellectual Property Office (EUIPO) will examine it under EU law.

Each country has the full authority to grant or refuse protection. Approval in Malaysia does not guarantee approval elsewhere.

The Advantages are Clear, But So Are the Risks

Why use the Madrid Protocol?

• Efficiency: One application, one language, one currency. It dramatically simplifies the initial filing process.

• Cost-Effective: It is generally more affordable upfront than engaging separate lawyers in numerous countries simultaneously.

• Centralised Management: Future management is easier. Renewals, or changes in ownership or address, can be recorded through a single, simple procedure with WIPO.

However, my 18 years of experience have taught me to advise clients on the potential pitfalls:

• The "Central Attack" Risk: For the first five years, your entire international registration is dependent on your basic Malaysian application/registration. If your Malaysian mark is cancelled or limited for any reason during this period, your entire international registration will also be cancelled or limited.

• It's Not a Substitute for Local Counsel: If a designated country (say, Japan) issues a refusal, you will still need to hire a local Japanese trademark attorney to handle the response. The Madrid Protocol gets your foot in the door; it doesn't fight the battles for you.

• Not All Countries Are Members: While the list is extensive, some important commercial territories are not members. You will need to file directly in those places.

My Advice to You

The Madrid Protocol is a powerful and indispensable tool for international brand expansion. But it is a procedure, not a product.

Your international trademark strategy should not be about simply filing an application. It should be a considered business decision based on your goals for growth, your target markets, and your budget. Sometimes, filing directly in one or two key countries is a better first step. Other times, a broad Madrid application covering 20 countries is the right move.

Navigating this requires a strategic approach. Before you take the leap, let's have a conversation about where your brand is headed. Together, we can build a protection strategy that is robust, cost-effective, and right for your business.

Understanding Voluntary Copyright Notification in Malaysia

We were privileged to assist Reams Technologies Sdn Bhd in securing a copyright certificate for their innovative "Reams Software." This crucial step provided Reams Technologies with the added legal certainty and proof of ownership they needed for their valuable software. The successful notification of their copyright through MyIPO has empowered Reams Technologies Sdn Bhd to confidently develop, market, and license their software, knowing their intellectual property is officially recognized and protected.Reams Software is an innovative tool designed to streamline and automate building maintenance schedules, with a particular focus on preventive maintenance strategies.

Copyright Certificate of Reams Software

Picture of me and Yeoh Mun Foong, founder of Reams Technologies Sdn Bhd

Copyright is an essential legal protection for creators, safeguarding their original works from unauthorized use. In Malaysia, copyright protection is automatic upon the creation of an original work, meaning you don't have to register it to be protected. However, a voluntary copyright notification system exists through the Intellectual Property Corporation of Malaysia (MyIPO), offering significant advantages for creators.

What is Voluntary Copyright Notification?

Voluntary copyright notification is a process where creators can formally record details of their copyrighted work with MyIPO. While not mandatory for copyright protection, it serves as an official record and can be highly beneficial in proving ownership and deterring infringement.

Benefits of Copyright Notification

Opting for voluntary copyright notification offers several compelling benefits:

1. Prima Facie Evidence of Ownership: A copyright certificate issued by MyIPO acts as prima facie evidence in any legal proceedings. This means it is accepted as true unless proven otherwise, significantly strengthening your position in cases of infringement.

2. Deterrent to Infringement: The existence of an official copyright record can deter potential infringers. Knowing that the creator has formally documented their ownership makes it less likely for others to misuse the work.

3. Facilitates Licensing and Assignment: Having a clear, officially recognized record of ownership makes it easier to license your work to others or assign your copyright to another party. This provides greater certainty and security for all involved.

4. International Recognition: While Malaysian copyright is territorial, a local notification can be a useful document when seeking copyright protection or enforcing rights in other jurisdictions, often serving as a foundational piece of evidence.

5. Valuable Asset for Business: For businesses, copyrighted works like software, marketing materials, or design elements are valuable intellectual property assets. Notifying these works enhances their tangible value and can be crucial for mergers, acquisitions, or investment.

Works That Can Be Submitted for Notification

A wide range of original works can be submitted for voluntary copyright notification, including but not limited to:

• Literary Works: Novels, poems, articles, scripts, textbooks, research papers, and literary compilations.

• Artistic Works: Paintings, drawings, sculptures, photographs, and illustrations.

• Musical Works: Compositions and arrangements.

• Software: Source code, object code, and related documentation.

In conclusion, while copyright protection is automatic, voluntary copyright notification in Malaysia offers invaluable benefits that can significantly strengthen a creator's position. It provides a robust legal foundation, acts as a deterrent against infringement, and streamlines the management of your intellectual property. We encourage all creators to consider this important step in safeguarding their original works.

Mastering Intellectual Property Valuation: A Recent Course Recap

 I recently had the privilege of conducting the Kursus Penilaian Harta Intelek: Pendekatan & Strategi Penentuan Nilai Komersial (Intellectual Property Valuation Course: Approaches & Strategies for Commercial Value Determination). This two-day program, held on June 17-18, 2025, offered participants a deep dive into the critical aspects of valuing intellectual property (IP) assets.

The course, which took place from 8:30 AM to 5:00 PM at Aras 11, Menara MyIPO, PJ Sentral, was designed to equip attendees with the knowledge and practical skills needed to effectively assess the value of their organization's or business's IP assets. It was fantastic to see such an enthusiastic and engaged group of professionals eager to enhance their understanding in this vital area.

Why IP Valuation Matters

Intellectual property valuation is the process of determining the monetary worth of IP assets. It's not just an academic exercise; it's crucial for a wide range of business transactions. Whether you're looking at investments, mergers, acquisitions, or even navigating legal disputes, having a clear understanding of your IP's value is paramount. It allows businesses to make informed decisions, leverage their assets effectively, and protect their interests.

Key Approaches to IP Valuation

During the course, we explored the three primary approaches to IP valuation, each offering a unique perspective:

• Cost Approach: This method estimates the value of IP based on the costs incurred to create or replace it. While straightforward, it doesn't always capture the full commercial potential of an IP asset.

• Market Approach: This approach determines IP value by comparing it to similar IP assets that have been recently sold or licensed in the market. It relies on the availability of comparable transactions, which can sometimes be a challenge.

• Income Approach: Often considered the most comprehensive, this method calculates the present value of the future economic benefits expected from the IP. This includes factors like projected revenues, cost savings, and royalty income.

We delved into the nuances of each approach, discussing their strengths, limitations, and the scenarios where each is most appropriate. Participants engaged in practical exercises, applying these methodologies to real-world examples, which helped solidify their understanding.

Looking Ahead

The course was limited to 30 participants, ensuring an interactive and personalized learning experience. The pre-registration deadline was May 30, 2025, and successful applicants were notified via email with payment instructions.

It was truly rewarding to facilitate this course and share insights into the dynamic world of IP valuation. I believe that a strong grasp of IP valuation is becoming increasingly essential for businesses in today's knowledge-driven economy.