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.