Website KMS Berwajah Baru

PATENT/UTILITY INNOVATION

Requirements, Charges and Procedure in Malaysia

Requirements for filing patent applications in Malaysia are as follows:

Full Name and Address of Applicant. For companies, have to stated country of incorporation, and nature of the company (e.g, private limited, public listed).
Full Name and Address of Inventor. How applicant derived right to patent from inventor (e.g. employment, commission, assignment, etc.) (may submit later).
Form 17 (Authorization Form) by signing (need only to sign). No need legalization.
Specification, Claims, Drawings and Abstract (in English).
Statement of Justifying the Applicant’s Right (SJAR Form) to Patent Certificate (if applicant is not inventor, for example if the inventor is the R&D consultant or engineer of the company. The form need to be signed by the CEO or MD of the company).
Date, Country and Application number of Priority Claim Application.
Certified copy of the priority application (if priority is claimed)

Schedule of Charges for Grant of Patent in Malaysia

FILING		Our Fees	Official Fees
FILING		(USD)	(USD)
1	Patent Search	66	3 (per hour)
2	Filing patent application with complete spec. (Patent Less 10 claims)	170	60
	Each claim exceeding 10 claims	5	3
3	Filing Utility Innovation	170	30
4	Each Priority Claim	10	-
5	Convert application for patent into application for utility or vice-versa	150	60
PROSECUTION & GRANT		Our Fees	Official Fees
PROSECUTION & GRANT		(USD)	(USD)
1	Requesting Substantive Examination	150	185
2	Requesting Modified Examination	150	120
3	Deferring examination	70	-
4	Filing response to Examiner's report	50	-
5	Recording and Forwarding of Certificate of Grant	55	45
6	Recording and Forwarding Certificate for a Utility Innovation	55	26
For maintaining Patent payable 12 months before expiration of:		Our Fees	Official Fees
		(USD)	(USD)
YEAR
2		70	53
3		70	66
4		70	79
5		70	92
6		70	105
7		70	118
8		70	132
9		70	145
10		70	158
11		70	171
12		70	184
13		70	210
14		70	237
15		70	263
16		70	316
17		70	368
18		70	421
19		70	474
20		70	526
Surcharge for late payment of annual fee		70	100% Of Fee Year Concerned
# Drafting of Patent Specification - From USD 1,360.00 onwards

For maintaining Utility Innovation payable 12 months before expiration of:	Our Fees	Official Fees
	(USD)	(USD)
Year
3	70	32
4	70	42
5	70	42
6	70	53
7	70	53
8	70	63
9	70	63
10	70	74
11	70	105
12	70	158
13	70	184
14	70	211
15	70	263
16	70	289
17	70	316
18	70	342
19	70	368
20	70	395
Surcharge for late payment of annual fee	70	100% of fee year concerned

Patent & Certificate for Utility Innovation Granting Procedure in Malaysia

Section 28 of Patents Act 1983

APPLICATION REQUEST

Application examined to determine filing date.

Applicant must lodge

Form 1 Request (patent) or Form 14 Request (utility innovation), prescribed fee, description, single claim for utility innovation; claim(s) for patent, and an abstract.

Section 29 of Patents Act 1983

PRELIMINARY EXAMINATION

Administrative staff report on formality requirements.

Section 29A of Patents Act 1983

SUBSTANTIVE / MODIFIED SUBSTANTIVE EXAMINATION REQUEST

Examiner conducts search and examination.

Application must lodge

Form 5 or Form 5A Request, and prescribed fee, within 2 years from filing date (Possibility for deferment).

Section 31 of Patents Act 1983

GRANT OR REFUSAL

Granted patent or utility innovation published.

Upon grant, the patentee or certificate owner has the right to institute court-proceedings against any person using the invention or utility innovation without his permission.

Section 35 of Patents Act 1983

TERM

Term of Patent is 20 years from the date of filing of application, while utility innovation is 10 years from the date of filing
(with possibility of renewal for 5 + 5 years upon proof of use).

Subject to payment of annual renewal fees by patentee or certificate owner.