Patent
 
 
1) What is a patent?
   
 
Patent is an award granted by the government to give the patent owner certain exclusive rights in relation to his invention for a limited period of time, in exchange for publication of information about his invention.
   
   
2) What is Utility Innovation?
   
 
Utility innovation is an award granted by the government to give the innovator certain exclusive rights for a "minor" invention or any new improvement of a known product or process which does not require satisfying the test of inventiveness as required of a patent.
   
   
3) Why do I need a patent registration?
   
 
Patent is a commercial tool and valuable asset due to the rights it gives the patent owner to monopolize the patented invention for a certain duration. Hence, if your invention has a market potential and you think that other party could make profits from your invention, you need a Patent protection to prevent third party from using you invention without your authorization. Apart from the preventive action, a patent also helps the owner in building a business opportunity and attracts investment from potential investors.
   
   
4) When should I apply for a patent?
   
 
You should apply for a patent registration before you disclose your invention to the public as the disclosure could deprive your invention of novelty.
   
   
5) Can I discuss the details of my inventions with a potential inventor before filing a patent application?
   
 
Generally, an invention which is made available to the public anywhere in the world by written or oral disclosure before a patent application is filed would be considered as prior art. As a result, it would prevent the inventor from obtaining a valid patent for that invention as such invention would not comply with the “novelty” requirement. Hence, it is always important to file your invention for a patent application before disclosing the details of the invention. However, if it is inevitable to disclose your invention to a potential investor or a business partner before filing a patent application, such a disclosure should be accompanied by a confidentiality agreement.
   
   
6) What are the basic requirements for an invention to be patentable?
   
 
An invention is patentable if it is new, involves an inventive step and is industrially applicable.
   
   
7) What kind of invention cannot be patented?
   
  Under Section 13(1) of Patents Act,1983, the non-patentable invention include:
   
 
Discoveries, scientific theories, mathematical formula methods;
Plant or animal varieties or essentially biological processes for the production of plants and animals;
Schemes, rules or methods for doing business, mental acts or playing games
Methods of treatment of human or animal body by surgery or therapy and diagnostic methods
Computer programs
Presentation of information
   
   
8) What are the rights of a registered Patent Owner?
   
 
A registered patent owner has the exclusive rights to exclude others from making your product. It also confers the right to institute legal action against anyone who is exploiting or selling his/her patented invention. A registered patent owner is also at liberty to assign or transmit the patent and to conclude license contracts. Above all else, it gives you priority over other parties wanting to register their patents in Malaysia.
   
   
9) Is it advisable for me to conduct a patent search prior to my application?
   
 
Yes, you are strongly recommended to do so in order to determine whether your invention or similar inventions have been patented or is a subject application by other proprietors.
   
   
10)
What is the term of protection for a granted Patent and Utility Innovation in Malaysia?
   
 
Patent
 
Currently, a patent granted on application filed after 1 August 2001 is protected for a term of 20 years from the date of filing subject to payment of renewal fee. However, a patent granted on application filed before 1 August 2001 is protect 15 years from the date of grant, subject to payment of renewal fee.
   
Utility Innovation
 
The initial term of protection for Utility Innovation applications filed after 1 August 2001 is 10 years from the date of filing and is renewable for a further two consecutive terms of 5 years each upon proof of its commercial or industrial use in Malaysia, or satisfying the explanation if its non-use.
   
   
11) What happen after a Patent or Utility Innovation has expired?
   
 
Once your patent has expired after the maximum term of protection, or lapsed for non-payment of renewal fee, anyone may freely make, use or sell your invention.
   
   
12) Can a Patent protection in Malaysia be extended to foreign countries?
   
 
No, a registered patent in Malaysia only gives protection only in the territory of Malaysia because patents are national and independent in character. Therefore, a separate patent application must be filed in the country you seek protection within 12 months from the filing date of first application in Malaysia.
   
   
13) Is it possible to obtain a World Patent or International Patent?
   
 
No. But you can file your Patent Application (International phase) through Patent Cooperation Treaty (PCT).
   
   
14) What is PCT?
   
 
PCT is an International Treaty and it provides a unified procedure for filing a patent application internationally, whereby, a single “international” application is recognized by all of the contracting country of PCT. However, PCT does not lead to the grant of a patent.
   
   
15)
Can I apply for an International Application (International Phase) via PCT route with the Malaysian Intellectual Property Office (MyIPO)?
   
 
Yes, Malaysia became the 131st contracting state of the PCT and the PCT international application can now be filed at MyIPO with effective from 16 August 2006.
   
   
16) When does an infringement of patent occur?
   
 
An infringement occurs when a person other than the patent owner produces a product or uses a process, which falls within the scope of protection of the patent, without his/her license or consent.
   
   
17)
What are remedies for patent infringement?
   
 
The court may award damages or account of profits, make delivery up to the infringing article and/or grant an injunction to prevent further infringement.
   
 
 
 
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