Utility Models: Malaysia

General Information

International Agreements : World Intellectual Property Organization (WIPO), Paris Convention, Berne Convention and signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

Novelty Requirement : Absolute novelty

Claiming priority : priority applications must be made within 12 months of the original filing date

Examination : 

  1. Preliminary Examination: the application filed will be examined for formalities compliance
  2. Substantive Examinations: Within 2 years from the filing of the application, the applicant is required to request for one of the two Substantive Examinations options: Modified or Normal Substantive Examination. 
    2.1) Modified Substantive Examination: This is a simplified examination. The substantive requirements as to novelty and industrial applicability are considered to have been met provided the Malaysian application conforms to the foreign utility innovation which forms the basis for the modified examination. 
    2.2 ) Normal Substantive Examination: the application will be examinied for compliance will all the substantive and formality requirements.

Protection Period : Ten (10) years from date of application. Please note however the owner of a certificate for a utility innovation may, before the expiration of the period of ten (10) years, apply for an extension for an additional period of five (5) years and may, before the expiration of the second period of five (5) years, apply for an extension for a further period of five (5) years. If an application for extension is applied for, the application must be accompanied by an affidavit of the owner of the certificate for the utility innovation showing that the utility innovation is in commercial or industrial use in Malaysia, or satisfactorily explaining its non-use, and shall also be accompanied by the prescribed fee imposed by the Registry.

Publication : Particulars of the utility innovation will be advertised in the Government Gazette upon grant and issuance of the certificate for a utility innovation. 

Annuities : Twelve (12) months before the date of expiration of the third (3rd) and each succeeding year during the term of the certificate, the prescribed annual fee must be paid.

Grace period for payments : six (6) months is allowed upon payment of a surcharge fee to the Registry.

Compulsory licensing : Not available

Notes :

  1. Malaysia has a one year grace period for utility innovation applications in respect of disclosures occurring within one year before the date of the application in Malaysia, where such disclosure was by reason or in consequence of an act committed by the applicant or his predecessor in title. Provided that a Malaysian application is filed within one year of the first publication or other disclosure of the invention whether that is by way of a utility innovation application or in any other way, valid protection can be obtained. 
  2. A utility innovation certificate can have only a single claim.

 

Filing Requirements

Utility Models Filing Requirements

  1. Details of the Applicant including name, address, nationality and country of incorporation 
  2. Name and address of the inventor. 
  3. Specification of the Utility Model including title, description, claim, abstract and drawings (if any).
  4. If priority is claimed: application number, filing date and name of country/ jurisdiction of the priority application.
  5. Statement justifying the Applicant's rights: a document specifying the manner of devolution (i.e. by way of assignment, employment or commission) of the Utility innovation from the inventor to the Applicant. 
  6. Agent appointment form. 

 

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