Economy
Over the past two decades the country has experienced rapid economic growth and development. Malaysia has transformed itself from an exporter of predominantly agricultural products to become one of the world's leading trading nations and one of the biggest exporters of electronic goods. Malaysia is today an affluent country by regional standards.

Foreign direct investment has been one of the key factors driving Malaysia's dynamic development over the past decades.  To further attract foreign investors, the Government has made considerable improvements to the legislative and regulatory framework. The improvements are further aimed at encouraging companies to locate their regional administrative and logistic operations in Malaysia.  Presently, Malaysia is also one of the top 5 countries for outsourcing.

Agriculture, knowledge based industries as well as the services sector are also given focus and priority to build an economy of greater diversity.

PATENT, TRADEMARK, COPYRIGHT AND INDUSTRIAL
DESIGN LAWS IN MALAYSIA

A.PATENT SYSTEM IN MALAYSIA
The grant and enforcement of patent rights in Malaysia are governed by the Patents Act 1983 (“Patents Act”) and Patent Regulations 1986.

On 16 May 2006, Malaysia deposited the instrument of accession to the Patent Co-operation Treaty (PCT) to become the 131st PCT contracting state. Therefore, effective 16 August 2006, patent protection in Malaysia can also be obtained via the PCT filing route.

Malaysia is a member of the Paris Convention. An applicant who has filed an application earlier in a Convention country may claim the filing date of the earlier application as the Malaysian filing date provided the Malaysian application is filed within 12 months of the earlier application.

1. What is Patentable in Malaysia?
For an invention to be patentable, it must be new, involves an inventive step and has industrial application.  It must also not be any of the following subject-matter which is excluded from patent protection by Section 13 of the Patents Act:

i) discoveries, scientific theories and mathematical methods;

ii).plant or animal varieties or essentially biological processes for the     production of plants or animals, other than man made
    living micro-organisms, micro biological processes and the products of such     micro organism processes;

iii) schemes, rules or methods for doing business, performing purely mental     acts or playing games;

2. Who May Apply for Grant of a Patent
The inventor is entitled to apply for a patent. If two or more inventors have jointly made an invention, a joint application shall be made which allows each inventor to claim a share in the patent rights.

If the invention was devised by an employee in the course of his employment or made pursuant to a commission, the patent rights are deemed to accrue to the employer or commissioner respectively.  Therefore, it would be the employer or the person who commissioned the invention who will have rights to apply for a patent.

3. Requirements for Filing a Patent Application in Malaysia
The following describes the local filing procedure (not via the PCT route).

The minimum requirements for securing a filing date are:

 • the full name, address and nationality of the inventor(s);
 • the full name, address and nationality of the applicant;
 • the specification (comprising of the description, claims, any available    drawings and abstract of the invention) in English; and
 • payment of the prescribed filing fee.

The below will be needed to complete filing requirements. If they are not available at the time of filing, they should be submitted as soon as possible thereafter:

i)    if priority is claimed, the application number, country and date of the       earlier application;

ii)    if the applicant is not the inventor, a statement explaining how the        applicant derived rights to the patent, for example, by way of assignment        contract, commission or employment.

If the applicant requests for a normal substantive examination, MyIPO will conduct its own search and substantive examination of the application. A request for modified substantive examination may only be filed when a corresponding United States, United Kingdom, Korean, Japanese, European or Australian patent has been granted for the same invention. Such a request must be accompanied by a certified true copy of the granted corresponding foreign patent.  If the granted patent is not in English, a certified translation in English of the same must also be submitted.

6. Grant of Patent
Upon successful examination, the patent will be granted and the Certificate of Grant issued. The patent particulars and abstract are advertised in the Government Gazette after grant.

7. Duration of Protection
The period of protection for a granted patent will depend on its filing date. If the filing date is prior to 1st August 2001 (i.e. before the coming into force of the Patents (Amendment) Act 2000), and the application was pending or granted and in force as of that date, the duration is 15 years from the date of grant or 20 years from the filing date, whichever expires later. If the filing date of the application is after 1st August 2001, the patent is protected for 20 years from the filing date. .

8. Renewals
An annual renewal fee must be paid in order to keep the patent in force. The due date for paying the annual renewal fee is the anniversary of the date of grant for both the 15 and 20 year term patents. Late renewals can be made provided they are filed within 6 months from the anniversary date subject to a surcharge of the regular official fee. If a patent lapses unintentionally, the owner may apply for the patent to be reinstated within 2 years of publication of the lapsed patent in the Government Gazette.

9. Utility Innovations
Malaysian patent law provides for the grant of utility innovations (petty patents). A utility innovation must satisfy the requirement of being new and industrially applicable, but there is no requirement for an inventive step. The term of protection, filing requirements and prosecution procedure are the same as for patents. All renewals of utility innovations beyond 10 and 15 years from the filing date is dependent on presenting evidence of commercial or industrial use or a satisfactory explanation of non-use in Malaysia.

B.TRADE MARK SYSTEM IN MALAYSIA         

1. Introduction
The grant and enforcement of trade mark rights in Malaysia are governed by the Trade Marks Act 1976 (“TMA”) and Trade Marks Regulations 1997.

Malaysia is a member of the Paris Convention. An applicant may claim the filing date of an earlier corresponding application in a Convention country as the Malaysian filing date provided the Malaysian application is made within 6 months of the earlier application.

2. What is Registrable as a Trade Mark?
Section 3 of the TMA provides for the definition of a “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these elements. Further, a mark can only be a trade mark if the mark used or proposed to be used, is used for the purpose of indicating a connection in the course of trade between the goods or services and the proprietor of the mark.

To be registrable as a trade mark, the mark must satisfy one of the following criteria stipulated in Section 10 of the TMA:

i) the name of an individual, company or firm represented in a special or    particular manner;

ii) the signature of the applicant or of the predecessor in the applicant’s     business;

iii) an invented word(s);

iv) a word which does not have any direct reference to the character or quality     of the goods or services and is not in its ordinary meaning a geographical     name or surname; or

v) the mark is distinctive

Generally, the following are not registrable as trade marks under the TMA:

i) marks identical or confusingly similar to a trade mark which through use is   associated with another proprietor;

ii) marks identical to or closely resembling marks of another proprietor and     which is already registered or applied for in relation to the same or similar     description of goods or services;

iii) marks which are not distinctive (for example, laudatory and/or descriptive     of the goods or services claimed);

iv) marks which contain a geographical indication with respect to the goods not     originating from the territory;

v)  marks which may cause confusion or deception to the trade and public;

vi) marks which are contrary to law, morality, scandalous or offensive;

vii) marks which are prejudicial to national interest or security;

viii) marks for wine and spirits which contain a geographical indication       identifying the wine or spirit, but not from the place indicated.

3.Requirements for Filing Trade Mark Applications in Malaysia
The following are the documents and particulars required for filing a trade mark application in Malaysia:

i) the full name and address of the applicant. If the applicant is a partnership    or sole proprietorship, the full names of all the partners or of the sole    proprietor must be stated;

ii) a clear representation of the mark which can be photocopied or reproduced.      If the mark is in colour, coloured representations of the mark are to be     provided;     

iii) if the mark consists of word(s) in a language other than English or the     Malaysian language, a certified transliteration and translation of those     words are required;

iv) a list of the goods or services claimed by the application.  Malaysia follows     the International Classification of Goods and Services.  Specification or     description of goods or services that are too wide or broad is not acceptable     unless supported by satisfactory evidence of use of the mark in relation to     those goods or services;  

v) If Convention priority is claimed, details of the priority filing date and     country of filing must be specified. A certified true copy of the priority     application must also be filed to complete filing requirements.  It will need     to be accompanied by a certified English translation of the same if the     priority documents are not in English. The priority documents can be filed     subsequent to the filing of the application;    

vi) A Statutory Declaration by the applicant confirming that the applicant is the     bona fide proprietor of the trade mark and that the application is filed in     good faith.  The Statutory Declaration must be affirmed by the applicant     before a Notary Public, a Judge or a Commissioner for Oaths.  The Statutory     Declaration can be submitted after the filing of the application. 

4.Examination Process
The application will be examined by MyIPO in accordance with registrability requirements set out in the TMA. If no objection is issued by the Examiner, the mark will be published in the Gazette for 2 months. If within that time, no opposition is filed by a third party, the mark will be registered and the Certificate of Registration issued.

5.Duration of Protection and Renewals
A trade mark registration is valid for an initial period of 10 years from the filing date of the application and can be renewed in perpetuity for subsequent periods of 10 years each. A late renewal may be filed subject to a surcharge of the regular renewal fee.

In the event the lapsed mark is removed from the Register, restoration may be allowed at the discretion of the Registrar subject to payment of a restoration fee as well as a penalty fee within 1 year from the date of expiration.

6.Requirement of use
After registration of the trade mark, the registrant must ensure that the mark is put to use. A registered mark may be removed from the Register if the mark is not used for a consecutive period of 3 years or more.

C.INDUSTRIAL DESIGN SYSTEM IN MALAYSIA

1.Introduction
The grant and enforcement of industrial design rights in Malaysia are governed by the Industrial Design Act 1996 (“IDA”).

As Malaysia is a member of the Paris Convention, an applicant may claim the filing date of an earlier corresponding application in a Convention country as the local filing date provided the Malaysian application is made within 12 months of the earlier application.

2.What is Registrable as an Industrial Design
Section 3 of the IDA defines an industrial design as features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye. An “article” is further defined in the IDA as any article of manufacture or handicraft and includes any part of such article or handicraft if that part is made and sold separately.

Generally, the following are not registrable as industrial designs under the IDA:
i) Designs that are contrary to public order and morality;

ii) Features of shape or configuration which are dictated solely by function or    dependent on the appearance of another article of which the article is    intended by the author of the design to form an integral part;

iii) a method or principle of construction;

iv)an integrated circuit or part of an integrated circuit.

    For a design to be registrable, it must be new.The design must not have     been disclosed to the public anywhere in Malaysia before the priority date or     the filing date in Malaysia. However, public disclosure of the design in     Malaysia shall not be prejudicial to the novelty of the design if the     disclosure was made within six months prior to the filing date of an     industrial design application:

i)   in an official or officially recognized exhibition; or

ii) by way of disclosure by a person other than the applicant or his     predecessor in title as a result of an unlawful act committed by that person

3.Requirements for Filing Industrial Design Applications in Malaysia
The following are the requirements for filing an industrial design application:

i) the full name, address and nationality of the author(s);

ii) the full name, address and nationality of the applicant;

iii) an Appointment of Agent Form (ID Form 10) signed by the applicant.  No     notarization or legalization of Form 10 is required;

iv) Six (6) identical representations of the industrial design on A4 size paper

      - If the application is for a set of articles – 7 identical representations are
        required.

      - If the representation is in the form of photographs or drawings, the size         shall be 12.5 cm x 9 cm

v) name of article and statement of novelty;

vi) Class/Sub-class number in accordance with the International Classification      for Industrial Designs;

vii) if priority is claimed, the application number, country and date of the      earlier application;

viii) if the applicant is not the inventor, a statement explaining how the       applicant derived rights to the patent, for example, by way of assignment,       commission or employment; and

ix) payment of the prescribed filing fee.

4.Examination Process
The application will be examined by MyIPO in accordance with registrability requirements set out in the IDA. If no objection is issued by the Examiner, the registration certificate will be issued about 9 – 18 months from filing of the application. The design particulars and selected drawings of the design are then published in the Gazette for 2 months.

5.Duration of Protection and Renewals
The initial term of registration for an industrial design in Malaysia is 5 years from the filing date of the application. The registration can be renewed for two further terms of 5 years each.

Late renewals can be made provided they are filed within 6 months from the anniversary date subject to a surcharge of the regular official fee. If a design registration lapses unintentionally, the owner may apply for the design to be restored within 1 year of publication of the lapsed design in the Government Gazette. Subject to the Registrar’s satisfaction that the failure to extend the term of registration by the registrant is unintentional, and that no third party opposition is filed against the owner’s restoration of the design registration, the Registrar will allow the restoration of the industrial design.

6.Multiple Industrial Design Applications
Multiple industrial design applications are allowed in Malaysia if the designs that are sought for registration belong to the same class under the Locarno Classification.

D.COPYRIGHT IN MALAYSIA

1.Introduction
Copyright protection in Malaysia is governed by the Copyright Act 1987 (“CA”).

There is no copyright registration or deposit system in Malaysia. Copyright protection in Malaysia exists regardless of the quality of the work or the purpose for which it was created.

Malaysia is a member of the Berne Convention. Thus, Malaysia accords copyright protection to nationals or residents of other Berne Convention Countries as she does to her own nationals or residents.

2.Work Eligible for Protection Under the Copyright Act 1987
For a work to be eligible for copyright protection in Malaysia, it must fulfil the following criteria:

 i)    the work is original where sufficient skill and effort have been expended        to make the work original in character;

 ii)   the work is recorded or reduced to material form;

 iii)  the work is within one of the following categories of works:

      a)      Literary works;

      b)      musical works;

      c)       artistic works;

      e)       films;

      f)      sound recordings; and

      g)      broadcasts

 iv)   the author of the work or in the case of joint ownership, any of the        authors is, at the time when the work is made, a qualified person.  A        qualified person means, in relation to an individual, a citizen or resident        of Malaysia or a Berne Convention Country and in relation to a company,        a company incorporated in Malaysia or a Berne Convention Country;

 v)    being a literary, musical, artistic, film or sound recording work, it was first         published in Malaysia or a Berne Convention Country or it was published         in Malaysia or a Berne Convention country within 30 days of its first         publication elsewhere;

 vi)   being a work of architecture, it was erected in Malaysia or a Berne        Convention Country or being any other artistic work, it is incorporated in a         building located in Malaysia or a Berne Convention Country; or

 vii)   being a broadcast, it was transmitted from Malaysia or a member country         of the World Trade Organisation. 

3.Who Owns the Copyright
Generally, ownership of a work vests in the author who created the work. However, if the work is commissioned work or made by an employee in the course of his employment, then, the copyright in the work shall be deemed to vest in the person who commissioned the work or the employer, unless there is agreement between the parties to the contrary. 

4.Exclusive Rights of the Copyright Owner

The copyright owner has the exclusive right to control the following acts in Malaysia in relation to the work and its derivative form:

 i)    reproduction in any material form;

 ii)   performance, showing or playing to the public;

 iii)  communication to the public;

 iv)  distribution to the public by sale or other transfer of ownership of copies        of the work not previously put into circulation in Malaysia; and

  v)  the commercial rental to the public.

5.Duration of Copyright Protection

Copyright is protected for the life of the author plus 50 years after his death. In the case of a work with joint authorship, the life of the author who dies last is used for the purpose of calculating the period of copyright in the work.  However, if a work has not been published during the life time of the author, copyright in the work continue to subsist until the expiration of 50 years following the year in which the work was published.

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