The Patents (Amendment) Act 2022 was gazetted on 16 March 2022 and takes effect on 18 March 2022, save and except for the following sections:

• Section 14, paragraph 26(a) on deposit of micro-organisms.
• Section 45 and 47 on the opposition of patents.
• Section 48(a) wording changes.
• Section 55 on the amendment of Section 78o which pertains to patent applications involving micro-organisms.
• paragraph 57(b) to stipulate rules on amendments.

Amendments made:

• Contains 69 amended clauses which take into consideration the following international treaties and agreements which Malaysia is a signatory to:
• 1. The Trade-Related Aspects of Intellectual Property (TRIPS) Agreement on public health;
  2. The Regional Comprehensive Economic Partnership Agreement (RCEP);
  3. The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP); and
  4. The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of the Patent Procedure (“Budapest Treaty”).
• To extend the definition of “resident” to allow those who are within the definition to be able to apply for a patent application in Malaysia so as to include:
  1. Malaysian citizens;
  2. non-citizens who have gained permanent residency;
  3. those residing in Malaysia by virtue of a valid pass lawfully issued under the Immigration Act 1959; and
  4. corporations either incorporated or unincorporated body, established or registered under Malaysian law.
• For several sections to revise the timeframes pertaining to the following areas:
  1. judicial assignment and infringement proceeding to both limitation periods be amended from five (5) years to six (6) years; and
  2. reinstatement of lapsed patent to be reduced from two (2) years to twelve (12) months from the date of notice of the patent lapsing.

• To include a section on the deposit of the micro-organisms with any International Depository Authority which is sufficient for patent procedures before the national patent offices of all contracting states for the purpose of complying with the Budapest Treaty, as Malaysia intends to become a member of the Treaty.
• For patent applications that contain more than 10 claims, an additional prescribed fee is imposed.
• To include patents to be recognised as security interest, personal or movable property.
• To include sections on the publication of applications on when patent applications shall be published or not.
• To include several sections to comply with TRIPS Agreement’s Article 31bis obligations to allow the granting of a compulsory licence for the production, importation, and exportation of pharmaceutical products.
• To prescribe the power of the Registrar in the granting of compulsory licence regardless of contractual obligation between licensor and a licensee.
• For sections to prescribe procedures on the opposition proceedings and the institution of invalidation proceedings after filing notice of opposition.
• To establish a section on the compounding of offences under this Act.
• To amend the subsection on enabling the request for amendment of a patent and re-examination of the patent by the owner of the patent.
• Inclusion of a section on the publishing of the Intellectual Property Official Journal.
• For various sections regarding proceedings before the court, any judgements or orders made by the court and the role of the Registrar.

Link: https://lom.agc.gov.my/act-detail.php?language=BI&type=amendment&act=A1649

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