Legal Counsel in Malaysia – Role of Malaysian Patent Lawyer

malaysian patent agent

Job of a legal counsel in Malaysia includes being responsible for a range of legal and intellectual property (IP) related advice by providing intellectual property and legal services to local businesses. Such legal services include providing support for third party licensing of intellectual property rights, including, patents in Malaysia, trademarks in Malaysia, etc.

In addition, other responsibilities include formulating, drafting, and negotiating IP agreements, such as secrecy agreements, patent licensing agreements, technology licensing agreements, technology transfer agreements, service agreements, business partnership agreements, product development agreements, website development agreements, mobile app development agreements, website terms of use, user agreements, website terms and conditions, mobile app terms and conditions, mobile app privacy policy, outsourcing agreements, valuation of business, valuation of technology, intellectual property valuation, patent valuation, trademark valuation, brand valuation, etc.

malaysian patent agent

To protect and enforce intellectual property rights in Malaysia, lawyers, law firms, intellectual property firms, patent agents, trademark agents and other professionals are required to provide professional, timely, cost-effective and practical legal advice, including, IP advice and support to the local and global businesses interested in doing business in Malaysia.

Trademark filing and trademark registration procedure in Malaysia includes brand clearance search, Madrid protocol international trademark filing, brand protection, brand management, use, and licensing of trademarks, design rights, copyright materials, and domain names.

To protect brand name in Malaysia, it is crucial to focus on brand protection work, particularly enforcement of trademarks, coordinating with international trademark law firms for anti-counterfeiting, trademark watch, trademark opposition, trademark licensing, trademark valuation, and the like.

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Malaysia Patent Registration – Patent Searching, Drafting, Filing and Prosecution

malaysian patent agent

Patent Drafting in Malaysia

Patent drafting in Malaysia is generally done by patent attorneys registered and licensed to practice under the Patents Act,  as governed by the Malaysian Patent Office (MyIPO). As per MyIPO’s requirements, the patent specification to be filed in Malaysia should include a description that is clear and sufficient for a person having ordinary skill in the art to carry out the invention.

malaysian patent agent

The patent application drafted for filing patent in Malaysia should contain a detailed description of the invention beginning with a title of the invention, which must clearly and concisely indicate the subject matter of the innovation. In use, the title of invention as mentioned in description should be same as mentioned on the abstract and the patent request form.

The title of invention in patent application should be followed by the technical field of the new invention. In use, the field of the innovation of the claimed invention is a general broad statement that describes the art or technology field to which the invention relates.

Subsequently, while drafting patent application for Malaysia, next section of description of the invention should include discussion of prior art by way of background art. Patent attorneys and patent agents while drafting the background section of the patent specification shall describe the problems associated with the technology to which the invention relates along with disadvantages / problems pertaining to existing solutions.

After the background section, the patent drafting procedure involves writing a disclosure of the invention, wherein essential features and novel aspects of the claimed invention are included along with advantages of the invention over the existing prior art.

Thereafter, the patent application should include a specification example, whereby specific examples are discussed with reference to the description of the patent drawings or patent figures. In addition, this section should also include description of best mode of the invention as contemplated by the applicant for carrying out the invention. This section shall be supported by using examples to describe the invention along with corresponding reference to the patent drawings.

In order to complete all sections of the patent specification, after example and description of patent drawings, an explicit description of the industrial applicability of the invention shall be included. This shall describe how the invention can be utilised by the industry, which can be obvious or nonobvious depending upon patent classification that relates to the field of the invention.

Patent Claims

Patent claims for filing patent in Malaysia should define the scope of the invention clearly so that patent protection can be granted. The claims are required to be clear and concise to support the invention as disclosed in description and as illustrated in patent figures.

Patent claims are most crucial component of a patent specification and considering legal nature of claims, drafting patent claims is most challenging part of writing a patent application. Accordingly, defining scope of new innovation in patent claims is important to prevent competitors from infringing the patent rights associated with the patent specification. Too broad may be invalidated or too narrow claims may make it easy for the competitors to copy the claimed invention.

As per MyIPO guidelines, patent claims should begin from a fresh page and should be written as a single sentence. The patent office also instructs the patent applicants to include a “characterising” portion to highlight the novel and inventive features as compared to the background or prior art. Claims should further include all the novel and inventive features of the invention that are described in the description and illustrated in the patent drawings. In essence, all the patent claims of a patent application should relate to a single invention.

Patent Application – Abstract

To summarise the disclosure of patent specification, an abstract is included in the patent application to broadly describe the description of the patent claims. The purpose of the abstract is to provide an efficient instrument describing the technical field of the invention so that it can assist in searching relevant literature.

Patent Services – Malaysia

Patent agents in Malaysia provide a broad range of patent services, including, patent novelty search, patent and non-patent literature prior art search, patentability analysis, patent eligibility analysis, state of art patent search, drafting of patent specification, filing of patent application, registration of patents, maintenance of patent application, patent advisory and patent due diligence.

Patent attorneys with expertise in drafting patent applications for patent registration in Malaysia have technical, doctorate and post-doctoral qualifications and experience in respective technology fields for understanding innovative technical concepts and embodying the same into patent specifications.

The patent specification for filing patent in Malaysia is a techno legal document aimed at disclosing the subject matter of the invention and identifying the patent rights associated with the invention by way of patent claims.

The patent drafting process generally begins with the step of inventor interview, wherein the patent attorney or the patent agent gathers the information pertaining to subject matter of the invention. Subsequently, the invention information is analysed with reference to the state of the art and a prior art patent search is conducted to analyse the patentability (patent eligibility) of the invention as compared to the prior art.

Provisional patent application can be filed to begin the patent filing process whereby a preliminary broad patent is filed to secure a priority date and subsequently, a complete or non-provisional patent application is filed within 12 months of the priority date, or the date of filing provisional patent application.

Patent Registration in Malaysia

Patent registration in Malaysia is governed by the Malaysian Patent Office (MyIPO) whereby patent right is granted as an intangible property right for the monopoly of the patent for a limited amount of time. The first step of patent registration process in Malaysia involves conducting a thorough patent prior art search and performing a patentability analysis of the patent search results.

By definition, the patent protection in Malaysia indicates a product or a process or a combination thereof that provides novel ways of solving one or more problems. The patent is granted by the patent registry in Malaysia that gives an exclusive right to the patent applicant to stop others from infringing upon their patent rights.

Once a patent is granted in Malaysia, the patentee has several rights and benefits, including, right to exploit the patented invention, assign or license the patented invention, and stop others from copying, manufacturing, selling, infringing or importing the patented invention without patentee’s permission.

The term of patent in Malaysia is twenty (20) years while the term of a utility innovation in Malaysia is 10 years followed by an option to renew for additional 5 years twice from the date of filing.

About Tech Corp Group

Tech Corp Group is an international solutions provider of Patent, Technology & Intellectual Property (IP) Research Services in Asia. Originally started operations in India and Singapore, our strong and connected network of patent attorneys has expanded towards multiple locations in Asia Pacific (APAC). We work with clients worldwide and our practice areas include patent, technology and intellectual property consulting for technology companies and innovation based businesses. For legal needs of our clients, we assist them by connecting with attorneys, lawyers and law firms in desired jurisdictions. We aim to decode Patents, Technology and Intellectual Property (IP) in Asia – Japan, Korea, China, India, Singapore, Malaysia, Thailand, Indonesia, Philippines, Vietnam, Laos, Cambodia, Myanmar, Brunei.