Many major jurisdictions throughout the world have long adopted a patent prosecution legal framework which provision for formally recording third party observations (TPOs) in respect of patentability of a patent application. Such jurisdictions include the United States, United Kingdom and Europe.
On 18 March 2022, Malaysia joined these jurisdictions with the coming into effect of new legislation to provide a mechanism for a third party to file objections and evidence against a pending patent application which, if successful, can result in limitation or refusal of the patent application.
Who Can File TPOs?
A natural person or a legal entity can file TPOs with the Malaysian Intellectual Property Office (MyIPO) in relation to ongoing proceedings of a Malaysian patent application. However, that person or legal entity cannot be an applicant of the patent application.
Persons filing TPOs can do so anonymously without identifying themselves. This is advantageous if they do not wish the patent applicant to find out who is behind the TPOs.
TPOs is usually made by submitting prior art documents that bear relevance to patentability of a patent application prosecuted before the MyIPO accompanied with observations made by the third party in relation to novelty and inventive step (i.e. patentability) of a patent application in view of the submitted prior art documents.
Why are TPOs important to inventors and entities seeking to patent their inventions?
The provision of TPOs during prosecution of a patent application has a profound implication to a patent applicant and its competitors’ alike, as interested parties are empowered to affect the scope of a patent application, if not cause refusal of the patent application during the prosecution stage with the MyIPO without having to resort to costly post grant invalidation and infringement court proceedings.
In view of this, inventors and entities seeking to patent their inventions are urged to continue evaluating patentability of products and/or methods in their invention disclosures by comprehensive prior art search and analysis. This aids to an informed decision making to proceed with an application for a patent for products and/or methods of high novelty and inventive step standards and makes it more difficult for any third party to challenge during pendency of a patent application.
Moreover, inventors and patent owners seeking to protect their interest can take proactive measures by engaging watching services of a patent agent to identify if there are any patent applications prosecuted before the MyIPO that may be in conflict with their patented or patent pending product or process. In the event conflicting patent applications are identified, TPOs can be made against these conflicting patent applications to affect a change in the scope of these patent applications or in the best-case scenario, cause these patent applications to be refused for lacking novelty and inventive step.
Why do TPOs represent an improvement in the Malaysian Patent System?
Submission of prior art or evidence to challenge patentability of a patent application by way of TPOs aids patent examiners in ascertaining whether the claimed invention in a patent application is in indeed patentable or otherwise.
This in view of the fact that prior art comprises everything disclosed to the public, anywhere in the world and it may not be possible for patent examiners to identify each and every relevant prior art on their own during the examination process. As a result, patent applications that overcome challenges of TPOs would be less likely to be invalidated after grant.
Moreover, TPOs allow members of the general public to actively participate in the patent prosecution process and rightly so as the grant of a patent to a patent application confers a monopoly to the patent applicant in relation to making, using and offering for sale of the patented product and/or process, which is a matter of public interest.
What is the new legislation concerning TPOs in the Malaysian Patent System?
The Patents (Amendment) Act 2022 which came into force on 18 March 2022 introduces a new Section 34A and Regulation 28A, which now formally provides for the submission and consideration of TPOs for pending patent applications, enabling third parties to submit prior art that might be of relevance for assessing novelty and inventive step of the subject matter claimed in a patent application.
How and when can TPOs be lodged?
According to the new provision under Section 34A and Regulation 28A of the Malaysian Patents Act and Regulations, any person who wishes to make TPOs on a Malaysian patent application can lodge an official request before the expiry of a period of three (3) months from the date of publication of a patent application, provided the patent application is a straightforward convention or non-convention national patent application.
On the other hand, for a PCT derived national phase entry, the filing of TPOs shall be made no later than 3 months from the date of national phase entry. Any interested party may make an official request for TPOs on its own volition or by appointing a patent agent. The official request shall comprise:
– a duly completed prescribed statutory form (i.e. Patent Form 23);
– an explanation on the grounds for observation.
– documentary evidence by way of a statutory declaration to support the grounds of observation; and
– prescribed official fee of MYR 150.00.
If you have any questions or need assistance on TPOs or other patent matters, please feel free to contact us at IP SENSE. Our talented team, drawn from diverse legal and technical backgrounds, takes pride in having reliable and extensive experience in securing and defending intellectual property rights in Malaysia, Southeast Asia and around the world.
