Restoration of patent application in Malaysia

When applying for a patent in Malaysia, if the rights may be lost due to late payment of annual fees or failure to respond on time, a request for restoration of rights may be filed. In general, MyIPO accepts the grounds of "unintentional" restoration of rights.

Reinstatement: The applicant should submit Form 5E to request reinstatement within 2 years from the date of publication of the patent expiration notice in the Gazette. The applicant must also pay the reinstatement fee and should attach evidence to support the request. MyIPO must be satisfied that the non-payment of the annual fee is due to an accident, mistake or other unforeseeable circumstances. Each case must be considered and decided based on its own facts and circumstances, and MyIPO will not make generally applicable rules for this reason.

Accident: An unforsean, unexpected and unintentional event, such as a fire that destroyed records and caused annual fee payments to be neglected.

Mistake: A mistake between the right holder and the right holder’s employees or their agents that results from an error, misjudgment or misunderstanding. It is therefore not important who made the technical mistake that led to the missed payment of the annual fee. If the mistake was made by an employee who is completely unreliable in performing even the simplest of tasks, then the mistake was unforeseeable.

Other unforeseen circumstances: For example, if the licensee has previously reliably paid the annual fee regularly each year, but suddenly decides to stop without notifying the right holder. Although the right holder may not have foreseen the non-payment, the licensee may have acted intentionally. The Malaysian Act does not specify how this situation should be handled, but MyIPO will evaluate the evidence provided by the right holder and weigh the various possibilities to decide whether to agree to restore the rights.

Instances where reinstatement requests are generally allowed:

• a) The right holder hired a professional and paid for the job, but the professional did not follow the owner’s instructions
• b) The employee fails to perform duties within the scope of his/her abilities and experience
• c) The right holder has sent instructions or requested payment of fees, but the agent or the Patent Office has not received them.
• d) The annual fee payment management system crashed, and system users were not reminded when the annual fee was due.
• e) The right holder suffers from a disease, especially a mental illness, and is unable to handle daily business
• f) Although the right holder is not at fault, he is prohibited from paying the annual fee by court order and restriction. (Note: Under UK law, such cases have been dismissed (but appealed)

MyIPO must give the applicant an opportunity for a hearing before issuing a rejection.

If the patent is restored, all annual fees and late fees must be paid, and MyIPO will publish a notice of restoration of rights in the Gazette. Section 33B of the Malaysian Patent Act provides protection for persons who implement a patent during the period of invalidity of the notice.