Patent Opposition System in Malaysia

The update of Malaysia's intellectual property laws has ushered in a new chapter in the intellectual property landscape. The introduction of the Patents (Amendment) Bill 2022 will introduce a new administrative challenge mechanism—the patent opposition procedure. This change not only presents challenges for patent owners but also provides new opportunities for relevant stakeholders.

Effective date of opposition proceedings

The new Patent Law, which introduces opposition procedures, will enter into force on December 31, 2025.

Initiation of opposition proceedings

• Opposition Petitioner: Any interested person may file an opposition petition, provided there is no ongoing court proceedings under the Patents Act 1983 concerning the patent.
• Time limit: The notice of opposition must be filed within 6 months of publication of the patent.
• Filing requirements: The objection request must be accompanied by a detailed statement of grounds and facts, as well as evidence submitted in the form of a statutory declaration.
• Security for Costs: If the interested party is not a resident of Malaysia, he or she must provide security for costs when filing an opposition request.
  • Invention: Amount is RM2,500.00
  • Utility Model: Amount is RM1,500.00

Opposition Procedure

• Transmission/Notification of Opposition: The MyIPO examiner will send a copy of the opposition request to the patent owner.
• Opposition Response: The patent owner is required to file a Response to Opposition within 3 months from the date of the Notice of Opposition issued by the MyIPO examiner, together with a statement and evidence in the form of a statutory declaration.
• Evidence exchange: Interested parties have 3 months to submit evidence in reply and respond to the patent owner's request for amendment (if any).
• Further evidence: Either party may subsequently submit further evidence to the MyIPO examiner.
• Written submissions: The MyIPO examiner may notify the parties to submit written submissions within 3 months. After this notice is issued, no further requests for evidence will be allowed.
• Proactive amendment: The patent owner can amend the patent at the same time as filing the opposition reply.
• Opposition Decision: If the patent owner fails to file a reply to the opposition or the reply is deemed abandoned or dismissed, then the patent owner will not be able to proceed with the proceedings in the opposition and the examiner will render a decision.

Form requirements:

• Language of opposition petition: All documents submitted during opposition proceedings must be submitted in the local Malay language or English. If the evidence is not in one of these two languages, it must be accompanied by a certified translation.

Opposition decision:

• The Interim Opposition Committee will recommend to the MyIPO examiner that the patent be maintained, amended, or invalidated. If the Interim Opposition Committee recommends rejecting the patent, the MyIPO examiner may give the patent owner the opportunity to make amendments within two months, provided that the patent owner submits a reply to the opposition.
• The MyIPO examiner will make a final decision based on the recommendations of the interim objection board. If the patent owner is dissatisfied, he or she may appeal under Section 88 of the Patents Act 1983.

Objection filing fees

• Determination of costs: If the opposition seeks costs either by the objector in the notice of opposition or by the proprietor in the counter-statement, the Registrar may award costs to the successful party.
• Refund of Security for Costs: If the costs awarded to the patent owner are not paid, the patent owner may request MyIPO to recover its security for opposition costs from the non-local defendant.
• Withdrawal: An interested party may withdraw an opposition petition. However, if the withdrawal is made after the patent owner has filed a reply to the opposition, MyIPO may award costs to the patent owner if the patent owner has applied for them.