Protection for Minor Inventions- A Comparative Study of the Malaysian System and the System in Australia (Innovation Patents)

PROTECTION FOR MINOR INVENTIONS- A COMPARATIVE STUDY OF THE

MALAYSIAN SYSTEM AND THE SYSTEM IN AUSTRALIA (INNOVATION

PATENTS)

Written By Ahmad Rawi

The Writer can be contacted at

[email protected]

1. DEFINITION AND SUBJECT MATTER PROTECTED

Apart from patent proper, most Intellectual Property Protection regimes in the world also accord

a lesser type of patent protection which equivocally known as petty patent, utility innovation,

utility model, innovation patent or second tier patent protection. This paper will limit the

comparative discussion of this lesser type of patent protection to the models adopted by the

intellectual property protection regimes in Malaysia and Australia.

In Malaysia, this type of lesser patent is named (certificate of) utility innovation and is provided

for by Section 17 to Section 17C of Part IVA of the Malaysian Patents Act 1983 (Act 291) and

the Second Schedule to the same (in the following discussion, original sections referred to in the

Malaysian Patents Act 1983 (Act 291), when they apply to utility innovation, should be

construed as being modified to the relevant extent by the Second Schedule and should be read

accordingly).

As the Malaysian Act provides that the provisions of the Act, as modified by the Second

Schedule to the Act, apply to utility innovations in the same manner as they apply to inventions,

it follows that non-patentable items enumerated by Section 13 are also ineligible for protection

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accorded by certificate of utility innovation. Section 13 (as modified by the Second Schedule)

provides four categories of items which are ineligible for certificate of utility innovation

notwithstanding that they may be ‘inventions’ within the meaning of Section 12 namely

discoveries, scientific theories and mathematical methods; plant or animal varieties or essentially

biological processes for the production of plants or animals with the exclusion of man-made

living micro-organism, micro-biological processes and the products of such micro-organism

processes;schemes,rules or methods for doing business, performing purely mental acts or playing

games and lastly the methods for the treatment of human or animal body by surgery or therapy

and diagnostic methods practised on the human or animal body but does not include products

used in any such methods. The section also provides that in the event of uncertainty, the

Registrar shall have the final word on whether an item in question is eligible or not for the

protection of certificate of utility innovation.

In Australia, the new second-tier patent protection is known by the name innovation patent and is

a revamp of the old pre-2001 second-tier patent protection system known as petty patent. The

provision governing innovation patent was incorporated into the Australian Patents Act 1990

(Act No. 83 of 1990) by The Patents Amendment (Innovation Patents) Act 2000 (Act No. 140 of

2000) which came into operation on 24 May 2001. The salient features of the Australian

innovation patent will be comparatively discussed below with the Malaysian utility innovation

system.

2. PROCEDURE FOR OBTAINING PROTECTION

2.1 Procedure for obtaining certificate of utility innovation in Malaysia

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2.1.1 An applicant applying to obtain the protection for his utility innovation in

Malaysia shall make his application to the Registrar of Patents in Form 14 of the

Malaysian Patents Act 1983 together with the payment of the prescribed fee

(RM100). Effectively, this means filing the said Form 14 at the registry of any of the

Malaysian Intellectual Property Office (MyIPO) offices in Kuala Lumpur,Kota Kinabalu

or Kuching).

2.1.2 The Registrar shall then record as the filing date (which shall be the priority date for the

application), the date on which the application is received by the Registry1.The

recording of the filing date is however subject to the application fulfilling all the required

details namely the applicant’s name, the inventor’s name and address, a description of the

utility innovation for which the certificate is applied for, a claim or claims and payment

of the prescribed fee2 and where the application refers to drawing or drawings, such

drawing or drawings must be included in the application3.

2.1.3 The Registrar, however, will not issue a filing date for the application in the event that

such required details and drawings are either incomplete or missing, and instead the

Registrar will request the applicant to file the required correction or to furnish the

missing drawings or both, as the case may be. In such an event, the Registrar will only

record as the filing date, the date on which the required correction or the missing

drawings is received by the Registry4.The required correction to the details in the

1 Section 28, Malaysian Patents Act 1983

2 Section 28(1), Malaysian Patents Act 1983


4 Sections 28(3) & 28(5), Malaysian Patents Act 19833

application or the missing drawing must be filed with or furnished to the Registry

within three months from the date of the Registrar’s request5. Effects of non-compliance

to the Registrar’s request differ in that failure to file in the requested correction will

result in the rejection of the application (i.e. the application is treated as invalid)6

whereas failure to furnish the missing drawing will not. Instead, in case of the latter, the

Registrar will record the date of receipt of the application as the filing date and simply

will not make any reference to the said drawings7. Where the application is treated

as invalid by the Registrar, the Registrar will furnish in writing the reasons behind the

invalidation to the applicant8.

2.1.4 Once the application has been accorded a filing date, a certificate of filing in the form of

a copy of the filed Form 14 with the filing date and application number marked

thereon9.After the expiry of eighteen months from the filing date, the details of the

application will be made available for public inspection10.

2.1.5 Where the filing date has been accorded to the application and the application has not

been withdrawn, the Registrar will then conduct a preliminary examination (also called

‘Formalities Examination’) to determine whether the application complies with the

5 Regulations 25(2) & 25(4), Malaysian Patents Regulations 1986




9 Regulation 25, Malaysian Patents Regulations 1986


requirements related to formalities as provided for under the Act11. Where the

Registrar finds that the application does not comply with the formal requirements, the

Registrar shall notify the applicant and request him to amend the application so as to

bring it to compliance with the formal requirements and the applicant shall accordingly

amend the application within 3 (three) months from date of the Registrar’s notification12

failing which the application may be refused by the Registrar13.

2.1.6 Where all the formalities have been complied with, the Registrar will send a clear

Formalities Report to the applicant. The applicant then must request for a substantive

examination of the application14 by filing a request in Form 5 of the Malaysian Patents

Act 1983 together with the payment of the prescribed fee (RM700) within two years from

the filing date of the application15failing which the application for certificate of utility

innovation will be deemed to be withdrawn at the end of the two years period16.The

applicant may, however, request to the Registrar for a deferment of the filing of the

request for the substantive examination17 by filing in Form 5B together with the

prescribed fee provided that such request is made before the expiry of two years from the


12 Regulation 26(2), Malaysian Patents Regulations 1986


14 Section 29A, Malaysian Patents Act 1983

15 Regulation 27, Malaysian Patents Regulations 1986



filing date18 and in any case, where deferment is granted, it should not be

longer than five years from the filing date of the application19.

2.1.7 Where a request for substantive examination has been filed, The Registrar shall refer the

application to an examiner who will examine whether the application complies with the

substantive requirements as designated by the Malaysian Patents Act 1983 and the

regulations made thereunder and reports his findings to the Registrar20. The requirement

of ‘Inventive Step’ is disregarded in determining whether the application complies with

the substantive requirements of the Patents Act, 198321.

2.1.8 In the event of finding of non-compliance by the examiner, the Registrar will send a copy

of the examiner’s report (called ‘Adverse Report’) to the applicant and the applicant must

response or make amendment to the application within three months from the date of

mailing of the report22 .Where the applicant fails to amend the application so as to bring it

into conformity with the substantive requirements of the Act, the Registrar may refuse the

application.

2.1.9 Where the application, whether as originally filed or as amended, complies with the

substantive requirements of the Act, the applicant will be notified by the Registrar and

the application will be processed accordingly23 i.e. proceed to grant of certificate of


19 Regulations 27B(2)(a) & (b), Malaysian Patents Act 1983

20 Section 30(1)(a) & (b), Malaysian Patents Act 1983

21 Section 17A(2), Malaysian Patents Act 1983

22 Regulation 27C,Malaysian Patents Regulations 1986


utility innovation whereby the Registrar will issue to the applicant a certificate of utility

innovation and record the same in the Register24.

2.2 Procedure for obtaining innovation patent in Australia

2.2.1 A person wishing to obtain innovation patent for his invention may apply for the same by

filing in a patent request and such other documents as are prescribed by the Australian

Patents Act 1990 and regulations thereunder25. This paper will only limit the discussion

to application for a complete innovation patent, the other type being provisional

application.

In effect, this means lodging the patent request forms (consist of two forms) for

innovation patent and the complete specification of the invention together with the

prescribed fee (AUD 150 if lodged online and AUD 180 if by other means)26 with IP

Australia (the Australian Intellectual Property Office) Canberra Central Office or with

the General Post Offices in Hobart, Perth, Adelaide, Brisbane, Sydney and Darwin which

have been designated as IP Lodgement Points by IP Australia (either by post or in

person)27.Application can also be made online.


25 Section 29, Australian Patents Act 1990 (Act No. 83 of 1990)

26 Patent Fees.IP Australia, 2010 available at

http://www.ipaustralia.gov.au/patents/fees_index.shtml#innovation (accessed on 13 August 2010)

27 Resources.IP Australia, 2010 available at http://www.ipaustralia.gov.au/resources/contacts.shtml (accessed on 13 August 2010)

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http://www.ipaustralia.gov.au/resources/contacts.shtml

http://www.ipaustralia.gov.au/patents/fees_index.shtml#innovation

2.2.2 After the complete application for innovation patent has been filed, the patent office will

conduct a formalities check in respect of the application28. If satisfied that the application

passes the formalities check, the patent office must accept the patent request and the

accompanying complete specification29.

2.2.3 Following acceptance, the innovation patent will be granted for the invention30. In most

of the cases, innovation patent will be granted within one month from the date of

filing.

3. DIFFERENCES BETWEEN THE MALAYSIAN UTILITY INNOVATION AND

AUSTRALIAN INNOVATION PATENT (INCLUDING DIFFERENCES IN

CRITERIA FOR PROTECTION)

3.1 The Malaysian Patent System of Dual Pre-Grant Examination As Opposed To The

Absence of Pre-Grant Substantive Examination in the Australian System

Under the Malaysia system, an application for utility innovation is required to undergo

both the formalities examination and the substantive examination prior to grant. In this

regard, from the aspect of application clearance process, the Malaysian utility innovation

system does not provide any significant advantage over its standard (proper) patent’s

application clearance process in that both types of application are subjected to the same

dual pre-grant examination.

28 Section 52(1), Australian Patents Act 1990

29 Section 52(2),Australian Patents Act 1990

30 Section 62,Australian Patents Act 19908

In order to be granted an innovation patent under the Australian system, the application

will only undergo a pre-grant formalities examination. Regulation 3.2B of the Australian

Patents Regulations 1991 (Statutory Rules 1991 No. 71 as amended) [as at 1 August

2010] provides that a complete application for an innovation patent will only pass the

formalities examination if the application is in compliance with the requirements laid

down by Regulation 3.2B (1)(a) to (h) which, among others, provided that, the patent

request and patent specification must be in English and in the approved forms, the

application subject matter does not come within the categories of unpatentable subject

matter as laid down by Section 18(2) and (3) of the Australian Act.

3.2 Differences In Criteria For Protection (Malaysian Patent System Position Of

Abolishing The Requirement Of Inventive Step Altogether With Regard To Utility

Innovation As Opposed To Lowering the Threshold Of Inventive Step To That Of

Innovative Step In The Australian System)

Under the Malaysian patent system, utility innovation (which is eligible for protection) is

defined as any innovation which create a new product or process, or any new

improvement of a known product or process, which is capable of industrial application

and includes an invention as defined by Section 12 of the Malaysian Patents Act 1983.

Explaining the requirement of Section 17 in its practical application, the guidelines for

patent examination issued by the Malaysian Intellectual Property Corporation stated that

Section 17 do away with the inventive step requirement of a patent application and

instead maintain the novelty requirement of a utility innovation i.e. in order for an

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innovation to be eligible for certificate of utility innovation, there must exist a novelty of

technical nature in that innovation which provides the solution to a specific problem in

the field of technology. The exclusion of inventive step in considering eligibility of an

invention for certificate of utility innovation is expressly provided for

by Section 17A (2).

The Australian patent regime has taken a different approach. Section 18(1) (b) (ii) of the

Australian Patents Act 1990 laid down the requirement of inventive step as one of the

prerequisites of patentability (in the sense of standard patent or patent proper) of an

invention. In relation to innovation patent, the relevant standard has been lowered in that

Section 18(1A)(b)(ii) of the Australian Act laid down that for an invention to be eligible

for innovation patent, such an invention, when compared against the relevant prior art,

must involve an innovative step. Section 7(4) of the Australian Act provides that an

invention is said to involve an innovative step, if when compared to the background prior

art in the patent area before the priority date of the relevant claim, such an invention

would appear, to a person skilled in the relevant art of the invention, to vary substantially

from such background prior art in ways that make the invention workable.

The Federal Court of Australia (New South Wales District Registry) had considered the

proper construction of Section 7(4) of the Act in the case of Delnorth Pty. Ltd. vs. Dura-

Post (Aust) Pty. Ltd. [2008] FCA 122531 where Gyles J. (at para. 52) stated that :

“The first step is to compare the invention as claimed in each claim with the prior art base

and determine the difference or differences. The next step is to look at those differences

31 Available online from http://www.austlii.edu.au/au/cases/cth/FCA/2008/1225.html10

http://www.austlii.edu.au/au/cases/cth/FCA/2008/1225.html

through the eyes of a person skilled in the relevant art in the light of common general

knowledge as it existed in Australia before the priority date of the relevant claim and ask

whether the invention as claimed only varies from the kinds of information set out in

s 7(5) in ways that make no substantial contribution to the working of the invention. It

may be that there is a feature of each claim which differs from the prior art base and that

could be described as the main difference in each case but that need not be so.

Section 7(4), in effect, deems a difference between the invention as claimed and the prior

art base as an innovative step unless the conclusion which is set out can be reached. If

there is no difference between the claimed invention and the prior art base then, of

course, the claimed invention is not novel”

Gyles J. decision has been upheld by the three bench corum of the Federal Court in Dura-

Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81.

3.3 Post-Grant Substantive Examination and Certification

Under the Australian system, after the grant of innovation patent, the patent office may

proceed, either on its own initiative or upon written request from the grantee or any other

person, to examine the complete specification relating to the innovation patent (i.e.

substantive examination)32.

If after examining the innovation patent, either on its own initiative or upon the said

written request, the patent office decides that the innovation patent complies with the

requirement of the Australian Patents Act 1990 and regulations made thereunder, the

patent office must notify the person requesting the examination (either the patentee 32 Section 101A, Australian Patents Act 1990

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himself or a third party) that the innovation patent has been examined and that a

certificate of examination is to be issued. The patent office must also publish a notice

that the examination has taken place in the Australian Official Journal of Patents, issue a

certificate of examination and register the issue of the certificate33.If however, after

examining the patent, the patent office decides that there is ground for the revocation of

the patent and the ground has not been removed even after the patentee has

been given the opportunity to be heard and amend the relevant specification that is the

ground for revocation, then the patent office must revoke the patent, inform the

patentee or the relevant third party and register the revocation34.

The Australian system of post-grant substantive examination effectively provides an

interested third party with the opportunity to have the innovation patent revoked by the

patent office.

Under the Malaysian system however, where post-grant substantive examination is not

provided for, a third party wishing to invalidate a patent may institute court proceedings

against the owner of the certificate of utility innovation for the invalidation of the

patent35.

3.4 Exclusive Rights Granted and Enforcement of Rights

Under the Malaysian system, the exclusive rights granted to the holder of utility

innovation in relation to the utility innovation are the same as that granted to the holder of

33 Section 101E, Australian Patents Act 1990

34 Section 101F, Australian Patents Act 1990


a standard patent in relation to the patent namely to exploit the invention covered by the

utility innovation, to assign or transmit the utility innovation and to conclude licence

contracts36. An owner of a utility innovation has the right to institute court

proceedings against any person who has infringed, is infringing37 or is preparing to

infringe the utility innovation38.

The Malaysian system also provides pre-grant safeguard to the applicant of the utility

innovation in that after the details of a utility innovation application are being made

available for public inspection, the applicant is allowed to give a written warning to a

person who has commercially or industrially worked the invention which is the subject

matter of the utility innovation application that a utility innovation application for the

invention has been filed39.

The applicant is actually given a ‘double treat’ in that the Malaysian Patents Act provides

the successful applicant the post-grant concurrent rights of recouping his pre-grant and

post-grant economic loss brought about by unauthorised working of the invention by the

person warned above.

Firstly, the Malaysian Patents Act allows the applicant, after the grant of certificate of

utility innovation, to demand compensation from such a person (for economic loss) from

the time the person is given such a written warning40 or (where no written warning is





40 Section 34(6)(a), Malaysian Patents Act 198313

given) from the time the details of the utility innovation is made publicly available41 up

to the time the certificate of utility innovation is granted. The quantum of such

compensation is to correspond to an amount equivalent to what the applicant would have

normally received had he worked the invention himself up to the time of the grant of the

said utility innovation.

Secondly, after the grant of the utility innovation, the applicant (now the owner of the

utility innovation) is also allowed to exercise all the rights available to him as the utility

innovation’s owner against such a person.

This is not the case under the Australian system where an applicant has no right to

threaten a third party with infringement proceedings before his application for innovation

patent is granted or even after his application has been granted so long as the granted

innovation patent is not certified by the patent office42. Where such a threat is made, the

threat is regarded as unjustifiable and the person threatened may apply to the court for a

declaration that such threat is unjustifiable. Such threatened person may also apply an

injunction to stop the threat and also the recovery of damages sustained as a result of the

threat43.In those case (i.e. threat made pre-grant or post-grant prior to certification), the

court may grant the relief applied for by the threatened person44.

41 Section 34(6)(b), Malaysian Patents Act 1983

42 Section 129A, Australian Patents Act 1990

43 Section 128, Australian Patents Act 1990

44 Section 129A(2), Australian Patents Act 199014

As such, under the Australian system, in order to enforce his rights (through infringement

proceedings), the Australian innovation patent owner must have his innovation patent

certified by the patent office first45.

3.5 Public Inspection of Patent Documents

Under the Malaysian system, after the expiry of eighteen month from the priority date or

the filing date of a utility innovation application the details of the patent application shall

be available for public inspection upon payment of the prescribed fee46. Any person

wishing to inspect the details of the utility innovation before the lapse of the

eighteen months period may do so only with the written permission of the applicant

for the utility innovation concerned47.

Under the Australian system, public inspection of the innovation patent documents will

only be available after the grant of the innovation patent to the invention48.

3.6 Number of Claims Allowed

Under the Malaysian system, the unity of invention requirement applicable to patent is

specifically excluded with regard to utility innovation by Section 17A (2) and Regulation

45(3) of the Malaysian Patents Regulations 1986. This exclusion means that only a single

claim is allowed in an application for certificate of utility innovation49.

45 Section 120(1A), Australian Patents Act 1990

46 Section 34(1),Malaysian Patents Act 1983


48 Section 62(2)(b), Australian Patents Act 199015

Under the Australian system, an application for innovation patent may contain up to a

maximum of five (5) claims defining the invention50.

3.7 Duration of Patent

The Malaysian system gives a maximum of twenty (20) years protection for utility

innovation commencing from the filing date of the application for the utility innovation.

The owner of a certificate of utility innovation may apply to the patent office to have the

initial protection duration of ten (10) years be extended for another five (5) years and

thereafter for another final five (5) years51.

Under the Australian system, the period of protection of an innovation patent is eight (8)

years from the date of the patent with no provision for extension52.

4. CONCLUSION (COMMENTS AND SUGGESTION)

The second-tier patent system, known by equivocal names in different jurisdictions, is brought

into existence to offer a quick, cheap and independent of substantive examination protection

mechanism for technical inventions which would not ordinarily qualify for protection under the

standard patent regime53.

49 Item 2.2,Chapter VII (Utility Innovation) in The Guidelines For Patent Examination In The Intellectual Property Corporation Of Malaysia.Malaysian Intellectual Property Corporation (2004) p. 49.

50 Section 40(2)(c), Australian Patents Act 1990

51 Sections 35(1) and 35(2) read with Second Schedule of the Malaysian Patents Act 1983

52 Section 68, Australian Patents Act 1990

53 Suthersanen,U., Dutfield, G. and Kit, B.C. (2007), “Invention without patent : Harnessing the creative spirit in a diverse world”.Edward Elgar Publishing Ltd,UK at pg. 18

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In Australia, the trade off of these less stringent requirements are the shorter duration of

protection without possibility of extension i.e. eight (8) years single term and a ‘shell’ patent at

best i.e. unenforceable patent until after being examined and certified by the patent office.

In this regard, the owner of Malaysian certificate of utility innovation is in a comparatively better

position.

This paper submits that there is not so much in term of speedy approval and less expensive fees

offered by the Malaysian second-tier patent system with the result that no disadvantageous trade

off is imposed by the Malaysian Patent Act for those wishing to avail the protection of certificate

of utility innovation for their inventions apart from the single claim only limitation which can be

circumvented by a carefully drafted specification.

With regard to term of protection, the owner of the Malaysian certificate of innovation enjoys the

same maximum twenty years protection accorded to the owner of a Malaysian standard patent

albeit in the case of certificate of utility innovation, the five-plus-five years period after the lapse

of the first ten years must be applied for by the owner.

This paper further submits that the applicant and owner of the Malaysian certificate of utility

innovation is comparatively in better stead than the applicant and owner of a Malaysian standard

patent firstly because in the application stage the requirement for inventive step is being totally

done away with and secondly the safeguard provided by Section 15 which exclude the

application of Part X to utility innovation with the result that compulsory licences are not

available for inventions protected by certificate of utility innovation.

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However, it is submitted that the most obvious difference between the Malaysian certificate of

utility innovation and the Australian innovation patent is that the Malaysian utility innovation is

not a ‘shell’ patent in that the owner of a certificate of utility innovation may enforce his

exclusive rights in court of competent jurisdiction after the grant of the certificate of utility

innovation.

As a conclusion, based on the discussion above, this paper submits that the Malaysian utility

innovation system vary substantially from and is more practical and advantageous than the

Australian innovation patent system.

REFERENCE

Statutes and Books

1. The Malaysian Patents Act 1983 (Act 291) as at 1st November 2006

2. The Malaysian Patents Regulations 1986 as at 1st November 2006

3. The Australian Patents Act 1990 (Act No. 83 of 1990) as at 8th July 2010

4. The Australian Patents Regulations 1991 (Statutory Rules 1991 No. 71) as at 1st August 2010

5. Intellectual Property Corporation of Malaysia. Guidelines For Patent Examination In The Intellectual Property Corporation of Malaysia,2004

6. Suthersanen,U., Dutfield, G. and Kit, B.C. (2007), “Invention without patent : Harnessing the creative spirit in a diverse world”.Edward Elgar Publishing Ltd,UK

Internet

1. IP Australia website accessible at http://www.ipaustralia.gov.au/index.html

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