The RCEP sets out various requirements relating to patents including that each party provides:

  • that any person may do an act that would otherwise infringe a patent if the act is done for experimental purposes relating to the subject matter of a patented invention (experimental use exemptions)
  • a system which includes:
    • an opportunity to do at least one of the following in relation to a patent before it has been granted: (i) file an opposition against the patent application; or (ii) provide the competent authority with information that could deny novelty or inventive step of an invention claimed in the patent application
    • an opportunity to do at least one of the following in relation to a patent after it has been granted: (i) oppose the grant; (ii) seek revocation; (iii) seek cancellation; or (iv) seek invalidation
  • for the protection of new varieties of plants through an effective sui generis plant variety protection system.

In part, resulting from its obligations under RCEP as well as other treaties including TRIPS, Malaysia’s Dewan Negara approved the Patent (Amendment) Bill 2021 which came into force on 18 March 2022.

Key changes:

  • The inclusion of a new provision for post grant opposition proceedings from the date of publication of the grant of the patent (section 55A).
  • New provisions for the application for re-examination and an application by the applicant on its own volition to make an application for re-examination of the patent (Section 79 (1A) and (1B)).
  • A new section which allows for third party observations to be made relating to patentability of a patent application (Section 34A).
  • Provision for the deposit of microorganisms (Section 26C).
  • Amendments to allow for the restoration of right of the priority (Section 27(b).
  • A new section requiring that publication takes place 18 months from the priority date (Section 33D).
  • Provisions which prevents the filing of a divisional application if the initial application has been granted, refused, withdrawn or abandoned (Section 26B).
  • Provisions for compulsory licences to allow the export of a pharmaceutical product to an eligible importing country for dealing with its public health problem (Section 49).

To discuss any of these changes please contact us.