UTILITY INNOVATION

The UI System
• Petty patents
• Secondary patents
• Minor inventions
• Reasons : too strict, expensive, applying
patent is time consuming
 The UI System
• Section 17
• “Utility Innovation” means any innovation
which creates 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.
 The UI System
• Application of the Act
• 17A. (1) Except as otherwise provided in this
Part, the provisions of this Act, subject to the
modifications in the Second Schedule, shall
apply to utility innovations in the same
manner as they apply to inventions.
• (2) Sections 11, 15, 26, Part X, and sections 89
and 90 shall not apply to utility innovations.
 The UI System
• UI can be protected in Malaysia provided it is
new
• There is no requirement for an inventive step.
 The UI System
• New- Applies Section 14(1) and 14(2)
• Non patentable – follow Section 13(1)
 Application Procedures
• The same as for patents
• National Filing :
• S28- Obtain filing date
• S29- Preliminary examination,Reg 26- To ensure compliance
with formality requirements
• S29A and Reg 27- Request for Substantive examination :
within 2 years from filing date
-Full substantive examination
-Modified substantive examination
>>Australia,UK,US,EPO, Japan Korea
• PCT Filing : S78A-78Q
 Differences
• Only one claim allowed: Not specifically stated but derived
from Section 28 as modified by the Second Schedule
• S. 28(1) The Registrar shall record as the filing date the receipt
of the application:
• Provided the application contains:
(a) The name and address of the applicant;
(b) The name and address of the inventor;
(c) A description;
(d) A claim or claims (substituted by “the claim”)
(e) That at the time of receipt of the application the prescribed
fee has been paid
 Other Differences- Duration of
Protection
• S. 35(1) The duration of a patent shall be twenty years from
the filing date of application.
• For UI- the duration of a certificate for a UI shall be ten years
from the filing date of the application.
• The owner of a certificate for a UI may before the expiration
of the period of ten years mentioned in subsection (1), apply
for an extension for an additional period of 5 years and may
before the expiration of the period of 5 years, apply for a
further period of 5 years.
• An application for extension under subsection (2) shall be
accompanied by an affidavit of the owner of the certificate for
a UT showing that the UI is in commercial or industrial use in
Malaysia, or satisfactorily explaining its non-use.
 Other Differences- Infringement
Proceedings
• S.59(1) (1) The owner of the patent shall have the right to
institute Court proceedings against any person who has
infringed or is infringing the patent.
• (2) The owner of the patent shall have the same right against
any person who has performed acts which make it likely that
an infringement will occur, which in this Part is referred to as
an “imminent infringement”.
• (3) The proceedings in subsections (1) and (2) may not be
instituted after five years from the act of infringement.

• For UI – 2 years
 Other Differences – Judicial
Assignment
S.19 Where the essential elements of the invention
claimed in a patent application or patent have been
unlawfully derived from an invention for which the right
to the patent belongs to another person, such other
person may apply to the Court for an order that the said
patent application or patent be assigned to him:
• Provided that the Court shall not entertain an application
for the assignment of a patent after five years from the
date of the grant of the patent.

• For UI – 3 years
 Other Differences- Compulsory
Licensing
• A patent may be subject to Compulsory Licensing
under Part X of the Act:
• Two types:
- Compulsory licensing based on “abuse of patent
monopoly”
-Compulsory licensing based on interdependance of
patents
• Section 17A(2) specifically provides that Part X shall
not apply to utility innovations.
• However, the Government use provisions of S84 is
applicable.
 Other Differences - Costs
• Application Fees:
Patent =RM200
UI = RM100
• Certificate of grant:
Patent = RM150
UI = RM100
• Request for substantive examination:
Patent = RM700
UI = RM700
 Other Differences - Costs
• Renewal fees
Patent (for 2nd Year) UI (for 3rd year)
200 120
250 160
300 160
350 200
400 200
450 240
500 240
550 280
600 400
650 600
700 700
800 800
900 1000
1000 1100
1100 1200
1200 1300
1300 1400
1400 1500
1500
 Summary
• No requirement for inventive step
• The application can only contain one claim
• Initial duration of protection is only for 10 years from
filing date; plus 5 and 5
• Need to show that UI is in commercial or industrial
use in Malaysia
• Limitation period for infringement instead of 5 years.
• Limitation period for judiacial assignment is 3 years
from grant instead of 5 years
• Not subjected to compulsory license
 Conversion of UI into Patent and
Vice Versa
• Application for patent may be converted into
application for UI – S.17B(1)
• Application for UI maybe converted into
application for patent – S.17B(2)
• Request for conversion must be filed not later
than 6 months from date of examiner’s
substantive report – s17B(4)
• Not possible to be granted both a patent and
a UI- S.17C.