PATENTS ACT 1983
(1) This Act may be cited as the Patents Act 1983 and shall come into force on such date as the Minister may, by notification in the Gazette , appoint.
(2) This Act shall apply throughout Malaysia.
The Patents Act 1983 serves as the foundational legal framework governing patent law in Malaysia. It outlines the rights and responsibilities of patent holders, the criteria for patentability, and the procedures for obtaining and enforcing patents.
Section 1 of the Patents Act 1983 provides the short title, commencement, and application of the Act. It states that the Act may be cited as the Patents Act 1983 and specifies the date on which it comes into force.
Section 1 establishes the legal identity of the Act and sets the stage for the subsequent sections that detail the substantive and procedural aspects of patent law in Malaysia.
While Section 1 itself does not prescribe any punishments, violations of the provisions outlined in the Act may lead to penalties as specified in other sections.
This Act shall apply to patent applications made after the commencement of this Act and to the registration of patents made on such applications.
In this Act, unless the context otherwise requires:
"appointed date" has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617]. ;
[Ins. Act A1137]
"Assistant Registrar" means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection (2) or (3) of section 8;
[Ins. Act A1137]
"authorized officer" means an officer authorized under section 68;
"Corporation" means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002;
[Ins. Act A1137]
" 4 PART II [DELETED]-4. (Deleted).
[Deleted by Act A1137]
5 PART II [DELETED]-5. (Deleted).
[Deleted by Act A1137]
6 PART II [DELETED]-6. (Deleted).
[Deleted by Act A1137]
7 PART II [DELETED]-7. (Deleted).
[Deleted by Act A1137]
7A PART II [DELETED]-7A. (Deleted).
[Deleted by Act A1137]
8 PART III ADMINISTRATION-8. Registrar, Deputy Registrars and Assistant Registrars.
(1) The Director General of the Corporation shall be the Registrar of Patents.
(2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Patents, Assistant Registrars of Patents and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3).
(3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2).
(4) Subject to the general direction and control
9 PART III ADMINISTRATION-9. Patent Registration Office.
(1) A Patent Registration Office and such number of branch offices of the Patent Registration Office as may be necessary for the purposes of this Act shall be established.
[Subs. Act A1137]
(2) (Deleted).
[Deleted by Act A1137]
(3) (Deleted).
[Deleted by Act A1137]
(4) (Deleted).
[Deleted by Act A1137]
(5) Any application or other document required or permitted to be filed at the Patent Registration Office may be filed at any branch office of the Patent Registration Office and such application or other document shall be deemed to have been filed at the
9A PART III ADMINISTRATION-9A. Examiners.
The Corporation may appoint any person, government department, unit or organization, or any foreign or international patent office or organization to be an Examiner for the purposes of this Act.
[Ins by Act A1137]
10 PART III ADMINISTRATION-10. Patent information service.
There shall be a patent information service which provides information to the public upon payment of the prescribed fee.
[Subs. Act A863]
11 PART IV PATENTABILITY-11. Patentable inventions.
An invention is patentable if it is new, involves an inventive step and is industrially applicable.
12 PART IV PATENTABILITY-12. Meaning of "invention".
(1) An invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.
(2) An invention may be or may relate to a product or process.
13 PART IV PATENTABILITY-13. Non-patentable inventions.
(1) Notwithstanding the fact that they may be inventions within the meaning of section 12, the following shall not be patentable:
(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-biological processes;
[Subs. by Act A1649:s4]
(c) schemes, rules or methods for doing business, performing purely mental acts or playing games;
(d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body:
Provided that this paragraph shall not apply to products used in any such methods.
(2) For the purpose of subsection (1), in the event
14 PART IV PATENTABILITY-14. Novelty.
(1) An invention is new if it is not anticipated by prior art.
[Am. Act A863]
(2) Prior art shall consist of:
(a) everything disclosed to the public, anywhere in the world, by written publication by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;
(b) the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent application published under section 33D on the basis of the said domestic patent application.
[Am. by Act A1649:s5]
(3) A disclosure made under paragraph (a) of subsection (2) shall be disregarded:
(a) if such disclosure occurred within one year preceding the
15 PART IV PATENTABILITY-15. Inventive step.
An invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the prior art under paragraph (a) of subsection (2) of subsection 14, such inventive step would not have been obvious to a person having ordinary skill in the art.
16 PART IV PATENTABILITY-16. Industrial application.
An invention shall be considered industrially applicable if it can be made or used in any kind of industry.
17 PART IVA UTILITY INNOVATIONS-17. Definition for the purposes of this Part and any regulations made under this Act
In relation to this Part, "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.
[Subs. Act A863, Am. Act A1088 - Prior text read - "For the purposes of this Part and any regulations made under this Act in relation to this Part, "utility innovation" means any innovation which creates a new product or process, or any new improvement of a known product or process, which can be made or used in any kind of industry, and includes an invention."]
17A PART IVA UTILITY INNOVATIONS-17A. Application.
(1) Except as otherwise provided in this Part, the provisions of this Act, subject to the modification in the Second Schedule, shall apply to utility innovation 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.
[Am. Act A1088 - Prior text read - "Sections 11, 15, 16, 26, Part X, and sections 89 and 90 shall not apply to utility innovations."]
17B PART IVA UTILITY INNOVATIONS-17B. Conversion from an application for a patent into an application for a certificate for a utility innovation, and vice versa .
[Ins. Act A863]
(1) An application for a patent may be converted into an application for a certificate for a utility innovation.
(2) An application for a certificate for a utility innovation may be converted into an application for a patent.
(3) A request to convert an application for a patent into an application for a certificate for a utility innovation or to convert an application for a certificate for a utility innovation into an application for a patent shall be filed by the applicant and shall comply with regulations made under this Act.
(4) A request for conversion under this section shall be filed with the Registrar within the prescribed period.
[Subs. by Act A1649:s6]
(4A) Without prejudice to the power of the Registrar to allow conversion, the prescribed period referred to in subsection (4) shall not be extended under section 82.
17C PART IVA UTILITY INNOVATIONS-17C. Patent and certificate for a utility inovation cannot both be granted for the same invention.
[Ins. Act A863]
(1) If an applicant for a patent has also:
(a) made an application for a certificate for a utility innovation; or
(b) been issued with a certificate for a utility innovation,
and the subject-matter of the application for a patent is the same as the subject-matter of the application mentioned in paragraph (a) or of the certificate mentioned in paragraph (b) , a patent shall not be granted until the application mentioned in paragraph (a) has been withdrawn or the certificate mentioned in paragraph (b) has been surrendered.
(2) If an applicant for a certificate for a utility innovation has also:
(a) made an application for a patent; or
(b) been granted a patent,
and the subject-matter of the application for a certificate for a util
18 PART V RIGHTS TO A PATENT-18. Right to a patent.
(1) Any person may make an application for a patent either alone or jointly with another.
(2) Subject to the provisions of this Act, the rights to a patent shall belong to the inventor.
[Am. by Act A1649:s7]
(3) Where two or more persons have jointly made an invention, the rights to a patent shall belong to them jointly.
(4) If two or more persons have separately and independently made the same invention, and each of them has made an application for a patent, the right to a patent for that invention shall belong to the person whose application has the earliest priority date.
19 PART V RIGHTS TO A PATENT-19. Judicial assignment of patent application or patent.
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 six years from the date of the grant of the patent.
[Am. by Act A1649:s8]
20 PART V RIGHTS TO A PATENT-20. Inventions made by an employee or pursuant to a commission.
(1) In the absence of any provisions to the contrary in any contract of employment or for the execution of work, the rights to a patent for an invention made in the performance of such contract of employment or in the execution of such work shall be deemed to accrue to the employer, or the person who commissioned the work, as the case may be:
Provided that where the invention acquires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract of employment or for the execution of work, as the case may be, the inventor shall be entitled to equitable remuneration which may be fixed by the Court in the absence of agreement between the parties.
(2) Where an employee whose contract of employment does not require him to engage in any inventive activity makes, in the field of activities of his employer, an invention using data or means placed at his disposal by his employer, the right
21 PART V RIGHTS TO A PATENT-21. Inventions by Government employee.
(1) Notwithstanding the provisions of subsection (3) of section 20, the provisions of that section shall apply to a Government employee or an employee of a Government organisation or enterprise unless otherwise provided by rules or regulations of such Government organisation or enterprise.
(2) In this section, "Government" means the Federal Government or a State Government.
[Ins. by Act A1649:s9]
22 PART V RIGHTS TO A PATENT-22. Joint owners.
Where the right to obtain a patent is owned jointly, the patent may only be applied for jointly by all the joint owners.
23 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-23. Requirements of application.
Every application for the grant of a patent shall comply with the regulations as may be prescribed by the Minister under this Act.
23A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-23A. Application by residents to be filed in Malaysia first.
(1) No person who is a resident shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless:
[Am. by Act A1649:s10]
(a) an application for a patent for the same invention has been filed in the Patent Registration Office not less than two months before the application outside Malaysia; and
(b) either no directions have been issued by the Registrar under section 30A in relation to the application or all such directions have been revoked.
(2) An applicat ion for the grant of a written authority by the Registrar referred to in subsection (1) shall be made by the resident in the prescribed manner together with the payment of the prescribed fee.
[Ins by Act A1649:s10]
24 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-24. Application fee.
An application for the grant of a patent shall not be entertained unless the prescribed fee has been paid to the Registrar.
25 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-25. Withdrawal of application.
An applicant may withdrawn his application at any time during its pendency by submitting to the Registrar a declaration in the form as determined by the Registrar together with the payment of the prescribed fee, and such withdrawal may not be revoked.
[Subs. Act A863; Am.by Act A1649:s11]
26 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-26. Unity of invention.
An application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
26A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-26A. (Deleted by Act A1649)
(Deleted by Act A1649:s12)
26B PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-26B. Division of application.
(1) The applicant may, within the prescribed period, make a request to the Registrar for a divisional application to divide an application into two or more applications in the form as determined by the Registrar together with the payment of the prescribed fee, provided that each divisional application shall not go beyond the disclosure in the initial application
[Subs. by Act A1649:s13]
(1A) A request for the divisional application under subsection (1) shall not be allowed by the Registrar if before the date of such request, the initial application or the immediate preceding application relating to the initial application has been:
(a) granted a patent;
(b) refused;
(c) deemed to be withdrawn;
(d) withdrawn; or
(e) abandoned.
(1B) Without prejudice to the power of Registrar to allow for divisiona
27 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-27. Right of priority.
(1) An application may contain a declaration claiming the right of priority, pursuant to treaty or Convention, of one or more earlier national, regional or international applications in respect of the same invention for which the application is made, during the period of twelve months immediately preceding the filing date of the application containing the declaration, by the applicant or his predecessor in title in or for any party to the the said international treaty or convention
[Am. Act A863; Am. by Act A1649:s15]
(1A) The period of twelve months mentioned in subsection (1) may not be extended under the provisions of section 82.
[Ins. Act A863:s.14]
(1B) Where the applicant fails to claim the right of priority during the period of twelve months referred to in subsection (1), the right of priority may be restored if:
(a) a request for restorat
27A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-27A. Priority date.
[Ins. Act A863]
(1) Subject to subsection (2), the priority date of an application for a patent is the filing date of the application.
(2) Where an application contains the declaration mentioned in section 27, the priority date of the application shall be the filing date of the earliest application whose priority is claimed in that declaration.
28 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-28. Filing date.
(1) The Registrar shall record as the filing date the date of receipt of the application:
Provided that the application contains -
(a) the name and address of the applicant;
(b) the name and address of the inventor;
(c) a description including a sequence listing, if any;
[Am. by Act A1649:s16]
(d) a claim or claims; and
(e) that at the time of receipt of the application the prescribed fee has been paid.
(1A) For the purposes of paragraph (1)(d), where the application comprises more than ten claims, each subsequent claim shall be subject to the payment of the prescribed fee.
[Ins. by Act A1649:s16]
(2) Where the Registrar finds that the application made by the applicant does not fulfil the requirement under paragraph (1)(a), (b), (c) or (d), the Registrar sh
29 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-29. Preliminary examination.
(1) Where an application for a patent has a filing date and is not withdrawn, the Registrar shall examine the application and determine whether it complies with the requiements of this Act and the regulations made under this Act which are designated by such regulations as formal requirements for the purposes of this Act.
[Subs. Act A863]
(2) If the Registrar, as a result of the examination under subsection (1), finds that not all the formal requirements are complied with, he shall give an opportunity to the applicant to make any observation on such finding and to amend the application within the prescribed period so as to comply with those requirements, and if the applicant fails to do so the Registrar may refuse the application.
29A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-29A. Request for substantive examination or modified substantive examination.
[Ins. Act A863]
(1) If an application for a patent has been examined under section 29 and is not withdrawn or refused, the applicant shall file, within the prescribed period, a request for a substantive examination of the application.
(2) If a patent or other title of industrial property protection has been granted to the applicant or his predecessor in title in a prescribed country outside Malaysia or under a prescribed treaty or Convention for an invention which is the same or essentially the same as the invention claimed in the application, the applicant may, instead of filing a request for a substantive examination, file a request for a modified substantive examination within a prescribed period.
[Am. by Act A1649:s17]
(3) A request for a substantive examination or a modified substantive examination shall be made in the form as determined by the Registrar and shall not be
30 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-30. Substantive examination and modified substantive examination.
(1) Where a request for substantive examination has been filed under subsection (1) of section 29A, the Registrar shall refer the application to an Examiner who shall:
( a ) determine whether the application complies with those requirements of this Act and the regulations made under this Act which are designated by such regulations as substantive requirements for the purposes of this Act; and
( b ) report his determination to the Registrar.
(2) Where a request for a modified substantive examination has been filed under subsection (2) of section 29A, the Registrar shall refer the application to an Examiner who shall:
( a ) determine whether the application complies with those requirements of this Act and the regulations made under this Act which are designated by such regulations as modified substantive requirements for the purposes of this Act; and
(
30A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-30A. Prohibition of publication of information which might be prejudicial to the nation.
(1) Subject to any direction of the Minister, where an application for a patent is filed or is deemed to have been filed at the Patent Registration Office and it appears to the Registrar that the application contains information the publication of which might be prejudicial to the interest or security of the nation, he may issue directions prohibiting or restricting the publication of that information or its communication whether generally or to a particular person or class of persons.
(2) Subject to any direction of the Minister, the Registrar may revoke any direction issued by him under subsection (1) prohibiting or restricting the publication or communication of any information contained in an application for a patent if he is satisfied that such publication or communication is no longer prejudicial to the interest or security of the nation.
(3) Where directions issued by the Registrar under subsection (1) are in force in respect of
31 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-31. Grant of patent.
(1) The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the performance of any act in respect of the claimed invention is prohibited by any law or regulation, except where the performance of that act would be contrary to public order or morality.
[Am. Act A1088 - Prior text read - "The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the performance of any act in respect of the claimed invention is prohibited by any law or regulation, except where the performance of that act would be contrary to public order."]
(2) Where the Registrar is satisfied that the application complies with sections 23, 29 and 30, he shall grant the patent and shall forthwith:
(a) issue to the applicant a certificate of grant of the patent and a copy of the patent together with a copy of the Examiner's final report;
31A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-31A. Certified or non-certified copy of patent application or patent.
An owner of a patent or a patent applicant may make a request to the Registrar for a certified or non-certified copy of any form or document concerning his patent application or patent filed at the Patent Registration Office in the form as determined by the Registrar together with the payment of the prescribed fee.
[Ins. by Act A1649:s19]
32 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-32. Register of Patents.
(1) The Registrar shall keep and maintain a register called the
(2) The Register of Patents shall contain all such matters and particulars relating to patents as may be prescribed
(3) The Register of Patents shall be kept in such form and on such medium as may be presribed.
32A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-32A. Notice of trust in Register.
(1) A notice of any implied or constructive trust shall neither be accepted by the Registrar nor be entered in the Register.
(2) A notice of an express trust or a beneficiary of an express trust, or both, may be accepted by the Registrar and entered in the Register.
(3) Notwithstanding subsection (2), the Registrar shall not be affected by the notice of an express trust or a beneficiary of an express trust, and failure to enter such notice in the Register does not affect any right or duty under the trust.".
[Subs. by Act A1649:s20]
33 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-33. Examination of Register and copies of or extracts from Register.
(1) Any person may make a request to the Registrar to examine the Register or to obtain certified or non-certified copies or extracts from the Register, in the form as determined by the Registrar together with the payment of the prescribed fee.
(2) In this section, "person" includes the Federal Government and a State Government.
[Subs. by Act A1649:s21]
33A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-33A. Certified copies of or extracts from Register, etc. admissible as evidence in court.
(1) The Register shall be prima facie evidence of all matters required or authorized by this Act to be entered therein.
(2) Copies of or extracts from the Register, or of or from any document or publication in the Patent Registration Office, if certified by the Registrar in writing under his hand, shall be admissible in evidence in all courts without further proof or production of the original.
(3) No person in the employment of the Corporation shall be required to attend any court for the purpose of producing:
(a) any document relating to a patent application or patent which may be obtained pursuant to the provisions of this Act; or
(b) any document which is not to be made available to any third party in accordance with this Act.".
[Ins. by Act A1649:s22]
33B PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-33B. Amendments to the Register.
(1) The Registrar may, on request made in the prescribed manner together with the payment of the prescribed fee by the owner of a patent, amend the Register:
[Am. by Act A1649:s23]
(a) by correcting any error in the name or address of the owner of the patent or the inventor; or
[Am. by Act A1649:s23]
(b) by entering any change in the name or address of the owner of the patent or the inventor.
[Am. by Act A1649:s23]
(2) Where the Register has been amended under this section, the Registrar may require the certificate of grant of the patent to be submitted to him, and may:
(a) revoke the certificate of grant of the patent and issue a new certificate of grant of the patent; or
(b) make any consequential amendments in the certificate of grant of the pa
33C PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-33C. Court may order rectification of the Register.
(1) The Court may, on the application of any aggrieved person, order the rectification of the Register by directing:
(a) the making of any entry wrongly omitted from the Register;
(b) the expunging or amendment of any entry wrongly made in or remaining in the Register; or
(c) the correcting of any error or defect in the Register.
(2) For the purposes of the application under subsection (1), the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court.
[Subs. by Act A1649:s24]
(3) Unless otherwise directed by the Court, the Registrar, in lieu of appearing and being heard, may submit to the Court a statement in writing signed by him:
(a) giving particulars in relation to the matter in issue;
(b) of the grounds of any decision given by him affe
33D PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-33D. Publication of application.
(1) Subject to section 30A, the Registrar shall publish in the Official Journal the prescribed information relating to a patent application to the extent that such information is in the possession of the Registrar:
(a) after eighteen months from the filing date, or if right of priority is claimed, the priority date of a patent application; or
(b) at the request of the applicant for an early publication before the period specified in paragraph (a) in the form as determined by the Registrar together with the payment of the prescribed fee.
(2) A patent application shall not be published under subsection (1) if:
(a) the patent application is abandoned, withdrawn, deemed to be withdrawn or refused on or before the expiry of the period specified in paragraph (1) (a) ; or
(b) the Registrar finds that the application contains any
34 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-34. Public Inspection.
[Subs. Act A1196]
(1) Where a patent application has been published under section 33D, upon receipt of a payment of the prescribed fee, the Registrar shall make available for public inspection in the prescribed manner the following information or document relating to a patent application to the extent that such information or document is in the possession of the Registrar:
(a) the name, address and description of the applicant, and the name and address of his agent, if any;
(b) the application number;
(c) the filing date of the application, and if a right of priority is claimed, the priority date, the number of an earlier application, the name of a country in which the earlier application was filed, or where the earlier application is a regional or an international application, the name of the country for which and the office at which it was filed;
34A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-34A. Third party observation.
(1) Any person may, within the prescribed period, make observations in the form as determined by the Registrar together with the payment of the prescribed fee on any matter relating to patentability of a patent application as may be prescribed and shall include the reason for such observations.
(2) In this section, "person" includes the Federal Government and a State Government.
[Ins. by Act A1649:s27]
35 PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-35. Duration of patent.
(1) Subject to subsections (1B) and (1C), the duration of a patent shall be twenty years from the filing date of the application.
[Am. Act 1196 - Prior text read - "(1) The duration of a patent shall be twenty years from the filing date of the application."]
(1A) Without prejudice to subsection (1) and subject to the other provisions of this Act, a patent shall be deemed to be granted and shall take effect on the date the certificate of grant of the patent is issued.
[Ins. Act A1088]
(1B) Where a patent application was filed before 1 August 2001, and was pending on that date, the duration of the patent granted on that application shall be twenty years from the date of filing or fifteen years from the date of grant, whichever is the longer.
[Ins. Act 1196]
(1C) The duration of a patent granted before 1 August 2001 and still in force on th
35A PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-35A. Reinstatement of a lapsed patent.
(1) Within twelve months from the date on which a notice of the lapsing of a patent is published in the Official Journal:
[Am. by Act A1649:s29]
(a) the owner of the patent or his successor in title; or
(b) any other person who would, if the patent had not lapsed, have been entitled to the patent,
may apply to the Registrar in the form as determined by the Registrar together with the payment of the prescribed fee to have the patent reinstated.
[Am. by Act A1649:s29]
(2) The Registrar may reinstate a patent on an application made under subsection (1):
(a) upon payment of all annual fees due and of a prescribed surcharge for reinstatement; and
(b) upon being satisfied that the non-payment of annual fees was due to accident, mistake or other unforeseeable circumstances.
35B PART VI APPLICATION, PROCEDURE FOR GRANT AND DURATION-35B. Applicant or Patent Registration Office may request for international search.
(1) Any applicant who files an application, other than an international application, for the grant of a patent with the Patent Registration Office may request that an international search be carried out on such application by the International Searching Authority which is specified under subsection 78L(1).
(2) The Patent Registration Office may subject an application, other than an international application, for the grant of a patent filed with it to an international search to be carried out by the International Searching Authority which is specified under subsection 78L(1).
(3) Where a search is carried out on an application pursuant to subsection (1) or (2), the description and claims contained in the application shall be presented in the languages specified by the International Searching Authority and the search fees as specified by the International Searching Authority shall be paid by the applicant either to the International Searc
36 PART VII RIGHTS OF OWNER OF PATENT-36. Rights of owner of patent.
(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:
(a) to exploit the patented invention;
(b) to assign or transmit the patent;
(c) to conclude licence contracts; and
(d) to deal with the patent as the subject of a security interest.
[Ins. by Act A1649:s30]
(2) No person shall do any of the acts referred to in subsection (1) without the consent of the owner of the patent.
(3) For the purpose of this Part, "exploitation" of a patented invention means any of the following acts in relation to a patent:
(a) when the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling or using the product;
(ii) stocking
37 PART VII RIGHTS OF OWNER OF PATENT-37. Limitation of rights.
(1) The rights under the patent shall extend only to acts done for industrial or commercial purposes and shall not extend to acts done for experimental or scientific research purposes.
[Am. by Act A1649:s31]
(1A) The rights under the patent shall not extend to acts done to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority either in Malaysia or outside Malaysia which regulates the manufacture, use or sale of pharmaceutical products.
[Ins. Act A1088; Am. by Act A1649:s31]
(2) Without prejudice to section 58A, the rights under the patent shall not extend to acts in respect of products which have been put on the market:
[Am. Act A1088 - Prior text read - "The rights under the patent shall not extend to acts in respect of products which have b
38 PART VII RIGHTS OF OWNER OF PATENT-38. Rights derived from prior manufacture or use.
(1) Where a person at the priority date of the patent application:
(a) was in good faith in Malaysia making the product or using the process which is the subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the product or using the process referred to in paragraph (a) ,
he shall have the right, despite the grant of the patent, to exploit the patented invention:
Provided that the product in question is made, or the process in question is used, by the said person in Malaysia:
Provided further than he can prove, if the invention was disclosed under the circumstances referred to in paragraphs (a) , (b) or (c) of subsection (3) of section 14 that his knowledge of the invention was not a result of such disclosure.
(2) The right referred to in subsection
39 PART VIII PATENT APPLICATION AND PATENT AS OBJECT OF PROPERTY-39. Assignment, transmission and security interest transaction.
(1) A patent application or patent may be assigned or transmitted in the same way as other personal or moveable property.
[Am. by Act A1649:s33]
(1A) A patent may be the subject of a security interest in the same way as other personal or moveable property.
[Ins. by Act A1649:s33]
(2) Any person becoming entitled by assignment or transmission to a patent application or patent may apply to the Registrar in the prescribed manner to have such assignment or transmission recorded in the Register.
(2A) Any person who is a party to a security interest transaction in respect of a patent may apply to the Registrar in the prescribed manner to have such security interest transaction recorded in the Register.
[Ins. by Act A1649:s33]
(2B) Any security interest in respect of a patent may be enforced in the same way as other personal or moveable
40 PART VIII PATENT APPLICATION AND PATENT AS OBJECT OF PROPERTY-40. Joint ownership of patent applications or patents.
In the absence of any agreement to the contrary between the parties, joint owners of a patent application or patent may, separately, assign or transmit their rights in the patent application or patent, exploit the patented invention and take action against any person exploiting the patented invention without their consent, but may only jointly withdraw the patent application, surrender the patent or conclude a licence contract.
41 PART IX LICENCE CONTRACTS-41. Meaning of licence contract.
(1) For the purposes of this Part, a "licence contract" means any contract by which the owner of a patent (the "licensor") grants to another person or enterprise (the "licensee") a licence to do any or all of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36.
(2) A licence contract shall be in writing signed by or on behalf of the contracting parties.
42 PART IX LICENCE CONTRACTS-42. Entry in the Register.
(1) A licensor may in accordance with the regulations as prescribed by the Minister apply to the Registrar for an entry to be made in the Register to the effect that any person may obtain a licence.
(2) At any time after an entry has been made in the Register, any person may apply to the licensor through the Registrar for a licence.
(3) Where a licence contract is concluded between the parties, the contracting parties shall infrom the Registrar accordingly and the Registrar shall record such fact in the Register.
(4) Upon a request in writing signed by or on behalf of the contracting parties, the Registrar shall, on payment of the prescribed fee, record in the Register such particulars relating to the contract as the parties thereto might wish to have recorded:
Provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.
(5) Where a licence cont
43 PART IX LICENCE CONTRACTS-43. Rights of the licensee.
(1) In the absence of any provision to the contrary in the licence contract, the licensee shall be entitled to do any or all of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36 within the whole geographical area of Malaysia without limitation as to time and through any application of the invention.
(2) In the absence of any provision to the contrary in the licence contract, the licensee may not give to a third person his agreement to perform in Malaysia in respect of the invention any of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36.
44 PART IX LICENCE CONTRACTS-44. Rights of the licensor.
(1) In the absence of any provision to the contrary in the licence contract, the licensor may grant a further licence to a third person in respect of the same patent or himself do any or all of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36.
(2) Where the licence contract provides that the licence is exclusive and unless it is expressly provided otherwise in such contract, the licensor shall not grant a further licence to a third person in respect of the same patent or himself do any of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36.
45 PART IX LICENCE CONTRACTS-45. Invalid clauses in licence contracts.
Any clause or condition in a licence contract shall be invalid in so far as it imposes upon the licensee, in the industrial or commercial field, restrictions not derived from the rights conferred by this Part on the owner of the patent, or unnecessary for the safeguarding of such rights:
Provided that:
(a) restrictions concerning the scope, extent or duration of exploitation of the patented invention, or the geographical area in, or the quality or quanlity of the products in connection with, which the patented invention may be exploited; and
(b) obligations imposed upon the licensee to abstain from all acts capable of prejudicing the validity of the patent,
shall not be deemed to constitute such restrictions.
46 PART IX LICENCE CONTRACTS-46. Effect of patent application not being granted or patent being declared invalid.
Where, before the expiration of the licence contract, any of the following events occur in respect of the patent application or patent referred to in such contract:
(a) the patent application is withdrawn;
(b) the patent application is finally rejected;
(c) the patent is surrendered;
(d) the patent is declared invalid;
(e) the licence contract is invalidated,
the licensee shall no longer be required to make any payment to the licensor under the licence contract, and shall be entitled to repayment of the payment already made:
Provided that the licensor shall not be required to make any repayment, or shall be required to make repayment only in part, to the extent that he can prove that any such repayment would be inequitable under all the circumstances, in particular if the licensee has effectively profited from the licence.
47 PART IX LICENCE CONTRACTS-47. Expiry, termination or invalidation of licence contract.
The Registrar shall:
(a) if he is satisfied that a recorded licence contract has expired or been terminated, record that fact in the Register upon a request in writing to that effect signed by or on behalf of the parties thereto;
(b) record in the Register the expiry, termination or invalidation of a licence contract under any provision of this Part.
48 PART X COMPULSORY LICENCES-48. Definition.
For the purpose of this Part:
"beneficiary of the compulsory licence" means the person to whom a compulsory licence has been granted in accordance with this Part;
"compulsory licence" means the authorisation to perform in Malaysia without the agreement of the owner of the patent in respect of the patented invention any of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36; and " eligible importing country " means:
(a) a least developed country which is a member of the World Trade Organization; and
(b) any other country which is a member of the World Trade Organization which:
(i) notifies the Council for TRIPS of its intention to act as an importer in accordance with Article 31bis and the
49 PART X COMPULSORY LICENCES-49. Application for compulsory licences.
(1) At any time after the expiration of three years from the grant of a patent, or four years from the filing date of the patent application, whichever is the later, any person may apply to the Registrar for a compulsory licence under any of the following circumstances:
(a) where there is no production of the patented product or application of the patented process in Malaysia without any legitimate reason;
(b) where there is no product produced in Malaysia under the patent for sale in any domestic market, or there are some but they do not meet the public demand without any legitimate reason.
[Am. by Act A1649:s36]
(1A) Notwithstanding subsection (1), at any time after the grant of a patent, any person may make an application to the Registrar for a compulsory licence:
(a) where the products produced in Malaysia under the pate
49A PART X COMPULSORY LICENCES-49A. Application for compulsory licence based on inter-dependence of patents.
(1) If the invention claimed in a patent ("later patent") cannot be worked in Malaysia without infringing a patent granted on the basis of an application benefiting from an earlier priority date ("earlier patent"), and if the invention claimed in the later patent constitutes, in the opinion of the Registrar, an important technical advance of considerable economic significance in relation to the invention claimed in the earlier patent, the Registrar, upon the request of the owner of the later patent, the licensee of a licence contract under the later patent, may grant a compulsory licence to the extent necessary to avoid infringement of the earlier patent.
[Am. Act A1088; Am. by Act A1137]
(2) If a compulsory licence is granted under subsection (1), the Registrar, upon the request of the owner of the earlier patent, the licensee of a licence contract under the earlier patent or the beneficiary of a compulsory licen
50 PART X COMPULSORY LICENCES-50. Request for grant of compulsory licence.
(1) In an application for a compulsory licence under section 49 the applicant shall set forth the amount of adequate remuneration, the conditions of the exploitation of the patent and the restrictions of the rights of the licensor or the licensee, as the case may be, and a request for the said licence.
[Am. by Act A1649:s37]
(1A) In addition to the requirements specified in subsection (1), an application for a compulsory licence under paragraph 49(1A)(b) shall comply with any other requirements as prescribed.
[Ins. by Act A1649:s37]
(2) Where an application for a compulsory licence is made pursuant to section 49 or a request for a compulsory licence is made pursuant to section 49A, the Registrar shall furnish a copy of the application or the request to the licensor or the licensee, as the case may be, for an opportunity to make observations on the application or request withi
51 PART X COMPULSORY LICENCES-51. Decision by the Registrar.
(1) In considering the application for a compulsory licence under section 49 or section 49A, the Registrar may require the applicant, the licensor or the licensee, as the case may be, to appear before the Registrar to give a statement or to hand to the Registrar any document or any other item.
[Am. by Act A1137]
(2) When the application has been considered by the Registrarand a decision has been made, the applicant, the licensor or the licensee, as the case may be, shall be notified of the decision.
[Am. by Act A1137]
(3) The Registrar shall notify the Council for TRIPS upon the grant of a compulsory licence under paragraph 49(1A)(b).
[Am. by Act A1649]
52 PART X COMPULSORY LICENCES-52. Scope of compulsory licence.
Upon the granting of the compulsory licence to the applicant the Registrar shall fix:
[Am. by Act A1137]
(a) the scope of the licence specifying in particular the period for which licence is granted;
[Subs. Act A1196]
Prior text read " (a) the scope of the licence specifying in particular for what period the licence is granted and to which of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36 the licence extends except that it may not extend to the act of importation;
(b) the time limit within which the beneficiary of the compulsory licence shall begin to work the patented invention in Malaysia;
(c) the amount and conditions of the adequate remuneration due from the beneficiary of the compulsory licence to the owner of the patent; and
52A PART X COMPULSORY LICENCES-52A. Grant of compulsory licence shall not give rise to breach of contract.
(1) The Registrar may grant a compulsory licence to the applicant notwithstanding that a licence contract has been entered into by the licensor and the licensee which provides that the licence is exclusive pursuant to subsection 44(2).
(2) The grant of a compulsory licence by the Registrar under subsection (1) shall not give rise to an action for breach of the licence contract referred to in subsection (1) by the licensee against the licensor.
[Am. by Act A1649]
53 PART X COMPULSORY LICENCES-53. Limitation of compulsory licence.
(1) A compulsory licence granted by the Registrar:
[Am. by Act A1137]
(a) shall not be assigned otherwise than in connection with the goodwill or business or that part of the goodwill or business in which the patented invention is used;
(b) shall be limited to the supply of the patented invention predominantly in Malaysia.
(1A) The limitation specified in paragraph (1)(b) shall not apply to the compulsory licence granted for the purposes of production and exportation of the pharmaceutical product under paragraph 49(1A)(b).
[Ins. by Act A1649]
(2) The beneficiary of the compulsory licence shall not conclude licence contracts with third persons under the patent in respect of which the compulsory licence was granted.
[Subs. Act A1088 - Prior text read - "The beneficiary of the compulsory licen
54 PART X COMPULSORY LICENCES-54. Amendment cancellation and surrender of compulsory licence.
(1) Upon the request of the owner of the patent or of the beneficiary of the compulsory licence, the Registrar may amend the decision granting the compulsory licence to the extent that new facts justify such amendment.
(2) Upon the request of the owner of the patent, the Registrar shall cancel the compulsory licence:
[Am. by Act A1137]
(a) if the ground for the grant of the compulsory licence no longer exists;
(b) if the beneficiary of the compulsory licence has, within the time limit fixed in the decision granting the licence, neither begun the working of the patented invention in Malaysia nor made serious preparations towards such working;
(c) if the beneficiary of the compulsory licence does not respect the scope of the licence as fixed in the decision granting the licence;
(d) if the beneficiary of the compulsory licence is in arr
55 PART XI SURRENDER, OPPOSITION AND INVALIDATION OF PATENT-55. Surrender of patent.
(1) The owner of the patent may surrender the patent by a written declaration submitted to the Registrar.
(2) The surrender may be limited to one or more claims of the patent.
(3) Where a licence contract in respect of a patent is recorded in the Register, the Registrar shall not, in the absence of any provision to the contrary in the licence contract, accept or record the said surrender except upon receipt of a signed declaration by which every licensee or sub-licensee on record consents to the said surrender unless the requirement of his consent is expressly waived in the licence contract.
(4) The Registrar shall record the surrender in the Register and cause it to be published in the Official Journal .
(5) The surrender shall take effect from the date the Registrar receives the declaration and such declaration shall not be withdrawn.
[Am. by Act A1649:s44]
56 PART XI SURRENDER, OPPOSITION AND INVALIDATION OF PATENT-56. Invalidation of patent.
(1) Any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent.
(2) The Court shall invalidate the patent if the person requesting the invalidation proves:
(a) that what is claimed as an invention in the patent is not an invention within the meaning of section 12 or is excluded from protection under section 13 or subsection (1) of section 31 or is not patentable because it does not comply with the requirements of sections 11, 14, 15 and 16;
(b) that the description or the claim does not comply with the requirements of section 23;
(c) that any drawings which are necessary for the understanding of the claimed invention have not been furnished; or
(d) that the right to the patent does not belong to the person to whom the patent was granted.
(e) (Deleted by Act A1649:s46)
57 PART XI SURRENDER, OPPOSITION AND INVALIDATION OF PATENT-57. Date and effect of invalidation.
(1) Any invalidated patent or claim or part of a claim shall be regarded as null and void from the date of the grant of the patent.
(2) (Am. by Act A1649:s48)
58 PART XII INFRINGEMENT-58. Acts deemed to be infringement.
Subject to subsection (1), (2) and (3) of section 37 and section 38, an infringement of a patent shall consist of the performance of any act referred to in subsection (3) of section 36 in Malaysia by a person other than the owner of the patent and without the agreement of the latter in relation to a product or a process falling within the scope of protection of the patent.
58A PART XII INFRINGEMENT-58A. Acts deemed to be non-infringement.
(1) It shall not be an act of infringement to import, offer for sale, sell or use:
(a) any patented product; or
(b) any product obtained directly by means of the patented process or to which the patented process has been applied,
which is produced by, or with the consent, conditional or otherwise, of the owner of the patent or his licensee.
(2) For the purposes of this section, "patent" includes a patent granted in any country outside Malaysia in respect of the same or essentially the same invention as that for which a patent is granted under this Act.
[Ins. Act A1088]
59 PART XII INFRINGEMENT-59. Infringement proceedings.
(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 six years from the act of infringement.
[Am. by Act A1649:s49]
60 PART XII INFRINGEMENT-60. Injunction and award of damages.
(1) If the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy.
(2) If the owner of the patent proves imminent infringement the Court shall grant an injunction to prevent infringement and any other legal remedy.
(3) The defendant in any proceedings referred to in this section may request in the same proceedings the invalidation of the patent, in which case the provisions of subsection (2) and (3) of section 56 shall apply.
61 PART XII INFRINGEMENT-61. Infringement proceedings by licensee and beneficiary of compulsory licence.
(1) For the purposes of this section, "beneficiary" means:
(a) any licensee unless the licence contract provides that the provisions of this subsection do not apply or provides different provisions;
(b) the beneficiary of a compulsory licence granted under section 51.
(2) Any beneficiary may request the owner of the patent to institute Court proceedings for any infringement indicated by the beneficiary, who shall specify the relief desired.
(3) The beneficiary may, if he proves that the owner of the patent received the request but refuses or fails to institute the proceedings within three months from the receipt of the request, institute the proceedings in his own name, after notifying the owner of the patent of his intention but the owner shall have the right to join in the proceedings.
(4) Notwithstanding that the three-month period referred to in subsection (3) has
62 PART XII INFRINGEMENT-62. Declaration of non-infringement.
(1) Subject to subsection (4), any interested person shall have the right to request, by instituting proceedings against the owner of the patent, that the Court declare that the performance of a specific act does not constitute an infringement of the patent.
(2) If the person making the request proves that the act in question does not constitute an infringement of the patent, the Court shall grant the declaration of non-infringement.
(3) (a) The owner of the patent shall have the obligation to notify the licensee of the proceedings and the licensee shall have the right to join in the proceedings in the absence of any provision to the contrary in the licence contract.
(b) The person requesting the declaration of non-infringement shall have the obligation to notify the beneficiaries of the compulsory licence granted under section 51 of the proceedings and the said beneficiaries shall have the right t
62A PART XIII OFFENCES-62A. Applications in contravention of section 23A.
Any person who files or causes to be filed an application for a patent in contravention of section 23A commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
62B PART XIII OFFENCES-62B. Publication of information in contravention of Registrar's directions.
Any person who publishes or communicates information in contravention of any direction issued by the Registrar under section 30A commist an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a trem not exceeding two years or to both.
63 PART XIII OFFENCES-63. Falsification of Register, etc.
Any person who makes or causes to be made a false entry in any Register kept under this Act, or makes or causes to be made a writing falsely purporting to be a copy or reproduction of an entry in any such Register, or produces or tenders or causes to be produced or tendered in evidence any such false writing, commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
64 PART XIII OFFENCES-64. Unauthorised claim or patent.
(1) Any person who falsely represents that anything disposed of by him for value is a patented product or process commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has, expired or been invalidated and before the end of a period which is reasonably sufficient to enable that perso
65 PART XIII OFFENCES-65. Unauthorised claim that patent has been applied for.
(1) Any person who represents that a patent has been applied for in respect of any article disposed of for value by him and:
(a) no such application has been made, or
(b) any such application has been refused or withdrawn,
commits an offence and, subject to the following provisions of this section, is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
(2) Paragraph (b) of subsection (1) does not apply where the representation is made or continues to be made before the expiry of a period which commences with the refusal or withdrawal and which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.
(3) For the purposes of subsection (1), a person who for value disposes of an article having stamp
66 PART XIII OFFENCES-66. Misuse of title "Patent Registration Office".
Any person who uses on his place of business or any document issued by him or otherwise, the words "Patent Registration Office" or any other words suggesting that his place of business is, or is officially connected with, the Patent Registration Office commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
66A PART XIII OFFENCES-66A. Unregistered persons practising, ect., as a patent agent.
Any person who carries on business, practises, acts, describes himself, holds himself out, or permits himself to be described or held out, as a patent agent without being registered under this Act commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.
67 PART XIII OFFENCES-67. Offences by corporation.
(1) Where an offence under this Act which has been committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of a director, manager, secretary or other similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate, commits that offence and is liable to be prosecuted against and punished accordingly as provided by the Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he was a director of a body corporate.
68 PART XIV POWERS RELATING TO ENFORCEMENT-68. Authorization of officer to exercise powers under this Part.
(1) The Minister may authorize in writing any public officer to exercise the powers under this Part.
(2) Any such officer shall be deemed to be a public servant within the meaning of the Penal Code.
(3) In exercising any of the powers under this Part, an officer shall on demand produce to the person against whom he is acting under this Act the authority issued to him by the Minister.
69 PART XIV POWERS RELATING TO ENFORCEMENT-69. Powers of arrest.
(1) Any authorized officer or police officer may arrest without warrant any person whom he sees or finds committing or attempting to commit or abetting the commission of an offence or whom he reasonably suspects of being engaged in committing or attempting to commit or abetting the commission of any offence against this Act if such person refuses or fails to furnish his name and residence or there are reasonable grounds for believing that he has furnished a false name or residence or that he is likely to abscond.
(2) Any authorized officer or police officer making an arrest without warrant shall, without unnecessary delay, bring the person arrested to the nearest police station.
(3) No person who has been arrested by an authorized officer or police officer shall be released except on his own bond or on bail or on the special order in writing of a Magistrate.
70 PART XIV POWERS RELATING TO ENFORCEMENT-70. Search with warrant.
(1) Whenever it appears to any Magistrate upon written information on oath and after any enquiry which he may think necessary that there is reasonable cause to believe that in any dwelling house, shop, building or place there is being committed an offence against this Act, or any regulations made thereunder, he may issue a warrant authorizing any authorized officer or police officer named therein, by day or night and with or without assistance to enter the dwelling house, shop, building or place and there search for and seize or take copies of all books, accounts, documents or other articles which contain or are suspected to contain information as to any offence so suspected to have been committed or any other thing relating to the offence.
(2) Any such officer may if it is necessary so to do:
(a) break open any outer or inner door of the dwelling house, shop, building or place, and enter thereinto;
(b)
71 PART XIV POWERS RELATING TO ENFORCEMENT-71. List of things seized.
The authorized officer or police officer seizing any books, accounts, documents or other articles under this Part shall prepare a list of the things seized and forthwith deliver a copy signed by him to the occupier or his agents or servants present in the premises.
72 PART XIV POWERS RELATING TO ENFORCEMENT-72. Return of things seized.
Where under this Part possession has been taken of any books, accounts, documents or other articles, then the authorized officer or police officer shall within four weeks of the seizure, where no criminal proceedings have been instituted, restore possession to the owner.
73 PART XIV POWERS RELATING TO ENFORCEMENT-73. Power of investigation.
(1) An authorized officer or police officer shall have the power to investigate the commission of any offence under this Act or regulations made thereunder.
(2) Every person required by an authorized officer or police officer to give information or produce any book, account, document or other article relating to the commission of such offence which it is in the person's power to give shall be legally bound to give the information or to produce the book, account, document or other article.
74 PART XIV POWERS RELATING TO ENFORCEMENT-74. Examination of witnesses.
(1) An authorized officer or police officer making an investigation under section 73 may examine orally any person supposed to be acquainted with the facts and circumstances of the case and shall reduce into writing any statement made by the person so examined.
(2) Such person shall be bound to answer all questions relating to such case put to him by such officer:
Provided that such person may refuse to answer any question the answer to which have a tendency to expose him to a criminal charge or penalty or forfeiture.
(3) A person making a statement under this section shall be legally bound to state the truth, whether or not such statement is made wholly or partly in answer to questions.
(4) An authorized officer or police officer examining a person under subsection (1) shall first inform that person of the provisions of subsections (2) and (3).
(5) A statement made by any person under this section whether or not
75 PART XIV POWERS RELATING TO ENFORCEMENT-75. Admission of statements in evidence.
Where any person is charged with any offence under this Act or any regulations made thereunder, any statement whether the statement amounts to a confession or not or is oral or in writing, made at any time, whether before or after the person is charged and whether in the course of investigations made under section 74 or not and whether or not wholly or partly in answer to questions by that person to or in the hearing of any authorized officer or police officer of or above the rank of Inspector and whether or not interpreted to him by another authorized officer, police officer or other person, shall be admissible in evidence at his trial and, if the person charged tenders himself as a witness, any such statement may be used in cross-examination and for the purpose of impeaching his credit:
Provided that:
(a) no such statement shall be admissible or used as aforesaid:
(i) if the making of the sta
76 PART XIV POWERS RELATING TO ENFORCEMENT-76. Obstruction to search, etc.
Any person who:
(a) refuses any authorized officer or police officer access to any place;
(b) assaults, obstructs, hinders or delays any authorized officer or police officer in effecting any entrance which he is entitled to effect under this Act, or in the execution of any duty imposed or power conferred by this Act; or
(c) refuses or neglects to give any information which may reasonably be required of him and which he has it in his power to give,
commits an offence and is liable on conviction to a fine not exceeding three thousand ringgit or to imprisonment for a term not exceeding one year or to both.
76A PART XIV POWERS RELATING TO ENFORCEMENT-76A. Compounding of offences.
(1) The Minister may, with the approval of the Public Prosecutor, make regulations prescribing:
(a) any offence under this Act or any regulations made under this Act as an offence which may be compounded; and
(b) the method and procedure for compounding such offence.
(2) The authorized officer may, with the consent in writing of the Public Prosecutor, at any time before a prosecution is instituted, compound any offence which may be compounded by making a written offer to the person reasonably suspected of having committed the offence upon payment to the authorized officer a sum of money not exceeding fifty per centum of the amount of maximum fine to which the person would have been liable to if he had been convicted of the offence, within such time as may be specified in the written offer.
(3) A written offer under subsection (2) may be made at any time after the offence has b
77 PART XIV POWERS RELATING TO ENFORCEMENT-77. Institution of prosecution.
No prosecution for any offence under this Act shall be instituted except by or with the consent in writing of the Public Prosecutor.
[Subs. by Act A1137]
78 PART XIV POWERS RELATING TO ENFORCEMENT-78. Jurisdiction of subordinate Court.
(1) Notwithstanding any other written law, a subordinate Court shall have power to try any offence under this Act and on conviction to impose the full penalty therefor.
(2) For the purpose of subsection (1), "subordinate Court" means a Sessions Court or a Magistrate's Court.
78A PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78A. Interpretation.
For the purposes of this Part:
"International Bureau" means the International Bureau of the World Intellectual Property Organization and, as long as it subsists, the United International Bureau for the Protection of Intellectual Property (BIRPI);
"international search" means a search conducted by the International Searching Authority appointed under Article 16 of the Treaty to discover relevant prior art with respect to the invention;
"international phase" means the period beginning from the filing of an international application to the time the international application enters the national phase;
"national phase" means the period beginning from the performance, by the applicant, of the acts specified in subsection 78O(1);
"State" means a state which is a party to the Treaty;
"patent" includes utility innovation;
[Ins. Act A1264]
"receiving office" means
78B PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78B. Application.
The provisions of this Part shall apply to an international application filed under the Treaty.
78C PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78C. Patent Registration Office as receiving office.
The Patent Registration Office shall act as a receiving office for an international application.
78D PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78D. Patent Registration Office as designated office.
The Patent Registration Office shall act as a designated office for an international application in which Malaysia is designated for the purposes of obtaining a patent under Part IVA and VI.
[Am. Act A1264]
78E PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78E. Patent Registration Office as elected office.
The Patent Registration Office shall act as an elected office for an international application if the applicant elects Malaysia as a State in which he intends to use the results of the international preliminary examination.
78F PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78F. Person eligible for international application.
(1) Any person who is a citizen of Malaysia residing outside Malaysia or a resident shall be entitled to file an international application for a patent with the Patent Registration Office.
(2) The resident referred to in subsection (1) shall be subject to section 23A.
[Ins. by Act A1649]
78G PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78G. Filing of an international application.
(1) An international application shall be filed by submitting to the Patent Registration Office a request in the form as determined by the Registrar together with a description, one or more claims, drawings, if any, and an abstract in the form as specified in the Treaty.
[Am. Act A1264; Am. by Act A1649:s53]
(1A) An international application shall be filed in the English language.
[Am. Act A1264]
(2) The request shall contain:
(a) a petition to the effect that the international application be processed according to the Treaty;
(b) the designation of the State or States in which protection for the invention is desired;
(c) the name, nationality and residence of the applicant;
(d) the name and the place of business of the applicant's agent, if any;
(e) the title of the invention; a
78H PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78H. [Deleted by Act A1264].
78I PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78I. [Deleted by Act A1264].
78J PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78J. [Deleted by Act A1264].
78K PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78K. Processing of international applications.
The Treaty shall apply to the processing of an international application during the international phase of the application.
[Am. Act A1264]
78KA PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78KA. Fees.
An international application shall be subject to the fees as specified in the Treaty and other prescribed fees.
78L PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78L. International Searching Authority.
(1) The Registrar shall, by notification published in the Official Journal , specify the International Searching Authority which is competent to carry out the international search for international applications filed with the Patent Registration Office.
(2) When there is more than one competent International Searching Authority, the applicant shall indicate his choice of International Searching Authority in the request.
78M PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78M. International Preliminary Examination Authority.
(1) The Registrar shall, by notification published in the Official Journal , specify the International Preliminary Examination Authority which is competent to carry out international preliminary examination for international applications filed with the Patent Registration Office.
(2) The applicant may request for an international preliminary examination to be carried out in respect of the application by submitting a demand in accordance with the Treaty.
[Am. Act A1264]
78N PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78N. International publication of international application and its effect.
(1) The international publication of an international application by the International Bureau designating Malaysia as a designated office shall have the same effect as the publication of an application under section 33D of a patent application if the international publication is transmitted to and received by the Patent Registration Office.
[Am. by Act A1649:s54]
(2) The Patent Registration Office shall make available the international publication of the international application designating Malaysia as a designated office for public inspection as soon as possible.
78O PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78O. Entering the national phase.
(1) Where in an international application, the applicant designates Malaysia for the purpose of obtaining a patent under this Act, the applicant shall, before the expiration of thirty months from the priority date:
(a) submit to the Patent Registration Office a copy of the international application in the English language; and
(b) pay the prescribed fee.
(2) The Patent Registration Office shall not examine the international application submitted under subsection (1) prior to the expiration of thirty months from the priority date.
(3) Notwithstanding subsection (2), the Patent Registration Office may, on the request of the applicant, examine an international application prior to the expiration of thirty months from the priority date, if the applicant has:
(a) submitted to the Patent Registration Office a copy of the international application in the English lang
78OA PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78OA. Reinstatement.
(1) Where an international application is considered to be withdrawn under section 78O, the applicant may, in writing, apply to the Patent Registration Office to have the international application reinstated by:
(a) submitting to the Patent Registration Office a copy of the international application in the English language and paying the prescribed fee under subsection 78O(1);
(b) submitting a written statement stating the reasons for the failure to comply with subsection 78O(1) and a declaration or other evidence in support of the reasons for such failure; and
(c) paying the prescribed fee.
(2) The application under subsection (1) shall be made within whichever of the following period expires first:
( a) two months from the date of removal of the cause of
the failure to meet the time limit provided in subsection
78O(1); or
( b) twelve months from
78P PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78P. [Deleted by Act A1264].
78Q PART XIVA INTERNATIONAL APPLICATIONS UNDER THE PATENT COOPERATION TREATY-78Q. Conversion of an international application into a national application.
(1) Where:
(a) a foreign receiving office has:
(i) refused to accord a filing date to an international application;
(ii) declared that the international application is considered withdrawn; or
(iii) declared that the designation of Malaysia is considered withdrawn; or
(b) the International Bureau has declared that an international application is considered withdrawn because it has not received a record copy of the international application within the time specified under the Treaty; and
(c) copies of any document in the international application have been sent to the Patent Registration Office, the applicant may request the Patent Registration Office to review the justification of the refusal or declaration under the Treaty.
[Subs. Act A1264]
(3) [Deleted by Act A1264]
79 PART XV MISCELLANEOUS-79. Power of Registrar to amend patent application.
(1) The Registrar may, upon a request made by an applicant for a patent in accordance with any regulations made under this Act, amend the patent application, or any document submitted at the Patent Registration Office in relation to the application, for the purpose of:
(a) correcting a clerical error or an obvious mistake; or
(b) changing the name or address of the applicant or inventor.
[Subs. by Act A1649]
(1A) The request for an amendment referred to in paragraph (1)(b) shall not be allowed if the Court proceedings in relation to the right to the patent application under section 19 is pending.
[Ins. by Act A1649]
(1B) The Registrar may, upon a request made by an applicant in accordance with any regulations made under this Act, amend the description, claim or claims, drawing, or abstract, of the patent application
79A PART XV MISCELLANEOUS-79A. Power of Registrar to amend patent.
(1) The Registrar may, upon a request made by the owner of a patent in accordance with regulations made under this Act, amend the description, the claim or claims, or the drawings, of the patent, or amend any other document associated with the patent, for the purpose of correcting a clerical error or an obvious mistake or for any other reason acceptable to the Registrar.
(1A) Where the Registrar finds that the request for amendment of patent under subsection (1) requires an Examiner to re-examine the patent, the owner of a patent shall file a request for re-examination in the form as determined by the Registrar together with the payment of the prescribed fee within the prescribed period.
[Ins. by Act A1649:s57]
(1B) Notwithstanding subsection (1A), the applicant may on his own volition, make a request for re-examination of the patent in the form as determined by the Registrar together with the payment of t
80 PART XV MISCELLANEOUS-80. Other powers of Registrar.
(1) The Registrar may, for the purpose of this Act:
(a) summon witnesses;
(b) receive evidence on oath;
(c) require the production of any document or article; and
(d) award costs, including assessment of the costs and the manner in which the costs is to be paid as against a party to proceedings before him.
[Am. by Act A1649:s58]
(1A) A party to any proceedings before the Registrar who is desirous to obtain costs shall make an application to the Registrar in the prescribed manner.
[Ins. by Act A1649:s58]
(2) Any person who without any lawful excuse fails to comply with any summons, order or direction made by the Registrar under paragraphs (1)(a) and (b) of subsection (1) commits an offence and is liable on conviction to a fine not exceeding two thousand ringgit or to imprisonment for
81 PART XV MISCELLANEOUS-81. Exercise of discretionary power.
(1) Where any discretionary power is given to the Registrar by this Act or any regulations made thereunder, he shall not exercise the power on any person who may be adversely affected by his decision without giving to the person an opportunity of being heard.
(2) An opportunity of being heard referred to in subsection (1) shall be carried out in the prescribed manner upon payment of the prescribed fee.
[Ins. by Act A1649:s59]
82 PART XV MISCELLANEOUS-82. Extension of time.
(1) Subject to subsection 17B(4A), subsection 26B(1B), subsection (1A) of section 27, subsection (8) of section 29A and subsection (4) of section 30, where, by this Act or any regulations made thereunder a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly directed by any court , extend the time either before or after its expiration upon payment of the prescribed fee.
[Am. by Act A1649:s60]
(2) The request for extension of time after the expiration of a prescribed period under this Act or any regulations made under this Act shall be made within the period as prescribed.
[Ins. by Act A1649:s60]
83 PART XV MISCELLANEOUS-83. Extension of time by reason of error in Patent Registration Office.
(1) Where by reason of:
(a) circumstances beyond the control of the person concerned; or
(b) an error or action on the part of the Patent Registration Office, an act in relation to an application for a patent or in proceedings under this Act, not being proceedings in any court, required to be done within a certain time has not been so done, the Registrar may extend the time for doing the act.
[Am. by Act A1649]
(2) The time required for doing an act may be extended under this section although that time has expired.
83A PART XV MISCELLANEOUS-83A. Certificate by the Registrar.
The Registrar may certify, by writing under his hand, that an entry, matter or thing required by or under this Act to be made or done, or not to be made or done, has or has not been made or done, as the case may be, and such certificate shall be prima facie evidence of the truth of the facts stated therein and shall be admissible in evidence in all courts.
84 PART XV MISCELLANEOUS-84. Rights of Government.
(1) Notwithstanding anything contained in this Act:
(a) where there is national emergency or where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the Government, so requires; or
(b) where a judicial or relevant authority has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive,
the Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Minister may exploit a patented invention.
(2) The owner of the patent shall be notified of the decision of the Minister as soon as is reasonably practicable.
(3) The exploitation of the patented invention shall be limited to the purpose for which it was authorised and shall be subject to the payme
85 PART XV MISCELLANEOUS-85. Refusal to grant patent by the Registrar.
The Registrar in the exercise of his powers shall have the right to refuse to grant a patent for products or processes scheduled under regulations made under this Act where it appears to the Registrar that the granting of such a patent would be prejudicial to the interest or security of the nation.
86 PART XV MISCELLANEOUS-86. Registration of patent agent.
(1) There shall be kept at the Patent Registration Office a Register of Patents Agents.
(2) No person shall carry on business, practise, act, describe himself, hold himself out, or permit himself to be described or held out, as a patent agent unless he is registered in the Register of Patents Agents.
(3) The registration of a patent agent mentioned in subsection (2) shall be in accordence with the regulations as may be presscribed by the Minister under this Act.
(3A) The Registrar may cancel the registration of a patent agent on the grounds as may be prescribed.
[Ins. by Act A1649:s63]
(4) The appointment or change of a patent agent:
(a) shall be made in the form as determined by the Registrar together with the payment of the prescribed fee; and
(b) shall not be effective against any third person unless the appointment or change is registered i
86A PART XV MISCELLANEOUS-86A. Intellectual Property Official Journal.
(1) The Registrar shall publish an Intellectual Property Official Journal which shall contain:
(a) all matters relating to patent application and patent which are required to be published under this Act or any regulations made under this Act; and
(b) such other information or matters relating to patent application and patent as the Registrar thinks necessary.
(2) The Registrar shall make available the Official Journal to any person upon receipt of the payment of the prescribed fee.
(3) Publication in the Official Journal shall constitute sufficient notice of any matter required to be published under this Act or any regulations made under this Act.
(4) A copy of the Official Journal shall on its production in any legal proceedings be admitted as evidence without further proof being given that the copy was so published.
(5) A copy of the Official Journal shall be
87 PART XV MISCELLANEOUS-87. Regulations.
(1) Subject to the provisions of this Act, the Minister may make regulations for the purpose of carrying into effect the provisions of this Act.
(2) In particular and without prejudice to the generality of subsection (1), such regulations may provide for all or any of the following:
(a) to regulate the procedure to be followed in connection with any proceeding or other matter before the Registrar or the Patent Registration Office under this Act including the service of documents;
(b) to classify goods including methods and processes for the purpose of registration of patents;
(c) to make or require duplication of patents or other documents;
(d) to secure and regulate the publishing, selling or distributing, in such manner as the Minister may think fit, of copies of patents and other documents;
(e) to prescribe the fees payable for application for p
87A PART XV MISCELLANEOUS-87A. Directive or practice notice by Registrar.
(1) The Registrar may issue a directive or practice notice to any person in relation to any provision of this Act or any regulations made under this Act as the Registrar thinks necessary.
(2) The directive or practice notice issued by the Registrar under subsection (1) shall be published in the Official Journal and shall come into force on the date specified in such directive or practice notice.
(3) Any person who is specified in the directive or practice notice shall comply with the directive or practice notice.
(4) The Registrar may amend the whole or any part of the directive or practice notice issued under this section.
(5) Subsections (2) and (3) shall apply in respect of any amendment of the directive or practice notice made under subsection (4).
(6) Any application or patent under the Act shall be treated as abandoned, withdrawn, deemed to be withdrawn, invalidated or lapsed, as the case may be, if any dir
88 PART XV MISCELLANEOUS-88. Appeal.
(1) Any person aggrieved by any decision or order of the Registrar or may appeal to the Court.
[Am. by Act A1137]
(2) The procedures of appeal under subsection (1) shall be made in accordance with the rules of court in civil matters.
88A PART XV MISCELLANEOUS-88A. Costs of proceedings before court.
In all proceedings before the court, the court may, in its discretion, award any party including the Registrar such costs as it may consider reasonable but the Registrar shall not be ordered to pay the costs of any of the parties.
88B PART XV MISCELLANEOUS-88B. Protection against suit and legal proceedings.
No action, suit, prosecution or other proceedings shall lie or be brought, instituted or maintained in any court against:
(a) the Registrar, Deputy Registrar, Assistant Registrar or an Examiner in respect of any act ordered or done for the purpose of carrying into effect this Act; and
(b) any other officer in respect of any act done or purported to be done by him under the order, direction or instruction of the Registrar,
if the act was ordered or done in good faith and in a reasonable belief that it was necessary for the purpose intended to be served by it.
88C PART XV MISCELLANEOUS-88C. Service of application, order or judgement on Registrar.
(1) A copy of every application to the Court relating to a patent application or patent in the proceedings including an appeal from such application shall be served on the Registrar by the parties to the application in the prescribed manner together with the payment of the prescribed fee.
(2) Upon receipt of a copy of the application including an appeal under subsection (1), the Registrar may change the status of the patent application or patent as the Registrar deems fit, subject to further conditions, directions, order or judgement of the court.
(3) Any order or judgement made by the court upon the completion of the application including appeal under subsection (1) shall be served on the Registrar in the prescribed manner together with the payment of the prescribed fee by the party in whose favour the order or judgement is made or given.
(4) Upon receipt of the order or judgement under subsection (3), the Registrar shall:
88D PART XV MISCELLANEOUS-88D. Registrar not to be made party to certain proceedings.
In the absence of a cause of action against the Registrar, the Registrar shall not be made a party to the following proceedings:
(a) judicial assignment proceedings under section 19;
(b) an appeal against the decision of the Registrar in granting compulsory licence under section 51;
(c) an appeal against the decision of the Registrar in opposition proceedings under section 55A;
(d) invalidation proceedings under section 56;
(e) infringement proceedings under section 59; or
(f) an appeal against the decision of the Minister under section 84.
88E PART XV MISCELLANEOUS-88E. Power to amend Schedule.
The Minister may, by order published in the Gazette, amend the Schedule to this Act.".
89 PART XV MISCELLANEOUS-89. Repeal and saving provisions.
The Registration of United Kingdom Patents Ordinance 1951 (9/51) , the Patents Ordinance of Sarawak (Cap. 61) , the Registration of United Kingdom Patents Ordinance of Sabah (Cap. 124) and the Patents (Rights of Government) Act 1967 (53/67) are repealed:
Provided that:
(a) any subsidiary legislation made under the repealed laws shall in so far as such subsidiary legislation is not inconsistent with the provisions of this Act continue in force and have effect as if it had been made under this Act and may be repealed, extended, varied or amended accordingly;
(b) any appointment made under the repealed laws or subsidiary legislation made thereunder shall continue in force and have effect as if it had been made under this Act unless the Minister otherwise directs;
(c) any certificate or grant issued or made, in respect of a patent, under the repealed l
90 PART XV MISCELLANEOUS-90. Transitional.
(1) Where an application has been made under an Act or Ordinance repealed under section 89, the Registrar may issue a certificate or make a grant on such application as if the Act or Ordinance had not been repealed, and such certificate or grant shall remain in force276
(a) so long as the original patent remains in force in the United Kingdom; or
(b) until the expiration of twenty years from the date of application,
whichever is the earlier.
(2) Where a patent has been granted under the United Kingdom Patents Act 1977 not earlier than twenty-four months before the coming into force of this Act, the owner of the patent may, within a period of twelve months from the coming into force of this Act, make an application for a certificate or a grant the Registrar may issue a certificate or make a grant on such application as if the Act or Ordinance repealed under section 89 had not b
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