Filing an International Application (PCT) in Malaysia

Filing a PCT International Patent Application in Malaysia: Key Steps and Considerations

Filing a PCT international patent application allows inventors and companies to protect their innovations across multiple jurisdictions through a centralized process. This system, governed by the Patent Cooperation Treaty, simplifies the complex global IP landscape by enabling a single submission to serve as a basis for seeking protection in over 150 contracting states, including Malaysia. Understanding the local registration procedures, legal requirements, and benefits of this route is essential for any entity looking to expand its intellectual property portfolio globally.

Overview of the PCT System and Its Relevance

The unified patent cooperation system provides a standardized mechanism for filing inventions globally. Rather than lodging separate requests to each country, innovators can initiate a single process, which is then handled in stages. The first stage, known as the global phase, includes a formal review and optional examination services. The second stage, or the national segment, involves entering specific countries for further consideration and approval.

Malaysia, as a contracting state under the global patent treaty since 2006, offers foreign and domestic applicants the ability to proceed to the national stage via MyIPO. This makes the region an attractive jurisdiction for extending IP protection, especially for those targeting Southeast Asian markets.

Advantages of Using the PCT Route in Malaysia

Utilizing the international protection pathway when targeting offers several strategic benefits:

• Streamlined process: A single initial submission delays the need for multiple national procedures.
• Early insights: Applicants receive a global search report and written opinion to assess viability.
• Strategic timing: Up to 30 months from the priority date is available before initiating the national stage.
• Cost management: Delaying the national step allows better financial planning for translation and processing costs.

Key Steps to File a PCT International Patent Application in Malaysia

To enter the Malaysian national stage after submitting a request under the international cooperation route, applicants should follow these essential steps:

1. Ensure eligibility: Only innovations that comply with criteria—novelty, inventive step, and industrial applicability—will be accepted.

2. Select a competent receiving office: Malaysian residents can submit their request to MyIPO or the International Bureau of WIPO.

3. Complete the global stage: This involves formalities, global search, and optionally, a preliminary evaluation.

4. Monitor deadlines: Applicants must enter the Malaysian national stage within 30 months from the priority date (extendable by 2 months in some cases).

5. Prepare for local requirements:

• • Provide English or Bahasa Malaysia translations
  • Pay the required official charges
  • Submit the necessary forms and declarations.

6. Respond to national review requests: the region requires a request for substantive examination to be made within 18 months from the national stage entry date.

Submitting Through MyIPO: Local Requirements and Specifics

Once the global phase is complete, the submission must conform to procedural and documentary requirements:

• Translation: If the original documents are not in English or Bahasa Malaysia, a verified translation must be provided.
• Forms and fees: Applicants must complete the prescribed paperwork and pay the corresponding government charges.
• Representative: Foreign individuals or businesses are required to appoint a registered Malaysian IP agent for the national process.

Additionally, if the original submission under the global filing mechanism was based on a provisional submission, applicants should ensure that the necessary conversion documents are included.

Practical Tips for a Successful Malaysian PCT Filing

To increase the chance of success, consider the following:

• Engage local expertise: An agent will ensure compliance with national laws.
• Use the search report: Address potential objections early based on the report’s findings.
• Track deadlines meticulously: Missing the national stage deadline could forfeit protection.
• Plan budget ahead: Allocate resources for processing, translations, and prosecution.

Summary: Benefits and Strategic Value of PCT Applications 

Filing a PCT global patent application with eventual entry into the region provides inventors with a cost-effective, strategic way to secure rights in a growing innovation market. The process allows for early global examination, flexibility in timing, and unified procedures, while alignment with the treaty framework ensures streamlined national registration.

For innovators aiming at global protection and a gateway to ASEAN economies, Malaysia represents both an opportunity and a crucial step in a comprehensive intellectual property strategy. Partnering with experienced local professionals ensures that applicants can navigate the complexities smoothly while safeguarding their innovations efficiently.

Checklist for Filing a PCT Application in Malaysia

Here is a concise list of steps to guide the process:

• Submit the PCT international intellectual property application via a receiving office (MyIPO or WIPO).
• Monitor and adhere to key deadlines (30-month national phase entry).
• Prepare and submit verified translations (if applicable).
• Complete national forms and pay the required charges.
• Appoint a registered IP agent.
• File request for substantive examination.
• Respond promptly to official communications.
• Track and manage your IP portfolio post-grant.