The Act defines an invention as an idea of an inventor which permits in practice the solution to a specific problem in the field of technology. An invention may be, or relate to, a product or process.
To be patentable, an invention must:-
- be new, i.e. not disclosed to the public in Malaysia or anywhere else, before the priority date of the application;
- involve an inventive step, i.e. not be obvious to a person reasonably skilled in the art, having regard to what was already in the public domain as of the priority date;
- have industrial application, i.e. be capable of being made or used in any kind of industry;
- be capable of definition, in one or more claims of the patent application, in terms of its technical features; and
- be supported by an enabling description and any necessary drawings that teach others how to make and work the invention, and disclose the best mode of doing so that is known to the applicant.
In addition, an invention will not be patentable if it falls within any of the following categories of excluded subject-matter:
- discoveries, scientific theories and mathematical methods;
- plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, microbiological processes and the products of such microbiological processes;
- schemes, rules or methods of doing business, performing purely mental acts or playing games; and
- methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (although products used in any such methods are patentable).
A patent shall not be granted for an invention in respect of which the performance of any act would be contrary to public order or morality.
Novelty grace period
Although worldwide novelty is one of the requirements for patentability, the Patents Act expressly allows for public disclosure of the invention which occurred no more than one year before the filing date of the application to be disregarded, if such disclosure was due to acts done by the applicant (or his predecessor in title) or was a consequence of any abuse of the rights of the applicant (or his predecessor in title).
Applicant and inventor
An inventor (i.e. the person who actually created the invention) is entitled to apply for a patent. If there is more than one inventor involved, a joint application may be made which allows each inventor to claim an equal share in the patent rights. However, in cases where the invention was created by an employee in the course of his/her employment or made pursuant to a commission, the patent rights are deemed to accrue to the employer or the commissioner respectively. This is subject, however, to the terms of the contract.
As Malaysia is a member of the Paris Convention, an applicant can claim the priority date of a first application in respect of the invention that was filed in another Paris Convention country. A priority claim may also now be made in respect of a first application made in a World Trade Organization (WTO) member country. In either case, the application in Malaysia must be filed within a period of 12 months from the earlier application’s filing date.
The effect of a priority claim is that the novelty and inventive step of the invention will be determined relative to the state of the art (i.e. what was in the public domain) as of the priority date instead of the filing date of the application. As a result, any relevant publications that occurred after the priority date do not need to be taken into account when assessing patentability.