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PATENTS REGULATIONS, 1986*
IN exercise of the powers conferred by section 87 of the Patents Act 1983, the Minister makes the following regulations:
PART I
PRELIMINARY
1. Citation and commencement.
These Regulations may be cited as the Patents Regulations 1986 and shaH corne into force on the 1st October 1986.
2. Fees.
(1) The fees to be paid in respect of all matters arising under the Act and these Regulations shall be as specified in Schedule I.
(2) The fees shall be paid to the Patents Registration Office by such means and in such manner as the Registrar may direct
3. Forms.
The forms referred to in these Regulations are those set out in Schedule II.
PART II
APPLICATION AND PROCEDURE FOR GRANT AND DURATION OF PATENT
4. Interpretation.
In this Part, unless the context otherwise requires, "application" means an application for the grant of a patent and "applicant" shan be construed accord- ingly.
5. Application for grant of patent.
(1) An application shall contain-
(a) a request for the grant of a patent;
(b) a description;
(c) a claim or claims;
*Published as P. U. (A) 327186, and as amended by P.U. (A) 295190,262195 [woe! 1.8.95].
(d) a drawing or drawings, where required; and
(e) an abstract.
(2) The application shall be filed at the Patent Registration Office.
6. Name and declaration of inventor.
(1) The application shall contain the name and address of the inventor.
(2) An inventor who does not wish to be named in a patent may, by declaration in writing signed by him and submitted to the Registrar, indicate that he does not wish to be so named.
7. Request for the grant of a patent.
(1) A request for the grant of a patent shaH be made to the Registrar on Form 1 together with the payment of the prescribed fee.
(2) The title of the invention shaH indicate clearly and concisely the subject-matter to which the invention relates.
8. Names and addresses.
Names and addresses given in the application shall in all cases be the full names and addresses.
9. Nationality and residence.
(1) The applicant's nationality shall be indicated by the name of the State of which he is a national or, if the applicant is not a natural person, the name of the State under whose laws it is constituted.
(2) The applicant's residence shall be indicated by the name of the State of which he is a resident.
10. Applicant's right to patent.
(1) Where the applicant is the inventor. the request shall state that fact.
(2) Where the applicant is not the inventor, the request shaIl be accom- panied by a statement justifying the applicant's right to the patent.
H. Common representative.
If an application is submitted by more than one applicant and the appli- cants have not appointed a patent agent to represent all of them-
(a) the request shall designate one of the applicants as their common representative; or
(b) if the request does not designate one of the applicants as their common representative, the applicant first named in the request shaH be considered the common representative.
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12. Description.
(1) The description shall first state the title of the invention as appearing in the request and shall-
(a) specify the technical field to which the invention relates;
(b) indicate the background art which, as far as is known to the applicant, can be regarded as useful for the understanding, search- ing and examination of the invention, and wherever possible, cite the documents reflecting such art;
(c) disclose the invention in such terms that it can be understood and in a manner sufficiently clear and complete for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any advantageous effects of the invention with reference to the background art;
(d) briefly describe figures in the drawings, if any;
(e) describe the best mode contemplated by the applicant for carrying out the invention, using examples where appropriate and referring to the drawings, if any; and
(f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is indus- trially applicable and the way in which it can be made and used or, if it can only be used, the way in which it can be used.
(2) The description shaH be presented in the manner and order specified in subregulation (1) unless, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economical presentation.
(3) The description shall not contain drawings.
13. Claims.
(1) The claims shall be clear and concise and fully supported by the description; and the number of the claims shall be reasonable taking into consideration the nature of the invention.
(2) If there are several claims they shaH be numbered consecutively in arabic numerals.
(3) Claims shall not contain drawings and shall not, unless necessary, rely, in respect of the technical features of the invention, on references to the description or drawings.
(4) Where the application contains drawings, the technical features mentioned in the claims shall, wherever possible be followed by reference signs relating to such features and placed between parentheses, subject to the following:
(a) reference signs which do not particularly facilitate quicker under~ standing of a claim should not be induded;
(b) the same features, when denoted by reference signs, shall, through~ out the application, be denoted by the same signs.
(5) The claims shaH define the invention in terms of the technical features of the invention.
(6) Whenever appropriate, claims shall contain-
(a) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject- matter but which, in combination, are part of the prior art;
(b) a characterizing portion, preceded by the words "characterized in that", "characterized by", "wherein the improvement com- prises", or any other words to the same effect stating concisely the technical features which, in combination with the features stated under paragraph (a), it is desired to protect.
14. Dependent claims.
(1) Any claim which includes all the features of one or more other claims ("dependent claim") shall contain, if possible at the beginning, a reference to the other claim or claims and shaH then state the additional features claimed.
(2) (Deleted).
(3) A dependent claim shall be construed as including an the limitations contained in the claims to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
(4) AU dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.
15. Drawings.
0) Subject to subregulation (2), drawing shall be required when they are necessary for the understanding of the invention.
(2) Notwithstanding subregulation 0), where the nature of the invention admits of illustration by drawings the applicant may include drawings in the application when filed.
(3) Flow sheets and diagrams shall be considered drawings for the purposes of these Regulations.
16. Abstract.
(1) The abstract shaH commence with a title for the invention.
(2) The abstract shall contain-
(a) a summary of the disclosure as contained in the description and the claims and drawings, if any; and
(b) where applicable, the chemical formula which, among all the formulae contained in the application, best characterizes the invention.
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(3) The summary mentioned in subregulation (2)(a) shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. .
(4) The abstract shall be as concise as the disclosure permits and shall preferably not contain more than one hundred and fifty words.
(5) The abstract shall not contain statements on the alleged merits or value of the invention or on its speculative application.
(6) Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by the reference sign used in that drawing placed between parentheses.
(7) The abstract shan not contain drawings but shall be accompanied by the most illustrative of any drawings furnished by the applicant.
(8) The abstract shall be so drafted that it constitutes an efficient instru- ment for the purposes of searching in the particular technical field, in parti- cular by making it possible to assess whether there is a need to consult the description, the claims or the drawings.
17. Measures, terminology and signs.
(1) Units of weight and measures shall be expressed in terms of the metric system.
(2) Temperatures shaH be expressed in degrees Celsius.
(3) Densities shaH be expressed in metric units.
(4) For heat, energy, light, sound, and magnetism, as wen as for mathe- matical formulae and electrical units, the rules of international practice shall be observed.
(5) For chemical formulae, the symbols, atomic weights, and molecular formulae in general use shall be employed.
(6) In general, only such technical terms, signs and symbols as are gener- ally accepted in the field in question should be used.
(7) The terminology and the signs shall be consistent throughout the application.
18. Physical requirements.
(1) Unless provided otherwise, the application and any accompanying statements or documents shall be filed in duplicate, but the Registrar may require that they be filed in more than two copies,
(2) All documents of the application shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset and microfilming.
(3) All sheets shall be free from cracks, creases and folds and only one side of each sheet contained in the application shaH be used.
(4) All documents of the application shall be on A4 paper (29.7 em x 21 cm) which shall be strong, white, smooth, non-shiny and durable.
(5) Notwithstanding subregulation (4), the Registrar may accept sheets of sizes other than A4.
(6) The minimum margins of sheets shall be 2 cm.
(7) AU sheets shall be numbered at the top of the sheet and in the middle, in consecutive arabic numerals.
(8) The text matter of the application shall be typed or printed in a dark, indelible colour in at least 1Y2 line spacing, but graphic symbols, chemical or mathematical formulae and certain characters may, if necessary, be hand written or drawn.
(9) In the application, every fifth line of each sheet of the description and the claims shaH be numbered in arabic numerals placed to the left of the relevant lines but to the right of the margin.
(10) Drawings shan be executed in durable, black, sufficiently dense and dark, uniformly thick and wen-defined lines and strokes without colouring.
(11) The application and any associated statement or document shall be filed in the national language or in the English language.
19. Unity of invention.
(1) For the purposes of section 26 of the Act, the same patent application may include-
(a) in addition to an independent claim for a given product, an indepen- dent claim for a process specially adapted for the manufacture of the product, and an independent claim for a use of the product; or
(b) in addition to an independent claim for a given process, an indepen- dent claim for an apparatus or means specifically designed for carrying out the process; or
(c) in addition to an independent claim for a given product, an indepen- dent claim for a process specially adapted for the manufacture of
the product, and an independent claim for an apparatus or means specifically designed for carrying out the process.
(2) Subject to section 26 of the-Act, an application may contain two or more independent claims of the same category which cannot be covered readily by a single generic claim.
(3) Subject to section 26 of the Act, an application may contain a reason- able number of dependent claims claiming specific forms of the invention claimed in an independent claim even when the features of any dependent claim could be considered as constituting in themselves an invention.
19Ao Division of application.
For the purposes of section 26B( 1) of the Act-
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(a) where an application is divided pursuant to an objection in an Examiner's report made under section 30(1) or 30(2) of the Act for non-compliance with section 26 of the Act, the request for the division of the application shall be made within three months from the date of mailing of such report;
(b) in any other case, the applicant may, of his own voHtion, request for the division of the application not later than three months from the date of mailing of the Examiner's first report made under section 30(1) or 30(2) of the Act.
20. Disclosures to be disregarded for prior art purposes.
An applicant shall state in the request or at any other time any disclosure which he is aware of and which in his opinion should be disregarded for prior art purposes under section 14(3) of the Act and shan state the facts in an accompanying statement.
21. Declaration claiming priority.
(1) A declaration claiming priority under section 27(1) of the Act shall state-
(a) the date of each earlier application;
(b) subject to subregulation (2), the number of each earlier applica- tion;
(c) subject to subregulation (3), the symbol, if any, of the International Patent Classification which has been allocated to each earlier application;
(d) the name of the State in which each earlier application was filed or, where the earlier application is a regional or an international appli- cation, the name of the State or States for which it was filed; and
(e) where the earlier application is a regional or an international application, the office with which it was filed.
(2) Where at the time of filing the declaration referred to in subregulation (1) the number of any earlier application is not known, that number shan be furnished within three months from the date on which the application con- taining the declaration was filed.
(3) When a symbol of the International Patent Classification has not been allocated to the earlier application or had not yet been allocated at the time of filing the declaration referred to in subregulation 0), the applicant shall state this fact in the declaration.
(4) Whe:-e the priorities of two or more earlier applications are claimed in accordance with subregulation 0), the information relating to those earlier applications may be included in a single declaration.
(5) (Deleted).
22. Copy of earlier application.
(1) Where section 27(2) of the Act applies, the applicant shall furnish the certified copy of each earlier application within three months from the date of the Registrar's request.
(2) Where the copy referred to in subregulation (1) has already been furnished for another application, the applicant may make a reference to that other application.
(3) Where the earlier application referred to in subregulation (1) is in a language other than the national language or the English language, the Registrar may require the applicant to furnish him, within three months from the date of the Registrar's request, with a translation of the earlier application in the national language or in the English language.
23. Corrections in declaration claiming priority.
(1) If the Registrar finds that the requirements of regulations 21 and 22 have not been complied with he shaH request the applicant to file the required particulars, documents or corrections within three months from the date of the request.
(2) If the applicant does not comply with the request referred to in sub- regulation (1), the Registrar shall inform the applicant in writing that the declaration is deemed to be invalid under section 27(4) of the Act and shall state the reasons.
24. Withdrawal of application.
(1) An applicant may withdraw his application by a declaration on Form 2 addressed to the Registrar and signed by the applicant or his agent so autho- rized for that specific purpose.
(2) In the case of several applicants the declaration referred to in
subregulation (1) shall be signed by aU the applicants or on behalf of aU the applicants by their agent so authorized for that specific purpose.
(3) Where a declaration is signed by an agent, such declaration shall be accompanied by the letter authorizing him to sign the declaration.
25. Filing date.
(1) When the Registrar records the filing date of the application he shaH send to the applicant a certificate of filing in the form of a copy of the request with the filing date and application number marked thereon.
(2) The required correction under section 28(2) of the Act shall be filed within three months from the date of the Registrar's request.
(3) Where the Registrar treats the application as invalid in accordance with section 28 (3) of the Act, he shan inform the applicant in writing of the reasons.
(4) The drawings under section 28(4) of the Act shall be furnished within three months from the date of the Registrar's request.
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26. PreUmhmryexamination.
(1) The requirements of regulations 5, 6, 7(1), 8, 9, 11, 18 and 51 shaH be fonnal requirements for the purposes of section 29(1) of the Act.
(2) Where section 29(2) of the Act applies, the Registrar shall notify the applicant of his findings and the applicant shall make any observation on such finding or any amendment to the application or both within three months from the date of mailing of the Registrar's notification.
27. Request for substantive examination.
(1) A request for a substantive examination shall be made to the Registrar on Form 5 together with the payment of the prescribed fee within two years from the filing date of the application.
(2) Where an application is divided under regulation 19A more than two years from the filing date of the application, a further request for a substantive examination shall be made at the time of the filing of the request for the division of the application.
(3) A request for a substantive examination shaH, where appropriate, be accompanied by-
(a) infonnation relating to the application number and filing date of any application for a patent or other title of industrial property protection filed with any prescribed industrial property office relat- ing to the same or essentially the same invention as that claimed in the application;
(b) infonnation relating to the number assigned to a patent or other title of industrial property protection granted for the same or essentially
the same invention as that claimed in the application by any pre- scribed industrial property office;
(c) the results of any searches or examinations carried out by any prescribed industrial property office relating to the same or esseu- tially the same invention as that claimed in the application.
(4) The Registrar may waive, as he deems fit, any requirement under subregulation (3).
(5) Where an application is deemed to be withdrawn under section 29A(5) of the Act, the Registrar shaH inform the applicant in writing of that fact and shall state the reasons therefor.
(6) For the purposes of these Regulations, "prescribed industrial property office" means the Patent Office of Australia, the Patent Office of the United Kingdom, the Patent Office of the United States of America or the European Patent Office, as the case may require, in its capacity as a national office or, where appropriate, as an International Searching Authority or as an Inter- national Preliminary Examination Authority under the Patent Cooperation Treaty.
27ft., Request for modified §ubst~ntive examination,
(1) A request for a modified substantive examination shaH be made to the Registrar on Form 5A together with the payment of the prescribed fee within two years from the filing date of the application.
(2) Where an application is divided under regulation 19A more than two years from the filing date of the application, a further request for a modified substantive examination shall be made at the time of the filing of the request for the division of the application.
(3) A request for a modified substantive examination shaH be accom- panied by-
(a) a certified true copy of the patent or other title of industrial property protection granted to the applicant or his predecessor in title in the prescribed country or under the prescribed treaty or Convention, and where the patent or other title of industrial property protection is not in the English language, a certified translation in the English language thereof;
(b) where the description, claims or drawings of the invention granted a patent or other title of industrial property protection by the pre- scribed country or under the prescribed treaty or Convention are not, apart from matters of form, substantially the same as the description, claims or drawings of the invention claimed in the application, the amendments required for the purpose of bringing them into conformity.
(4) Where an application is deemed to be withdrawn under section 29A(5)
of the Act, the Registrar shaH inform the applicant in writing of that fact and shall state the reasons therefor.
(5) For the purposes of these Regulations-
"prescribed country" means Australia, the United Kingdom or the United Stated of America, as the case may require;
"prescribed treaty or Convention" means the European Patent Convention.
27B. Deferment of filing of requ.est for substantive examination and modified su.bstantive examination.
(1) A request for a deferment of the filing of a request for a substantive examination under regulation 27 or a modified substantive examination under regulation 27A or a deferment of the provision of information or documents required under regulation 27(3) shall be made to the Registrar on Form 5B.
(2) For the purposes of section 29A(7) of the Act, the maximum period of deferment allowed-
(a) for the filing of a request under regulation 27, shall be three years from the filing date of the application;
(b) for the filing of a request under regulation 27A, shall be four years from the filing date of the application;
(c) for the provision of the information or documents required under regulation 27(3), shall be three years from the filing date of the application.
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27c. Substantive examination.
(1) The requirements of sections 13, 14, 15 and 16, Part Y, and sections 26, 26A, 26B and 27 of the Act and regulations 7(2), 10, 12 to 17, 21 and 50 shall be substantive requirements for the purposes of section 30( I) of the Act.
(2) For the purpose of determining whether the application complies with the substantive requirements, in particular sections 14 and 15 of the Act, the Examiner shall search such documents as the Registrar deems necessary.
(3) Upon receipt of the Examiner's report under section 30(l)(b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of sections 14 and 15 of the Act have been satisfied and subregulation (2) shall apply in relation to such further search or other investigation.
(4) Where section 30(3) of the Act replies, the Registrar shall send a copy of the Examiner's report to the applicant and the applicant shall make any observation on such report or any amendment to the application or both within three months from the date of mailing of the report.
(5) Where the applicant makes any observation on the Examiner's report of any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shaH report his deter- mination to the Registrar.
(6) Without prejudice to the foregoing provisions the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application.
27D. Modified substantive examination.
(1) The requirements of sections 13 and 14, Part Y, and sections 26A, 26B and 27 of the Act and regulations 10, 21 and 50 shall be substantive requirements for the purposes of section 30(2) of the Act.
(2) In addition, it shall also be a substantive requirement that the descrip- tion, claims and drawings of the invention claimed in the application, whether as filed or as amended under the Act or these Regulations, apart from matters of form, shall be the same or substantially the same as the description, claims and drawings of the invention granted a patent or other title of industrial pro- perty protection by the prescribed country or under the prescribed treaty or Convention.
(3) For the purpose of determining whether the application complies with the substantive requirements, in particular section 14 of the Act, the Examiner shall search such documents as the Registrar deems necessary.
(4) Upon receipt of the Examiner's report under section 30(2)(b) of the Act, the Registrar may request the Examiner to conduct a further search or other investigation to determine whether the requirements of section 14 of the Act have been satisfied and subregulation (3) shall apply in relation to such further search or other investigation.
(5) Where section 30(3) of the Act applies, the Registrar shall send a copy of the Examiner's report to the applicant and the applicant shaH make any observation on such report or any amendment to the application or both within three months from the date of mailing of the report.
(6) Where the applicant makes any observation on the Examiner's report or any amendment to the application or both within the prescribed period, the Registrar shall refer them to the Examiner who shall report his determination to the Registrar.
(7) Without prejudice to the foregoing provisions, the prescribed period for compliance with the substantive requirements shall be five years from the filing date of the application.
28. Notification of refusal of application.
Where an application is refused under section 29(2), 30(3), 30(6), 31(1) or 85 of the Act, the Registrar shall notify the applicant in writing of that decision and shall state the reasons therefor.
29. Certificate of grant of patent.
(1) The certificate of the grant of a patent referred to in section 31(2)(a) of the Act shaH contain-
(a) the number of the patent;
(b) the name and address of the owner of the patent;
(c) the name of the inventor (except where he has indicated he does not wish to be named);
(d) the filing date and the priority date, if any, of the application;
(e) the date of the grant of the patent; and
if) the title of the invention.
(2) (Deleted).
30. Contents of patent.
The patent granted pursuant to section 31 (2) of the Act shall contain-
(a) the number of the patent;
(b) the name and address of the owner of the patent;
(c) the name and address of the inventor (except where he has indi- cated he does not wish to be named);
(d) the name and address of the agent, if any;
(e) the filing date of the application;
if) the priority date of the application, if any, and the name of the country or countries in which or for which the earlier application was filed;
(g) the date of the grant of the patent;
(h) the title of the invention;
(i) the symbol of the International Patent Classification;
(j) the abstract;
(k) the description;
(l) the claims; and
(m) aU the drawings, any.
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31. Register.
(1) The Register shall be kept in such form and on such medium as the Registrar may determine.
(2) The Register shall contain the particulars specified in paragraphs (a)
to (j) of regulation 30.
31A. Request for certified copies of or extracts from Register, etc.
A request for certified copies or extracts for the purposes of sections 33, 33A(2), 34 and 83A of the Act shall be made to the Registrar on Form 5c together with the payment of the prescribed fee.
3IB. Amendment of Register.
(1) A request under section 33B of the Act to amend the Register shall be made to the Registrar on Form 5D together with the payment of the prescribed fee.
(2) The Registrar may require the submission of such information or documents, induding a written explanation by the owner of the patent, in support of the request for the amendment.
32. Contents of reference to grant of patent published. in Gazette.
A reference to the grant of a patent published pursuant to section 31(3)(a) of the Act shall indicate the particulars specified in (a) to (j) of regulation 30 as well as the most illustrative of any drawings.
33. Annual fees.
(1) The prescribed annual fee shaH be paid to the Registrar who shaH record the payment in the Register.
(2) The lapse of a patent for non-payment of the prescribed annual fee shall be recorded in the Register.
(3) Annual fees paid shall not be refundable.
33A.Reinstatement of lapsed patent.
(1) A request under section 35A(l) of the Act for the reinstatement of a lapsed patent shall be made to the Registrar on Form 5E together with the payment of the prescribed fee.
(2) The Registrar may require the submission of such information or documents, including a written explanation by the person making the request, in support of the request for the reinstatement of the lapsed patent
(3) Where a case for reinstatement has not been made out to the satisfac- tion of the Registrar, he shall notify the person making the request in writing of that fact and shan state the reasons therefor and shaH give the person making the request an opportunity to be heard.
(4) Upon receipt of a notification under subregulation (3), the person making the request may, within one month from the date of the mailing of the notification, request for a hearing.
(5) Where the Registrar receives a request for a hearing under subregulation (4), he shall give the person making the request an opportunity to present his case and shall thereafter give his decision.
(6) Where no request for a hearing is received within the prescribed period where the person making the request does not appear on the date fixed for the hearing of the request the Registrar shall refuse the request for reinstate- ment and shall inform the person making the request in writing of that decision.
(7) Where a case for reinstatement has been made out to the satisfaction of the Registrar, he shall notify the person making the request in writing of that fact.
(8) Upon receipt of a notification under subregulation (7), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar all annual fees due and the prescribed surcharge for reinstatement.
(9) The Registrar shall, upon receipt of the annual fees due and the prescribed surcharge for reinstatement, reinstate the patent; and the date of reinstatement shall be recorded in the Register.
3313. Protection of persons who exploit lapsed patents.
(1) Any person who has exploited or taken definite steps, by contract or otherwise, to exploit a patent after it is notified in the Gazette that the patent has lapsed and before it is notified in the Gazette that the patent has been reinstated may request for a licence to exploit the patented invention.
(2) A request under subregulation (1) shall be made to the Registrar on Form 5F.
(3) A copy of the request shall be served on the owner of the patent.
(4) The Registrar may require the person making the request or the owner of the patent or both to appear before him for the purpose of giving a statement or submitting any document or other information.
(5) The Registrar may, where he is satisfied that a licence to exploit the patented invention should be granted, grant a licence to the person making the request subject to such terms and conditions as the Registrar deems fit and the owner of the patent shall be deemed to have consented to such grant
(6) The Registrar shall inform the person making the request and the owner of the patent in writing of his decision.
33c. O:m.version of appHcatiomL
(1) A request under section 17B (3) of the Act to convert an application for a patent into an application for a certificate for a utility innovation or to convert an (l.oplication for a certificate for a utility innovation into an appli- cation for a patent shaH be made to the Registrar on Form 5G together with the Davment of the prescribed fee.
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(2) Where a case for conversion has been made out to the satisfaction of the Registrar, he shaH notify the person making the request in writing of that fact.
(3) Upon receipt of a notification under subregulation (2), the person making the request shall, within one month from the date of the mailing of the notification, pay to the Registrar-
(a) in the case of a request to convert an application for a patent into an application for a certificate for a utility innovation, the prescribed fee payable under regulation 45;
(b) in the case of a request to convert an application for a certificate for a utility innovation into an application for a patent, the prescribed fee payable under regulation 7.
(4) For the avoidance of doubt it is declared that where an application has been converted in accordance with this regulation, the prescribed fee paid on the original application shall not be refundable.
PART III RIGHTS OF OWNER OF PATENT
34. Application to record assignment or transmission.
(1) Any application under section 39(2) of the Act to record in the Regis- ter the assignment or transmission of a patent application or a patent shall be made to the Registrar on Form 6 together with the payment of the pre- scribed fee.
(2) The application shall be signed, in the case of an assignment, by or on behalf of the parties to the transfer and, if the case of a transmission, by or on behalf of the person entitled to the patent application or patent.
(3) The application shall be accompanied by documents proving to the satisfaction of the Registrar the change of ownership.
(4) When subregulations (1) to (3) have been complied with, the Registrar shall record the assignment or transmission in the Register.
(5) Where a change in ownership related to a patent, a reference thereto shall also published in the Gazette.
35. Entry in Register that any person may obtain a licence.
0) An application under section 42(1) of the Act shall be made on Form 7 together with the payment of the prescribed fee.
(2) An application under section 42(6) of the Act shaH be made on Form 8 together with the payment of the prescribed fee.
36. Request to recolJ."d palrticuhu-s of licence contracts.
A request under section 42(4) of the Act shall be made to Form 9 together with the payment the prescribed fee.
Registrar on
37. Request to record expiry or termination of recorded licence contracts.
A request under section 47(a) of the Act shall be made to the Registrar on Form 10 together with the payment of the prescribed fee.
PART IV
COMPULSORY LICENCES
38. Application for compulsory licence.
An application under sections 49 and 49A of the Act shall be made to the Registrar on Form 11 together with the payment of the prescribed fee.
39. Procedure for grant of compulsory licence.
(1) The Registrar shall, within three months from the date of the applica- tion, examine whether the requirements of section 50(1) of the Act and regulation 38 are satisfied and, if the requirements are satisfied, send a copy of the application to the licensor and licensee and invite the licensor or licensee, as the case may be, to make any observations.
(2) The Registrar shaH give the notice required by section 50(2) of the Act, in writing, not later than three months before the date set for the Board to consider the application.
40. Notification of the Board's decision.
(1) The Registrar shall notify in writing any party required to appear before the Board under section 51(1) of the Act not later than one month before the date set for the appearance.
(2) Within one month from the date the Board makes its decision, the Registrar shall notify the applicant, the licensor or the licensee, as the case may be, of the decision and shall record the decision in the Register setting out the following particulars:
(a) the name and address of the applicant;
(b) the date of filing of the application;
(c) the applicable statutory provision under which the application was made;
(d) the title of the patented invention;
(e) the number and date of the grant of the patent in question;
(j) the date and pature of the decision; and
(g) if a compulsory licence was granted, the particulars referred to in section 52 of the Act.
(3) The Registrar shall publish the decision of the Board under section 51 (l) of the Act in the Gazette setting out the particulars mentioned in paragraphs (a) to (j) of subregulation (2).
41. Amendment and cancellation of compulsory licence,
(l) The request under section 54( 1) of the Act to amend the decision granting a compulsory licence shaH be made to the Registrar on FOnTI 12 together with the payment of the prescribed fee.
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(2) The request under section 54(2) of the Act to cancel a compulsory licence shall be made to the Registrar on Form 13 together with the payment of the prescribed fee.
(3) The procedure set out in sections 50 and 51 of the Act and in regula- tions 38, 39 and 40 shall apply, to the extent relevant, for amending or cancelling a compulsory licence.
42. Surrender of compulsory licence.
(1) The written declaration of surrender of a compulsory licence under section 54 (3) of the Act shall be accompanied by the payment of the pre- scribed fee.
(2) The Registrar shall record the surrender in the Register and notify the owner of the patent as required by section 54(3) within one month from the date ofreceipt of the declaration of surrender.
(3) The Registrar shall publish the surrender as required by section 54(3) of the Act in the Gazette.
PART V
SURRENDER AND INVALIDATION
43. Su.rrender of patent.
The written declaration of surrender of a patent under section 55( 1) of the Act shall be accompanied by the payment of the prescribed fee.
44. Invalidation of patent.
(1) The owner of the patent shall notify any licensees of any proceedings brought under section 56 of the Act.
(2) The person requesting the invalidation shaH notify any beneficiaries of compulsory licences of any proceedings brought under section 56 of the Act.
PART VI
UTILITY INNOVATIONS
45. Certificate for a utility innovation.
(1) An application for the grant of a certificate for a utility innovation under Part IVA of the Act shall be made to the Registrar on Form 14 together with the payment of the prescribed fee.
(2) An application to extend the term of a certificate for a utility innova- tion shall be made to the Registrar on Form 15 together with the payment of the prescribed fee.
(3) The provisions of these Regulations, except regulation 19 and Part IV, shall apply to utility innovations to the extent relevant.
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(4) In the forms made applicable to utility innovations under subregulation (3), "certificate" means a certificate for a utility innovation.
45A. Interpretation.
PART VIA
PATENT AGENTS
In this Part, unless the context otherwise requires-
"Board of Examiners" means the board of Examiners of Patent Agents established under regulation 45G;
"Secretary-General" means the Secretary-General of the Ministry charged with the responsibility for the development of industrial property.
45B. Representation in proceedings.
(1) Unless the Act or any regulation made thereunder otherwise pre- scribes, or the Registrar otherwise directs, any person may be represented in proceedings before the Patent Registration Office by a patent agent who may attend, file documents and sign documents on that person's behalf.
(2) The appointment or change of a patent agent shall be made on Form 17, signed by the person or persons to be represented by the agent and submitted to the Registrar.
45c. Registration of patent agents.
(1) An application to be registered as a patent agent in the Register of Patents Agents shall be made to the Registrar on Form 18 together with the payment of the prescribed fee.
(2) In order to be registered in the Register of Patents Agents, the appli- cant shall satisfy the Registrar-
(a) that he is domiciled in or is a permanent resident of Malaysia;
(b) that he is an advocate and solicitor of the High Court in Malaya or an advocate of the High Court in Sabah and Sarawak, or has a relevant degree or its equivalent in an appropriate branch or engi- neering or science from an institution of higher learning approved by the Board of Examiners, or has qualifications entitling him to graduate membership of a professional engineering or scientific in~titution or the like recognized by the Board of Examiners; and
(c) that he has passed the examination specified in regulation 45D.
(3) The Registrar may, at any time, require proof of the matters specified in paragraphs (a), (b) and (c) of subregulation (2).
(4) The Registrar may refuse to register any person who has been con- victed of an offence involving fraud or dishonesty.
(5) The Registrar, upon being satisfied that the applicant qualifies to be registered in the Register of Patents Agents, shaH register the applicant for a term expiring on the 31st December of that year.
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45D. Examination for patent agents.
(1) For the purposes of regulation 42c(2)(c), the board of Examiners shall conduct an examination which shall consist of the following subjects:
(a) technology;
(b) Malaysian patent law and practice;
(c) Malaysian trade mark and designs law and practice; and
(d) foreign industrial property law and practice.
(2) An application for registration as a candidate for the examination specified in subregulation (l) shall be made to the Board of Examiners on Form 18A together with the payment of the prescribed fee.
(3) An application under subregulation (2) shall be sent to the Secretary to the Board of Examiners at the Patent Registration Office on or before the date determined by the board of Examiners for the submission of such applications.
(4) A candidate shan be required to sit for each of the subjects specified in subregulation (1) at a sitting of the examination.
(5) A candidate who has sat for and failed to pass any of the subjects specified in subregulation (1) may, if he is dissatisfied with his results, appeal to the Secretary-General for fe-scrutiny of the results within fourteen days from the date of the notification of such results together with the payment of the prescribed fee.
(6) Upon receipt of an appeal under subregulation (5), the Secretary- General shall consider the appeal and make a decision thereon.
(7) The decision of the Secretary-General shall be final and conclusive.
(8) A candidate who has sat for and failed to pass any or all of the subjects specified in subregulation (1) at an examination may apply to re-sit such subject or subjects, as the case may be, at the next sitting of the examination and such application shall be made to the Board of Examiners on Form 18B together with the payment of the prescribed fee.
(9) Any candidate who has failed to pass an of the subjects specified in subregulation (1) after three attempts shall be deemed to have failed the overall examination and subregulations (5), (6), (7) and (8) shall not apply thereto.
(10) Any candidate who is deemed to have failed the overall examination under subregulation (9) may re-apply to be registered as a candidate under subregulation (2).
45E.Renewal of registration of patent agents.
(1) An application for the renewal of registration as a patent agent shall be made to the Registrar on Form 19 together with the payment of the prescribed fee by the 31 st January of each year:
Provided that in the case of a person who immediately before the date of coming into force of this regulation was registered as a patent agent the application for the renewal of registration as a patent agent shall be made within thirty days of the expiry of the registration.
(2) The Registrar shall, upon being satisfied that the conditions specified in regulation 45c continue to be satisfied, renew the registration of the patent agent for a term expiring on the 31 st December of that year:
Provided that a person who immediately before the date of coming into force of this regulation was registered as a patent agent shall be deemed to have satisfied the conditions specified in regulation 45c (2)(c).
(3) Notwithstanding subregulation (2), the Registrar may refuse to renew the registration of any person who has been convicted of an offence involving fraud or dishonesty.
4SF, Cancellation of registration of patent agents.
(1) The Registrar may cancel the registration of any person who has been convicted of an offence involving fraud or dishonesty.
(2) Where the registration of any person is cancelled under this regulation no fees paid for the purpose of registration or renewal of registration shall be refundable.
4SG. Board of Examiners of Patent Agents,
(1) There is established a Board of Examiners of Patent Agents which shall consist of-
(a) the Registrar of Patents, who shall be Chairman; and
(b) four other persons proficient in the field of industrial property appointed by the Secretary-General.
(2) An officer of the Patent Registration Office shall be Secretary to the Board of Examiners.
(3) A member of the Board of Examiners appointed under subregulation (l)(b) shall, unless his appointment is sooner revoked or he sooner resigns, hold office for such period not exceeding three years as the Secretary- General may determine and shall be eligible for reappointment.
(4) At a meeting of the Board of Examiners three members shall form a quorum.
(5) In the absence of the Chairman, a member nominated by the Chair- man shall preside at the meeting and such member may exercise all the powers of the Chairman in respect of that meeting.
(6) If on any question to be determined there is an equality of votes, the Chairman shall have the casting vote in addition to his deliberative vote.
(7) The Board of Examiners shall be responsible for-
(a) the conduct of the examination specified m regulation 45D;
(b) preparing and publishing the examination syllabus and determining the study material to be recommended;
(c) preparing examination papers;
(d) registering and admitting candidates;
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(e) determining the time, date and place for the examination;
(j) awarding certificates; and
(g) advising the Registrar as to the persons who have satisfied the requirements of paragraphs (b) and (c) of subregulation 4Sc(2).
(8) The Board of Examiners shall enjoy the prerogative of awarding and withdrawing certificates, withholding and cancelling the results of any candidate, and barring any person from taking the examination.
45H. Setting, assessing and marking of examination questions and answers.
(1) The Board of Examiners may appoint suitably qualified persons to be examiners for the purpose of setting, assessing and marking questions or answers for the examination specified in regulation 450.
(2) The Board of Examiners may give such instructions in relation to the setting, assessing and marking of questions or answers as it considers neces- sary.
(3) The examiners appointed under subregulation (1) shall be paid such allowances as the Minister may direct.
PART VII
MISCELLANEOUS
46. Amendment of application.
A request under section 79(1) of the Act to correct a clerical error or obvious mistake in an application for the grant of a patent shall be made to the Registrar on Form 16 together with the payment of the prescribed fee.
46A. Amendment of patent.
A request under section 79A( 1) of the Act to correct a clerical error or obvious mistake in a patent or any other document associated with the patent, or to amend a patent or any other document associated with the patent for any other reason shall be made to the Registrar on Form 16A together with the payment of the prescribed fee.
47. Hearing.
(1) The Registrar shall give the person entitled to a hearing pursuant to section 81 of the Act not less than one month's notice of the date of hearing.
(2) Within twenty-one days of the date of the notice, the person notified shall inform the Registrar whether he desires to be heard.
(3) If the person notified fails to inform the Registrar within twenty- one days of his desire to be heard, the Registrar may proceed to exercise his power in the absence of such person.
(4) The Registrar may invite an Examiner to assist him in the hearing,
48. (Deleted).
49. (Deleted).
50. Signatures by partnerships, companies and associations.
(1) A document purporting to be signed for or on behalf of a partnership shall contain the names of an the partners in full and shall be signed-
(a) by aU the partners; or
(b) by any qualified partner stating that he signs on behalf of the partnership; or
(c) by any other person who satisfies the Registrar that he is authorized to sign the document.
(2) A document purporting to be signed for or on behalf of a body corporate shall be signed-
(a) by a director or the secretary or other principal officer of the body corporate; or
(b) by any other person who satisfies the Registrar that he is authorized to sign the document.
(3) A document purporting to be signed for or on behalf of an association of persons may be signed by any person who appears to the Registrar to be duly qualified.
51. Address for service. (1) Every person concerned with any proceedings under the Act or any
regulation made thereunder and every owner of a patent shall furnish to the Registrar, on Form 20 together with the payment of the prescribed fee, an address for service in Malaysia, which may be treated for all purposes con- cerning or connected with such proceedings or patent as the address of the person concerned.
(2) Notwithstanding subregulation (1), where a patent agent has been appointed, the address for service shall be the address of the patent agent
(3) The furnishing of Form 20 is not required if the address for service has already been furnished in any other Form in Schedule II to these Regu- lations, and that address for service has not changed in any way.
52. Service by post.
(1) Any notice, application or other document sent to the Registrar by post shall be deemed to have been given, made or filed at the time when it would have been delivered in the ordinary course of the post.
(2) For the purpose of proving that a notice, application or other document has b'een sent to the Registrar by post, it shall be sufficient to prove that the letter containing such notice. application, or other document was addressed and sent by registered post.
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53. Request for extension of time.
A request under section 82 of the Act shall be made to the Registrar on Form 21 together with the payment of the prescribed fee.
SCHEDULE I (Regulation 2(2)
FEES PART I
(i) (2) item Matterl No. Proceeding
1. (a) Request for grant of patent (b) Claims
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
(i) for first ten claims (ii) for every additional claim
Declaration of withdrawal of application
Request for substantive examination
Request for modified substantive examination
Request for deferment of filing of request for examination or provision of information
Request for certified copies or extracts
Request to amend Register
Request for reinstatement of lapsed patent
Request for licence to exploit patented invention
Request to convert application for patent into application for certificate for utility innovation or vice versa
Application for recording of assignment or transmission
Application for entry in Register that any person may obtain a licence
Application for cancellation of entry in Register that any person may obtain a licence
Request for recording of particulars of licence contract in Register
Request for recording expiry or termination of licence contract in Register
Application for compUlsory Jicence
Request for amendment of decision granting compulsory licence
Request for cancellation of compulsory licence
Application for grant of certificate for utility innovation
Application to extend term of certificate for utility innovation
Request to amend application for grant of patent
Request to amend patent
(3) Fee
(RM)
200.00
Nil 10.00 per claim
700.00
450.00
50.00
50.00
100.00
200.00
100.00
50.00
50.00
100.00
75.00
75.00
75.00
75.00
100.00
100.00
50.00
50.00
(4) Corresponding
Form
Form 1
Form 2
Form 5
Form SA
Form Sa
Form 5c
Form 5D
Form SE
Form 5F
Form 50
Form 6
Form 7
Form 8
Form 9
Form 10
Form II
Form 12
Form 13
Form 14
Form 15
Form 16
Form 16A
(1) item No.
23.
24.
25.
26. 27.
28.
29. 30.
(1) Item No.
(2) Matter!
Proceeding
Appointment or change of patent agent Application for registration of patent agent Application for registration as candidate for examination Application to re-sit examination Examination fee
Application for renewal of registration of patent agent Furnishment of address for service Request for extension of time
(2) Matter!
Proceeding
PART n
1. Copy of patent
2. Copy of search report
3. Examination of Register
4. Certified extract from Register
5. Photocopy of extract from Register
6. Inspection of file relating to patent or patent application
7. Certified extracts from file relating to patent or patent application- (a) for first five pages (b) for every additional page
8. Annual fee for patent: (a) for second year (b) for third year (c) for fourth year (d) for fifth year (e) for sixth year (f) for seventh year (g) for eighth year (h) for ninth year (0 for tenth year (j) for eleventh year (k) for twelveth year (I) for thirteenth year (m) for fourteenth year (n) for fifteenth year
9. Surcharge for reinstatement
(3) Fee
(RM)
2000.00
100.00
100.00 100.00 per subject 400.00
100.00 200.00
(4) Corresponding
Form
Form 17
Form 18
Form 18A
Form 18B
Form 19
Form 20 Form 21
(3) Fee
(RM)
30.00
20.00
10.00 per hour
10.00 per page
2.00 per page
10.00 per hour
10.00 per page 2.00 per page
200.00 250.00 300.00 350.00 400.00 450.00
500.00 550.00 600.00 650.00 700.00 800.00 900.00
1100.00
100% of fee for year concerned
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Item Matter! Fee No. Proceeding (RM)
10. Surrender of compulsory licence 60.00
1l. Surrender of patent 60.00
12. Annual fee for certificate for utility innovation:
(a) for third year 120.00 (b) for fourth year 160.00 (c) for fifth year 160.00
(d) for sixth year 200.00
(e) for seventh year 200.00
if) for eighth year 240.00
(g) for ninth year 240.00
(h) for tenth year 280.00 (i) for eleventh year 400.00
(j) for twelveth year 600.00 (k) for thirteenth year 700.00 (I) for fourteenth year 800.00
(m) for fifteenth year 1000.00
13. Holding of hearing 100.00
14. Certificate of grant of a patent 150.00
15. Certificate for a utility innovation 100.00
16. Appeal against examination results 200.00 per subject
17. Extension of time (for every month or 50.00 per month part of a month)
SCHEDULE
(Regulation 29)
Patents Form No.1 Patents Act 1983
REQUEST FOR GRANT OF PATENT
(Regulation 7(1»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
FORMS
For Official Use
Application received on: ............................................ .
Fee received on: ........................................................ ..
Amount: ...................................................................... .
-Cheque/Postal Order/Money Order/Draft/Cash
No.: ............................................................................
Applicant's file reference
THE ApPLlCA.'-rr (8) REQUEST (5) THE GRANT OF A PATENT IN RESPECT OF THE FOLLOWING
PARTICULARS:
1. Title of Invention: ................................................................................................................... .
• Delete whichever does not apply.
Page 87
II. ApPUCATION(S) (the data concerning each applicant must appear in this box or, if the space is insufficient, in the space below):
Name: .......................................................................................................................................... ..
I.C./Passport No: .......................................................................................................................... .
Address: ....................................................................................................................................... ..
Address for service in Malaysia: ................................................................................................ ..
Nationality: .................................................................................................................................. .
* Permanent residence or principal place of business:
Telephone Number (if any)
Additional Information (if any)
m. INVENTOR: Applicant is the inventor
If the applicant is not the inventor:
Fax Number (if any)
Yes c=J No c=J
Name of inventor: .................................................................................................................... .
Address of inventor: ................................................................................................................ .
A statement justifying the applicant's right to the patent accompanies this Form:
Yes c=J
Additional Information (if any)
IV. AGENT OR REPRESENTATIVE:
Applicant has appointed a patent agent in accompanying Form No.n
No c=J
Yes c=J
No c=J
Agent's Registration No.: ........................................................................................................ .
Applicants have appointed ....................................................................................................... . to be their common representative.
• Delete whichever does not apply.
Page 88
V. DIVISIONAL ApPLICATION:
This application is a divisional application
The benefit of the filing date priority date
of the initial application is claimed in as much as the subject-matter of the present application is contained in the initial application identified below:
Initial Application No.: ................................................................................................................ .
Date of filing of initial application: ........................................................................................... ..
VI. DISCLOSURES TO BE DISREGARDED FOR PRIOR ART PURPOSES:
Additional information is contained in supplemental box:
(a) Disclosure was due to acts of applicant or his predecessor in title
Date of disclosure: .......................................................................... .
(b) Disclosure was due to abuse of rights of applicant or his predecessor in title
Date of disclosure: .......................................................................... .
A statement specifying in more detail the facts concerning the
disclosure accompanies this Form
Yes
No
Additional Information (if any)
VII. PRIORITY CLAIM (if any):
The priority of an earlier application is claimed as fonows:
Country (if the earlier application is a regional or international application, indicate the office with which it is filed):
Filing Date: .................................................................................................................................. .
Application No.: ........................................................................................................................... .
Symbol of the International Patent Classification:
If not yet allocated, please tick
The priority of more than one earlier application is claimed:
Yes c=J No c=J The certified copy of the earlier application (s) accompanies this Form:
Yes c=J No c=J If No, it will be furnished by ............................................................................... (date)
Additional Information (if any)
Page 89
VIII. CHECK L!ST:
A. This application contains the following:
1. request
2. description ................................................................................................sheets 3. claim .. ..............................................................................................sheets 4. abstract ................................................................................................sheets 5. drawings
Total
................................................................................................sheets
................................................................................................sheets
B. This Form. as filed, is accompanied by the items checked below:
(a) signed Form No. 17
(b) declaration that inventor does not wish to be named in the patent
(c) statement justifying applicant's right to the patent
(d) statement that certain disclosures be disregarded
(e) priority document (certified copy of earlier application)
(/) cash, cheque, money order, banker's draft or postal order for the payment of application fee
(g) other documents (specify)
IX. SIGNATURE................................................................... .
**(ApplicantIAgent) (Date)
D D D D D D
If Agent, indicate Agent's Registration No. :....................................................................... .
For Official Use
1. Date application received :........................................................................................ .
2. Date of receipt of correction, later filed papers or drawings completing the application:
Patents Form No. 2 PATENTS ACT 1983
DECLARATION OF WITHDRAWAL OF ApPLICATION
(Regulations 24 and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate.
L IN THE MATTER OF:
Patent Application No.:
For Official Use
ApPLICATION No: ..............................................
Filing Date: .................................................. ..
Declaration received on: ................................
Date of mailing: ........................................... ..
Applicant's or Agent's file reference
Filing Date: ...................................... .
Certificate Application No.: ......................... .. Filing Date: ...................................... .
Page 90
H. ApPLICANT (3):
Name
Address .... ~ .............. ~ ................................................. ~~ .... ~ ....... " .....................................-. .........."...........................................................................................................
HI. DECLARATION:
* I/We declare *my/our desire that the above-identified application be withdrawn under section 25 of the Patents Act 1983.
IV. SiGNATURE......................................................... .
** (Applicant/Agent) (Date)
If Agent, indicate Agent's Registration No:
Patents Form No. 5 PATENTS Acr 1983
REQUEST FOR SUBSTANTIVE
EXAMINAnON
(Regulations 27(1) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
1. IN THE MATIER OF:
Patent Application No.:
For Official Use
ApPLICATION'No.: ............................................ .
Filing Date: ................................................... .
Request received on: ..................................... .
Fee received on: ........................................... ..
Amount: ......................................................... .
*ChequeIPostal Order/Money OrderlDraft/Cash No.: ................................................................. .
of mailing: ............................................ .
Applicant's or Agent's file reference
Filing Date:......................................... ..
Certificate Application No.: .......................... Filing Date: ....................................... ..
H. ApPLICANT (s):
Name
Address
m. REQUEST:
oo .. ~ •• 0 •••• ~" .... " •••••• 000"'.0" .................... 00. 0 ••••••• " ••••••• " •••• 0 .... " •••••••••••••••• " •• ,H ••••••••• o'••••••••
The applicant (s) request (5) the Registrar to refer the patent application identified above to an Examiner for a substantive examination in accordance with section 29A(l) of the Patents Act 1983.
Delete whichever does no! apply.
$* Type name under signature. Pursuant 10 regulation 24. a declaration of withdrawal mUSI be signed by Ihe applicant (s) or by Ihe agent so 2ulhorized for Ihal specific purpose.
Page 91
IV. ADDlTlONAL INFORMATION accompanies this Form:
Yes D No D
IV. SiGNATURE......................................................... .
** (Applicant/Agent) (Date)
If Agent, indicate Agent's Registration No:
Patents Form No. SA PATENTS Acr 1983
REQUEST FOR MOD!FlED SUBSTANTIVE EXAMINATION
(Regulations 27A(1) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Mala sia
Please submit this Form in duplicate together with the prescribed fee.
1. IN THE MATTER OF:
Patent Application No.:
For Official Use
ApPLICATION No.: .............................................
Filing Date: ., ................................................. .
Request received on: ......................................
Fee received on: ............................................ .
Amount: ......................................................... .
*Cheque!postal OrderlMoney Order/DraftlCash No.: ................................................................. .
Applicant's or Agent's file reference
Filing Date:
Certificate Application No.: .......................... .. Filing Date:
n. ApPLICANT (s): Name
Address
m. REQUEST: The applicant (s) request (s) the Registrar to refer the patent application identified
above to an Examiner for a modified substantive examination in accordance with section 29A(2) of the Patents Act 1983.
IV. PRESCRIBED FOREIGN PATENT:
I provide herewith a certified copy of the specification of Patent No.:.......................................... .
granted in ....................................................... on ................................. ,.......................... .
Copy of granted patent from: >1< UK/US/EP/AustraHa
Delete whichever does nol apply.
*- Type name under signature and delete whichever does not mpply.
Page 92
Amendments in accordance with regulation 27A(3)(b) accompany this form.
Yes D No D
VI. SIGNATURE......................................................... .
** (Applicant/Agent) (Date)
If Agent, indicate Agent's Registration No:
Patents Form No. 58 PATENTS Acr 1983
REQUEST fOR DEFERMENT OF FILING OF REQUEST
FOR ExAMINATION OR PROVISION OF INFoRMATION
(Regulations 278(1) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate.
For Official Use
ApPLfCATION No.: ........................................... ..
Filing Date: .................................................. ..
Request received on: ..................................... .
Applicant's or Agent's file reference
Patent Application No.: .................................................... Filing Date: ......................................... .
Certificate Application No.: ............................................. Filing Date: ..........................................
II. APPUCANT (5):
Name
Address
m. REQUEST:
*(a) The applicant requests deferment of the filing of a request for examination referred to in section 29A(1) or 29A(2) of the Patents Act 1983.
Particulars of the $patent/certificate application for essentially the same invention referred to in section 29A(2) of the Patents Act 1983 are as follows:
Name of COWltry:
Application No.:
Delete whichever dces 001 2Wly. ". Type !'MOO under signature and delete whichever does \101 apply.
Page 93
Date Application Lodged:
I certify that a *patentlcertificate has not been granted in .................................................. or is not available in respect of the above application.
or
(b) The applicant requests deferment of the provision of the *information/supporting document referred to in section 29A(4) of the Patents Act 1983.
I certify that the *information/supporting document is not available in respect of the above application.
IV. AnnmoNAL L"IFORMATION accompanies this Form:
Yes D No
V. SIGNATURE.................................................................. ..
** (Applicant/Agent) (Date)
If Agent, indicate Agent's Registration No: ........................................................................ ..
Patents Form No. 5c PATENTS ACT 1983
REQUEST FOR CERTIFIED COPIES OR EXTRACTS
(Regulations 31A and 45(3)}
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
I. APPLICANT:
Name
Address :
II. REQUEST:
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: .................................................. ..
Request received on: ..................................... .
Fee received on: ............................................ .
Amount: ......................................................... .
*Cneque!Postal OrderfMoney Order/Draft/Casn No.: ................................................................. .
Applicant'S or Agent's file reference
The applicant requests the Registrar to issue a certified copy/extract of the matter specified below in accordance with section 33/33A(2)/34/83A of the Patents Act 1983:
II!. SIONATURE.................................................................. .
** (Applicant/Agent) (Date) If Agent, indicate Agent's Registration No: ........................................................................,.
* Delete whichever does not apply. *.. Type name under signature and delete whichever does no! apply.
Page 94
Patents Form No. 5D PATEI:',S ACT 1983
REQUEST TO AMEND REGISTER
(Regulations 31 B (l) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
I. IN THE MAITER OF:
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: .................................................. ..
Request received on: ...................................... Fee received on: ............................................. Amount: ......................................................... .
*Cheque!Postal Order!Money OrderIDraft/Cash No.: ................................................................. .
Applicant's or Agent's file reference
Patent No.: ........................................................ Date of Grant: .................................................... .
Certificate No.: ................................................. Date of Grant ................................................... ..
n. OWNER (s):
Name
Address
m. REQUEST:
The owner (s) request (5) the Registrar to amend the Register in accordance with section 33B of the Patents Act 1983 by-
*(a) correcting an error in the *name/address of the owner (s); or
(b) changing the *name/address of the owner (s)
in respect of the above identified *patent/certificate.
IV. * CORRECTED/CHANGED *NAME/ADDRESS OF OWNER (s):
Name
Address
V. SiGNATURE............................................................ .
** (Owner (s)/Agent) (Date)
If Agent, indicate Agent's Registration No: .....................................................................................
Delete whichever docs not apply. •• Type name under signarure and delete whichever does not apply.
Patents Form No. 51! PATENTS Ac:r 1983
REQUEST FOR REINSTATEMENT OF LAPSED
PATENT
(Regulations 331. (1) and 45(3))
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
1. IN THE MATTER OF:
Page 95
For Official Use
A!>PLlCATION No.: ........................................... ..
Filing Date: ................................................... .
Request received on: ..................................... .
Surcharge received on: ...................................
Amount: ........................................................ ..
Annual fees due received on: ...................... ..
*Cheque!Postal Order!Money OrderlDraft/Cash No.: ................................................................. .
Applicant's or Agent's file reference
Patent No.:....................................................... Date of Grant ......................................................
Certificate No.:............................................. Date of Grant:......................................................
n. OWNER. (s):
Name
Address
m. REQUEST:
The owner (5) request (s) the Registrar to reinstate the *patentlcertificate identified aoove in accordance with section 35;. of the Patents Act 1983.
IV. EVIDENCE IN SUPPORT accompanies this Form:
Yes D No D
V. SIGNATURE.............."".................................... (Date)
**(Owner (s)1Agent)
.. [k:iete whichever does oot eppiy. 0.. Type 1I!1lOO lIi11der sigrult!lre and delele whicllever dm1; oot apply.
Page 96
Patents Form No. SF PATENTS ACT 1983
REQUEST FOR LICENCE TO EXPLOIT
PATENTED INvENTION
(Regulations 338(2) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate.
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Application received on: ............................... .
Applicant's or Agent's file reference
Patent No.:............................................................. Date of Grant................................................ .
Certificate No.:...................................................... Dale of Grant ................................................ .
n. OWNER (s):
Name
Address
m. REQUEST:
Date of Reinstatement of * Patent! Certificate:
The applicant applies to the Registrar for a licence under the "'patent/certificate identified above in accordance with regulation 338 of the Patents Regulations 1986.
IV. AnDmoNAL INFORMATION accompanies this Form:
Yes No D
V. A COpy OF THIS REQUEST HAS BEEN SERVED ON THE OWNER (s) IDENTIFIED ABOVE:
Yes No D VI. SiGNATURE.....................................................
(Datej (**(Applicant(s)/Agent)
If Agent, indicate Agent's Registration No.: ................." ..................................................... ..
• Delete whichever does nol app!y. $$ Type Ml1iC under signature and delete whichever does nol apply.
Patents Form No. 50 PATENTS ACT 1983
REQUEST TO CONVERT APPLlCATION FOR
PATENT INTO ApPLICATION FOR CERTIFICATE
FOR UTILITY ANNOVATION OR VICE VERSA
(Regulations 33c and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
1. IN TIffi MATTER OF:
*Patent/Certificate
Page 97
For Official Use
ApPLICATION No.: ........................................... ..
Filing Date: .................................................. ..
Application received on: ............................... .
Fee received on: ............................................ .
Amount: ......................................................... .
"'Cheque!Postal Order!Money OrderlDraft/Cash No.: ............................................................... .
Applicant's or Agent's file reference
Application No.: .............................................................. Filing Date:....................................... .
n. APPLICANT (s):
Name
Address
rn. REQUEST:
The applicant applies to the Registrar for the conversion of the "'patent/certificate application identified above into an application for a "'certificate for a utility innovation/patent in accordance with section 178(3) of the Patents Act 1983.
IV. SIGNATURE............................................................ . (Date)
(**(Applicant!Agent)
If Agent, indicate Agent's Registration No.: ...................................................................... ..
" Delete which does not apply. • $ Type name under signature and delete whichever does not apply.
Page 98
Patents Form No.6 PATENTS ACT 1983
ApPLICATION FOR RECORDING OF
ASSIGNMENT OR TRANSMISSION
(Regulations 34(1) and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
L IN THE MATTER OF:
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Application received on: .............................. ..
Fee received on: ............................................ .
Amount: ........................................................ ..
* Cheque!Postal Order/Money Order/Draft!Cash No.: ................................................................ .
Date of mailing: ............................................. .
Applicant's or Agent's file reference
Patent Application No.:.................................................... FilingDate:............................................
Patent No.:........................................................................ DateofGrant: ........................................
Certificate Application No.:.......................................... Filing Date:.........................................
Certificate No.: ............................................................... Date of Grant .....................................
n. *APPLICANT (S)/OWNER (s):
Name
Address
m. ApPLICATION:
The new *applicant(s)!new owner(s) below *applies/apply to the Registrar to record the *assignment/transmission of the above identified *patent application/patent/certificate applicationl certificate.
IV. *NEW APPLICANT (S)!NEW OWNER (s):
Name
Address
Address for service in Malaysia: ...................................................................................................... ..
Nationality: ........................................................................................................................................
* Permanent residence or principal place of business:
Telephone Number (if any)
$ Delete whichever does no! apply.
fax Number (if any)
Page 99
V. AODmoNAL INFORMATION:
The foHowing items accompany this Form:
(a) the original or a certified copy of the assignment signed by or on behalf of the contracting parties D
D D
(b) other documents evidencing the change of ownership (specify)
(c) other (specify)
VI. SIGNATURB.................................................... .
**(New Applicant/New Owner/ Agentfor New Applicant
or New Owner)
(Date)
If Agent, indicate Agent's Registration No.: ......................................................................... .
(in case of assignment)........................................
**(Applicant/Owner! (Date) Agent for Applicant ofOwner)
If Agent, indicate Agent's Registration No.: .........................................................................
Patents Form No.7 PATENTS Acr 1983
APPLICATION FOR ENTRY IN REGISTER THAT
ANY PERSON MAY OBTAIN A LICENCE
(Regulations 35(1) and 45(3))
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
L IN nm MATTER OF:
For Official Use
ApPLICATION ~o.: ............................................
Filing Date: .................................................. ..
Application received on: ............................... .
Fee received on: ........................................... ..
Amount: ......................................................... .
*Cheque!Postal Order/Money OrderIDraft/Cash No.: ............................................................... ,.. .
Date of mailing: ............................................ ..
Applicant's or Agent's file reference
Patent No.: .......................".................................... Date of Grant: ..............................................
Certificate No. :...................................................... Date ofGrant : .............................................. .
$ Delete whichever does not apply. •• Type name under signature and dele!e whichever dces not apply.
Page 100
Name
Address
*o .... ".... ~ •• "._ •• .,." ........ "......... ~ •••• " ... ~" .......... ".......................................... _ .......... "........... H<t h ................ " .. " ., ..... ".".
...............................".............................................................................................................
........................................................................................................................................................
m. AmlCATION:
The *patent/certificate owner (5) *applies/apply to the Registrar for an entry to be made in the Register to the effect that any person may obtain a licence under the *patent/certificate identified above. (The "patent/certificate owner (s) *is/are not precluded by contract from granting licences under the "patent/certificate).
IV. ADornONAL INFoRMATION accompanies this Form:
Yes D No D
V. SIGNATURE ............................................................ . (Date)
"'''''(Applicant/Agent)
If Agent, indicate Agent's Registration No.: ....................................................................................
Patents Form No.8 PATENTS Acr 1983
A!>PUCATION FOR CANCEllATION Of ENTRY IN
REGISTER THAT ANY PERSON MAY OBTAIN
A LICENCE
(Regulations 35(2) and 45(3)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Application received on: .............................. ..
Fee received on: ............................................ .
Amount: ........................................................ ..
*Cheque!postal Order/Money OrderJDraft/Cash No.: .................................................................. .
Date of mailing: ..............................................
Applicant's or Agent's file reference
Patent No. :.................................................................... Date of Grant: .........................................
Certificate No. :............................................................. Date of Grant : .........................................
* Delete whichever does IICI aWl)'. U Type MIne WIder signalllre and delete wltiche'V~~ not apply.
n. LICENSOR:
Name
Address
m. AwuCATION:
Page 10]
The licensor applies to the Registrar for the cancellation of the entry made that any person may obtain a licence.
IV. ADDmoNAL INFoRMATION accompanies this Form:
Yes D No D
V. SiGNATURE.............................................................. (Date)
**(LicensorIAgent)
If Agent, indicate Agent's Registration No.: .....................................................................,. ..
Patents Form No.9 PATENTS ACT 1983
REQUEST FOR REcORDING OF PARTlC!JLARS OF LICENCE CONTRACT IN REGISTER
(Regulations 36 and 45(3))
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
I. IN THE MATTER Of :
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Request received on: ..................................... .
Fee received on: .............................................
Amount: ......................................................... .
* Cheque/Postal Order/Money OrderJDraft/Cash No.: ................................................................. ..
Date of mailing: .".......................................... .
Applicant's or Agent's file reference
~ .~ ... ~ .... ,,~ ... ~ ...... ~ ........ ~ ••• ~ .... ~.o .......... 0 •• ~ .. ~ ................. ~ .......... , ..
Patent No. :...............................m....................................... DateofGrant: ....................................... Certificate No. :.................................................................. DateofGrant: ....................................... and the licence contract relating thereto.
II. LICENSOR:
Name
Address
¢ Delere whichever does not spply. "* Type name under signature 1Ule! delete whichever does no! awly.
Page 102
ill. LICENSEE:
Name
Address
IV. REQUEST:
The above parties request the Registrar to record in the Register the following particulars relating to the licence contract:
V. ADDmONAL INFORMATION accompanies this Form:
Yes D No
VI. SIGNATlJRE................................................................... . (Date)
**(LicensorIAgentfor Licensor)
If Agent, indicate Agent's Registration No.: .....................................................................................
**(LicenseeIAgent for Licensee) (Date)
If Agent, indicate Agent's Registration No.: .................................................................................... .
Patents Form No. 10 PATENTS ACT 1983
REQUEST FOR RECORDING EXPIRY OR TERMINATION OF LICENCE CONTRACT IN REGISTER
(Regulations 37 and 45(3»)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
For Official Use
ApPLICATION No.: ........................... 00 .............. ..
Filing Date: ................................................... .
Request received on: ..................................... .
Fee received on: ........................................... ..
Amount: ......................................................... .
* Cheque!Postal Order!Money OrderlDraft/Cash No.: .................................................................. .
Date of mailing: ............................................ ..
Applicant's or Agent's file reference
Patent No:.................................................................... Date of Grant:............................................ Certificate No.:............................................................ Date ofGrant:........................................... .. and the licence contract relating thereto.
"* Type Mr!"1e under sig!'lJ.lure and delete whichever does /lot apply.
n. LICENSOR: Name Address
m. LICENSEE: Name Address :
IV. REQUEST:
Page 103
The parties to the licence contract identified above request the Registrar to record in the Register the
expiry D or termination o of the licence contract
V. AnnmONAL INFORMATION
The following items accompany this Form:
(aJ documentation evidencing the above fact (specify)
(b) other (specify)
VI. SiGNATURE................................................................
*-*-(Licensor/Agentfor Licensor) (Date)
IfAgent, indicate Agent's Registration No:............................................................................................
*-*-(Licensee/Agent/or Licensee) (Date)
If Agent, indicate Agent's Registration No:......................................................................................
Patents Form No. 11 PATENTS ACT 1983
ApPLICATION FOR COMPULSORY LICENCE
(Regulations 38)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit One copy of this Form together with the prescribed fee.
I. IN mE MATTER OF:
For Official Use
ApPLICATION No.: .............................................
Filing Date: ................................................... .
Application received on: ............................... .
Fee received on: .............................................
Amount: ..........................................................
'" Cheque/Postal Order!Money Order/Draft/Cash
No.: ...................................................................
Date of mailing: ............................................ ..
Applicant's or Agent's file reference
Patent Application No.: ............................................. Filing Date:...............................................
~. Type name lJooer signa.lUre !I!1d delete whichever dOJ!S not apply.
Page 104
U. ApPLICANT:
Name
Address
......... ~." .......... ,," .... "" ........ e ~ ............................................................................................................................................................ .
....... ............................................. " ............................................................................................................. 0 ................................................ ~ ...... ..
"""0"""", • 6 ..................................... ~ ............................. 0.......... .................. ............................................................................. 0................. ..
Address for service in Malaysia: .............................................................................................. .
........................................................................................................................................................
Nationality: ........................................................................................................................ .
*' Permanent residence or principal place of business:
Telephone Number (if any)
••••• .,,, • • ~ ........ ., .... " •• ............ ~ ............ 0"". 0.,... o-o.~.-
m. REQUEST
Fax Number (if any)
The above applicant applies to the Registrar to transmit to the Board the req,uest, in respect of the patent identified above, for the grant of a compulsory licence under section 49 and/or 49A of the Patents Act 1983, in accordance with the terms proposed in Part IV of this Form and upon the grounds set out in Part V of this Form. .
IV. PROPOSED TERMS:
A statement setting out the amount of royalty. the conditions of the exploitation of the patent and the restriction of the rights of the licensor or licensee, as the case may be, is attached.
V. ** STATEMENT OF GROUNDS attached.
VI. ADDITIONAL INFORMATION
The following items accompany this Form:
(Il) evidence that the patent owner has received a request from the applicant to obtain a licence contract but that he has been unable to obtain such a licence on reasonable terms and within a reasonable time
(b) plan according to which the applicant intends to work the patented invention, including evidence that he has the ability to do so in Malaysia
(c) other (specify)
VII. SIGNATURE............................................................... ..
***{ApplicantiAgent)
If Agent, indicate Agent's Registration No.:
• D?!CIC whichever~ nO! awly.
D
D
D
(Date)
U The ground upon which !he request b based shall be indiclllOO by a reference iO !he sllWlOry provision !he awlicml cOIlSiders applicable (section49(l)(a) M/or49(I)(b) andlor49A of !he Patents Ac! 1983) and to !he fmcl3 he cOIlSiders IlSjllSufying!he granl of a compu!oory Iicenre.
.... Type IWtle 1!00er sigrmmre and delete whichever does not awly.
Patents Form No. 12 PATENTS ACT 1983
REQUEST FOR AMENDMENT OF DECISION GRANTING COMPULSORY LICENCE
(Regulation 41 (1)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
1. IN THE MATTER OF:
Page 105
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ............................................. ,..... .
Request received on: ..................................... .
Fee received on: ............................................ .
Amount: ......................................................... .
* ChequelPostal OrderlMoney OrderlDraft/Cash No.: ................................................................ .
ate of mailing: ............................................ ..
Applicant's or Agent's file reference
Patent No...................................................... . Date of Grant: ...................................... .
and the compulsory licence relating thereto.
n. PATENT OWNER (s): Name
Address
HI. BENEFICIARY OF COMPULSORY LICENCE:
Name
Address
IV. REQUEST
The above *patent owner(s) beneficiary of a compulsory licence ask(s) the Registrar to transmit to the Board the present request for the following amendment of the decision granting the compulsory licence identified above upon the grounds that the new facts set out below justify such amendment.
V. STATEMENT OF GROUNDS, including new facts that justify the amendment are attached.
VI. ADDITIONAL INFORMATION accompanies this Form:
Yes No D
vn. SIGNATURE ................................................................ . **(Patent Owner/Beneficiary! (Date)
Agent)
IfAgent, indicate Agent's Registration No.: ................................................................." ..................
" Delete whichever does 110t apply.
¢> Type name under signature and delete whichever does not apply.
Page 106
Patents Form No. 13 PATENTS ACT 1983
REQUEST FOR CANCEllATION OF COMPULSORY LICENCE
(Regulation 41(2»)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
I. IN THE MATIER OF;
For Official Use
ApPLICATION No.: D. ~ b ..... ,. .. ~o. 0-.,. •••• ~ ... D ............................ ~ .. .. Filing Date: 0-. ~ ........... ... ~ ................. ~ .... o- •••• 0- ................
0 .. " •••• <1
Request received on: ................................. $ ....... .
Fee received on: ... " ..... ~ ........................................................ .. Amount:
* Cheque!Postal Order/Money OrderlDraft/Cash
No.:.................................................................. .
Date of mailing: ..............................................
Applicant's or Agent's file reference
Patent No.: .................................................... .. Date of Grant: ..................................... ..
and the compulsory licence relating thereto.
n. PATENT OWNER (5); Name
Address
m. REQUEST: The above patent owner (s) ask (s) the Registrar to transmit to the Board the present request
for the cancellation of the compulsory licence identified above upon the grounds set out below.
IV. **STATEMENT OF GROUNDS attached.
V. ADDITIONAL INFORMATION accompanies this Form:
Yes D No D
VI. SIGNATURE ............................................................... ..
(Date) ***(Patent Owner/Agent)
IfAgent, indicate Agent's Registration No.: ............................................. w ... ................................. .
• Delete whichever does not apply.
•• The ground upon which the request is based shall be indicated by a referel1ce to !he s!aMOf)' provisioo the applicant col1siders applicable (section 54(2)(a) or 54(2)(b} or 54(2)(c) or S4(2)(d) of the Patents Act 1983) lIIld 10 the facts he considers as justifying the cancellation of the compulsory licence.
"u Type name IInder signllture and delete whichever does not apply.
Patents From No. 14 PATENTS ACT 1983
ApPLICATION FOR GRANT OF CERTIFICATE FOR UTILITY INNOVATION
(Regulation 45(1))
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
Page 107
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: .......... ~ ........................................ .
Application received on: .............................. ..
Fee received on: ............................................ .
Amount: ..........................................................
* Cheque!postal OrderlMoney OrderlDraftlCash No.:.................................................................. .
Date of mailing: ............................................ ..
Applicant'S or Agent's file reference
THE ApPLICANT (s) REQUEST (5) THE GRANT OF ACERTIFICATE FOR A UTILITY INNOVATION IN RESPECT OF THE FOLLOWING PARTICULARS:
L TITLE OF INVENTION
H. ApPLlcANT(s) (the data concerning each applicant must appear in this box or, if the space is insufficient, in the space below):
Name
LC/Passport No.
Address
Address for service in Malaysia: ..........................................................................................
Nationality: .................................................................................................................... ..
*Permanent residence or principal place of business:
Telephone Number (if any)
Applicant is the innovator
If the applicant is not the innovator:
Name of innovator
Addres's of illilovator
• Delete whichever does not apply.
Yes 0
Fax Number (if any)
No 0
Page 108
A statement justifying the applicant's right to the certificate accompanies this Form:
Yes D No D
IV. AGENT OR REPRESENTATIVE:
Applicant has appointed a patent agent in accompanying Form No. 17 Yes D
No D Agent's Registration No: .................................................................................................... .
Applicants have appointed .................................................................................................. . to be their common representative
V. DIVISIONAL ApPLICATION:
This application is J. divisional application D The benefit of the
filing date D priority date D of the initial application is claimed in as much as the subject- matter of the present application is contained in the initial application identified below.
Initial Application No.: ....................................................................................................... ..
Date of filing of initial application: ...................................................................................... .
VI. DISCLOSURES TO BE DISREGARDED FOR PRIOR ART PuRPOSES:
Additional information is contained in supplemental box:
(a) Disclosure was due to acts of applicant or his predecessor in title D Date of disclosure: ............................................................................................. ..
(b) Disclosure was due to abuse of rights of applicant or his predecessor in title D
Date of disclosure :.............................................................................................................. ..
A statement specifying in more detail the facts concerning the disclosure accompanies this POIm
• Delete whichever does !'IOI "'pply.
Yes D No D
Page 109
VII. PRiORITY CLAIM (if any):
The priority of an earlier application is claimed as follows:
Country (if the earlier application is a regional or international application, indicate the office with which it is filed);
Filing Date:........................................................................................................................ ..
Application No: ................................................................................................................... .
Symbol of the International Patent Classification:
If not yet allocated, please tick W The priority of more than one earlier application is claimed:
Yes D No D The certified copy of the earlier application (s) accompanies this Form:
Yes D No D If No, it will be furnished by ....................................................................................... (date)
VIn. CHECK LIST:
A. This application contains the foHowing;
1. request
2. description... ...... ... .... ...... ........ ... ..... ...... ... ...... ......... ... .... ......... ............ sheets
3. claim.................................................................................................. sheets
4. abstract............................................................................................... sheets
5. drawings............................................................................................. sheets
Total. .................................................................................................. sheets
B. This Form. as filed, is accompanied by the items checked below:
(a) signed Form No. 17 D (0) declaration that innovator does not wish to be named in the certifi.cate D (c) statement justifying applicant's right to the certificate D (d) statement that certain disclosures be disregarded D (e) priority document (certified copy of earHer application) D (f) cash, cheque. money order. banker's draft or postal order for the Dpayment of application fee (g) other documents (specify) D
Page 110
IX. SIGNATURE
(Date) **(Applicant/Agent)
If Agent, indicate Agent's Registration No.: ........................................................................ .
For Official Use
1. Date application received: ......................................................................................... .
2. Date of receipt of correction, later filed papers or drawings completing the application:
Patents Form No. 15 PATENTS ACT 1983
ApPLICATION TO EXTEND TERM OF CERTIFICATE FOR UTILITY INNOVATION
(Regulation 45(2})
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this' Form together with the prescribed fee.
I. IN THE MATTER OF:
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Application received on: .............................. ..
Fee received on: ............................................ .
Amount: ......................................................... .
* Cheque!postal Orderlfvioney Order!Draft/Cash No.: .................................................................. .
Date of mailing: ............................................. .
Applicant's or Agent's file reference
Certificate No.: .................................................. Date of Grant: .................................................... ..
H. APPLICANT (s) (The data concerning each applicant must appear in this box or, if the space is insufficient, in the space below)
Name
Address
Address for service in Malaysia ; ....................................................................................................
III. APPUCATION:
Telephone Number (if any)
Fax Number (if any)
The owner of the Certificate applies for an extension of the term of the Certificate for an additional period of five years.
* Delete whichever does no! apply. $0 Type name under 5ignature and delete whichever does not apply.
Page 11 I
IV. AffIDAVIT:
An affidavit showing that the utility innovation is in commercial or industrial use in Malaysia or satisfactorily explaining its non-use is attached in accordance with section 35 (3) of the Patents Act 1983.
V. AnDmONAL INFORMATION accompanies this Form:
Yes D No D VI. SrGNATIJRE........................................................
** (Owners (s)!Agent) (Date)
If Agent, indicate Agent's Registration No: .....................................................................................
Patents Form No. 16 PATENTS ACT 1983
REQUEST TO AMEND APPLICATION FOR GRANT OF PATENT
(Regulations 46 and 45(3»
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: .................................................. ..
Request received on: ......................................
Fee received on: ........................................... ..
Amount: ......................................................... .
>I< Cheque!Postal Order!Money Order/Draft/Cash
No.: ...................................................................
Date of mailing: ............................................ ..
Applicant's or Agent's file reference
Patent Application No. :.....m................................................. Filing Date :.................................... Certificate Application No. :.................................................. Filing Date: ....................................
Other documents (identify) :.............................................................................................................
n. PERSON (3) MAKINO REQUEST:
Name
Address
Address for service in Malaysia : .................................................................................................. .
Telephone Number (if any)
• Dele!e whichever does no! apply. M Type name urnlet si~l...re and delele whlchev~... doe., nOllllJlPly.
Fax Number (if any)
Page 112
m. REQUEST:
The person (5) above-identified request (s) the Registrar that. after *his/their paying the prescribed fee. the clerical error or obvious mistake in the document identified above may, in accordance with section 79 of the Patents Act 1983. be corrected as attached.
IV. ADomONAL INFoRMATION accompanies this Form:
Yes D No D V. SIGNATVRE.......................................................
** (Applicant/Agent) (Date)
If Agent, indicate Agent's Registration No: .....................................................................................
Patents Form No. 16A PATENTS ACT 1983
REQUEST TO AMEND PATENT
(Regulations 46A and 45(3»)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ....................................................
Request received on: ......................................
Fee received on: .............................................
Amount ..........................................................
* Cneque!Postal OrderfMoney Order/Draft/Casn No.: ...................................................................
Applicant's or Agent's file reference
Patent No. :.................................................................. Date of Grant............ ,......,.....................
Certificate No. :........................................................... Date of Grant :........................................ .
n. OWNER (5):
Name
Address
m. ASSOCIATED DocuM:Em (if any):
Document : ...................................................... '.....,.......... ,...,............................ ,.............,...............,
$ Delete whichever does not apply. •• Type name under signarure and delete whichever does not apply.
Page 113
IV. REQUEST:
The owner (s) request (8) the Registrar to amend, as attached, the above-identified "patent! certificate/document in accordance with section 79A(1) of the Patents Act 1983.
V. REASON FOR REQUEST:
*(a) Correction of clerical error (b) Correction of obvious mistake
(c) Other ** reason...............................................................................................................
VI. ADDmONAL INFORMATION accompanies this Form:
Yes D No D
VIT. SlGNATIJRE...................................................... ..
(Date) *** (Applicant/Agent)
If Agent, indicate Agent's Registration No: .....................................................................................
Patents Form No. 17 PATENTS ACT 1983
APPOINTMENT OR CHANGE OF PATENT
AGE1'IT
(Regulations 45B (2) and 45(3»)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form.
* I/We the undersigned,
Name
Address
appoint
Name
Address
Telephone Number . (if any)
.. Delete whichever does no! apply. "* Specify other reasoll.
For Official Use
ApPLICATION No.: ........................................... ..
Filing Date: ................................................... .
Received on: .................................................. .
I Date of mailing: ............................................. .
Applicant's or Agent's file reference
Fax Number (if any)
"$. Type name under signature. and delete whichever does not apply.
Page 114
to act as *my/our agent in connection with the foHowing matter (5):
~ •••••••••••••••••••••••••••••••••••••••••••• " ••••••••••••• 0 ............................... " ............................................... 0 ••••••••••••••••••
ratify all acts done by the agent on ""myI our behalf in connection with ""that/those matter (s), and
request that all notices, requisitions and communications relating thereto be sent to the agent at the abovementioned said address.
Any previous appointment in respect of the same matter (s) is revoked.
**SIGNATURE............................................... .
Patents Form No. 18 PATENTS ACT 1983
ApPLICATION FOR REGISTRATION OF PATENT
AGENTS
(Regulation 45c (1)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
I. APPLICANT:
Name:
Address:
(Date)
For Official Use
Application received on: .............................. .
Fee received on: ............................................ .
Amount: ......................................................... .
"" Cheque!Posta! Order!Money Order/Draft/Cash
No.: .................................................................. .
Applicant's file reference
Nationality: ...................................................................................................................................... .
*Permanent residence or principal place of business: ................................................................." ..
n. APPLICA :ION:
Telephone Number (if any)
Fax Number (if any)
The above applicant applies for registration as a patent agent in the Register of Patents Agents.
• Delete wMelle'let does no! apply. •* Must be signed by the yer;on (s) appointing the agent; Iype name under sigl'l!!ture.
ill. QuAUFlCATIONS:
The applicant (tick: whichever is applicable):
(a) is an advocate and solicitor of the High Court
(b) has passed the examination specified in regulation 45D
(c) has a relevant degree or its equivalent in engineering or science
(d) has not been convicted of any offence involving fraud or dishonesty
(e) has been convicted of an offence involving fraud or dishonesty and a record thereof with a statement of explanation accompanies this Form
Page 115
D D D D D
IV. Proofofthe matters specified in paragraphs (a), (b), (c) and (d) ofPart illI ofthis Form, if applicable, accompanies this Form.
V. SIGNATURB....................................................... .
Patents Form No. 18A PATENTS ACT 1983
** (Applicant)
APPI..lCATION FOR REGISTRATION AS CANDIDATE
FOR EXAMINATION
(Regulation 45D(2»)
To: The Secretary Board of Examiners of Patent Agents Patent Registration Office Kuala Lumpur Malaysia
Please submit this Form in duplicate together with the prescribed fee.
(Date)
For Official Use
Application Received on: ............................. .
Fee received on: .............................................
Amount: ....................................................... '"
>I< ChequelPostal Order!Money OrderlDraft/Cash
No.: ...................................................................
Applicant's file reference
1. 1........................................................................................... of .......................................................
hereby apply for: registration as a candidate at the Examination for Registration as Patent Agents to
be held in the month of ..................................... 19 .............
n. SIGNA.TURE ............................................... . **(Applicant)
Telephone Number (if any)
(Date)
Fax Number (if any)
~~~~-=~~_=__=~~==_====__~~~~-=±l::== '" Delete whichever~ oot apply.
$$ Type: name wuler sigmmm;.
Paue 116to
Patents Form No. 1Be PATENTS ACT 1983
APPLICATION TO RE-Srr EXAMINATION
(Regulation 45o(8»
To: The Secretary Board of Examiners of Patent Agents Patent Registration Office Kuala Lumpur Malaysia
Please submit one this Form in duplicate together with the prescribed fee.
For Official Use
Application Received on: ............................ ..
Fee received on: ........................................... ..
Amount: ......................................................... .
'" ChequelPostal Order!Money Order/Draft/Cash
No.: .................................................................. .
Applicant's file reference
I. I........................................................................................... of.......................................... .
hereby apply to submit myself to re-sit the examination in the following subject (s) at the Examination for Registration as Patent Agents to be held in the month of ............ 19 ...........
Subjects: .............................................................................................................................. .
n. SIGNATURE.................................................
Patents Form No. 19 PATENTS ACT 1983
"""(Applicant)
Telephone Number (if any)
APPLICATION FOR RENEWAL OF REGISTItATION OF
PATENT AGENT
(Regulation 45E(l))
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
I. ApPUcANT:
Name
Address
Delete whichever does nOI apply. Type name under signature.
(Date)
Fax Number (if any)
For Official Use
Application Received on: ............................ ..
Fee received on: ............................................ .
Amount: .......... " ............................................. .
'" ChequelPostal Order!Money Order/DraftiCash
No.: .................................................................. .
Applicant's file reference
Page 117
Nationality: ...................." ................................................................................................................. .
*Permanent residence or domicile:
n. ApPLICATION:
Telephone Number (if any)
Fax Number (if any)
The above applicant applies for renewal of the registration in the Register of Patents Agents.
m. QUALIFICATIONS:
The applicant (tick whichever is applicable):
(a) is an advocate and solicitor of the High Court
(b) has passed the examination specified in regulation 45D
(c) has a relevant degree or its equivalent in engineering or science
(d) has not been convicted of any offence involving fraud or dishonesty
(e) has been convicted of an offence involving fraud or dishonesty and a record thereof with a statement of explanation accompanies this Form
IV. ADomONAL INfORMATION accompanies this Form:
Yes
V. SIGNATURE...................................................... .
Patents Form No. 20 PATENTS ACT 1983
**(Applicant)
No D
(Date) ..
For Official Use
Request No:
D D
D D
FURNISHMENT Of ADoRESS FOR SERVlCE
(Regulations 51 and 45(3))
Fee received on: ............................................ .
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Malaysia
Please submit one copy of this Form together with the prescribed fee.
Received on: ....................................................
Amount: ......................................................... .
* Cheque!Postal Order!Money Order!Draft/Casn No.: ................................................................. ..
Date of mailing: ............................................ ..
Applicant's 01' Agent's file reference
Patent Application No.: ...................................... Filing Date:........................................................ ..
Patent No.: ......................................................... Date of Grant ......................................................
Certificate Application No.:.............................. Filing Date: ..........................................................
Certificate No.:.................................................. Date ofGrant ...................................................... .
'" Delete whichever does not apply. *" Type name under signature.
Page 118
n. MruCANT (S):
Name
Address
ITI. REQUEST:
The applicant (s) identified above request (s.) the Registrar for the *inclusion/addition/alteration/ substitution of an address for service in Malaysia as follows:
IV. ADDmoNAL INFORMATION accompanies this Form:
Yes. D No
V. SIGNATURE................................................... ... .
**(Applicant/Agent) (Date)
IfAgent, indicate Agent's Registration No. :...................................................................................... .
Patents Form No. 21 PATENTS Acr 1983
REQUEST FOR EXTENSION OF TIME
(Regulations 53(1) and 45(3»)
To: The Registrar of Patents Patent Registration Office Kuala Lumpur Ma.laysia
Please submit this Form in duplicate together with the prescribed fee.
1. L" THE M-\TrER OF;
For Official Use
ApPLICATION No.: ............................................ .
Filing Date: ................................................... .
Request received on: ..................................... .
Fee received on: '" ......................................... .
Amount: ......................................................... .
*' Cheque!Postal OrderMoney Order/Draft/Cash No.: .................................................................. .
Date of mailing: ..............................................
Applicant'S or Agent's file reference
Patent Applica.tion No.: ...................................... FilingDate:.............................................................
Patent No.: .......................................................... DateofGrant: ........................................................ .
Certificate Application No.: ............................... FilingDate:............................................................ .
Certificate No.: ................................................... DateofGrant:....................................................... ..
" Ddele whichever does not apply. "* Type name under signature and delete whichever does !lot apply.
H. ApPLICANT (S):
Name
Address
m. REQUEST: **The applicant (s) request (s) the Registrar to extend the time within which to;
IV. EXTENSION PERIOD SOUGHT:
Page 119
From: ....................................................... . To: ............................................................... .
V. ***STATEMENT OF GROUNDS attached o VI. ADDITIONAL INFORMATION accompanies this Form:
Yes o No o
vn. SIGNATURE.................................................. .. ****(ApplicantIAgent) (Date)
If Agent, indicate Agent's Registration No.: .......................................................................... .
.. Delete whichever does not apply.
..* Insert brief description of the act or things to be done. *** The applicant shall state the facts he considers as justifying the extension.
**"". Type name under signature and delete whichever does not apply.
Made 29 June 1995.
Note: The saving and transitional provisions under P.U. (A) 262/95 [w.eJ. 1.8.1995} read as follows:
30 (1) Any registration as a patent agent granted under the principal Regulations and in force immedi- ately before the commencement of these Regulations shall, in so far as its grant is not inconsistent with these Regulations, be deemed to have been granted under these Regulations and shall continue in force
until it expires.
(2) Any application for registration as a patent agent or application for renewal of registration as a patent agent made or pending before the date of coming into force of these Regulations shall be deemed to have been made under the principal Regulations and the principal Regulations shall continue to apply to such applications as if the principal Regulations had not been amended:
Provided that the registration of such person as a patent agent shall be for a term ex.piring on the 31st December 1995 and for the purposes of this proviso the prescribed fee payable shall be proportionate to the term to be renewed.