The Malaysian IP Office and the New Normal
by Chew Qi-Guang
One obvious effect in Malaysia particularly, is the forced rapid digitalisation of almost all business transactions within a short span of time. Examples include Governmental procedures and official transactions, a majority of which are now performed electronically, school lessons conducted online as well as business meetings carried out virtually via apps such as Zoom and Google Meet.
Cashless transactions and e-payments have also increased dramatically with a majority opting for utilisation of e-wallets and contactless cards rather than cash. Daily transactions can now be done remotely without the need of physical presence.
Taking a cue from the above, the Malaysian IP Office (MyIPO) within the past year has implemented measures to improve the digitalisation of its services in order to continue assisting Applicants wishing to obtain IP protection in this new normal.
By way of background, MyIPO had launched its online filing facility for patents, trademarks and industrial designs called IPOnline since 2012. The system has been updated to version 2.0 in 2018. Many improvements have been made since then to digitalise all transactions that were previously not available such as payment of excess claims fees, requesting for certified copies of documents, obtaining foreign filing license, and purchasing extracts of the file. MyIPO now no longer requires hardcopies of formal documents such as the Power of Attorney, certified copies and verified English translations to be filed. Digital signatures on documents are now accepted by MyIPO.
As a system that was already available and widely used by both IP practitioners and applicants in Malaysia before the pandemic, the majority of MyIPO’s services remained despite the closure of its physical offices during the Movement Control Order 1.0 (MCO 1.0) between March and May 2020. Nevertheless, a few services that had to be performed manually such as third-party opposition of trademarks, Hearings at MyIPO and the certification and issuance of original documents were affected at that juncture.
Since MCO 1.0, MyIPO has pushed for the adoption of IPOnline for all IP matters. A dedicated tech helpline contactable via email is made available for all users to address any technical issues. Most issues are usually addressed swiftly where responses to any email queries are attended to almost immediately and at times, even outside working hours. For more complicated issues, MyIPO officers have made themselves easily contactable via email and telephone. They have been responsive and helpful in finding solutions whenever possible. MyIPO officers have also allowed certain filings to be done via email with payment performed through online bank transfers in instances where certain procedures cannot be done via IPOnline.
The processing time for applications and requests filed via IPOnline is now very swift. For example, filing certificates and Preliminary Examination reports for new patent applications are issued within one to two days from the date of filing, foreign filing license can also be granted within two days of making the request. Grant of certain requests for extensions of time are dealt with immediately whereas renewal certificates are issued the next working day.
With the lifting of MCO 1.0, MyIPO’s filing counter has been operating at reduced hours. A fair portion of its staff are working from home whilst those who are deemed as essential staff remain present at the office. Procedures that must be performed manually have mostly been fully restored. Hearings with officers can now be conducted either over the telephone or virtually online while the certification and issuance of original documents have resumed. The only exception is opposition proceedings for trademarks, which continue to remain suspended at the time of publication and will only resume when interstate travel restrictions are lifted by the Malaysian Government.
Under the economic stimulus plan announced by the Malaysian Government in December 2020, certain waiver or reductions in some official fees are available for local applicants under the Patents (Waiver of Fees) Regulations 2020 and Trademarks (Waiver and Modification of Fee) Regulations 2020. These regulations came in force on 01 January 2021. These waivers and reductions are applicable only to a segment of the Malaysian public that meets predetermined income requirements set forth in the regulations.
With the enforcement of the Movement Control Order 2.0 (MCO 2.0) from mid- January 2021 until end of March 2021, it was almost business as usual for MyIPO. Despite less stringent lockdown restrictions imposed by the Government, a majority of MyIPO’s officers still work from home and they continue to service IP owners and IP practitioners.
Commendably, MyIPO has continued with its IP awareness programs during the pandemic. There have been various webinars for the general public and virtual training sessions for IP practitioners since last year and this has continued throughout MCO 2.0.
In addition to the above, MyIPO has recently launched its new online filing module for industrial designs which unites it with the patents and trademarks modules. Prior to this, the industrial designs module was available on a separate platform and since 01 February 2021, electronic copies of all filing documents for industrial designs are now accepted without the need of original documents to be filed manually such as the original Power of Attorney, any priority document and its verified English translation. The new industrial designs module is also designed to guide the user by offering a selection of standardised options for the applicants to choose in order to ensure a higher level of compliance with formality requirements. This would in turn, minimise objections by the examining officer. With this new module, any future objections raised by the officer will be issued through IPOnline and responses may be filed via the same. This was not possible previously.
MyIPO has also announced that moving forward, all official notifications issued throughout the entire prosecution process for patents, trademarks and industrial designs will be delivered exclusively through IPOnline with no more hardcopies of official notifications sent. The only exception to this rule is the issuance of certificates of grant or certificates of registration which will continue to be issued manually.
With these changes and implementations, MyIPO is now ready, more than ever, for the new normal and is in a good position to minimize disruptions that may have risen due to the pandemic. We foresee that the current system will make it easier and simpler for stakeholders seeking IP protection in Malaysia as MyIPO continues with further improvements to its online operations.