FAQs On IP Prosecution Measures Relating To The "Movement Control Order" In Malaysia.

Legal News & Analysis - Asia Pacific - Malaysia - Intellectual Property

19 March, 2020

 

Given the increased number of local COVID-19 cases in Malaysia, the Malaysian Government issued a Movement Control Order ("Order") which takes effect between 18 March 2020 to 31 March 2020.  The Order imposes on all government and private sector business premises to be shut down for the duration of the Order and only businesses which carry out certain essential services are able to continue to function.   

 

The Malaysian Intellectual Property Office ("MyIPO") has also announced special measures pursuant to this Order. To this end, we hope that you will find some clarity on the situation with the following FAQs highlighting the implications of this Order in relation to the prosecution of Intellectual Property matters during this period.  

 

FAQs  

 

1. Is the MyIPO open during the period of the Order? 

 

The Customer Service Counter at the MyIPO headquarters and all MyIPO branches office in Malaysia will be temporarily closed from 18 March 2020 to 31 March 2020.   

 

On this account, the delivery and receipt of all physical documents will not be accepted by MyIPO during this period.  

 

2. Can manual filings be carried out at the MyIPO?  

 

In view of the closure, all manual filings will not be available during the period of the Order.

 

3. How do we file new applications and preserve priority dates during this period? 

 

Patents and Industrial Designs

 

a. Online filings are available for patent and industrial designs during this period and you may continue to provide us with instructions in the usual manner.

 

b. In a situation where we may need to conduct a filing manually and if a priority date is to be claimed, priority claims falling during the period from 18 March 2020 to 31 March 2020 will be extended until 1 April 2020. Kindly continue to provide us with instructions during this period in order for us to meet the 1 April 2020 priority deadline.

 

Trademarks 

 

a. Online filings are available for new national trademark applications and you may continue to instruct us in the usual manner. 

 

b. International filings via the Madrid Protocol system will be suspended during this period and will resume on 1 April 2020

 

c.Whilst we are aiming to file all new applications online during this period, if for any reason filings are to be done manually and a priority date is to be claimed which falls during this period from 18 March 2020 to 31 March 2020, the priority deadline will be extended until 1 April 2020. Hence, the application will have to be filed on the 1 April 2020 in order not to lose the priority date.  

 

Copyright  

 

The filing of voluntary notification of copyright is deferred and will resume from 1 April 2020 onwards. You may still instruct us during this period and we will have the documents ready of filing at the first available date.  

 

4. What happens to renewal extensions falling during the period of this Order? 

 

Patents and Industrial Designs 

 

The due date for the extension of patent and industrial designs falling during this period will be extended to 1 April 2020. We would urge that you continue to instruct us on renewals falling during this period so that we can meet the 1 April 2020 deadline. 

 

Trademarks  

 

Renewals of trademarks which fall during this period are extended until 30 April 2020 and renewal payments can be made from 1 April 2020 onwards without affecting the registration dates and without late payment fees being incurred.  

 

5. What happens to office action deadlines falling during this period? 

 

All deadlines on office actions including office actions related to appeals, oppositions and payments which are due within the period from 18 March 2020 to 31 March 2020 will be extended till 30 April 2020. Late payment fees will not be incurred for such cases.

 

6. Will hearings fixed before the MyIPO be rescheduled?  

 

Yes, all hearings scheduled for trademarks, patent and industrial design matters during this period will be suspended and rescheduled to a later date. We will advise you once the new dates are assigned.  

 

7. Can IP searches still be conducted during this period? 

 

Yes, searches can be conducted online and we are well equipped to provide you with that service currently.

 

8. How we can help? 

 

At Shearn Delamore & Co, please be reassured that we have activated our Business Continuity Plan during this current climate of uncertainty to ensure minimal disruption to the services provided to our valued clients.  You may continue to instruct us in the usual manner. Our lawyers and staff are equipped to handle your IP matters whilst working remotely during this period and we will address any specific queries and concerns that you may have.  We are taking all necessary steps to ensure continuous delivery of our legal services to you in a timely and effective manner. 

 

We hope that you and your colleagues and families will remain safe and in good health during these trying times.

 

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For further information, please contact:

 

Jyeshta Mahendran, Partner, Shearn Delamore & Co​

jyeshta@shearndelamore.com