Introduction
In 2022, the Patents Act 1983 (“Act“) and the Patents Regulations 1986 (“Regulations“) underwent substantial amendments to align Malaysia’s patent framework with international standards, as mentioned in our April 2022 Legal Update titled “The Patents (Amendment) Act 2022“. Among the key reforms was the introduction of patent opposition proceedings. Despite being legislated, the relevant provisions remained dormant for nearly three years, with no indication of when they would take effect. That uncertainty has now ended. The Minister has officially appointed 31 December 2025 as the commencement date for the provisions of the Act governing patent opposition proceedings.[1] To operationalise these provisions, the Regulations will also be amended to incorporate the procedural framework for conducting opposition proceedings. These amendments will likewise come into force on 31 December 2025.[2]
Post-Grant Opposition Proceedings
The new section 55A of the Act permits any interested person to initiate opposition proceedings before the Registrar within the prescribed period following the publication of the grant of a patent, provided no court proceedings have been instituted in relation to the patent. This opposition process is administrative in nature and takes place before the Registrar.
To begin the process, the opponent must file a notice of opposition within six months from the date of publication of the grant of the patent. The notice must state the grounds and supporting facts, along with evidence in the form of a statutory declaration. The grounds for opposition as set out in section 56(2)(a), (b) or (c) are limited: (i) the claimed invention is not patentable or does not qualify as an invention under the Act; (ii) the description or claims fail to meet statutory requirements; and (iii) necessary drawings have not been provided. Non-residents must provide security for costs at the time of filing.
Once the Registrar is satisfied that the notice meets all requirements, it will be served on the patent owner, who then has three months to respond. The owner’s counterstatement must include a defence of the patent and supporting evidence. It may also include a request to amend the patent to address the opposition.
The opponent may then file a reply within three months, including in the reply further evidence and any response to the proposed amendment. Both parties will subsequently be invited to submit written submissions.
An ad hoc opposition committee may be formed to assist the Registrar in reviewing the case. At the conclusion of the proceedings, the Registrar will decide on whether to maintain the patent, maintain it with amendments, or invalidate it. Any party aggrieved by the decision may appeal to the High Court.
Conclusion
The introduction of post-grant opposition proceedings under section 55A marks a significant shift in Malaysia’s patent enforcement landscape. By allowing challenges to be made administratively before the Registrar, the process offers a potentially quicker and more cost-effective alternative to traditional invalidation proceedings in Court. This may be particularly beneficial for parties seeking early intervention without the burden of full litigation.
Should you require any assistance or clarification in relation to the above, please feel free to contact us at your convenience.
Contribution Note
This Client Update is contributed by the listed Partners, with the assistance of Ivan Lai (Associate, Christopher & Lee Ong).
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[1] Appointment of Date of Coming into Operation PU(B) 362/2025
[2] Patents (Amendment) Regulations 2025 PU(A) 362
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