This is the ninth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first eight posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, and Pakistan can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, and Divisional Practice – Pakistan.
Time Periods for Filing a Divisional in Malaysia
Pursuant to the Malaysia Patents Act of 1983 (Patents Act), a divisional application can be filed (1) in response to an objection under Section 26 of the Patents Act, for a lack of unity of invention; or (2) in response to any objection raised in an Examiner’s first examination report. Additionally, the Patents Act also permits the filing of one or more voluntary divisional applications at the Applicant’s discretion. Finally, one or more divisional applications can be filed off of an original (e.g., parent application) and nested divisional applications are also permitted.
While a divisional application can be filed at any time after an original (e.g., parent) application is filed but prior to issuance, according to Regulation 19A of the Malaysian Patents Regulations of 1986 (Regulations), a divisional application must be filed no later than 3 months from the mailing date of an Examiner’s first examination report. Therefore, it is recommended that an Applicant file any divisional applications at the same time when filing amendment and/or response to the first examination report. In situations where the Examiner’s first report indicates that the claims are allowable and the application is proceeding to grant (e.g., usually, within 1 month from mailing of the clear examination report), Applicant can file one or more divisional applications while the application remains pending.
Requirements for filing a divisional application
When filing a divisional in Malaysia, the following must be submitted:
(a) Patents Form 17 for appointment of patent agent;
(b) Patents Form 1 (application form);
(c) full description, claims, abstract and, if applicable, drawings;
(d) Patents Form 5 (request for substantive examination) or Patents Form 5A (request for modified substantive examination); and
(e) the appropriate filing fees.
A request for substantive or modified substantive examination must be filed when filing a divisional application.
The subject matter of a divisional application cannot go beyond the disclosure in the initial application as filed. If additional subject matter is added in one or more divisional application, the Applicant will be requested to remove the additional subject matter. Failure to do so will result in the divisional application being refused.
The date a divisional application is filed will become the filing date of a divisional application; however, the divisional application will be accorded the benefit of any right of priority to its original (e.g., parent) application for any subject matter contained therein.
The examination of a divisional application is carried out in the same manner as for any other application.
Double Patenting
The claims of one or more divisional applications cannot be identical to those of any prior parent application, otherwise the claims in the divisional application will be rejected for double patenting.
This post was written by Lisa Mueller and Ng Kim Poh of Christopher & Lee Ong