PCT Procedure

There are two ways in which an invention can be protected abroad. It can  either apply directly to those countries of interest, or  use  the Patent Cooperation Treaty (PCT international application).

The PCT is an agreement between countries that they will co-operate in order to ease the process of applying for patents in a number of countries around the world. The system is administered by the World Intellectual Property Organization (WIPO) from its headquarters in Geneva, Switzerland.

The PCT system enables the applicant to make a single application in Malaysia (the international application) and then ‘designate’ as many other countries that are involved in the PCT.  The PCT system is a patent  ‘filing’ system, not a patent  ‘granting’ system. There is no PCT patent or international patent.

PCT International  Application

The Intellectual Property Corporation of Malaysia (MyIPO) acts as a Receiving Office.  The PCT application should contain the following :

• a  PCT Request  form (PCT/RO/101)
• a description of the invention with claims,  an abstract  and drawings (if any)
• the appropriate  fees.

All international applications file with MyIPO must be in the English language; as either a paper based application (in 3 copies) ; or an electronic application (using WIPO's PCT-SAFE software).

Please visit the WIPO website for further information about  WIPO's PCT-SAFE  software  (http://www.wipo.int/pct/en/).

The application form may be posted directly to us or hand delivery at our Head Office in Kuala Lumpur ; or  lodge them at any branch Offices in Sabah or Sarawak.

Fees

There are three main fees that must accompany the application. These are the transmittal fee, the international filing fee and the search fee. The transmittal fee covers the work completed by MyIPO,  the international filing  fee covers the work completed by WIPO  and  the search fee covers the work completed by an International Searching Authority (ISA).

MyIPO collects the transmittal fee but the two other fees are sent to the WIPO and  ISA  respectively. All fees must be paid in Malaysian Ringgit (RM).

International Search Report
An International Searching Authority (ISA)  is  to undertake an international search,  that is, to identify any ‘prior art’ or written material in determining whether or not the invention is new.   The results of the international search can help the applicant to evaluate his chances of getting a patent in the countries that he designates.

The following ISAs specify  by  MyIPO  that will undertake  the  international search  :

• Korean Intellectual Property Office (KIPO)
• IP Australia (Australian Patent Office)
• European Patent Office (EPO)   

Publication
All applications are published usually eighteen months after the application date or  priority date if the applicant claiming priority. WIPO produces a journal called the PCT Gazette, which is published every week. It contains the summary page of all applications. The PCT Gazette is also available on the WIPO Internet site.

International Preliminary Examination
If the applicant choose to have an international preliminary examination, an International Preliminary Examining Authority (IPEA) will undertake it. The applicant must make a specific  ‘demand’ , and should be submitted directly to the  IPEA. The IPEA will examine the application and send an international preliminary examination report  which will give the applicant an opinion on whether his invention  suitable  for a patent to be granted.

The following IPEAs specify  by  MyIPO that will undertake the international preliminary examination  :

• Korean Intellectual Property Office (KIPO)
• IP Australia (Australian Patent Office)
• European Patent Office  (EPO)

The National Phase
The applicant has to enter the national phase in order his international application to proceed separately in any or all of the countries which are party to the PCT.  The applicant has up to 30 months after his priority date to enter the national phase in Malaysia. 

The applicant should notify MyIPO by :
• submit a copy of the international application in the English language
• pay the prescribed fee using Form 2A
 Applications which entered the national phase shall comply with the requirements of the Malaysian Patents Act.  The decision on granting patents is taken exclusively by  MyIPO in the national phase.