Patents and Utility Innovations in Malaysia

Most Malaysian SMEs asking about a patent do not have a patentable invention. They have an improvement — a better clamp, a different feed mechanism, a reconfigured jig — that a competent engineer would call obvious. That fails the inventive-step test in s.15 of the Patents Act 1983 and dies in substantive examination. What almost nobody tells them is that Malaysia has a second route where s.15 does not apply at all.

What is a utility innovation?

Section 17 defines it as any innovation which creates a new product or process, or any new improvement of a known product or process, capable of industrial application. Section 17A(1) then applies the rest of the Act to utility innovations subject to the modifications in the Second Schedule — and s.17A(2) switches off s.11, s.15, s.26 and Part X.

Section 15 is the inventive step. Turning it off is the whole point: a utility innovation must be new and industrially applicable, and that is the test.

	Patent	Utility innovation
Inventive step required	Yes (s.15)	No — s.17A(2)
Claims	Multiple, one inventive concept	One claim only
Term	20 years from filing (s.35(1))	10 years from filing, plus two extensions of 5 years
Extension conditions	None — term is fixed	Affidavit showing commercial or industrial use in Malaysia, or explaining non-use
Annual fees start	Second year after grant, RM290	Third year after grant, RM170
Compulsory licensing	Applies (Part X)	Does not apply
Opposition to grant	RM2,500 (Form 26)	RM1,500 (Form 26A)

The single claim is the real constraint. A patent can fence an invention with a broad independent claim and narrower fallbacks; a utility innovation gets one shot at the wording, so drafting matters more, not less.

What it costs

From MyIPO’s published fee schedule: request for grant of patent (Form 1) RM290; substantive examination (Form 5) RM1,100; modified substantive examination (Form 5A) RM640; expedited examination RM250 approval plus RM2,800; conversion either way (Form 5G) RM290; extending a utility innovation certificate (Form 15) RM150. Claims beyond the first ten cost RM20 to RM50 each.

Patent annual fees climb from RM290 in year 2 to RM2,900 in year 20. Utility innovation annual fees start at RM170 in year 3 — but each five-year extension requires an affidavit that the innovation is in commercial or industrial use in Malaysia. An unused utility innovation quietly ends at ten years, which is usually the honest answer anyway.

Three rules that catch first-time filers

File in Malaysia first. Section 23A prohibits a resident from filing abroad for the same invention unless a Malaysian application was filed at least two months earlier, or the Registrar has granted written authority (Form 1B, RM200). Breach is an offence under s.62A. Founders who file a US provisional first, on a US investor’s advice, are already in breach.

You have twelve months, not six. Section 14(3)(a) requires disclosure by the applicant within one year before the application date to be disregarded. That is a real safety net for a product already shown to customers — and it has no equivalent in the Industrial Designs Act 1996, so a launched product may still be patentable while its shape is no longer registrable.

Non-residents cannot deal with the office directly. Section 86(5) is absolute: a person who is not a resident may not proceed before the Patent Registration Office except through a patent agent.

What changed on 31 December 2025

Post-grant opposition under s.55A had been on the statute book since the Patents (Amendment) Act 2022 but was carved out of the commencement notification and sat unproclaimed for nearly four years. P.U. (B) 362/2025 brought it, together with s.56A, s.57(1), s.34(1) and s.79A(3), into operation on 31 December 2025. Any guide saying Malaysia has no administrative route to challenge a granted patent describes the position before that date. An interested person may now file a notice of opposition with the Registrar within the prescribed period from publication of the grant, on the invalidity grounds in s.56(2)(a) to (c), and the Registrar may maintain, amend or invalidate the patent.

Common mistakes

Filing a patent application for an obvious improvement. You pay RM290 to file and RM1,100 for substantive examination before anyone tells you it fails s.15. Consider the utility innovation route before, not after.

Assuming conversion is always available. Section 17B(4A) says the prescribed period for a conversion request cannot be extended under s.82. Miss it and the route closes.

Missing the examination request. Regulation 27 gives 18 months from the filing date to request substantive examination (four years for a national-phase international application). Section 29A(5) deems the application withdrawn if you do not.

Reading MyIPO’s hosted Patents Regulations as current. The consolidated PDF on myipo.gov.my predates the 2022 amendments and still shows two months to respond to an examiner’s report. P.U. (A) 68/2022 made it three.

What’s next

Decide which of the two you are actually eligible for before spending anything. If the value is in how the product looks rather than how it works, the industrial design route is cheaper and faster — but its novelty rules are far less forgiving.