20 April 2022
On 18 March 2022, the following Acts came into force:
- Copyright (Amendment) Act 2022 (“Copyright Amendment Act”); in force from 18 March 2022 save for sections 4, 5, 6 and10
- Patents (Amendment) Act 2022 (“Patents Amendment Act”); in force from 18 March 2022 save for section 14, paragraph 26(a), sections 45 and 47, paragraph 48(a), section 55 and paragraph 57(b)
- Geographical Indications Act 2022 (“GI Act”); in force from 18 March 2022
Copyright (Amendment) Act
The key amendments to the Copyright Act 1987 (“Copyright Act”) under the Copyright Amendment Act are as follows:
- Authorised entities, individuals with print disability or any persons acting on their behalf will be exempted from copyright infringement for making, issuing, exporting and importing copies of any work in an accessible format.
- Section 26A provides that authors of copyrighted works are no longer permitted to make a voluntary notification of copyright in the work. The Copyright (Amendment) Act also abolishes the requirement for a statutory declaration affirming that the applicant is the copyright owner or assignee of the subject work.
- On the date of coming into operation of the Copyright (Amendment) Act, all references to the term “licensing body” under the principal Copyright Act or any subsidiary legislation made under the principal Copyright Act will be construed as references to “collective management organisation”.
- Introduction of an additional offence under section 41(1)(k) which criminalises the act of providing or sharing access to an online location of any works or copies of works to any other person without authority.
- A new section 43AA which criminalises the commission or facilitation of copyright infringement relating to streaming technology. For the purpose of this section, “streaming technology” is defined broadly to include both software and hardware which is used in part or in whole that results in copyright infringement of a work. Any person who is guilty of this offence shall, on conviction, be liable to a fine of up to RM200,000 and/or imprisonment for a term not exceeding 20 years.
- Introduction of a new section 48(f) which makes it an offence for any person who intentionally caused any evidence relating to the commission of an offence to disappear or who gives any information in respect of the offence which he knows or believes to be false, with the intention of screening the offender from legal punishment.
Patents Amendment Act
The key amendments to the Patents Act 1983 (“Patents Act”) under the Patents Amendment Act are as follows:
- A new section 23A(2) requires a resident who wishes to make a patent application outside of Malaysia for an invention to obtain a written authority from the Registrar in the prescribed manner together with the payment of a prescribed fee.
- Section 27(1) of the Patents Act provides that a patent applicant may, through a declaration in the patent application, claim the right of priority of an earlier national, regional or international patent application filed in relation to the same invention during the period of 12 months immediately preceding the filing date of the patent application containing the declaration pursuant to any international treaty or convention.
- Section 29A(6) provides that a patent applicant may make a request for a deferment of the filing of a modified substantive examination only on the ground that the patent or a title of industrial property protection is not available by the expiration of the prescribed period. By virtue of this amendment, a patent applicant can no longer make a request for a deferment of the filing of a substantive examination.
- The time limit for an application for reinstatement of a lapsed patent will be amended from two years to a period of 12 months.
- Under section 78F of the Patents Act, any person who is a citizen of Malaysia residing outside Malaysia or a resident shall be eligible to file an international application with the Patent Registration Office.
- Section 79(1) provides that an applicant of a patent may make a request to the Registrar to amend the patent application or any document submitted at the Patent Registration Office in relation to the name or address of the applicant or inventor of the patent. This is in addition to the existing provision which enables the applicant of a patent to amend the patent application or any document submitted at the Patent Registration Office for the purpose of correcting a clerical error or an obvious mistake.
The GI Act repeals and replaces the Geographical Indications Act 2000. The GI Act seeks to provide for the protection and registration of geographical indications in relation to goods, and for the implementation of relevant treaties and related matters.
The key provisions of the GI Act are as follows:
- Section 10(1) provides that the Registrar shall refuse to register a geographical indication if:
- the geographical indication does not correspond to the meaning of “geographical indication” as defined in section 2, i.e. an indication which may contain one or more words which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin;
- the geographical indication identifies goods that do not fall within any of the categories of goods as determined by the Registrar;
- the geographical indication consists exclusively of an indication which is identical with the term customary in the common language as the common name of any goods in Malaysia if registration is sought in relation to the goods;
- the geographical indication is contrary to public order or morality;
- the geographical indication is not or has ceased to be protected in its country or territory of origin;
- the goods does not originate from the country, region or locality indicated in the application for the registration of geographical indication; or
- the geographical indication in relation to the goods is of such a nature which may mislead the public as to the true place of origin of the goods.
- The GI Act also confers rights to a registered proprietor of a geographical indication where the registered proprietor has the right to use the geographical indication and authorise other persons to use the geographical indication.
- Under the GI Act, the following acts would constitute an offence:
- falsely applying a registered geographical indication to any goods;
- importing and selling any goods with falsely applied geographical indication;
- submitting false information to the Geographical Indications Office or making false entries in the Register;
- falsely representing a geographical indication as a registered geographical indication and falsely representing the goods for which a geographical indication is registered; or
- disobedience to any summons to appear as a witness or a request made by the Registrar to produce any document or article.