Malaysia amends Copyright Act and Patents Act
27 January 2022
On 22 December 2021, the following Bills were passed by Malaysia’s Dewan Negara (Senate). The Bills will be presented to the Yang di-Pertuan Agong for Royal Assent and subsequently become law upon its publication in the Federal Gazette of Malaysia:
- Copyright (Amendment) Bill 2021
- Patents (Amendment) Bill 2021
Copyright (Amendment) Bill 2021 (“Copyright Bill”)
The key amendments to be made to the Copyright Act 1987 (“Copyright Act”) under the Copyright Bill 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 Bill 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 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) Bill 2021 (“Patents Bill”)
The key amendments to be made to the Patents Act 1983 (“Patents Act”) under the Patents Bill 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.