Fee waivers and modifications available to IP owners

Fiscal requirements for fee waivers and modifications
Patent and UI holders
Trademark owners

The government recently took steps to ensure that corporate IP owners which have been adversely affected by government measures recently introduced under the Prevention and Control of Infectious Diseases (PCID) Act 1988 to curb the COVID-19 crisis are not excessively burdened by certain official fees of the Malaysian Intellectual Property Office.

Fiscal requirements for fee waivers and modifications

A corporate patent, utility innovation (UI) or trademark holder can receive a fee waiver or modification provided that it:

• is in debt, and has problems repaying its debts, as a result of the prevention measures taken under the PCID Act;
• has experienced cash flow problems due to the PCID Act measures; or
• has received approval for flexibility on a repayment, or extension of moratorium, from any financial institution.

Where multiple people own any of the IP rights, it is sufficient for one of those people to meet the fiscal criteria to be eligible for the waiver or modification of the relevant fees.

The fees applicable for waiver or modification and the administrative process required to submit an application for a waiver or modification depend on the IP rights held.

Patent and UI holders

The minister for domestic trade and consumer affairs issued the Patents (Waiver of Fee) Regulations 2020, which came into force on 1 January 2021, exercising powers conferred on him by Paragraph 87(2)(e) of the Patents Act 1983. This move introduces a means to apply for a waiver of the surcharge for late payment of annual fees set out in Item 18 of Part II, Schedule I of the Patents Regulations 1986.

Corporate patent and UI holders may apply for the waiver, provided that they meet the fiscal criteria above and:

• the expiry of the term of the patent or UI in question falls between 1 January 2021 and 30 June 2021; and
• the application for a waiver of the late payment surcharge is made no later than six months following this expiry date and is filed with the registrar along with payment of the relevant annual fee itself.

Trademark owners

Further new regulations were issued by the minister through the Trademarks (Waiver and Modification of Fee) Regulations 2020, which also came into effect on 1 January 2021. Under these regulations, companies meeting the fiscal criteria above may apply for waivers of the following official fees:

• application for amendment of name or address of applicant;
• correction of name or address of registered owner;
• request for manual filing of documents; or
• request for extension of time (other than for opposition proceedings).

Companies meeting the fiscal criteria can also apply to reduce the fees incurred for late renewal requests from RM1,200 per class to RM1,000 per class.

Applications for the waiver or modification of these fees must be made in the form prescribed by the registrar between 1 January 2021 and 31 June 2021.

These measures will be welcomed by IP owners in Malaysia which are suffering from the effects of the harsh economic conditions in place while the pandemic continues.

For further information on this topic please contact Ian Mirandah at Mirandah Asia by telephone (+60 322 788 686) or email (ian.mirandah@gmail.com). The Mirandah Asia website can be accessed at www.mirandah.com.