The newly-enacted Patents (Waiver of Fee) Regulations 2020 (“Regulations”) came into force on 1 January 2021 in an effort to address time restrictions and reduce the financial strain imposed upon many businesses and individuals as a result of the COVID-19 pandemic.
Waiver of Fees
Pursuant to the Regulations, an owner of a patent or a certificate for a utility innovation may apply to waive the surcharge imposed for the late payment of annual fees if:
- They are affected by the control and prevention measures implemented to tackle the spread of COVID-19 under the Prevention and Control of Infectious Diseases Act 1988; and
- The term for the patent or the certificate for a utility innovation expires between 1 January 2021 and 30 June 2021.
Application for Waiver of Fee
The prerequisites for such an application are as follows:
- The application must be made within six months following the expiration of the patent or certificate for a utility innovation, and must be accompanied by payment of the annual fee.
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The application must be supported by documentation showing that:
a) Where the owner of the patent or certificate for a utility innovation is an individual, such owner:
i) is in the B40 group and receives Bantuan Sara Hidup or Bantuan Prihatin Nasional; or
ii) has lost his job and income, or his income is affected by the control and prevention measures.b) Where the owner of the patent or certificate for a utility innovation is a body corporate or unincorporated, such body:
i) has obtained approval for the extension of moratorium or any repayment flexibility from a financial institution;
ii) has cash flow problems caused by the control or prevention measures; or
iii) has pecuniary indebtedness and repayment difficulties due to the control or prevention measures.
In the event that a patent or certificate for a utility innovation has more than one proprietor, it suffices if one of the proprietors satisfies the requirements.
Authorship
This article is authored by:
Bahari Yeow
Partner, Gan Partnership
E: bahari@ganlaw.my
Sonali Nadkarni
Associate, Gan Partnership
E: sonali@ganlaw.my
For any enquiries, please contact Bahari Yeow at bahari@ganlaw.my.
