You have developed a new product. Perhaps you have created a machine that works more efficiently, developed a new formulation, or found a better way of carrying out a manufacturing process.

You may be thinking: “Can I patent my invention and turn it into a commercial opportunity?”

The answer is that not every invention is patentable. An invention must fulfil the requirements under the law before it can qualify for patent protection.

In Malaysia, patent protection is governed principally by the Patents Act 1983, which sets out the requirements an invention must satisfy before it can be patented.

Understanding these requirements early is important, particularly because what you do before filing your patent application can affect whether your invention remains patentable.

First Things First: What Is an Invention?

Under Malaysian law, an invention is an idea that permits, in practice, the solution to a specific problem in the field of technology. An invention may relate to either a product or a process.

In practical terms, this could include a product, such as a new machine, pharmaceutical composition or manufactured article, or a process, such as a manufacturing method, production technique or industrial process.

When we hear the word “invention”, we usually imagine something extraordinary, such as a revolutionary machine, a new medical technology or even a rocket. But inventions can also be found in everyday items. An umbrella with a new mechanism that prevents it from turning inside out in strong winds could potentially be an invention.

Requirements for Patentability

In Malaysia, an invention must satisfy three fundamental requirements: novelty, inventive step and industrial applicability.

Think of these as three tests that your invention needs to pass to be patentable, subject to the exclusions under the law.

1. Novelty – Is Your Invention New?

The first question is: has this invention already been made available to the public anywhere in the world?

An invention is considered new if it has not been anticipated by prior art. Prior art includes information disclosed to the public before the relevant priority date through existing patents or published patent applications, written publications, oral disclosures, public use or online publications.

This includes public disclosure by the inventor. While Malaysian law provides a grace period for certain disclosures, subject to the applicable conditions, the rule of thumb is always to “file first, disclose later”.

2. Inventive Step – Is It More Than an Obvious Improvement?

Being new is only the first hurdle. Your invention must also involve an inventive step.

In simple terms, the question is: would the invention have been obvious to a person having ordinary skill in the relevant technical field?

For example, you develop an umbrella with an automatic opening mechanism by simply replacing the existing spring with a stronger spring and adding a standard push-button mechanism that is already commonly used in other umbrellas. The resulting umbrella may be different from existing umbrellas, but the improvement may be considered an obvious modification using known technology.

Now imagine instead that you develop a new mechanism that automatically detects strong wind and changes the angle of the umbrella canopy to reduce wind resistance, using a technical arrangement that is not found in existing umbrellas.

That may provide a stronger basis for an inventive step if the solution goes beyond a routine or predictable modification and would not have been obvious in light of existing technology. An invention can be new without being inventive. Patent protection generally requires more than simply making an existing product slightly different.

3. Industrial Applicability – Can It Actually Be Used?

An invention is industrially applicable if it can be made or used in any kind of industry. In practical terms, the invention should have a practical application rather than being purely theoretical.

However, this does not mean that the invention must be commercially successful or mass-produced. The focus is on whether the invention is capable of being made or used in industry.

A Quick Patentability Check

Think you may have a patentable invention? Before you take the next step, put your invention through this quick check:

File Before You Disclose

One of the biggest mistakes an inventor can make is to spend years developing an invention, only to disclose it publicly before considering patent protection.

A product launch, exhibition, presentation, website, social media post, journal article or public demonstration may affect novelty.

So, if you think you have developed something new, do not wait until your product is ready for launch before thinking about patent protection.

Start by assessing the invention before it is publicly disclosed. A patentability assessment and prior-art search can help identify potential issues early and allow you to make a more informed decision about whether, where and how to seek protection.

Prepared by Lau Jian Quan & Farah

This article is intended for general information only and does not constitute legal advice. It should not be relied upon as a substitute for specific legal advice based on the facts and circumstances of any particular matter. Legal advice should be sought before taking, or refraining from taking, any action in reliance on the contents of this article.