Part IV
Patentability

(Non-patentable inventions.)

13.-(1) Notwithstanding the fact that they may be inventions within the meaning of section 12, the following shall not be patentable:

(a) discoveries, scientific theories and mathematical methods;

(b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;

(c) schemes, rules or methods for doing business, performing purely mental acts or playing games;

(d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body:

Provided that this paragraph shall not apply to products used in any such methods.

(2) For the purpose of subsection (1), in the event of uncertainty as to whether the items specified therein shall be patentable or not, the Registrar may refer the matter to the Examiner for an opinion and the Registrar shall thereafter give a decision as to whether to include or exclude such item as being patentable, as the case may be.

Part X
Compulsory Licences

(Definition.)

48. For the purpose of this Part-

"beneficiary of the compulsory licence" means the person to whom a compulsory licence has been granted in accordance with this Part; and

"compulsory licence" means the authorisation to perform in Malaysia without the agreement of the owner of the patent in respect of the patented invention any of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36.

(Application for compulsory licences.)

49.-(1) At any time after the expiration of three years from the grant of a patent, any person may apply to the Registrar for a compulsory licence if it appears at the time when such application is filed-

(a) that there is no production of the patented product or application of the patented process without any legitimate reason;

(b) that there is no product produced under the patent for sale in any domestic market, or there are some but they are sold at unreasonably high prices or do not meet the public demand without any legitimate reason.

(2) The application for a compulsory licence shall be in compliance with the regulations as may be prescribed by the Minister.

(Application for compulsory licence based on inter- dependence of patents.)

49A.-(1) If the invention claimed in a patent ("later patent") cannot be worked in Malaysia without infringing a patent granted on the basis of an application benefiting from an earlier priority date ("earlier patent"), and if the invention claimed in the later patent constitutes, in the opinion of the Board, an important technical advance in relation to the invention claimed in the earlier patent, the Board, upon the request of the owner of the later patent, the licensee of a licence contract under the later patent or the beneficiary of a compulsory licence under the later patent, may grant a compulsory licence to the extent necessary to avoid infringement of the earlier patent.

(2) If a compulsory licence is granted under subsection (1), the Board, upon the request of the owner of the earlier patent, the licensee of a licence contract under the earlier patent or the beneficiary of a compulsory licence under the earlier patent, may grant a compulsory licence under the later patent.

(Request for grant of compulsory licence.)

50.-(1) In an application for a compulsory licence under section 49 or section 49A, the applicant shall set forth the amount of royalty, the conditions of the exploitation of the patent and the restrictions of the rights of the licen- sor or the licensee, as the case may be, and a request for the said licence.

(2) Where an application for a compulsory licence is filed pursuant to section 49 or section 49A, and this section, the Registrar shall notify the applicant, the licensor or the licensee, as the case may be, of the date the application shall be considered by the Board.

(3) The licensor or the licensee, as the case may be, shall be furnished with a copy of the application as mentioned in subsection (1).

(Decision by the Board.)

51.-(1) In considering the application for a compulsory licence under section 49 or section 49A, the Board may require the applicant, the licensor or the licensee, as the case may be, to appear before the Board to give a statement or to hand to the Board any document or any other item.

(2) When the application has been considered by the Board and a decision has been made, the applicant, the licensor or the licensee, as the case may be, shall be notified of the decision.

(Scope of compulsory licence.)

52. Upon the granting of the compulsory licence to the applicant the Board shall fix-

(a) the scope of the licence specifying in particular for what period the licence is granted and to which of the acts referred to in paragraph (a) of subsection (1), and subsection (3), of section 36 the licence extends except that it may not extend to the act of importation;

(b) the time limit within which the beneficiary of the compulsory licence shall begin to work the patented invention in Malaysia; and

(c) the amount and conditions of the royalty due from the beneficiary of the compulsory licence to the owner of the patent.

(Rights of Government.)

84. Notwithstanding anything contained in this Act-

(a) the Government of the Federation or of any State, a Ministry or Government department or any person authorised by such Government, Ministry or Government department may make use and exercise any invention registered or in respect of which exclusive privileges have been granted in accordance with the provisions of this Act or do any act which would otherwise be an infringement of the privileges or right mentioned in this Act;

(b) the Government of the Federation or any State, Ministry or Government department or person authorised by such Government, Ministry or Government department shall pay reasonable compensation for making, using or exercising the said invention or arising out of any act which would otherwise be a infringement of the privileges or rights mentioned in this Act.