The first and second notices are related, and concern the processing of a patent application that proceeds directly to the issuance of a clear substantive examination report (colloquially, a notice of allowance or intention to grant) without the prior issuance of an adverse report (colloquially, an office action).
The regular term for filing a voluntary divisional application is three months from the mailing date of the first-issued adverse report. This timeframe had given rise to uncertainty as to whether and when a voluntary divisional application may be filed in the event the application is directly allowed without any preceding adverse report. Similarly, in those circumstances, the applicant may be unintentionally denied the opportunity to file a voluntary amendment prior to grant, if the application proceeds to grant shortly after the issuance of the clear report.
The first practice note indicates that, in the above circumstances, the applicant may file a voluntary amendment within a term of two months from the mailing date of the clear report. MyIPO will delay grant of the application for this two-month period, unless the applicant expressly informs MyIPO that he wishes for the application to be granted without waiting until the end of that period.
The second practice note stipulates that, in the above circumstances, the applicant may file a voluntary divisional application within a term of the three months from the mailing date of the clear report. However, MyIPO will not entertain later filing of a divisional application and will proceed to process the application for grant.
The third practice note reiterates that all official fees relating to the filing of a new patent application must be paid at the time of filing as a pre-condition of securing a filing date and issuance of the certificate of filing. This requirement extends to the payment of the official fees for claims in excess of 10. In the event MyIPO detects a deficiency in the amount of fees paid for an application, the applicant or their agent will be invited to pay the outstanding amount. The date of payment of the outstanding amount shall then be recorded as the date of filing. It should be noted that this Malaysian practice is stricter than those under the PCT and the national laws of many countries that do not require the immediate payment of any official fees in order to secure a filing date.