The newly-enacted Patents (Waiver of Fee) Regulations 2020 (“Regulations”) comes 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 upon the late payment of annual fees if:
(1) 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
(2) 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:
(1) the application must be made within 6 months following the expiration of the patent or certificate for a utility innovation, and must be accompanied by payment of the annual fee;
(2) the application must be supported by documentation which shows:
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 financial institution;
ii) has cash flow problems affected by the control or prevention measures; or
iii) has pecuniary indebtedness and problems on repayment of debts due to control or prevention measures.
In the event that a patent or the certificate for a utility innovation has more than one proprietor, it suffices if one of the proprietors satisfies the requirements.