Malaysia's New Post-Grant Patent Opposition System: A Game-Changer for Patent Enforcement
After more than three years of anticipation, Malaysia is finally implementing a comprehensive post-grant patent opposition framework that promises to reshape the country's intellectual property landscape. Effective December 31, 2025, Section 55A of the Patents Act 1983 will introduce a new administrative mechanism for challenging granted patents—one that provides a faster and more economical alternative to traditional court-based invalidation proceedings.
This development represents a significant milestone in Malaysia's ongoing efforts to align its patent system with international best practices. While the Patents (Amendment) Act 2022 introduced these provisions in March 2022, the substantive opposition procedures remained dormant pending the implementation of the necessary regulations. The Intellectual Property Corporation of Malaysia (MyIPO) has now issued the Patents Regulations 1986 amendments, along with an updated directive and practice notice, completing the regulatory architecture necessary to operationalize this important new procedure.
For patent owners and potential challengers alike, the introduction of post-grant opposition proceedings demands careful attention and strategic planning. The framework establishes clear procedural pathways, strict timelines, and specific requirements that will fundamentally alter how patent validity disputes are initiated and resolved in Malaysia.
I. Effective Date and Operational Framework
The new post-grant opposition system becomes operational on December 31, 2025, pursuant to ministerial appointment under the Patents Act 1983. This framework encompasses Section 55A of the Act, supported by corresponding amendments to the Patents Regulations 1986, and clarified through MyIPO's Directive and Practice Notice No. 1/2025.
The regulatory package represents a coordinated effort to provide comprehensive procedural guidance for all participants. Practice Notice No. 1/2025, issued on October 10, 2025, specifies that opposition-related applications and requests must be filed in two or more copies when submitted by hand delivery at MyIPO's counter, and such filings must be received no later than 3:00 p.m. on any working day. The directive also establishes handling fees for paper filings while encouraging electronic submission through MyIPO's IP Online Portal where available.
This comprehensive regulatory framework closes critical procedural gaps that existed in the original 2022 legislation. By providing detailed guidance on filing procedures, evidence requirements, committee operations, and decision-making processes, MyIPO has created a relatively clear roadmap for parties navigating this new terrain. Importantly, the system will only apply to patents granted on or after December 31, 2025, thereby preserving the existing legal landscape for already granted patents.
II. Initiating Opposition: Standing, Timing, and Requirements
The threshold for initiating opposition proceedings is notably broad: "any interested person" may file, including the Federal Government and State Governments. This expansive standing requirement differs meaningfully from patent invalidation proceedings in the High Court, which require demonstration that the petitioner is an "aggrieved person", a more demanding standard that typically requires showing actual or imminent commercial harm.
The six-month filing window commences from the date of publication of the patent grant in the Intellectual Property Official Journal (IPOJ). This deadline is absolute; no extensions are permitted. For parties monitoring competitor patents or conducting freedom-to-operate analyses, this creates an imperative for systematic watch services that can identify newly granted patents and trigger timely internal review processes.
It is critical to note the jurisdictional limitation: opposition proceedings cannot be initiated if court proceedings related to the patent are already pending. This prevents parallel proceedings and forum shopping, requiring potential challengers to make strategic choices about which avenue to pursue.
The Notice of Opposition must satisfy several substantive requirements. It must contain a detailed statement of the grounds for opposition, supporting facts, and evidence in the form of a statutory declaration. The grounds must fall within the parameters specified in Section 56(2)(a), (b), or (c) of the Patents Act, which relate to: (1) whether the claimed invention qualifies as a patent or meets patentability requirements; (2) whether the description or claims comply with statutory requirements; or (3) whether necessary drawings have been provided.
For non-resident opposers, security for costs presents an additional hurdle. At the time of filing the Notice of Opposition, non-residents must provide security of RM2,500 for patents or RM1,500 for utility innovation certificates. The patent owner may claim this security if the opponent fails to pay awarded costs, providing patent owners with meaningful recourse against frivolous foreign challenges.
Opposers may file Additional Grounds of Opposition (AGO) within the six-month opposition period, allowing for supplementation of the initial filing as additional evidence or arguments are developed. However, once the six-month window closes, no further grounds may be added.
III. Patent Owner's Response: Defending Rights and Seeking Amendments
Upon receiving a Notice of Opposition that meets formal requirements, the Registrar serves a copy on the patent owner or their agent of record. This initiates a three-month period during which the owner must file a counterstatement if they wish to defend their patent rights.
The counterstatement represents the patent owner's primary defensive submission. It must contain statements supporting the validity of the patent grant and specific objections to each ground of opposition raised by the challenger. Critically, the counterstatement must be supported by evidence in the form of a statutory declaration, requiring owners to marshal factual support for their positions rather than merely asserting legal conclusions.
The counterstatement stage also provides patent owners with a strategic opportunity to request amendments to their patent specification. Such amendments might narrow claim scope, clarify ambiguous language, correct formal deficiencies, or otherwise address the opposition grounds. This presents owners with a valuable middle path between total surrender and defending the patent as granted—often the most pragmatic approach when opposition reveals genuine vulnerabilities in the original claims.
The consequence of failing to file a counterstatement is severe: the patent owner loses the right to participate further in the opposition proceedings. In such cases, the Registrar may decide the opposition based solely on the papers submitted by the opponent. While the Registrar retains discretion in such circumstances, the absence of any defense naturally weighs heavily toward invalidation. This procedural default rule places significant pressure on patent owners to respond promptly and substantively.
For patent owners receiving opposition notices, immediate consultation with experienced patent counsel is essential. The three-month deadline allows for limited time to investigate prior art, gather evidence of commercial use or technical effects, consult with inventors, and prepare comprehensive statutory declarations. Given the stakes, potential loss of valuable patent rights, prudent owners will have protocols in place before opposition notices arrive.
IV. Opposition Process and Decision: The Path to Resolution
Following the patent owner's submission of a counterstatement, the opponent has three months to submit evidence in reply, also in the form of a statutory declaration. This evidence may address the counterstatement's arguments, respond to any proposed amendments, and provide additional support for the grounds of opposition.
If the patent owner has requested amendments, the opponent's reply must specifically address whether the proposed amendments address the opposition grounds or introduce new issues. This iterative exchange ensures both parties have opportunities to address each other's positions before the Registrar makes preliminary assessments.
Beyond these structured exchange periods, either party may request permission to submit additional evidence, subject to the approval of the Registrar. This discretionary authority allows the Registrar to manage proceedings efficiently while ensuring material evidence is not excluded. However, once the Registrar requests written submissions from the parties, typically within a three-month deadline, no further evidence may be requested. This closure point provides certainty about when the evidentiary record becomes fixed.
All documents submitted must be in Malay or English; documents in other languages require certified translations. This language requirement ensures the Opposition Committee and Registrar can efficiently review all materials without translation delays.
An ad hoc committee is likely to play a central role in the decision-making process. It is expected that MyIPO will form such an ad hoc committee, which will likely consist of senior patent examiners who were not previously involved in the prosecution of the patent. This will ensure fresh eyes review the validity questions, free from any anchoring bias associated with the original examination.
The committee conducts at least two deliberative sittings. In the first sitting, it reviews the complete evidentiary record and written submissions to reach a provisional decision. If the committee is inclined to invalidate the patent, it issues an interim decision informing the patent owner of its concerns and inviting the submission of amendments within two months. This provides owners facing likely adverse outcomes a final opportunity to salvage their rights through appropriate claim modifications.
Upon receiving proposed amendments, the committee convenes a second sitting to review whether the amendments address the identified deficiencies. Based on this review, the committee submits its recommendation to the Registrar, who then issues the final decision accompanied by written grounds.
The Registrar's final decision may take three forms: (1) maintain the patent as granted, (2) maintain the patent with amendments, or (3) invalidate the patent. If the patent is maintained with amendments, those amendments are deemed effective from the original grant date of the patent, preserving continuity in the patent's scope and term.
The Registrar's decision is appealable to the High Court within one month of the date of the decision. This appeal right ensures judicial oversight of the administrative process while maintaining the efficiency benefits of initial administrative resolution. The one-month deadline is strict, requiring prompt action by dissatisfied parties.
V. Costs and Withdrawal: Financial Consequences and Strategic Exits
The Registrar may award costs to the prevailing party, but only if costs were specifically requested in the initial filings (the Notice of Opposition or counterstatement). This requirement encourages parties to signal from the outset whether they will seek cost recovery, promoting transparency and allowing opponents to factor potential cost exposure into their strategic calculus.
For non-resident opponents, the security for costs deposited at filing may be claimed by patent owners to satisfy unpaid cost awards. This mechanism provides owners with practical recourse against foreign challengers who might otherwise prove difficult to pursue for cost recovery.
Opposition proceedings may be withdrawn at any point by the opponent. However, if withdrawal occurs after the patent owner has filed a counterstatement, and the owner has requested costs in that counterstatement, the Registrar may award costs to the owner. This rule discourages frivolous oppositions and protects patent owners from bearing the burden of responding to challenges that are subsequently abandoned.
From a strategic perspective, the cost provisions create meaningful incentives for parties to assess their positions carefully before initiating or defending opposition proceedings. While the administrative process is intended to be more cost-effective than litigation, parties will still incur substantial expenses for gathering evidence, obtaining statutory declarations, consulting experts, and engaging professional representation. The prospect of bearing the opponent's costs in addition to one's own provides a sobering counterweight to aggressive challenge strategies.
Conclusion: Strategic Implications and the Road Ahead
Malaysia's new post-grant opposition system represents a watershed moment in the country's intellectual property evolution. By providing an administrative alternative to court-based invalidation, the framework promises more accessible, efficient, and economical challenges to patent validity. For patent owners, the system demands heightened vigilance during prosecution, more careful prior art searching, and robust defensive strategies. For potential challengers, it offers an attractive new tool for clearing competitive space without the expense and delay of High Court proceedings.
The six-month opposition window creates a critical period during which newly granted patents are most vulnerable. Patent owners should anticipate opposition in commercially significant areas and prepare defensive materials in advance. Conversely, competitors monitoring patent grants must act decisively within that window or lose the administrative option.
The requirement that all evidence be presented through statutory declarations ensures proceedings remain firmly grounded in verified facts rather than mere advocacy.
As this system becomes operational on December 31, 2025, the Malaysian patent community will closely monitor how MyIPO implements these procedures in practice. Questions remain about committee formation timelines, decision issuance schedules, the handling of multiple opponents, and the application of estoppel principles in subsequent proceedings. These operational details will emerge through practice, gradually establishing norms and expectations that will guide future opposition proceedings.
For patent practitioners, pharmaceutical companies, biotechnology firms, and other innovation-intensive enterprises operating in Malaysia, the advent of post-grant opposition demands immediate attention. Strategic planning should commence now: identifying patents to monitor, establishing watch services, developing opposition assessment protocols, and training internal teams on the new procedures. Those who master this system early will gain significant competitive advantages in Malaysia's increasingly sophisticated intellectual property landscape.
The introduction of post-grant opposition signals Malaysia's maturation as a patent jurisdiction and its commitment to balanced intellectual property protection that serves both rights holders and the broader public interest. As the system takes effect and develops through practice, it will undoubtedly become an essential tool in the strategic arsenal of both patent owners and challengers, fundamentally reshaping how patent validity is contested in one of Southeast Asia's most important economies.
Key Takeaways
Timing and Accessibility: Any interested person may initiate opposition proceedings within six months of publication of a patent, provided no court proceedings concerning the patent are already underway. This relatively short window—with no extensions permitted—requires vigilant monitoring of patent grants in the IPOJ.
Cost Considerations: Non-resident opposers must provide security for costs at the time of filing: RM2,500 for patents and RM1,500 for utility innovation certificates. This requirement reflects Malaysian civil procedure traditions regarding foreign litigants, though the amounts are relatively modest compared to full litigation security deposits.
Administrative Efficiency: The opposition process occurs entirely before the Registrar at MyIPO, likely with support from an ad hoc committee. This administrative approach is expected to provide significantly faster resolution and lower costs compared to High Court invalidation proceedings, which can extend for years and involve substantial legal expenses.
Limited Grounds: Opposition may only be pursued on specific statutory grounds relating to patentability, compliance with formal requirements, and missing essential drawings. Notably, ownership or entitlement disputes are explicitly excluded from the opposition framework and must be pursued through separate channels.
Amendment Opportunities: Patent owners may request amendments during opposition proceedings, providing a valuable opportunity to narrow or clarify claims to overcome objections without surrendering the entire patent. If the opposition committee recommends invalidation, owners receive an additional opportunity to propose amendments before the Registrar issues a final decision.
Estoppel Considerations: Once the Registrar maintains a patent with or without amendments following opposition, the opponent may not be allowed to bring subsequent invalidation proceedings in court except as a counterclaim in infringement litigation or through appeal. This creates significant strategic implications for potential challengers who must carefully assess whether to pursue opposition immediately or preserve their options for later court proceedings.
This post was written by Lisa Mueller and NG Kim Poh of Tay & Partners