Registrable Patent in Malaysia

  1. INTRODUCTION

    1.1 A patent is an exclusive right granted for an invention.

    1.2 An "invention" means:

      "an idea of an inventor which permits in practice the solution to a specific problem in the field of technology."[1]

    1.3 Thus the invention is a solution to a technical problem. The invention may be or may relate to a product or even process[2] . There are however invention which are patentable and non-patentable.

    1.4 Therefore, a patent is basically the grant of an exclusive right to the inventor, which is a product or a process that provides a new way of doing something or offers a new technical solution to a problem[3] .

    1.5 The purpose or importance of having a patent is:

      (a) to secure invention which has market potential so that another company could not make any profits out of your invention;

      (b) to give rights to exclude others from making of one's product;

      (c) to give rights to initiate legal proceedings/action against anyone that is making or selling, without permission, the patent holder invention;

      (d) to give the owner priority over third parties wanting to register their patents in countries that do not require registration.

    1.6 Patent protection in Malaysia is governed by the Patents Act 1983 ("the Patents Act ") which came into force on 1[st] October 1986[4] and applies throughout Malaysia.

    1.7 For a patent to be granted registration in Malaysia, the conditions and requirements of the Patents Act and the Patents Regulations 1986 need to be complied with.

    1.8 Malaysia is a member of the Paris Convention and the World Intellectual Property Organization (WIPO). Malaysia became a signatory to the Patent Cooperation Treaty (PCT) on 16 August 2006[5] . Patent protection is thus obtainable in Malaysia by way of either entering a PCT application or filing a direct national application.

    1.9 This article is aimed to discuss on what is a registrable patent in Malaysia.

  2. WHAT ARE THE CONDITIONS FOR INVENTION TO BE PATENTED IN MALAYSIA?

    2.1 The invention which is patentable must fulfill the following 3 conditions[6] :-

    2.1.1 New (i.e. a novelty);

    • It is defined under Section 14(1) as, "an invention is new if it is not anticipated by prior art."
    • In the case of SKB SHUTTERS MANUFACTURING SDN. BHD. v SENG KONG SHUTTER INDUSTRIES SDN. BHD. & ANOR[7] , the Plaintiff is the registered owner of the Plaintiff's patent of a rolling door or rolling shutter which was granted on 31[st] January 2007 and the said patent is at all times valid and subsisting. The Plaintiff manufactures and distributes both the roller doors and shutters that incorporate the invention under the said patent, which are marketed and promoted under the name 'SKB VISION 7 '.

      The Plaintiff claims that the 1[st] and 2[nd] defendants have, infringed the said patent by making, selling, offering to sell and using, without the consent or license of the Plaintiff, products that incorporate features of the said patent (the infringing products) while the said patent is valid and subsisting. The conducts done by the defendants are likely to misrepresent the consumers and the industry due to the infringing products was marked as 'SK-PC 7 ', which can be perceived by the public as the Plaintiff's products.

      Among the issues that have been discussed in this case, are as to whether Plaintiff's patent invention was new or had novelty as required under Section 14 of the Patents Act and whether Plaintiff's patent is valid and subsisting at all times.

      The High Court then laid down the principle on the aims of novelty. The first aim is to create an incentive and secondly, in exchange for requiring the patentee to make known new details of the invention.

        Azahar Mohamed J (as he then was) held that, "The Patents Act therefore requires an invention to be new in the sense that on the filing of patent application, it should not form a part of the state of the artthe defendants have failed to establish that the Plaintiff's patent has been anticipated by the PV piece. Hence, I conclude that the Plaintiff's claimed invention in the Plaintiff's patent is novel."

      This case also refers to the case of GENERAL TIRE & RUBBER COMPANY v THE FIRESTONE TYRE AND RUBBER COMPANY LIMITED[8], whereby the English Court of Appeal held that, "if carrying out the directions contained in the prior inventions publication will inevitably result in something being made, that something is considered to be an anticipated art."

    • Anticipation can be 2 ways either by[9] :

        (a) use which refers to uninformative use does not anticipate; or

        (b) disclosure which refers to the communication to the public information which enables it to do an act.

    • As a general rule, prior art is explained as follows[10] :

        (a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date[11] of the patent application claiming the invention;

        (b) the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic patent application.

    • Thus, it is clear that an invention is considered to be novel if it is not part of prior art. In Malaysian context, the term prior art includes all disclosures to the public, global or local, either by written publication, oral disclosure or availability of samples.

    • The exceptions to the prior disclosure principle are set out below[12] :

      • A disclosure made under Section 14(2)(a) of the Patents Act shall be disregarded if such:-
        • (a) disclosure occurred within 1 year by the applicant or his predecessor from the date of application;

          (b) disclosure occurred within 1 year preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title;

          (c) disclosure is by way of a pending application to register the patent in the UK Patent Office as at the date of coming into force of the Patents Act.

      • In the case of IEV INTERNATIONAL PTY LTD v SADACHARAMANI A/L GOVINDASAMY[13], the Plaintiff made an application for an order to invalidate the defendant's patents involving certain products which the Plaintiff had been manufacturing in Malaysia since 1988 known as the "Apparatus for the Combating of Marine Growth on Offshore Structures ". The products were designed and invented in 1986. The Plaintiff argued that the inventions were not patentable as they formed part of the state of art and was anticipated by prior act before the priority dates, i.e, 1[st] and 3[rd] of September 1993 for 147 Patent and has been disclosed to the public including those in Malaysia. Further it was alleged that the invention did not belong to the defendant as he was employed by the Plaintiff as a marketing and contracts manager between January 1991 and December 1992. This shows that he had access to a wide range of confidential information and documents relating to the Plaintiff's products and patent.

          The High Court later held that, "The Plaintiff's products or devices have been in use since 1988, manufactured and installed in Malaysia and in other countries since then and as such the claims of the Defendant in his patents which were only filed in 1993 were anticipated by prior use as well as by written publications distributed internationally and in Malaysia and by the drawings and patent specifications published by the Plaintiff before the priority date of the Defendant's patents."

      • The Plaintiff's application should be allowed since the Defendant's inventions are not patentable as it did not comply with the requirements laid down under the respective Sections 11, 14, and 15 of the Patents Act.

    2.1.2 Involves an inventive step;

    • "An inventive step" is assessed based on obviousness to a person having ordinary skill in the art[14] to thinks that a patent involves an inventive step.
    • In the case of WINDSURFING INTERNATIONAL INC v TABUR MARINE (GREAT BRITAIN) LTD.[15] , the patent which were in dispute was a wind-propelled vehicle having an unstayed spar connected through a universal joint and a sail attached along one edge to the spar and held between a pair of arcuate booms mounted on the spar at one end and joined together at the other (i.e. a Bermuda rig with a wishbone spar).

      The cited prior user had taken place some 10 years before the date of the patent when a boy (then 12 years old) had built a sailboard and used it on an inlet near Hayling Island on summer weekends during 2 consecutive seasons. The user was open and visible to anyone in the area of the caravan site where the family stayed. The boy's sailboard differed from what was claimed only in that the sail was held between a pair of booms which were straight when the vehicle was rest.

      In determining the issue of whether the inventive step exists or not, the judge stated that we must consider the fact that if 'putting together' of the new elements could have been obvious to the skilled man or whether it requires any degree of invention.

      The English Court of Appeal held that the question of obviousness, "has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates".

    • This case laid down 4 steps in answering the question on obviousness:

        (a) identifying the inventive concept embodied in the patent;

        (b) enquire on what is common general knowledge in the art at the priority date is important;

        (c) identifying the differences that exist between the matter cited as being 'known or used' and the alleged invention; and

        (d) decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled person or whether they required any degree of invention.

    2.1.3 Industrially applicable.

    • Under Section 16 of the Patents Act , the term "industrially applicable" refers to, "an invention that can be made or used in any kind of industry" .

  3. WHAT INVENTION IS NOT PATENTABLE IN MALAYSIA?

    3.1 The invention which is not patentable is the one which have either one of the followings[16] :

      (a) discoveries, scientific theories and mathematical methods;

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

      (c) schemes, rules or methods for doing business; or

      (d) methods for the treatment of human or animal body and diagnostic methods practiced on the human or animal body provided it shall not apply to products used in any such methods.

  4. CONCLUSION

    4.1 A Malaysian patent has effect only in Malaysia. To obtain protection in other countries, it is crucial to apply for separate patent application in each of those countries. The duration of a patent shall be 20 years from the filing date of the application[17] .

    4.2 In conclusion, the scope of protection is defined by the claims contained in the specification in the patent claim. If the claim defines a product, then the patent is infringed by making, importing, selling or using the defined product in Malaysia. While, if the claim is on process, then the combined effect of protecting the process as well as the product which was directly obtained from the patented process is involved[18] .

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[1] Section 12(1) of the Patents Act 1983
[2] Section 12(2) of the Patents Act 1983
[3]http://www.myipo.gov.my/en/patent/general-information.html
[4] P.U. (B) 500/1986
[5]http://www.myipo.gov.my/en/pct/general-information.html
[6] Section 11 of the Patents Act 1983
[7] [2011] 2 MLJ 781, HC
[8] [1972] RPC 457, CA
[9]MERREL DOW PHARMACEUTICALS INC v H N NORTON & CO. LTD. [1996] RPC 76, HL
[10] Section 14 (2) of the Patents Act 1983
[11]Priority date is the date by which the novelty of the invention is to be judged. This was explained in the case of SKB SHUTTERS MANUFACTURING SDN. BHD. v SENG KONG SHUTTER INDUSTRIES SDN. BHD. & ANOR , [2011] 2 MLJ 781, HC
[12] Section 14 (3) of the Patents Act 1983
[13] [2008] 2 MLJ 754, HC
[14] Section 15 of the Patents Act 1983
[15] [1985] RPC 59, CA
[16] Section 13 (1) of the Patents Act 1983
[17] Section 35 (1) of the Patents Act 1983
[18]AVENTIS FARMA SA (M) SDN. BHD. & ANOR. v ROHIBUL SABRI BIN ABAS @ MEGAT (T/A AS DABUR ENTERPRISE ) & ANOR. [2008] 3 MLJ 451, HC

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