Patent

Objective

Protection of invention which are new, involve an inventive steps and are
industrially applicable
Grant by Government of a limited monopoly to an inventor for his new invention
In return the inventor is required to publicly disclose his invention so as to add to
the pool of existing knowledge in a particular field of industry
Public disclosure will benefit the society
Patent system strike a balance between two interest, the right of the inventor to
profit from his invention and the broader interest of the public to benefit from the
disclosure
Main purpose for enacting patent act 1983 was to stimulate inventive activities in
this country

Justification for patent protection

Fostering inventive activities in Malaysia

o In Lim Choong Huat v Syntlz Enterprise, court held that the Patent Act
permit the granting of a patent to encourage and develop new technology
by granting monopoly for a limited time.
Social contract whereby a contract exists between the inventor and society because
the inventor agrees to disclose his invention to the public in exchange for a limited
monopoly to exploit his invention
o In SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutters Industries, the
court stated that one of the reason for the grant of a patent monopoly laid
in the exchange for requiring the patentee to make known new detail of the
invention
To reward the inventor as someone who has invested time and money in arriving at
his invention and since society benefits from the invention, the inventor ought to be
rewarded accordingly.
o A person who has rendered a useful service to society has the right to
receive from society a reward for his services
o The grant of monopoly for a limited duration enables the inventor to
generate profits from his invention.
o In Ranbaxy Sdn Bhd, court reiterated that patent rewards a patentee for
making and disclosing the invention.

International Aspects

Paris Convention for the Protection of Industrial Property 1883 introduced into the
industry property regime the important concept of national treatment in Article 2.
o A member state is to grant to the nationals of other member states the
same level of protection as it grants to its own nationals. (article 2)
o Article 3: nationals of non-member states who are domiciled or who have
real and effective industrial or commercial establishment in a member state
 shall enjoy the same protection as is granted to nationals of that member
states
o Article 4: right of priority where an applicant for a patent in another
member state who subsequently applies for a grant of patent in another
member state is entitled to claim the priority date of the first application
o By article 4C(1), the time frame in which priority may be claimed is 12
months from the date of the first patent application.
o Article 5A(2) to (4) deal with the circumstances in which member states may
grant a compulsory license.
By Article 5A(4), an application for a compulsory license may only be
made on the ground of the patentees failure to work the patent or
insufficient working of the patent either after four years have
elapsed from the date of patent application or after three years
have elapsed from the date of grant, whichever period is longer.
o Malaysia acceded to the Paris Convention on January 1, 1989, which was
some three years after the Patent Act came into force.
Agreement on Trade Related Aspects of Intellectual Property Rights
o TRIPS Agreement lays down a minimum standards in patent law which all
member states of WTO are required to comply with and standardise the
substantive aspects of patent law
o The Trips Agreement requires member states to implement article 1 to 12
an article 19 of Paris Convention , which are the substantive provisions of
the convention.
o Article 2(2) of the agreement states that nothing in Part I to IV of the
agreement shall derogate from existing obligations that member states may
have to each other under the Paris Convention.
o Article 27 provides that patent shall be available for any inventions, whether
products or processes in all fields of technology, provided they are new,
involve an inventive steps and are capable of industrial application.
o Article 27(2)and (3) allow for certain exclusion from patentability to be
made.
o The rights conferred on a patent owner are dealt with in Article 28, both
with regard to product patent and process patent. The exclusive right is the
right is twofold
A) the right to prevent third parties not having the patent owners
consent from using the process
B) right to prevent third parties not having the patent owners
consent from using, offering for sale, selling or importing for these
purposes the product obtained directly by that process.
o Article 31 provides for various conditions which have to be complied with in
situation where member states enact laws to allow the use of a patent
without the authorisation of the right holder, such as in the case of use of
the Government and use under compulsory licensing.
Patent Cooperation Treaty
o Malaysia acceded to PCT on May 16 2006
 o Purpose the international cooperation with regard to the filing, searching
and examination of patent applications.
o Allow for a single international application to be made seeking simultaneous
patent protection in a number of contracting Member States and simplify
the traditional process of a patent application whereby separate individual
patent application are made to the patent offices of each country where
protection is sought.
o PCT procedures entails two phases: International phase and national phase
During international phase, an international search on the existence
of any prior art that is relevant to the invention is made.
Prior art constitutes all information that has been made
available to the public in any form relating to the invention
before a given date that can be used to reject one or more
claims in a pending patent application or invalidate a patent
that has been issued. This will help applicant to evaluate his
chance of obtaining a patent in the countries that he has
designated and aid him in deciding whether to continue
with his application in those countries
At national phase, the PCT application is subject to the
respective national laws of the chosen countries.
The Treaty was concluded in 1970 and is administered by the World
Intellectual Property Organization.

Obtaining Patent Protection

Two routes:
o 1st is through an application made to the Patent Registration Office of
Intellectual Property Corporation of Malaysia for a national patent under
Patent Act 1983
o 2nd is through an application for international filing under the PCT in the
Patent Act

Filing a national Patent

A person who does not have his domicile in Malaysia or is not a resident in this
country may only apply for a patent through a patent agent. (Patent Act s 86(5))
Patent regime in Malaysia adopts the first to file system where the right to the grant
of a patent for an invention is given to the first person who files a patent application
for that invention
Step (i)
o Any person may make an application for a patent either alone or jointly with
another (Patent Act section 18(1))
o The right to patent belong to inventor ( s 18(2) unless the invention was
made in the course of employment or pursuant to commission.
o Where the patent applicant is not the inventor, he is required to state in his
request for the grant of a patent the reason justifying his right to the patent.
(Patent regulation 1986 , r 10(2)
o Invention made by two or more persons may only be applied for jointly by
all the joint owners ( section 20)
o For reason of national security, there is a requirement for all patent
application made by residents in Malaysia to be first filed in this country
unless a written authority has been granted by the Registrar. ( section 23A)
However, once an applicant has filed his applications in the Patent
Registration Office and two or more months have elapsed since the
filing of that local application, the applicant may file application for
patent for the same invention in other countries. (s 23A) subject to a
further requirement that there no subsisting direction have been
issued by the Registrar to the effect that the application contains
information which is prejudicial to the interest or security of the
country
o Applicant must ensure that his application complies with Patent Regulation
1986 (s 23)
o Principle of unity of invention- application shall relate to one invention only
or a group of invention so linked as to form a single general inventive
concept ( s 26, r 19(1)
If contain more than one invention, applicant is require to divide the
application into two or more applications.
o Application for patent must contain the following
Request for the grant of a patent;
A description ( r 12)
A claim or claims (r 13) ;
A drawing or drawings where required; and
An abstract ( r 5(1)
o The registrar shall record as the filing date the date of receipt of the
application ( s 28)
Filing date is the priority date of the patent application ( s 27A(1))
Filing date is the date from which 20 years duration of a patent is
calculated.
o A patent application originate from a foreign country may claim priority date
of the first application to patent the invention in Paris Convention of WTO
Member State ( section 27(1))
Malaysia has an obligation under Paris Convention to allow priority
to be claimed within 12 months from the date of the earlier
application filed in the foreign country. Priority ate is the filing date
of the earliest foreign application ( s 27(1)
o Allows the applicant to amend the initial application provided amendment
does not go beyond the disclosure in the initial application ( s 26A)
o Applicant may also withdraw his application at any time during its pendency
( s 25)
 Step ii: Preliminary Examination of the application
o Registrar conduct a preliminary examination of the application to ensure
that the formal requirements of the Act and the regulations are complied
with ( s 29 & regulation 26(1))
o If not comply, registrar shall notify the applicant and allow him to amend the
application so as to comply with the requirement
Step iii: Public inspection of the application
o Eighteen months after the filing date of the patent application or its priority
date, the Registrar shall make available the patent application for public
inspection ( s 34(1)) unless the application has been withdrawn earlier or the
application contains information which contravene public order or morality
( s 34(2))
o After an application is made available for public inspection, the applicant
may in writing warn a person who has commercially or industrially worked
the invention that a patent application for the invention has been filed ( s
34(5)
Secondly, the applicant has the right to demand compensation from
such a person for continuing to work the invention after the patent
application has been made available for public inspection. ( s 34)
The right to demand compensation can only be exercise after the
grant of patent. ( s 34(7)).
Step (iv): Search and substantive examination of the application
o Within 18 months from filing date of the application, the applicant is
required to file a request for a substantive examination of the application ( s
29A and regulation 27(1)
o Deferment of the filing of a request for examination is allowed on limited
ground (section 29A)
o An applicant can on grounds specified in the Patent Regulation 1986 request
the Registrar to undertake an expedited examination once the application
has been made available for public inspection.
Justification for expedited examination is required to be made in the
form of a statutory declaration.
o Purpose of substantive examination is to ensure that the application
complies with the substantive requirements of the Patent Act 1983.
o An applicant may request for a modified substantive examination in the case
where a patent has been granted or will soon be granted to the applicant in
a prescribed country outside Malaysia or under a prescribed treaty or
convention for the same or essentially the same invention.
Modified substantive examination makes as much as possible of any
search or examination already carried out by a foreign patent office
on a corresponding foreign patent applicable for the same invention.
o The registrar issues a report whether application complies with the
substantive requirement of the act or that there has been non-compliance.
( s 30(3) & (5))
 If non-compliance, the Registrar shall give the applicant an
opportunity to make observation on the report and to amend his
application accordingly.
Step V : Grant of the Patent
o If Registrar satisfy that application complies with the formal and substantive
requirement of the Patent Act 1983, he shall issue to the applicant a
certificate of grant and once patent is granted, it is prima facie valid. ( s31,
Aventis Farma SA )
o Performance prohibited by law not a ground to refuse unless the act is
contrary to public order or morality ( s 31)
o Two or more person have separately and independently made the same
invention and having same priority date, a patent may be granted on each
application. (s 31(2A))
o After issuance of certificate of grant, registrar shall publish a reference to
the grant of patent in the Gazette.

International Filing pursuant to the Patent Cooperation Treaty

Section 78A-78Q of the Patent Act 1983 gives effect to the PCT by allowing an
applicant who files an international application in Malaysia to seek patent protection
for an invention or utility innovation protection simultaneously in as many other
countries within the PCT Union as he designates. ( s 31(3))
Once international filing and designate Malaysia , the application has the same
effect as an application for a national filing under the Act ( s 78(G)(2A))
Next stage of the procedure involves an international search
o The applicant chooses an international searching authority which will carry
out an international search of the relevant prior art and issue an
international search report. ( s 78L)
o The international searching authority will then prepare a written opinion on
the patentability of the invention.
o The International Searching Authority will transmit copies of the
international search report and its written opinion on the patentability to
the applicant and the International Bureau of the World Intellectual
Property Organization.
o The applicant may also seek an international preliminary examination of his
application to obtain a preliminary and non-binding report on patentability
carried out by the International Preliminary Examination Authority.( s 78M)
o If decide to continue the bureau will publish the international application.
After this stage, the application enters into the national phase where the application
is examined separately by the respective patent office of the country which the
applicant has chosen according to the domestic patent law.
o Applicant who designate Malaysia as a country in which he seeks patent
protection is required to submit the document spelt out in Patent Act 1983.
( s 78Q)
 o The application is then subject to the requirement of the Act with regard to
national filing ( s 78)
o Respective national patent office will be responsible to decide whether or
not to grant a patent for the invention.
o Act also provides for conversion of an international application into a
national application under specified situations ( s 78Q).

Protection of Utility Innovation

Operate by way of a registration system and the creation of a Registrar for

certificates for Utility Innovations spelt out in section 32 as modified in the Second
Schedule of the Act.
Section 17 defines a utility innovations
Provision of the act apply to utility innovation in the same way as they apply to
inventions, with the exception of certain specified provisions which are expressly
excluded and subject to the modification in the Second Schedule of the Act with
regard to utility innovations.
o The provisions which are expressly excluded from applying to utility
innovations are spelt out in section 17A(2)
As a result of exclusion of section 11 and 15, utility innovations in Malaysia need
only be new and industrially applicable.
The Utility innovation needs only be new to Malaysia, pursuant to the modification
to section 14
o The prior art for the purpose of utility innovation protection is concerned
with disclosure to the public in Malaysia. ( Heveafoam Asia Sdn Bhd)
o But disclosure in Malaysia within a certain limited period are disregarded
pursuant to modification to section 14(3) made in second schedule.
o Utility innovation are not subject to compulsory license provisions.
Application and prosecution process for a certificate for utility innovation is
essentially the same except for the modification made to section 28(1)(d)in the
Second Schedule.
An application for patent may be converted into an application for a certificate for a
utility innovation and vice versa. ( s 17B(1) and(2))
utility innovation deemed to be granted and takes effect on the date the certificate
for utility innovation is issued.
Initial duration is ten years but owner of a certificate for a utility innovation may
apply for an extension for two consecutive terms of five years each, thus maximum
period of protection for a utility innovation is 20 years from the filing date of the
application. (s 35)
o But s 35(3) requires the owner, when applying for an extension, to prove
that the utility innovation is in commercial or industrial use in Malaysia or
satisfactorily provides an explanation for its non-use.
But grant of certificate of utility innovation is not conclusive proof of its validity
where its validity can be challenged in court under section 56 as modified by second
schedule on the same grounds as that for the invalidation of a patent.
Patentability

Product patent and process patent ( s 12(2))

o Invention may relate to a new product or a new process
o Product patent refers to a patent that relates to a physical entity while a
process patent refers to a patent that relates to a process, method or use.
o Section 3 defines product
o S 36(4) : in Sanofi Aventis, court held that where the defendant drug has the
same ingredient as the plaintiffs process patent, then the defendant bore
the burden to rebut the presumption that the defendant was using
plaintiffs process in manufacturing the drug.
Even though an invention may satisfy the three criteria in section 11, patent
protection may be denied on the basis that the invention falls within one of the
exclusions in section 13(1), 30A or 85.
Application can be denied because fails to comply with section 23 and patent
regulation 1986
Invention is New (s 11)(Novelty)
o Pursuant to s 14, an invention is new if it is not anticipated by prior art
o Information forming part of the prior art
Prior art is defined in section 14(2).
o Prior art includes any information, whether in tangible or intangible form,
disclosed to the public anywhere in the world prior to the priority date.
o The Act imposes a global novelty standard in the assessment of whether an
invention is new
o Any oral disclosure by the use or otherwise is deemed to be part of the prior
art.
o The content of a domestic which has been filed earlier and the unpublished
contents of pending patent applications are also part of the prior art for the
purpose of determining the novelty issue.
o Generally the priority date of an application for a patent is the filing date of
the application.
o But if registrar requests the applicants to file the required correction, the
filing date is also brought forward to the date of receipt of the required
correction.
o If there is a claim of priority based on an earlier application filed in a Paris
Convention or WTO Member State, the priority date is backdated to the
earlier filing date of the foreign application. (s 27)
o Statutory exclusion from prior art (provided in s 14(3) and (4))
Disclosure by applicant within one year preceding the date of the
patent application
Disclosure made as a result of an abuse of the patent applicants
right
Medical use exception
S 14(4): new pharmaceutical use even though the substance
or composition is known
 This provision mirrors that of article 54(5) of the European
Patent Convention (EPC) prior to its amendment in year 200
This type of claim for further medical use of a known
medicament is commonly termed as the Swiss type claim.
In John Wyeth & Brother application, court considers the
swiss type claim
o What is the extent of the public disclosure that is required before an
invention is said to be anticipated by prior art?
In Heveafoam Asia v PF Sdn Bhd, court follows two step procedure
in assessing the novelty of the invention in issue
Determination of the relevant prior art
Content of the prior art are evaluated to assess whether the
information anticipates the invention
o Test for assessing novelty
Malaysian court often alluded to the approach taken by the English
Court of Appeal in General Tire & Rubber v Firestone Tyre in
evaluating whether the information in the prior art anticipates a
later invention
I) Construction of document as at the date of publication
A comparison text is adopted as a mean to evaluate the
earlier publication against the later invention.
Prior publication and the later invention are to be construed
as at the dates of their publication, without taking into
account subsequent technical development, by a reader
skilled in the art. ( IEV International )
Ii) Construction by person skilled in the art
Its an objective step which is carried out by a person skilled
in the art ( SKB Shutters Manufacturing)
The person skilled in the art is a legal creation and is a
person who has practical knowledge and experience of the
kind of work in which the invention is intended to be used.
( Ranbaxy Sdn Bhd)
This notional person skilled in the art is assumed to possess
common general knowledge in the relevant field of
technology of both the prior art and the later invention.
The term common knowledge is knowledge which notional
person skilled in the art is expected to know as his ordinary
technical knowledge. (Kendek Industry v Ecotherm)
The notional person skilled in the art is a non-inventive
person that when considering the prior art, he is not
inclined to carry out experiments to find out something not
already disclosed. (SKB Shutters)
 Construction of prior art is a question of law and the court
assumes the role of the person skilled in the art ( Kendek
Industry)
iii) Disclosure inevitably results in the claimed invention
necessary to ask whether earlier publication discloses the
same device as the later invention.
Reverse infringement test: where prior disclosure contain
instruction to make something, assuming a patent had been
granted to the later invention, would a person who carries
out these instructions after the grant of patent is made be
committing an act of patent infringement?
To constitute an anticipation, the disclosure in the earlier
publication must, if performed, necessarily result in the
claimed invention
iv) Sufficiency of disclosure/Enabling disclosure
prior disclosure must be an enabling disclosure
o In SKB Shutters Manufacturing Sdn Bhd, v Seng Kong
Shutter Industries, the court stated that a disclosure
is enabling if it gives sufficient and clear instructions
or teaching to enable the person skilled in the art to
arrive at the invention.
Mere suggestions do not amount to
sufficient disclosure.
o A sufficient disclosure embraces two aspects
I) disclosure must particularly identify the
claimed invention
ii) the disclosure must be an enabling
disclosure in that it must describe to a
person skilled in the art the manner in
which the claimed invention is made
o regulation relevant are regulation 12(1) and 13(1),
12(1)(e)
o Regulation 13(1) requires all claims to be clear,
concise and fully supported by the description.
In Heveafoam Asia Sdn Bhd, court refers to
English court of Appeal decision in Tetra
Molectric Ltds Application where it was
held that if you cannot achieve the
promised result because of deficiencies in
the information given in the specification,
there is insufficiency.
V) Rule against mosaicing
To constitute anticipation, a prior publication must disclose
the whole of the later invention.
 it is not permissible to link together a number of
independent prior publication and make a mosaic from
those publication for the purpose of proving that a claimed
invention had been anticipated. (SKB Shutters)
o this rule does not apply where the prior publications
are connected together as to form a whole (Sharpe
& Dohme Inc)
Inventive Steps
o Entails technical advances or improvement to existing knowledge as at the
priority date. (Lim Choong Huat)
o Inventive step if not obvious to a person having ordinary skills in the art ( s
15)
o Obvious was to be given its plain and ordinary meaning (Sanofi-Aventis)
o Obviousness is determined in the light of the invention as a whole. The mere
simplicity of an invention does not necessarily mean that it is obvious.(Lim
Choong Huat v Syntlz Enterprise)
o Mere fact that an inventor has expended a lot of time in devising his
invention is not conclusive that the invention involves an inventive step.
However the length of time taken may suggest that the invention no
obvious. (Pfizer Ltds Patent)
o Commercial success of an invention also not decisive as to obviousness but
can be used as an indicator of inventive step especially where the invention
satisfies a long felt want of the public (Pfizer Ltds Patent)
o The inquiry of obviousness is a question of fact which has to be decided
objectively regardless of the views of the inventor. ( Pfizer Ltds Patent)
o It is necessary to decide what prior art and then compare with claimed
invention to decide whether it is obvious
o S 15 requires that the determination for obviousness is to be judged in the
light of the prior art as defined in section 14(2)(a) only.
Mosaicing of individual documents or prior uses is not permitted in
the assessment of novelty but is allowed in an obviousness
examination.mosaic is a process of combining or piecing together
various unrelated pieces of information in the prior art. ( SKB
Shutters)
But it must be a mosaic which can be put together by an
unimaginative man with no imaginative capacity.
Concept of mosaic should be contrasted with the notion of
collocation where two or more two or more element are combined
so that together they produce a new or improved result and such
combination is an inventive step. ( British Celanese Ltd)
o Person having ordinary skill in the art
A legal creation , not a real person (SKB Shutters Manufacturing)
To determine the state of knowledge that should be imputed to this
notional person
 Qualities of the person skilled in the art vary depending on the
invention for which obviousness is examined and the relevant
technical field. (SKB Shutters)
But the hypothetical person is unimaginative and without even a
scintilla of inventiveness and is not inclined to carry out the
experiment with a view to find out something not already disclosed.
(SKB Shutters Manufacturing)
The person ordinarily skilled in the art is not expected to know
everything in the field of art but only that which is common to the
relevant field.(SKB Shutters)
o Testing for inventive step
Leading case on assessing obviousness is Windsurfing International
Inc v Tabur Marine where court laid down four fold test for
obviousness :
A) identify the inventive concept embodied in the patent in
suit;
B) the court assumes the mantle of the normally skilled but
unimaginative addressee in the art at the priority date and
imputes to him what was, at that date, common knowledge
in the art in question;
C) Identify what, if any, differences exist between the
matters cited as being known or used and the alleged
invention;
D) the court asks itself whether, viewed without any
knowledge of the alleged invention, those differences
constituted steps which would have been obvious to the
skilled man or whether they required any degree of
invention.
Apart from Windsurfing test, Malaysian courts have also resorted to
other factors when determining the issue of obviousness. In Lim
Choong Huat, the court identified a non-exhaustive lists of factors
that were relevant to the assessment for obviousness, which
includes:
i) what was the problem which the patented development
addressed?
Ii) How long had the problem existed?
Iii) how significant was the problem seen to be?
Iv) how widely known was the problem and how many were
likely to have been seeking a solution?
V) what prior art would have been likely to be known to
those expected to have been involved in finding a solution?
Vi) what other solutions were put forward in the period
leading up to the publication of the patentees development?
 Industrial application
o Section 16 of Patents Act provides that an invention is industrially applicable
if it can be made or used in any kind of industry.
o This requirement of industrial application reinforces the meaning of an
invention in section 12 as an idea which permits in practice the solution to a
specific problem in the field of technology.
o The absence of the word capable of in section 11 may suggest that actual
industrial application has to be shown at the time of application.
o The word any kind of industry suggests a broad connotation should be
given to the word industry and this would include any physical activity of a
technical character.

Non-patentable invention

Two group: exclusion under section 13(1) and exclusion under section 31(1)
Exclusion under section 13(1)
o Discoveries, Scientific Theories and mathematical methods
To allow researcher to freely conduct their research
Court in Reynolds v Herbert Smith made a distinction between
discoveries and inventions
Discovery only disclose something which before had been
unseen or dimly seen while invention results in new product
or new result or a new process or a new combination for
producing an old product
o Plant or animal varieties or essentially biological process for the production
of plants
Plant varieties
There is a separate legal regime that protect plant varieties
namely, the Protection of New Plant Varieties Act 2004 and
Protection of New Plant Varieties Regulation 2008
Animal Varieties
Exclusion applies to animal varieties and not to animals in
general
Essentially biological processes for the production of plants or
animals
Require judgment to be made on the basis of the essence of
the invention taking into account the totality of human
intervention and its impact on the result achieved (Plan
Genetic Systems)
Schemes, rules, or methods for doing business, performing purely
mental acts or playing games
Prevents a mere idea from being patentable because an
idea per se is abstract in nature, being intellectual or
theoretical in character.
A mere idea lacks industrial application.
 Impossible to prevent a person from performing purely
mental acts since what goes on in a persons mind cannot be
proved.
There is no technical advance is made by a mere idea.
However, the practical application of an idea which results
in something with technical advance may be patentable.
Thus an apparatus for playing a game or carrying out a
scheme may be patentable.
In Aerotel v Telco House, Jacob LJ held that the patent was a
patentable invention because the telephone exchange
system as a whole comprised a new physical combination or
hardware, which was more than just a method of doing
business.
Methods for the treatment of human or animal body by surgery or
therapy, and diagnostic methods practised on the human or animal
body.
Exclusion lies in the public interest to prevent the medical
profession, which deals with life and possibly life-saving
operation from monopolising new and improved methods
of medical treatment.
In Unilever Application, court held that the word therapy
includes preventive treatment as well as curative treatment
of disease.
Surgery refers not only to invasive operations but also to
conservative procedures such as repositioning
In R v Cygnus, the phrase diagnostic methods was held to
include any medical activity concerning the gathering of
information in the course of establishing a diagnostic.
Exclusion on the ground of public order or morality
o Section 31(1) is the statutory embodiment of Article 27(2) of the TRIPS
Agreement.
o However, section 31(1) also provides that the mere fact that the
performance of any act in respect of the claimed invention is prohibited by
any law or regulation is not a ground for the refusal or invalidation of a
patent. This shows that the refusal of a grant of patent on public policy or
morality ground is distinct from the issue of illegality.
o S 30A(1) and s 85 is closely related to this exclusion.

OWNERSHIP, DEALINGS IN PATENTS AND RELATED MATTERS

Ownership

S 18- state who has the right to a patent

Rights to a patent belongs to the inventor.
 Where the inventor does not make the application for a patent, regulation 10 of the
Patent Regulation 1986 requires the applicant to provide a statement justifying his
right to the patent.
Inventor and owner of a patent are two distinct concepts.
Joint ownership (s 18(3) where joint inventor of the invention and s 22 requires the
application for the patent can only be made jointly by all the joint owners.
o However, the joint owners are free to agree among themselves as to the
extent of their co-ownership, as in the case of Rhone-Poulenc v MT Agro
Industrial Engineering.
Owner of a patent who is the person for the time being recorded in the Register as
the grantee of a patent has the exclusive right to control the use of the patent as
spelt out in section 36.
o By section 40, the joint owners of a patent may separately assign or transmit
their rights in the patent, exploit the patented invention and take action
against any person who has infringed their exclusive rights.
No requirement to obtain the consent of the other joint owners
except in the withdrawal of a patent application.
EXCEPTION TO THE GENERAL RULES ( where third party has a better entitlement to
the patent than the inventor)
o I) Judicial assignment of patent application or patent
s 18(2) which states the provisions is subject to section 19.
Where patent granted have been unlawfully derived, a person may
seek a court order that the patent application or patent be assigned
to him.
o Ii) Inventions made by an employee or pursuant to a commission
Invention made within the scope of an employees duties or a
commissioned work.
Section 20: invention which is made in the performance of a
contract of employment or in execution of a commissioned
work deemed to accrued to the employer
This does not applies to the situation where the person is a
contractor instead of an employee.
Employee defined in s 3
However, this presumption in favour of the employee or the
person who commissions the work is subject to any
provisions to the contrary in the agreement between them.
Under s 20(1) , where the invention acquires an economic
value much greater than the parties could reasonably have
foreseen at the time of concluding the contract of
employment, the inventor shall be entitled to equitable
remuneration as a result.
o The right to equitable remuneration cannot be
restricted by contract ( s20(3))
 o Iii) Inventions made outside scope of employees duties but using
employers facilities
S 20(2) provides that the right to a patent for the invention is
deemed to accrue to the employer in the absence of any provision
to the contrary in the contract of employment.
This provision only applies to employment contract and
does not extend to commissioned work.
Determining whether the inventor is an employee
o Need to prove existence of a contract of employment
A persons designation at work is not determinative of whether he is
an employee and a variety of factors must be taken into account.
In Hoh Kiang Ngan, court held that it is incorrect to state in
absolute terms that a company director can never be a
workman. Instead an examination of the functions of the
claimant is always necessary to decide the questions.
Inventions by Government Employee
o S 20(3)

Duration of a patent

s 35: duration of a patent is 20 years from the filing date of the application unless
the patent application was filed or granted before august 2001
filing date is the date of receipt of the patent application
Reinstatement of lapsed patent
o S 35A allows reinstatement if a lapsed patent within 2 years from the date
notice of lapsing is published in Gazette.
Condition under s 35A(2)
But s 35(4) provide reinstatement shall not prejudice the right
acquired by third party after lapsed
Regulation 33B(1) deals with the protection of persons who have
exploited lapsed patents.
Such person may requests from the registrar a license to
exploit the patented invention.

When a patent takes effect and provisional patent protection

patent is deemed to be granted and takes effect on the date the certificate of grant
and takes effect on the date of certificate of grant of the patent is issued.(s 35(1A)
exclusive rights of the patentee commence on the date the certificate of grant of the
patent is issued
but provisional protection is granted after the patent is made available for public
inspection.
o S 34(5): may write to warn
o S 34(6) demand compensation
Patent ceasing to have effect

i) maximum period grant of 20 years has ended

ii) patent lapse for failure to pay requisite annual fees
iii) patentee have surrendered the patent

Rights of a patent owner

patentee is granted a bundle of rights in relation to his patent ( s36(1)

o right to exploit the patented invention
o right to assign or transmit the patent
o right to conclude license contracts
the term exploitation of a patented invention is defined in section 36(3)
by virtue of this bundle of rights, the rights of a patentee may be said to be
proprietary in nature
rights granted are exclusive and according to section 36(2), no one is permitted to
do any act comprised in the above rights without the consent of the patentee.

Dealings in Patent

Assignment
o S 39(1) allows the exclusive right and a patent application to be assigned.
o Effect of an assignment of a patent application is to transfer the rights, titles
and interest in the patent or patent application to the assignee.
o Where there are two or more owners of a patent, section 40 allows the joint
owners to separately assigned or transmit their rights in the patent
application without having to seek the consent of the other joint owners
o It is possible to assign some rights in a patent but not others, for instance
the right to import but not the right to make the patented invention.
o In Rhone Poulenc v MT Agro Industrial Engineering, the co-owner of a patent
had assigned its half undivided shares in the patent to the first defendant
subject to some rights reserved by the Institute as specified in the
assignment.
o Registration of assignment is permissible not mandatory as evident from the
use of the permissive term may in section 39(2) of the Act
A written assignment is necessary if the assignee wishes to record
the assignment in the Register.
But section 39(3) provides two(2) cumulative conditions
which have to be fulfilled before the Register will record the
assignment or transmission in the Register.
Regulation 34 of the Patents Regulation 1986 requires all
application for the recording of an assignment to be signed
by or on behalf of the parties to the transfer
o It is important for assignees or beneficiaries of the patent transmission to
apply to have the transaction recorded because s 3994) provides that no
assignment or transmission shall have effect against third parties unless so
 recorded in the Register and to prevent later fraudulent dealings in relation
to the patent.
Voluntary Licenses
o License contract is defined in section 41 as any contract by which the owner
of a patent grants to another person or enterprise a license to do any or all
acts
o License to be in writing
Unlike the assignment of a patent, section 41(2) requires a license
contract to be in writing signed by or on behalf of the contracting
parties.
Section 40 requires that a license contract can only be concluded by
all the joint owners
o Rights of the licensor and licensee
Rights of the licensor and licensee are provided in section 44 and
section 43 respectively.
The rights spelt out in both sections are subject to any
provisions to the contrary in the license contract
In exclusive licenses, section 44(2) prohibits the licensor from
granting any further licenses to a third party in respect of the same
patent.
The licensor is prohibited from doing any of the acts
amounting to the exploitation of the patent specified in
section 36
In a non-exclusive license, section 44 allows the licensor to
grant a further license to a third person in respect of the
same patent.
Rights of license in section 43entitled to do any or all of the acts
amounting to an exploitation of the patented invention under
section 36(1)(a) but the rights are subject to anything to the
contrary in the license contract.
Any licensee may request the patentee to institute court
proceedings against any person pursuant to s 61(1) for infringing the
patent unless there are provision to the contrary in the license
contract
If within 3 months of receiving request the patentee did not
institute the proceedings, the licensee himself may institute
the proceedings in his own name after notifying the
patentee of his intention to do so.( s 61(3))
But before the 3 month expired, the licensee may apply to
the court for a grant of injunction to prevent any infringing
act or to prohibit its continuation.
o Subject to the requirement that licensee is able to
prove that immediate action is necessary in the
circumstances to avoid substantial damage.
 A party who is not the patentee nor his licensee does not have any
locus standi to bring an action for infringement of patent even if
that party is a local subsidiary of a foreign patentee. (FE Venture Sdn
Bhd)
It is important to establish a licensor-licensee relationship ( Premier
Products v Zamrud Fibre Industries)
o Invalid Clauses in License Contracts
Prohibition is provided in section 45
Where any term in the license contract imposes upon the
licensee restriction which is not derived from the exclusive
rights of the patentee.
But does not render the license contract void
To prevent patentee from abusing his monopoly by seeking
to extend his monopoly rights beyond that given by the
patentee itself or to impose onerous obligation on the
licensee.
But there are two types of restriction specifically allowed by
section 45.
o Licences of right
A patentee may apply to the registrar under section 42 for an entry
to be made in the register to the effect that any person may obtain
a license.
Then any person who are interested in being appointed a licensee
may apply for a license from the patentee through the Registrar.
( s42)
But such license are not exclusive license
The contracting parties are required under section 42(5) to inform
the Registrar in the event the license contract is terminated and the
registrar shall record such termination in the Registrar.
o Patent application not granted or patent declared invalid
If any of the event in section 46 occurred before the expiration of
the license contract, s 46 provides that the licensees shall no longer
be required to make any payment to the licensor under the license
contract, and shall be entitled to repayment of the payment already
made.
But if the licensor can prove that any such repayment would
be inequitable under all the circumstances, in particular if
the licensee has effectively profited from the license, the
licensor shall not be required to make any repayment.
o Involuntary License: Compulsory license
Compulsory license is defined in section 48 as authorisation to
perform in Malaysia without the agreement of the owner of the
patent or acts amount to an exploitation of the patented invention
Section 48 to section 54
Three types of compulsory license
o Three types of compulsory license
I) Compulsory licenses under section 49
After expiration of three years from the grant or four years
from filing date of the patent application.
Applicant must establish one or more of the following
circumstances
o Non production or non-application of patented
process in Malaysia
o Non availability for sale of the patented product in
Malaysia
o Unreasonably high price of the patented product
being sold
o Insufficiency of production of the patented demand
and failure to meet public demand
A common theme is to promote the working of patents
locally so that sufficient quantities of the patented products
are produced and sold at a reasonable price in order to
meet the demand of public.
Must prove that the state of affairs occurred without any
legitimate reason on the part of the patentee.
But applicant must make reasonable effort to obtain the
authorization from the owner of the patent on reasonable
commercial terms but such effort have not been successful
within a reasonable period of time.
Applicant is required by section 50 to state the amount of
royalty, the conditions of the exploitation of the patent and
the restriction of rights of the licensor or licensee.
Decision is made under section 52 by intellectual property
corporation of Malaysia whether to impose the license
Upon granting of the compulsory license, section 52
requires the corporation to fix the terms of the license with
regard to scope of the license, time limit for the license ,
amount and condition of the royalty due from the
beneficiary of the compulsory license to the owner of the
patent.
After compulsory license has been granted, the corporation
may amend its decision or cancel the license under various
grounds and the situation justifying such amendments is
provided un section 54(2).
A beneficiary may surrender the license pursuant to section
54(3).
Ii) Compulsory licenses under section 49A base on interdependence
of patents
 Situation arises where a later technological improvement
cannot be worked without infringing the patented invention.
To apply , applicant has to establish the following conditions:
o Invention claimed cannot be worked in Malaysia
without infringing an earlier granted patent
o The applicants invention constitutes an important
technical advance
o The technical advance is of considerable economic
significance
If the later patent is technologically more advance than
earlier patent, under section 49A(2), the earlier patentee
can apply to obtain cross-license.
Compulsory use of the patent by the Government
Section 84

Exploitation of product patent

Section 36(3)(a) defines the terms exploitation

The definition covers wide array of activities but the words are potentially capable of
raising problems.
o In Thompson Engineering v Burton, issue is whether the exclusive right to
make a product include the right of a purchaser of the patented product to
repair it. Court held that the purchaser can repair provided the act of repair
did not amount to making the product anew
o The word stocking in section 36(3)(a)(ii) is uncertain.
In Smith, Kline & French Laboratories, court held that mere at of
passively storing a patented product in a warehouse did not fall
within the meaning of keeping.
Exploitation of a process patent
o S 36(4) deals with difficulty of proving a process for obtaining a product
where if a patent has been granted in respect of a process for obtaining a
product, the same product produced by a person other than the owner of
the patent or his licensee shall, unless the contrary is proved, is taken in any
proceeding to have been obtained by that process.

Construction of claims

Claims are the principal determinant of the plaintiffs monopoly while description
and other parts of the specifications are to show to the public what the patentee
considers to be his invention (Sanofi Aventis v Fresenius)
Functions of claims
o In Heveafoam Asia v PF Sdn Bhd, court held that function of the claim is to
define clearly and with precision the monopoly claimed, so that others may
know the exact boundaries of the area within which they will be trespassers.
Construction of claim
o In infringement actions, the primary issue for determination is whether the
alleged infringers act falls within the scope of the claim.
o Entails a comparison to be made by the court between the patentees
invention and the alleged infringers product or process. There will be a clear
case of infringement where the invention and the product or process are the
same.
o Claims to be construed in the same way for both infringement and
invalidation proceedings.
Claims to be interpreted in light of the drawings and description
which are filled as part of the specification and these are to be read
as a whole ( Lim Choong Huat) to ensure that the result of the
interpretation will be coherent.
o A person skilled in the art is the notional person who will interpret the scope
of the claim (Kendek Industry v Ecotherm)
o In Sanofi Aventis, court pointed out that in construing claims, claims should
not be viewed independently but should instead be construed as part of the
whole specification.
o Two approaches in construing the claims: pith and marrow constructin and
purposive construction
o Pit and marrow construction
Developed as a less narrow manner of interpreting claims when
compared to literal construction.
Ignores immaterial variants or deviations made by the alleged
infringer from the exact wording of the claim.
If the alleged infringer alters a non-essential integer of the
claim and substitutes it with a mechanical equivalent that
does not result in any essential differences, the infringers
act will still be regarded as falling within the scope of the
claim if all the essential integers have been taken.
This is the approached taken in Rodi & Wienenberger v
Henry Showell and cited by the court in Lim Choong Huat
o Purposive Construction
This approach was advocated in Rhone Poulenc v Dikloride
Herbicides where this method of construction places less
importance on the literal meaning of the wording of the claims and
emphasis more on the intention behind the wording.
In Catnic Components v Hii & Smith, court held that the question is
whether a person with practical knowledge and experience of the
kind of work in which the invention was intended to be used, would
understand that strict compliance with a particular descriptive word
or phrase appearing in a claim was intended by the patentee as an
essential requirement of the invention so that any variant would fall
outside the monopoly claimed, even though it could have no
material effect upon the way the invention worked
 When the words of the claim are clear, purposive construction does
not allow one to read additional words or features into the claim or
to extend or go beyond the definition of the technical matter for
which the patentee seeks protection in the claim.

Infringement

Infringement proceeding may only be brought after the certificate of grant of the
patent is issued.
The period of limitation to institute an infringement action is five years from the act
of infringement. ( s 60(2)
For utility innovation, infringement may not be instituted after 2 years from the act
of infringement ( s 59)
The burden of proof lies with the patentee who alleges the infringement to establish
on a balance of probabilities that his exclusive rights have been infringed.

Direct Infringement

Section 58 defines infringement as any act referred to in s36 (3) in relation to a

patented product other than the owner of the patent and without his agreement
In Sanofi Aventis, court held that there was no necessity for the infringing process to
be carried out in Malaysia so long as the infringing product was imported into
Malaysia.
The act spelt out in s 36(3) relates to activities which directly involve the patented
product or process.
o This type is known as direct infringement
Direct infringement takes place regardless of the knowledge of the infringer and
therefore the absence of knowledge does not provide a defence to patent
infringement.
Court in Lim Chong Huat states 3 factors that had to be taken into account by the
court
o I) court has to determine the essential integers of the plaintiffs patent
o Ii) court must consider whether each and every of the integer has been
taken by the defendant.
o Iii) court must then determine whether each of the defendants integers
works in the same way as claimed by the plaintiff in his patent.
Court stated that if all the essential features of the patented
products or process have been taken, there is infringement even if
alteration have been made to one or more of the unessential
features.

Imminent Infringement

Provided in s 59(2)
The owner of the patent has the same right against any person who has performed
act which make it likely that an infringement will occur which is known as imminent
infringement
 Refers to situation where actual infringement has not yet occurred but is threatened
to take place
In Rhone-Poulenc v MT Agro Industrial Engineering, court held that preparation to
manufacture was the evidence that the first defendant had intended to commit an
act of infringement and hence a case of imminent infringement had been made out
under section 59(2).
Some uncertainty currently exists as to whether the ambit of infringement
encompasses indirect or contributory patent infringement. The Malaysian Patent Act
does not contain any provision on the same

Invalidation and Surrender

Grounds of invalidation
o The fact that the Patent Registry had issued a certificate of grant of the
patent is not conclusive proof that the patent is valid. The patent is granted
on an ex parte basis and the Patent Registry will usually not be in a position
to conclusively determine whether the applicant has fully complied with the
stringent requirement of the act. (Lim Choong Huat; Kendek Industry)
The validity of the patent can only be conclusively decided by the court.
In an infringement action, section 60(3) of the Patent Act 1983 allows the defendant
to challenge, in the same action, the validity of the patent (kendek industry)
o Also allow to put in issue for a declaration of non-infringement under s 62(5)
The ground upon which a patent may be invalidated are provided in section 56(2)
The burden of proving any of the ground in section 56(2) lies with the applicant for
invalidation.
The invalidation of a patent on the ground that the right does not belong to the
person to whom the patent was granted is concerned with the wrongful claim to
entitlement.
The applicant needs to prove his locus standi as an aggrieved person.
o In Heveafoam Asia v PF Teknologi Sdn Bhd, the court found that the
defendants utility innovation had been anticipated by prior publications
which sufficiently taught the art found in the utility innovation. As such the
court held that the defendant was not the rightful owners of the utility
innovation within the context of s 56(2)(d).
Where a patent has been assigned to the person to whom the right to the patent
belongs, section 56(2A) provides that the patent shall not be invalidated on the
ground stated in section 56(2)(d).
No estoppel created by previous invalidation proceedings
o Where validity of a patent has been challenged in a previous proceeding and
its validity upheld by the court, no estoppel is created as regards subsequent
litigation which seeks to invalidate the patent on another point. (Kendek
Industry Sdn Bhd)
An aggrieved person: applicant for invalidation
o S 56(1) requires the person challenging the validity to be an aggrieved
person
 o In Heveafoam Asia v PF Teknologi, court considered the meaning of the
phrase an aggrieved person and refers to Besalon International which give
a liberal construction to its meaning as including any person who would be
or in respect of which there was reasonable possibility of his being
disadvantaged in a legal or practical sense by the register being unrecfitied.
The court in heveafoam summarised the test to include all person
who had a real practical interest in the issue, beyond that of the
busybody.
Is an order for invalidation mandatory?
o Issue arose as to whether the word shall in section 56(2) imposes a
mandatory requirement on the court to invalidate a patent upon satisfaction
of any ground mentioned or whether the court could still exercise its
discretion in the circumstances.
o In Lim Choong Huat, court considered the effect of the word shall in section
56(2) and held that it did not impose a mandatory requirement on the court
to invalidate a patent, especially if justice of the case required the court not
to interfere in relation to competing claims.
o There is no provision in the act which allows amendment to be made to the
claim or specification of a patent when the validity of the patent is put in
issue.
Instead of invalidating the whole patent, partial revocation is
allowed by section 56(3) which provides that where the invalidation
applies to only some claims or some parts of a claim, such claims or
part of a claim may be declared invalid by the court.
Effect of an invalidation order
o Effect is provided in section 57(1) which state that any invalidated patent or
claim or part of a claim shall be regarded as null and void from the date of
the grant of the patent.
Surrender
o A patentee may surrender his patent under section 55(1) by a written
declaration submitted to the registrar.
o As provided in section 55(2), the surrender may be limited to one or more
claims of the patent.
o Beneficiary need to give their consent to the surrender ( s 55(3A)).

Declaration of non-infringement

Applicant must be an interested person

o S 62 allows interested person to institute legal proceeding that a specific act
does not constitute an infringement of the patent.
o In Heveafoam Asia v PF Teknology, the plaintiff sought a court declaration
that the defendants utility innovation was invalid and that the plaintiffs act
of manufacturing, exporting, selling and distributing foam products did not
infringe the defendants utility innovation.
 The court found the plaintiff to be an aggrieved person for the
purpose of an invalidating proceeding and at the same time an
interested party for proceeding in relation to a declaration of non
infringement under section 62
Burden of proof
o The applicant bear the burden to establish that the act in question does not
infringe the patent
o Upon discharging this burden of proof, s 62(2) states that the court shall
grant the declaration of non-infringement
o S 62(3)(a) requires patentee to notify the licensee of the proceedings and
the licensee has the right to join in the proceedings
o S 62(3)(b) states that person requesting the declaration has the obligation to
notify the beneficiaries of the compulsory license and they shall have the
right to join in the proceedings
o But the declaration shall not be brought when there is an infringement
proceedings pending ( s 62(4))
o But declaration can be brought when proceeding for invalidation is pending .
( s 62(5))
Except where the invalidation proceeding takes place within the
context of an infringement action

Defences

i) s 37 (i): acts done for non-industrial or non-commercial purposes and not for scientific
research

Essentially s 37(1) confines the monopoly right of a patentee to activities which are
carried out for industrial or commercial purposes only.

ii) Acts done solely for uses related to submission of information to governmental authority
( s 37(1A)

iii) Acts done in respect of products which have been put on the market and exhaustion of
rights: section 37(2)

Patentee or any third party who has his consent placed patented products into
circulation for the first time in the marketplace cannot thereafter utilise his exclusive
rights as a patentee to control subsequent dealings with the products. (Centrafarm
BV v Sterling Drug)