2010 PATENTS COMMITTEE REPORT MALAYSIA 2010 By Tai Foong Lam and Caroline Francis A. Legislative Changes There were no amendments to the Patents Act 1983 or the Patents Regulations 1986 since the last report submitted in Hong Kong. B. Changes in MyIPO practice There were no changes to practices of MyIPO with regard filing and prosecution of patent applications. C. Case Law There are 3 reported patent cases since the submission of the last report in Hong Kong. These cases are: 1. Kendek Industry Sdn Bhd. v. Ecotherm (TFT) Sdn. Bhd. (2010) 1 LNS 330 2. Lim Choon Huat 7 Ors v. SYNTLZ Enterprise Sdn. Bhd. & Ors (2010) 1 CLJ 860 3. Fortune Pacific Engineering Co. Ltd. v. Gajatakraw Industries Sdn. Bhd. (2010) 5 CLJ 590 Kendek Industry Sdn Bhd. v. Ecotherm (TFT) Sdn. Bhd. (2010) 1 LNS 330 The subject of this case is the Utility Innovation (UI) under the Patent Act 1983 (the Act) and Patents Regulations 1986. 1
The subject matter of the utility innovation in this case relates to a roller, which is a moveable part in the dipped latex industry to produce dipped latex products such as condoms, balloons, gloves and finger cots. According to Kendek Industry Sdn Bhd (the Plaintiff), the utility innovation discloses a composition for a movable part in the said industry using plastics and fibre-glass as a mixture. The Plaintiff is the owner of certificate of the UI. The filing date of the application of the UI is 17.9.1993. It was validly granted on 15 May1996. The validity of the UI was challenged in the High Court (Kuala Lumpur) in an earlier case under Suit No. D5-22-788-1996 and the Court after a full trial held on 29 June 1999 that the certificate to be valid, of which the full judgment of the learned judge is reported as Kendek Industry Sdn Bhd v. Yong Wee Hong & Ors [2000] 7 MLJ 569. However, please note that from the judgment, the invalidity objections raised by the Defendant in this case are different from the objection raised in the earlier case. The thrust of the Defendants' invalidity contention in the earlier case was that the UI was prior disclosed in books and literature and therefore was not new at the filing date of the UI. However, the grounds relied upon in this case are entirely different. It must be emphasised that the decision of that earlier case is confined to the factual matrix of that very case. The Learned Judge do not think that the decision in the earlier case assist the Plaintiff in the present case. In this case, the Defendant had contented that the claim in the UI was neither clear nor concise and that the description in the UI is insufficient and has no enabling disclosure. The onus of proof lies with the Defendant on the issue of invalidity. It is a statutory requirement under Regulation 13(1) that the UI must be disclosed in a way that is dear and complete enough for it to be performed by a person skilled in the art. Indeed, the claim defines the scope of protection. Non-compliance with this requirement is a ground for revocation after grant. Case laws on who is the person skilled in the art and what constitutes common general knowledge of the person skilled in the art have established that this court requires the assistance of the man skilled in the art in the exercise of construing the validity of the grant of the UI in question. In this regard, both PW2 and DW1 are qualified and experienced experts in this field. DW1 in his testimony has explained in detail the common general knowledge relating to issues at hand, which include the generalization of the category of polymers, the role of fibreglass and why it is to be used as a compound element with thermoplastics and the variant factors in the dipped latex industry. 2
According to DW1, as a person skilled in the art, he would not be able to provide a non-exhaustive list of movable parts or know specifically, from the reading of the claim, which movable parts are sought to be protected by the Plaintiff. This indicates that the skilled person, in this case DW1, has difficulty in understanding the language used in light of common general knowledge. That is why, there is much merit in the argument of learned counsel for the Defendant, and The Learned Judge agrees with him that the claim of the UI in question did not comply with Regulation 13(1) in that it is neither clear nor concise nor is it fully supported by the description. The Plaintiff is under a statutory obligation to express in the claim plainly and specifically, what the utility innovations which it desires to protect. Non-compliance with the regulations of the Regulations is a ground for invalidation of the utility innovation, pursuant to Section 56(2) (b) of the Act. That provision says that the court shall invalidate any registered UI if the description or the claim does not comply with the requirements of Section 23, which section provides that the grant of the UI must comply with the Regulations. It is also a requirement that the description of a utility innovation must disclose the innovation in such terms that it can be understood in a manner sufficiently clear and complete for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any advantageous effects of the invention with reference to the background art. One of the reasons the Plaintiff is statutorily required to disclose the details of the UI together with the methodology involved in its working is to enable others to make use of the UI and benefit from after the expiration of the monopoly period enjoyed by the Plaintiff. The description of the UI must also state the best mode (sometimes described as the "preferred embodiment") contemplated by the Plaintiff for carrying out the innovation by using examples whenever appropriate and by referring to the drawings, if any. Held: The Learned Judge held that the description merely describes a range of composition of the given proportion and it does not clearly and concisely teach the skilled reader how that composition of the range will work with nylon or each of the types of the polymer mentioned in the Claim, contrary to Regulation 12(c) of the Regulations. Further, against Regulation 12(e) of the Regulations, the description does not state the best range. Based on all the above mentioned reasons, the Court allowed the Defendant's counter claim and dismissed the Plaintiff s claim. 3
Lim Choon Huat & Ors v. SYNTLZ Enterprise Sdn. Bhd. & Ors (2010) 1 CLJ 860 The Plaintiffs claim for patent infringement and the Defendant counter-claim for the Plaintiff s patent be invalidated and expunged. The Plaintiffs were granted a patent for its product 'Automatic Electronic Baby Cradle' on 31 July 1995, and allege that the 2nd defendant was a supplier of key materials of the patented invention and was the main director of the 1st defendant. The plaintiffs had also registered the patent in U.K. The Plaintiffs case in essence is based on their argument that the Defendants products (made according to the Defendants own 2 patents - Patent No. MY-114651-A (for a "Structure of a Synchronous Reciprocation Tracking Device) and Patent No. My-114980-A (for an improved structure of A Hammock Type Infant cradle)) infringed upon their patent; and that the Defendants patent cannot be registered as it was anticipated by prior art. In their counterclaim, the Defendants say that the Plaintiffs patent is not a valid patent in that it is not a patentable invention under s. 12; that it is not an invention under s. 12; that it is not a novel/new invention as it has been anticipated under s. 14; that the description and claim of the Plaintiffs patent does not comply with Regulations 12(1)(a), (b), (c), (e), (f) and 13(1), (5) and (15); that it does not contain or has not furnished the necessary drawings which are necessary for the understanding of the claim; and that it contains incomplete and incorrect information deliberately provided to the patent office. Further, the Defendants invention does not infringe on the Plaintiffs patent as it falls outside the scope of the Plaintiffs patent. The Defendants also alleged that the plaintiffs' intention and scheme was to monopolise the plaintiffs' patent and thereby destroy the defendants who are the competitors. Held: Registration of patent does not provide prima facie proof that the patent is valid. The validity of the patent can only be decided by court. Patents under the Act can only withstand the scrutiny of court if the invention is new and useful and which has industrial application. It must have novelty and utility and it must be the inventor's own discovery, as opposed to mere verification of what was already known before the date of the patent. Under s. 15 of the Act, the patentee's inventive step must not be obvious to a person having ordinary skill in the art, in relation to any product relating to prior art. The patent will be invalidated if it is established that the 4
invention is anticipated by prior art and that, having regard to the prior art, the inventive step would have been obvious to the skilled person. Subject to s. 17, the improvement to a product per se does not qualify for patent protection under the Act. The problem must be in respect of the particular field and not the problem faced in a particular product, per se which can be easily resolved by available technology by skilled persons in the particular field. The Act imposes the obviousness test. Both of which has a nexus to the novelty test - that is to say if the prior inventor's publication contains a clear description of, or clear instructions to do or make something that would infringe on the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty. It will have been anticipated. Parties to the proceedings did not establish the relevant criteria which are necessary to satisfy the elements stated in s. 14 and s. 12, of the Act. As a business venture the plaintiffs decided that if the movement of the cradle was automated, the sales will be better and they composed available technology in the market to move the cradle by automatic means. The defendants also did the same by making use of the available technology to rock the cradle for economic gain. There was no problem or solution they attempted to resolve as envisaged by s. 12 of the Act. There was no inventive step that involved technical advance as compared to the existing knowledge or having economic significance or both and that made the invention not obvious to a person skilled in the art. There was no form of ingenuity as required in law to entitle the product to be patented. However, the justice of the case did not require the plaintiffs as well as the defendants patent to be invalidated because, although s. 56(2) says the court shall invalidate, it is trite law that the word shall or may is not conclusive on the question whether the particular requirement of law is mandatory or directory. Shall in s. 56(2) need not be construed as mandatory if the justice of the case requires court not to interfere in relation to competing claims. The court may exercise its discretionary power to judicially not to invalidate the relevant patent in an invalidation proceeding. More so when there is nothing to protect as envisaged within the spirit and intent of the Act. Further, for s. 56 to apply, the plaintiff or defendants must be an aggrieved person. The plaintiffs or defendants were not an aggrieved person within the context of their pleadings because their product prima facie ought not to have been patented. 5
Fortune Pacific Engineering Co. Ltd. v. Gajatakraw Industries Sdn. Bhd. (2010) 5 CLJ 590 Subject: Main action initiated by the Plaintiff was Infringement of Patent, then subsequently infringement of Consent Order. The plaintiff's action against the defendant company was founded on infringement of its Malaysian patent relating to the invention of plastic takraw balls. In the midst of the hearing, a consent order was recorded by the court on 6 March 2007. The plaintiff filed a motion under RHC O. 52 r.2(2) to commit Lim Choo Hwa ('LCH') and Chen May Keow, both directors of the defendant for failure to comply with the consent order. It is not disputed that the consent order had been duly served on both directors. At the hearing, the plaintiff did not seek any order of imprisonment against Chen, a 75 year old lady who became a director on the death of her husband in the course of the trial. She was admonished and discharged. LCH was found in breach of the consent order and committed to prison for five days and he now appeals against that order. The juridical basis of the law of contempt is as stated in the case of MBf Holdings Bhd & Anor v. Houng Hai Kong & Ors [1993] 3 CLJ 373 at 378, as follows: It is paramount in the public interest that every court should have the power and authority or jurisdiction to punish persons who scandalise it or disobeys orders made by it. If such power is absent, then the public will lose all confidence in the authority of the judicial arm of the state leading to anarchy and disorder. Held: After having taken into consideration the affidavits filed by the parties and the submissions of their learned counsel, the Learned Judge held that the Plaintiff had proved beyond reasonable doubt that the defendant had breached O. 3, 4 and 5 and that LCH being a director of the defendant company was liable for the breach. The defendant had offered no reasonable explanation for the breaches. The submission of the learned defence counsel that the terms of the consent order were unclear is not acceptable. Even without the offending plastic takraw ball being exhibited in the consent order, the Learned Judge found that the defendant was in no doubt as to the nature of the order since there had been partial compliance with it. Following the decision of Societe Jas Hennessy & Co & Anor v. Nguang Chan (M) Sdn Bhd [2005] 5 CLJ 515, the Learned Judge found that the contention of the defendant's directors that they did not understand the terms of the order is irrelevant as they should have sought clarification if there was any 6
ambiguity in their minds. The failure of LCH to comply with the terms of the consent order after being fully cognisant of its terms prejudices the administration of justice and amounts to an act of contempt of court, liable to be punished by an order of committal. Before imposing sentence, the Learned Judge took into consideration that there had been partial compliance with the consent order. Counsel for the Defendant also submitted that LCH apologised for any breach committed. I concede that LCH does not fall into the category of a defiant or scornful contemnor (see IJM Corporation Bhd v. Harta Kumpulan Sdn Bhd (No 2) [2008] 8 CLJ 308). Nevertheless, the Learned Judge upon taking into account that the breaches are serious and have the effect of frustrating the consent order and rendering it all but nugatory, is of the view that it was incumbent upon the defendant to comply with its terms. It is obvious that the defendant had failed to make any conscientious attempt to do so. D. Update on Statistics Based on the statistics made available by the Malaysia Intellectual Property Corporation ( MyIPO ), it is noted that in the year 2009 MyIPO received a total of 5,737 patent applications, out of which 1,234 applications were filed by local applicants and the remaining 4,503 applications by foreign applicants. With respect to granted patents in 2009, MyIPO issued certificates of grant for a total of 3,468 patents to which 3,198 foreign applicants and 270 local applicants. Compared to the year 2008, there has been a increase of 54.68% in the number of patents granted in 2009. Chemistry and metallurgy are again the fields recording the highest incidence of grants in 2009 (24.13%) followed by human necessities (18.9%) and Performing, Operations & Transporting (18.25%). From January to July 2010, a total of 3,688 applications were received by MyIPO with 635 filed by local applicants. In the same period 1,341 patents were granted, of which 111 were to local applicants. As regards to International Applications, the statistics show that a total of 684 applications have been received by MyIPO from 16 August to July 2010. Appended below are the statistics on Patent and Utility Innovation applications and registrations in Malaysia, as extracted from MyIPO s online database. 7
APPLICATION AND GRANTED PATENTS AND UTILITY INNOVATIONS FROM 1986 2010 YEAR APPLICATION GRANTED Malaysia Foreign Total Malaysia Foreign Total 1986 29 233 262 - - - 1987 71 3,195 3,266 - - - 1988 73 1,547 1,620 0 6 6 1989 84 1,803 1,887 11 121 132 1990 92 2,213 2,305 20 498 518 1991 106 2,321 2,427 29 1,021 1,050 1992 151 2,260 2,411 10 1,124 1,134 1993 198 2,684 2,882 14 1,270 1,284 1994 223 3,364 3,587 21 1,608 1,629 1995 185 3,992 4,177 29 1,724 1,753 1996 221 5,354 5,575 79 1,722 1,801 1997 179 6,278 6,457 52 741 793 1998 193 5,770 5,963 21 545 566 1999 218 5,624 5,842 39 683 722 2000 206 6,021 6,227 24 381 405 2001 271 5,663 5,934 18 1,452 1,470 2002 322 4,615 4,937 32 1,460 1,492 2003 376 4,686 5,062 31 1,547 1,578 2004 522 4,920 5,442 24 2,323 2,347 2005 522 5,764 6,286 37 2,471 2,508 2006 531 4,269 4,800 187 6,562 6,749 2007 670 1,702 2,372 338 6,645 6,983 2008 864 4,539 5,403 198 2,044 2,242 2009 1,234 4,503 5,737 270 3,198 3,468 JUL 2010 635 3,053 3,688 111 1,230 1,341 8
Total 8,176 96,373 104,549 1,595 40,376 42,071 Patent and Utility Innovations Grants only start from 1988 PCT APPLICATIONS RECEIVED FROM AUGUST 2006 2010 YEAR MONTH Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec TOTAL 2006 - - - - - - - 7 7 10 6 4 34 2007 9 4 4 9 9 10 5 12 3 5 16 7 93 2008 5 11 5 15 13 13 15 15 26 7 43 32 200 2009 21 14 12 12 6 24 21 20 32 19 19 24 224 2010 19 7 22 18 23 25 19 133 TOTAL 684 PATENTS GRANTED BASED ON FIELD OF TECHNOLOGY YEAR SECTION A B C D E F G H TOTAL 1993 215 169 503 15 37 52 155 138 1,284 1994 260 267 505 12 71 79 192 243 1,629 1995 336 268 542 27 48 61 194 277 1,753 1996 285 323 483 31 76 103 178 322 1,801 1997 151 138 196 13 32 45 82 132 789 1998 104 98 141 4 18 31 64 106 566 1999 132 112 191 9 21 49 68 139 721 2000 61 59 110 8 19 42 36 70 405 9
2001 155 233 288 18 44 102 231 399 1,470 2002 206 236 334 19 42 104 228 323 1,492 2003 224 242 396 28 38 119 190 341 1,578 2004 325 377 625 25 50 132 321 492 2,347 2005 333 452 600 30 82 164 316 531 2,508 2006 948 1,155 1,275 101 197 448 1,042 1,583 6,749 2007 1,179 1,213 1,748 109 221 407 883 1,223 6,983 2008 423 421 451 33 98 159 293 364 2,242 2009 656 633 837 53 119 185 488 497 3,468 JUL 2010 217 245 345 14 55 89 173 203 1,341 TOTAL 6,210 6,641 9,570 549 1,268 2,371 5,134 7,383 39,126 Note : International Patents Classification (IPC) Section A : Human Necessities Section B : Performing Operations; Transporting Section C : Chemistry ; Metallurgy Section D : Textiles ; Paper Section E : Fixed Constructions Section F : Mechanical Engineering; Lighting; Heating; Weapons; Blasting Section G : Physics Section H : Electricity 10