1 August 2011Jurisdiction reportsDave Wyatt

From patent office to court room - 25 years of independent patent law in Malaysia

The Malaysian Patents Act 1983 entered into force on October 1, 1986 and will be 25 years old later this year. The Act marked the introduction of the country’s independent patent law, which replaced the earlier system of re-registering UK patents. The country has progressed remarkably over this 25-year period, and the intellectual property scene is no exception.

Since the Patents Act came into force, and as of May 2011, more than 109,000 patent applications have been filed and more than 43,000 have been granted. The Act was amended significantly in 1993, 2001 and 2006 to modernise and keep it in line with changing international standards and obligations.

2003 was a significant year in that it saw the formation of the Intellectual Property Corporation of Malaysia (MyIPO). The corporation is fully autonomous in its administration and finance. Its establishment facilitated a great expansion in the workforce and manpower of the patent registry.

The result was a much more efficient and customer-oriented organisation that was better able to cope with its growing workload. More than 20,000 patents were granted in the five-year period from 2004 to 2008.

In 2006, Malaysia joined the Patent Cooperation Treaty (PCT), providing a more convenient route for foreign parties to get patent protection in Malaysia and allowing Malaysian companies and individuals to file international patent applications for the first time.

About 85 percent of patent applications in Malaysia are now filed through the PCT route. So far, more than 1,000 international applications have been filed with MyIPO as the receiving office.

Earlier this year, further change occurred with the addition of a formal procedure for expediting examination in certain circumstances, such as when infringement is occurring or the invention relates to green technologies.

Yet more changes to the Act are also on the horizon. The growth in the number of patents granted and a greater awareness of the importance of IP in Malaysia have led to an increase in the number of patent-related court cases in recent years.

The setting up of IP courts in Malaysia in 2007, with specialist judges, has unquestionably also been a significant factor. The fact that some Malaysian patents have become the subject of litigation just goes to show that these are serving their intended function of providing economic benefits to their owners as valuable intangible assets.

Patent litigation has brought challenges for Malaysian counsel, as many IP lawyers were more familiar and comfortable with trademark cases. They have had to learn how to deal with the wide range of technologies covered by patents, as well as various legal issues surrounding patent interpretation, validity and infringement.

Due to the technical nature of inventions, it is normal for each party to call one or more expert witnesses, who may be purely technical experts such as engineers or academicians, or experienced patent agents. In determining the validity of any patent, the court has to adopt the mantle of the so-called person skilled in the art.

Such a person is knowledgeable in the field of the invention yet lacks any imagination. The prior art must be looked at through the eyes of this skilled person to determine the novelty of the invention and whether an inventive step was involved.

As confirmed in a recent IP Court decision, SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor, the skilled person is a legal creation and not a real person, as he must have extensive knowledge but no imagination. Therefore, it is not possible to find a real skilled person and put him in the witness box.

This is one of the inherent difficulties of using technical witnesses. Although indispensable for assisting the court in understanding what was known in the relevant field at the time the invention was made, their evidence must be examined carefully so as to filter out any possible insight, imagination or lateral thinking that may creep in.

On the other hand, patent agents are expert at assessing inventive step and construing patent claims with the necessary objectivity. It may be expected then that patent agents will play an increasingly valuable role as witnesses in the course of patent litigation in Malaysia.

After 25 years, patents have truly come alive in Malaysia. We can expect further developments in the local patent case law in the years to come.

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