Landmark patent decision in Malaysia


Chew Kherk Ying and Brian Law

The Malaysian High Court recently clarified key principles in a patent infringement matter. It delivered its judgment in the case of Positive Well Marketing Sdn Bhd v OKA Concrete Industries Sdn Bhd in July 2011.

The patent at issue is for a riverbank protection system. It was applied for in October 2004 and granted in August 2008. Positive Well claimed that OKA had infringed the patent by making and selling a similar riverbank protection system without its consent or a licence. OKA’s riverbank protection system is made of a precast concrete pile and panel, and an anchoring tie. Positive Well sued OKA for patent infringement and OKA counterclaimed for patent invalidation.

The High Court held in favour of Positive Well and confirmed the validity of its patent. In its oral decision, the court approved the test for infringement that was used in the 1969 case of Rodi & Wienenberger AG v Henry Showell Ltd.

This case held the following key steps as the test for finding patent infringement: (i) determine the “essential” integers of the patent; (ii) consider whether “each” and “every” “essential” integer is taken by the defendant; (iii) and determine whether each of the defendants’ integers “work” in the “same way” as claimed by the plaintiff’s patent.

Malaysian patent law