IP Pages 2018: A quiet year for Malaysian IP prosecution

21-03-2018

IP Pages 2018: A quiet year for Malaysian IP prosecution

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2016 has been another quiet year on the statutory front for Malaysian patents and design with no legislative changes. Although the Trans-Pacific Partnership Agreement is now in doubt, it is hoped that the various proposed amendments will move forward regardless.

MyIPO continued to engage with local IP practitioners through dialogue sessions with the Malaysian Intellectual Property Association (MIPA). In the session held in February 2017, the following were some highlights:

  • MyIPO confirmed its practice of examining patent applications strictly in order of filing date, regardless of when the request for examination is filed. However, MyIPO expressed a willingness to consider written, reasoned requests for early examination.
  • There were concerns over non-receipt of official correspondence, lack of tracking for such correspondence and ongoing technical difficulties being experienced by practitioners when carrying out electronic filing. MyIPO while acknowledging the situation, advised that it is in the process of revamping its IT and IP management systems.
  • There was concern over section 79A of the Patents Act on post-grant amendment of a patent. The current provision does not permit the Court to make any amendments, and at the same time MyIPO is unable to make any amendments while there is an ongoing Court proceeding. The ramification of this issue is wide-ranging, as demonstrated by the SKB Shutters and Merck cases reported below.

MyIPO, being mindful of the quandary, advised that the Patents Act will be amended so that amendments may be permitted by the Court. A draft amendment is currently with the Attorney General’s Chambers.

Litigation

In SKB Shutters Manufacturing v Seng Kong Shutter Industries & Anor (SKB Shutters) [2015] 6 MLJ 293, the Federal Court decided that if an independent claim of a patent was established as invalid in the course of litigation, a claim dependent on that independent claim had no separate life of its own.

The dependent claim could be maintained only by rewriting it as an independent claim including all the limitations of its parent claim. Under the act, such an amendment could not be made by the Registrar when there were pending court proceedings for infringement or invalidation. In other words, the validity of a patent hinged solely on the validity of its independent claim or claims.

The Federal Court’s decision now serves as an unfortunate precedent that the lower courts in Malaysia are bound to follow in similar circumstances. Merck Sharp & Dohme & Anor v Hovid (Merck) [2017] MLJU 77 is a case in point. This was a patent infringement suit in which the defendant counterclaimed for invalidity. The court decided that claim 1 of the patent was invalid for lack of inventive step. All the remaining 21 claims were dependent on claim 1.

The invention in Merck related to the use of alendronate in oral form as a medicament for inhibiting bone resorption in humans. Such use of alendronate was known in itself. The issue of patentability boiled down to the dosage amount and schedule. The sole independent claim was in Swiss-type second medical use format.

The defendant counterclaimed that the claim was directed to a dosage regimen which was a non-patentable method of treatment under section 13(1)(d) of the act.

The plaintiffs contended that the subject-matter of a Swiss-type claim was not an excluded method of treatment. They relied on the European Patent Office’s Enlarged Board of Appeal (EBOA) decision in EISAI/Second Medical Indication and the English Court of Appeal’s judgment in Actavis UK v Merck & Co. The judge opined that these decisions are persuasive and may be applied by Malaysian Courts when the applicable provision in European Patent Convention is identical or similar to that of the Malaysian Act.

It was held that articles 53(c) and 54(4) EPC are indeed substantially similar to sections 13(1)(d) and 14(4) of the act. Accordingly, the court decided that a Swiss-type claim, even one directed to a dosage regime, is patentable according to section 14(4), provided of course the other patentability requirements are met. This appears to be the first judicial interpretation in Malaysia of the permissibility of such claim formats and a confirmation of current MyIPO practice.

Trademark

Growth, in terms of the number of trademarks filed and granted in Malaysia, continues to breaks its own year-on-year record.

No major changes have been made to the governing Trade Marks Act 1976 but we optimistically opine that some legislative changes are inevitably forthcoming. This is spurred not only by the continuous need to harmonise the local trademark laws to sync even more with global practices but also because any furtherance of the TPPA and eventual accession to Madrid Protocol would push for significant procedural and regulatory changes.

Litigation

While waiting for the legislative amendments to see the light of day, there remains a steady stream of trademark case laws being shaped by the courts in Malaysia, especially the dedicated IP Court in Kuala Lumpur. We highlight in this article some of the more interesting cases:

The Registrar of MyIPO has always shied away from legal disputes between private parties. This position is in the public interest to ensure that MyIPO officers do not have to expend valuable time, effort and expense to attend court. Thus, in the passing-off case of World Grand Dynamic Marketing v FJVAA & others [2016] MLJU 902, MyIPO applied to set aside two subpoenas filed by the plaintiff against MyIPO’s officers on the basis that they could instead assist the case in writing without participating in the trial.

The High Court held that in this passing-off case, the subpoena is for the officers to testify and produce MyIPO’s letters issued to the first defendant and thus should not invoke this subsection that applies only to the Registrar’s Statement for a rectification suit.

More importantly, the court is of the learned view that the subpoenas could not be oppressive on the MyIPO officers because the relevance of their testimony clearly outweighs any oppression (if at all). They are also not an abuse of court process but in fact necessary for the court to decide the case justly in view of the defendants’ classification of the MyIPO’s letter as part C (documents where the authenticity and contents are disputed). Cost of the setting-aside application was awarded against the Registrar but only a nominal sum.

The Court of Appeal, in Low Chi Hong & Reynox v Low Chi Yong trading as Reynox Fertichem Industries [2016] 5 MLJ 697, held that section 40 of the act excuses infringement if the use by the infringer was in good faith or (whether expressly or impliedly) consented to by the registered proprietor; all of which the High Court failed to consider.

This is a dispute between family members on the right to use the trademark ‘Reynox’ for fertilisers. The mark does not originate from the respondent (Low Chi Yong) but he registered it in his name since 2005. Notwithstanding this, he has allowed the mark to be used in the family business including the second defendant without objection. In fact, the plaintiff and the first defendant are partners in the business called Reynox Fertilizer Manufacturer and equal shareholders in the second defendant.

The appellate court held that such compromises by the plaintiff are an abandonment of his exclusive rights under section 35 as a trademark owner and a mitigation against his cause of action.  n

Henry Goh & Co Sdn Bhd

VO2-10-06 Lingkaran SV | Sunway Velocity, Jalan Peel | 55100 Kuala Lumpur | Malaysia

Tel: +60 3 9771 8688

Fax: +60 3 9771 8788 +60 3 9771 8733

Email : malaysia@henrygoh.com 

IP Pages, Trans-Pacific Partnership Agreement, MyIPO, MIPA

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