At a glance: patent enforcement proceedings in Malaysia

Patent enforcement proceedings

Lawsuits and courts

What authorized or administrative proceedings can be found for imposing patent rights in opposition to an infringer? Are there specialised courts by which a patent infringement lawsuit can or have to be introduced?

Patent rights are solely enforceable by the patent proprietor by the use of a civil motion. There are presently no administrative proceedings out there for the enforcement of patent rights.

There’s a specialised Mental Property Excessive Courtroom in Kuala Lumpur, and most civil actions for patent infringement are filed right here. Nevertheless, there isn’t any authorized prohibition for a patent proprietor to institute a civil motion in excessive courts in different states of Malaysia if the events reside outdoors Kuala Lumpur.

Trial format and timing

What’s the format of a patent infringement trial?

The format of a patent infringement trial is identical as any normal civil go well with trial. Owing to the character of patent infringement, the place substantial dispute as to info is inevitable, a civil motion is mostly introduced by the use of a writ of summons along with an announcement of declare setting out the fabric info of the declare and the cures sought. Malaysia adopts the widespread legislation system of pleadings the place the events are required to trade pleadings inside the prescribed timeframe. After being served with the assertion of declare, the defendant should file his or her defence and counterclaim (if any) inside the prescribed interval, adopted by a reply by the plaintiff if vital. The place the defendant disputes the validity of the patent, she or he should embrace the particulars of objections, setting out the grounds of objections clearly in his or her defence.

There isn’t any trial by affidavit in Malaysia. Events are required to show their case by calling witnesses who state their circumstances within the first stage of trial, specifically examination in chief, by the use of written witness statements. Nevertheless, all witnesses have to be current in court docket in the course of the trial for cross-examination.

Consultants are invariably referred to as to help the court docket throughout a patent go well with. Actually, professional opinions on the problems of novelty and ingenious steps are indispensable in a patent trial.

Malaysia doesn’t have a jury system, therefore disputed points are determined by a decide (or judges). A trial will usually final between one and two weeks, relying on the complexity of the matter and the problems in dispute.

On the problem of pleadings, the Malaysian Federal Courtroom is predicted at hand down its choice quickly on whether or not a defendant in invalidation proceedings is required to plead with specificity the prior artwork paperwork relied upon to problem the validity of a granted patent on the grounds of lack of novelty and ingenious step. In YKL Engineering Sdn Bhd and Sungei Kahang Palm Oil Sdn Bhd & Anor (Federal Courtroom Civil Attraction No. 02(f)-9-02/2021(J), the appellant/plaintiff, YKL Engineering Sdn Bhd, filed an motion for patent and copyright infringement in opposition to the respondents/defendants. It succeeded within the Excessive Courtroom in each causes of motion. Nevertheless, the Courtroom of Attraction reversed the choice based totally on a previous artwork doc that was not pleaded. One salient truth of the case was that the respondents/defendants made an eleventh-hour software for depart to incorporate the brand new prior artwork, however their software was rejected by the trial court docket. The trial court docket’s choice in rejecting the extra prior artwork was affirmed by one other panel of the Courtroom of Attraction. The appellant/plaintiff then obtained depart of the Federal Courtroom to refer the next questions of legislation to be determined by it:

• The place a defendant invokes part 14(2)(a) of the Patents Act 1983 (PA) to boost the problem of anticipation by prior artwork to dispute the novelty of the plaintiff’s patent, is the defendant obliged by legislation to plead with specificity the particulars of prior artwork relied upon by her or him to defeat the registered patent?
• In a patent trial the place anticipation is raised to problem the validity of a patent, ought to a defendant be allowed to depend on prior artwork paperwork and prior use that weren’t particularly pleaded in its try to invalidate the patent?
• Had a patent attraction miscarried the place the appellate court docket disregarded a previous choice of the attraction court docket itself in the identical case to disallow reliance on an merchandise of alleged prior artwork that the Excessive Courtroom had loyally adopted subsequently by disregarding this merchandise in arriving at its choice?
• Can part 14(2)(a) of the PA on public disclosure of a previous artwork apply the place there was an unauthorised disclosure to a 3rd social gathering of the prototype of the machine invented by the plaintiff?
• May a defendant invalidate a patent on the bottom of anticipation pursuant to part 14(2)(a) of the PA the place it’s a case of an unauthorised disclosure of the plaintiff’s prototype machine put in on a non-public property for experimentation by the plaintiff?
• If declare 1 of a patent is asserted to be invalid, is there a authorized responsibility for the court docket to look at each dependent declare and resolve individually whether or not the dependent declare is legitimate and, thereafter, to resolve whether or not any of the dependent claims have been infringed?
• With regard to the idea of originality in copyright legislation that’s distinct from the idea of novelty in patent legislation, would the design drawings of an article independently be eligible for copyright safety beneath part 7(2)(2A) and (4) of the Copyright Act 1987 as inventive works?

The events accomplished their arguments on 9 December 2021, and the Federal Courtroom is predicted at hand down its choice within the first or second quarter of 2022.

Proof necessities

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof in a patent infringement go well with is the civil burden of steadiness of chances. This similar burden of proof applies to the problems of infringement, invalidation and unenforceability.

To make out a case for infringement, the next should be proved:

• that each important integer or function of the plaintiff’s patented declare is taken by the defendants; and
• the defendants’ product works the identical approach because the plaintiff claims in his or her patent.

Standing to sue

Who might sue for patent infringement? Below what circumstances can an accused infringer convey a lawsuit to acquire a judicial ruling or declaration on the accusation?

The proprietor of the patent (part 59, PA), licensee and beneficiary of the obligatory licence (part 61, PA) have the suitable to sue for patent infringement.

The problem of the suitable of a licensee to convey an infringement motion was mentioned in a latest choice of the IP Excessive Courtroom of Kuala Lumpur, Kingtime Worldwide Ltd & Anor v Petrofac E&C Sdn Bhd [2018] MLJU 1840. On this case, the second plaintiff was a licensee of the primary plaintiff. The defendant challenged the suitable of the licensee to be named as a co-plaintiff in a patent infringement motion. The Excessive Courtroom agreed with the problem and held that the licensee’s proper to sue is barely relevant in two restricted circumstances stipulated in part 61 of the PA, specifically:

• if three months upon receipt of the request from the licensee to file a patent infringement motion, the proprietor of the patent has refused to take action or failed to take action; or
• if the licensee is ready to show that quick motion is required to keep away from harm to the patent licensee, the licensee might apply for an injunction to restrain a patent infringement.

The court docket determined that primarily based on the info of the case, the second plaintiff had no proper to file a patent infringement motion in opposition to the defendant as the primary plaintiff had already filed the motion.

An accused infringer can convey a lawsuit in opposition to the proprietor of the patent to acquire a declaration from the court docket that committing the act in query doesn’t represent an infringement of the patent. Nevertheless, if the act in query is already the topic of an infringement motion, and the accused infringer is already a defendant to that go well with, the declare for a declaration of non-infringement shouldn’t be allowed (part 62, PA). An accused infringer also can convey a lawsuit in opposition to the proprietor of the patent for the invalidation of the patent (part 56, PA). 

Inducement, and contributory and a number of social gathering infringement

To what extent can somebody be answerable for inducing or contributing to patent infringement? Can a number of events be collectively answerable for infringement if every practises solely a few of the components of a patent declare, however collectively they practise all the weather?

There isn’t any provision for oblique or contributory infringement beneath the PA. To show infringement, each important integer or function claimed by the patented invention have to be current within the defendant’s product or course of. In a course of or technique patent, the defendant have to be proven to have taken each step of the patented course of. Thus, it’s not attainable to make the defendants collectively liable in the event that they merely carried out a part of the patented declare.

Nevertheless, it’s attainable to sue primarily based on the tort of conspiracy to injure, if the events are performing in live performance to injure the pursuits of the plaintiff.

Joinder of a number of defendants

Can a number of events be joined as defendants in the identical lawsuit? If that’s the case, what are the necessities? Should all of the defendants be accused of infringing all the identical patents?

A number of events may be joined as defendants in the identical lawsuit with the depart of the court docket or if separate actions are introduced in opposition to every of the defendants, the place there are some widespread questions of legislation or truth that might come up in all of the actions, and all rights to aid claimed within the motion (whether or not they’re joint, a number of or different) are in respect of or come up out of the identical transaction or sequence of transactions (see Order 15, Rule 4, Guidelines of Courtroom 2012 (ROC 2012)).

Due to the requirement of commonality of problems with legislation and truth, it seems that the entire defendants should be accused of infringing the entire similar patents. The place it seems to the court docket that the joinder of causes of motion or of events might embarrass or delay the trial or is in any other case inconvenient, the court docket might order separate trials or make such order as could also be expedient (see Order 15, Rule 5, ROC 2012).

Infringement by international actions

To what extent can actions that happen outdoors the jurisdiction assist a cost of patent infringement?

Solely committing an infringing act inside Malaysia would represent an act of patent infringement (see part 58, PA).

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject material be proven to infringe?

The court docket does recognise infringement by the use of the ‘equivalents’ of the claimed subject material. An evaluation of the identical can be performed by the use of a purposive interpretation of the declare set out within the extensively accepted case of Catnic Elements Ltd v Hill and Smith Ltd [1982] RPC 183. This method has been accepted within the Courtroom of Attraction’s choice of Cadware Sdn Bhd v Ronic Company [2013] 6 MLJ 19, the place the Courtroom of Attraction adopted the purposive development doctrine laid down within the Catnic case in addition to making use of the Improver take a look at (as expounded within the case of Improver Corpn v Remington Client Merchandise Ltd [1990] FSR 181) when contemplating whether or not there’s infringement of patent.

Associated to the problem of infringement by equivalents is the problem of how Malaysian courts resolve on whether or not there’s a patent infringement. The Malaysian courts have adopted a mixture of checks in figuring out whether or not there’s an infringement of a patent. That is evident from the choice of the Excessive Courtroom in Kingtime Worldwide Ltd & Anor v Petrofac E&C Sdn Bhd [2018] MLJU 1840. The discovered decide thought-about three checks:

• the Important Integers take a look at (as propounded within the UK Home of Lords case of Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367);
• the Improver take a look at (as propounded within the UK Excessive Courtroom case of Improver Corp & Ors v Remington Client Merchandise Ltd & Ors [1990] FSR 181); and
• the Actavis take a look at (as propounded within the UK Supreme Courtroom case of Actavis UK Ltd & Ors v Eli Lilly and Co, and different appeals [2018] 1 All ER 171), which reformulated the Improver take a look at.

Making use of all three approaches, the court docket discovered that the defendant infringed the plaintiff’s patents.

Kingtime was the primary Malaysian court docket choice to undertake the Actavis take a look at. Subsequently, the next two Excessive Courtroom selections have adopted the Actavis take a look at: Mohammad Mubde Absi & Ors v Hyat Collections Sdn Bhd & Ors [2019] MLJU 1355 and Emerico Sdn Bhd v Maxvigo Answer Sdn Bhd [2020] MLJU 340.

Discovery of proof

What mechanisms can be found for acquiring proof from an opponent, from third events or from outdoors the nation for proving infringement, damages or invalidity?

Discovery of proof is proscribed to the problems that had been raised by the particulars of infringement and particulars of objection to the validity of the patent (in a counterclaim). This can be performed by the processes of discovery of paperwork or by interrogatories.

The Courtroom might at any time order any social gathering to a trigger or matter to offer discovery by making and serving on some other social gathering a listing of the paperwork which can be or have been in his or her possession, custody or energy, and should on the similar time or subsequently additionally order her or him to file an affidavit verifying such a listing and to serve a duplicate thereof on the opposite social gathering. The paperwork the place discovery could also be ordered embrace paperwork on which the social gathering depends or will rely; paperwork that might adversely have an effect on his or her personal case; paperwork that might adversely have an effect on one other social gathering’s case; or paperwork that might assist one other social gathering’s case (see Order 24, Rule 3, ROC 2012).

The place discovery is by the use of interrogatories, a celebration to any trigger or matter might apply to the court docket for an order giving the social gathering depart to serve on some other social gathering interrogatories regarding any matter in query between the applicant and the opposite social gathering within the trigger or matter and requiring that different social gathering to reply the interrogatories on affidavit inside a selected time frame, which shall not be lower than 14 days from the date of service of the interrogatories (see Order 26, Rule 1 ROC 2012).

Litigation timetable

What’s the typical timetable for a patent infringement lawsuit within the trial and appellate courts?

Relying on the complexity of the matter, a patent infringement lawsuit usually takes about 9 to 18 months for the choice of first occasion to be handed down. Proceedings within the appellate court docket might take about six to 12 months.

Litigation prices

What’s the typical vary of prices of a patent infringement lawsuit earlier than trial, throughout trial and for an attraction? Are contingency charges permitted?

The prices of a patent infringement go well with are depending on many components, primarily the legislation corporations and authorized personnel concerned, the complexity of points concerned and the time taken in prosecuting the case. The prices of the professional could also be important as nicely and differ from one case to a different.

A typical vary of authorized prices of a patent infringement lawsuit is roughly as follows:

• pretrial prices, which is able to embrace the settling of pleadings, case administration, preparation for trial (eg, preparation of witness statements and professional reviews), however excluding interlocutory purposes resembling software for injunction: 150,000 to 300,000 ringgit;
• trial correct: 200,000 to 500,000 ringgit for a three- to five-day trial and the preparation of written submissions; and
• attraction (to the Courtroom of Attraction): 100,000 to 250,000 ringgit.

Contingency charges are prohibited beneath the Authorized Career Act 1976.

Courtroom appeals

What avenues of attraction can be found following an adversarial choice in a patent infringement lawsuit? Is new proof allowed on the appellate stage?

A patent infringement lawsuit, which invariably features a declare for everlasting injunction, have to be introduced within the Excessive Courtroom. An attraction from the Excessive Courtroom may be made to the Courtroom of Attraction as of proper. There’s a second probability for attraction to the apex court docket, specifically the Federal Courtroom. Nevertheless, an attraction to the Federal Courtroom shouldn’t be computerized. The would-be appellant should first receive depart from the Federal Courtroom. Depart will probably be granted if there’s a query of legislation that’s of normal software and never beforehand determined by the Federal Courtroom or, alternatively, if it’s a query of significance upon which additional argument and choice of the Federal Courtroom can be to public benefit. Within the Federal Courtroom choice of Spind Malaysia Sdn Bhd v Justrade Advertising Sdn Bhd and Anor [2018] 4 MLJ 34, the apex court docket of Malaysia held that the attraction needs to be confined solely to the questions of legislation as decided by the Federal Courtroom and different grounds that are essential to resolve on these questions.

New proof shouldn’t be allowed on the appellate stage, except the Courtroom is glad that the brand new proof was not out there to the social gathering beforehand or cheap diligence wouldn’t have made it so out there, and the brand new proof, if true, can fairly be assumed to have had a figuring out affect upon the choice of the Excessive Courtroom.

Competitors concerns

To what extent can enforcement of a patent expose the patent proprietor to legal responsibility for a contest violation, unfair competitors or a business-related tort?

A patent proprietor is granted the unique rights to ‘exploit’ the patented invention, to assign or transmit the patent, and to conclude licence contracts.

‘Exploitation’ of a patented invention is outlined to incorporate, amongst different issues, the making, promoting or utilizing the patented product. Moreover that, the proprietor of a patent is expressly given the suitable to institute court docket proceedings in opposition to any one who has infringed or is infringing his or her patent.

In imposing a patent by the use of infringement motion, there’s typically no danger of being answerable for unfair competitors or any tortious legal responsibility besides when a case for ‘illegal interference with commerce’ is made out. The important requirement for illegal interference is that the claimant should show ‘a deliberate interference with the claimant’s pursuits by illegal means’. Case legislation has established that to implement an IP proper, even when the identical is subsequently invalidated, is mostly to not be considered illegal. In view of this, it’s typically believed {that a} declare for illegal interference is tough to keep up primarily based solely on the establishment of an infringement motion.

In imposing a patent by the use of concluding licence contracts or different agreements, a patent proprietor could also be liable if the next two broad circumstances are proved:

• if the settlement has the article or impact of considerably stopping, limiting or distorting competitors in any marketplace for items or companies; or
• if the patent proprietor is partaking in, whether or not independently or collectively, any conduct that quantities to an abuse of a dominant place in any marketplace for items or companies.

The above-mentioned twin prohibitions of anticompetitive conduct are clearly supplied beneath the Malaysian Competitors Act 2010 (CA 2010), which got here into pressure on 1 January 2012. Nevertheless, there’s an categorical exception laid down within the CA 2010 whereby it’s clearly acknowledged that the prohibition in opposition to abuse of dominant place doesn’t apply to the related enterprise in a dominant place in ‘taking any step which has cheap business justification or represents an inexpensive business response to the market entry or market conduct of a competitor’ (part 10(3) of CA 2010).

Recognising the necessity to tackle the growing stress between the safety of mental property (IP) rights and anticompetitive conduct, the Malaysian Competitors Fee (MyCC), a statutory physique that’s empowered to implement and implement the provisions of the CA 2010, launched the Tips on Mental Property Rights and Competitors Regulation (the Tips) on 6 April 2019. The Tips define some approaches adopted by the MyCC with respect to any competitors points beneath the CA 2010 regarding IP rights. The Tips, amongst others, tackle the interplay between IP rights and competitors legislation and provide some steerage for acceptable contractual preparations involving IP rights. Mental property house owners, particularly patent house owners, might check with the Tips to determine the scope of their IP rights and to guard themselves in opposition to anticompetitive actions.

Various dispute decision

To what extent are different dispute decision strategies out there to resolve patent disputes?

The court docket will typically suggest the choice of mediation in the course of the stage of pretrial case administration. Mediation could also be carried out within the following methods:

• by the use of a judge-led mediation;
• by the use of a mediation to be carried out on the Asian Worldwide Arbitration Centre;
• by the use of a mediation to be carried out on the Malaysian Mediation Centre; or
• by different mediators agreeable by each events.

On 30 June 2016, the Chief Justice of Malaysia issued Follow Route No. 4 of 2016 (Follow Route on Mediation), directing that every one judges of the Excessive Courtroom and the deputy registrars and all judges of the Classes Courtroom and magistrates and their assistant registrars might, on the pretrial case administration stage, give such instructions that the events facilitate the settlement of the matter earlier than the court docket by the use of mediation. IP circumstances are listed as examples of circumstances which can be simple to settle by mediation. In observe, mediation of a patent lawsuit not often occurs, presumably as a result of the problem of infringement is often keenly contested and it’s factually and legally complicated.

Regulation acknowledged date

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28 February 2022.