UIP2612 Intellectual Property Law

Topic 3: Patents

Assoc. Prof. Dr. Manique Cooray

Faculty of Law,
Multimedia University
2023
 Coverage
Part 1
• Nature, types and scope of inventions;
• Patentability requirements:
• Novelty, inventive steps and industrial application;
• Patentable subject matters;
• International patent systems

Part 2
• Exclusions; Ownership; Rights;
• Dealing; Duration of protection;

Part 3
• Infringement; Enforcement
• Defences
LO COURSE LEARNING OUTCOMES

1 Discuss the principles of intellectual property law in Malaysia

2 Apply the principles of intellectual property law in Malaysia to a

problem.

3 Explain the positive and negative effects of intellectual property

rights on different communities
4 Study the application procedures necessary to obtain intellectual
property protection.
 Part 1
What is a Patent?

• A patent is a legal right granted to inventors that provides exclusive

ownership and protection for their inventions, preventing others from
making, using, or selling the patented invention without permission for a
specified period.

• Product patents protect inventions related to specific products, while

process patents safeguard unique methods or processes for creating a
product or achieving a particular result.

• To obtain patent protection, the inventor needs to apply for a grant of

patent, either through filing for a national patent, or through an
international filing pursuant to the Patent Cooperation Treaty.
Malaysia is a member of:
(i) The Paris Convention for the Protection of Industrial Property
1883,
(ii) The Agreement on Trade Related Aspects of Intellectual Property
Rights, and
(iii) The Patent Cooperation Treaty.
Justifications
(i) Patents encourage inventions and are necessary to develop and
secure industrial progress.
This also called the “Utilitarian approach” linking patents, inventions to
technological developments.

Lim Choong Huat & Ors v Syntlz Enterprise Sdn Bhd & Ors (Hamid
Sultan Abu Backer, JC (as he was then) stated that PA 83 permitted
the granting of a patent “only to encourage and develop new
technology.”
(ii) Social contract theory: A contract exists between the inventor and
society because the inventor agrees to disclose his invention to the public in
exchange for a limited monopoly to exploit the invention.

(iii) Another justification is the rewards rational:Since the inventor has

invested money and time that the inventor has the right to reap his
rewards/ generate profits.

(iv) Philosophical justifications: Based on natural rights theories that God

gave the world to men in common and that an individual who mixes his
labour with the property in common will by that labour convert the
common property into his personal property. (John Lock).
General Notes:
• To obtain patent protection, the inventor needs to apply for a
grant of patent, either through filing for a national patent, or
through an international filing pursuant to the Patent Cooperation
Treaty.

• Once a grant is received the inventor is required to publicly

disclose his invention.

• This is to add to the pool of existing knowledge in a particular field

such that the society will benefit and also perhaps those who are
skilled in that area can do further improvements and produce new
inventions.
• The Malaysian patent system owes its origin to the UK patent system.

• After reaching independence, Malaysia had a re-registration system,

whereby those who were granted UK patents were able to re-register them
in Malaysia, enjoying the same privileges in Malaysia as if the patent had
been granted in Malaysia.

• (Ref for extra reading: Lim Heng Gee, ‘A Study of the Historial Development
of the Malaysian Patent System’, Perspectives on Intellectual Property, Vol
1, ‘The Prehistory and Development of Intellectual Property Systems’
(1997), Sweet & Maxwell, UK. )
2. Patent Law in Malaysia

• Patent protection in Malaysia is governed by the Patents Act 1983 and

Patent Regulations 1986 and case law.

• An application can be made directly in Malaysia and registration is

effective for the whole of Malaysia.

• An invention is patentable if it is new, involves an inventive step and is

industrially applicable.

• Who may apply?

• Any person may make an application for a patent either alone or jointly with
another person. The word “person” is not limited to natural persons and thus
also includes, for example, a company.
• Importance of Patent Registration:

• To exploit the patented invention

• To assign or transmit the patent
• To conclude license contracts
3. Patentability

Section 11: “Patentable Inventions”: An invention is patentable if it is new, involves

an inventive step and is industrially applicable.

Section 12: “Invention”

(1) An invention means an idea of an inventor which permits in practice the
solution to a specific problem in the field of technology.
(2) An invention may be or may relate to a product or process.
• Product and process patent

• Product Patent refers to a physical entity. While a process refers to a method or use.

• Section 3 defines a “product” as anything which appears in a tangible form and includes any
apparatus, article, device, equipment, handicraft, implement, machine, substance and
composition. (Examples: chemical compound, a pharmaceutical’s active ingredient or an
object)
• Section 3 defines a “process” as including an art or a method. (Example: an activity
performed upon some material product to achieve a certain result.)
• Sanofi-Aventis (M) Sdn Bhd & Anor v Fresenius Kabi (M) Sdn Bhd & Anor [2012] 4 CLJ 532
What is Non Patentable?
Section 13. Non-patentable inventions
(1) Notwithstanding the fact that they may be inventions within the meaning of
section 12, the following shall not be patentable:
(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production
of plants or animals, other than man-made living micro-organisms, micro-
biological processes and the products of such micro-organism processes;
(c) schemes, rules or methods for doing business, performing purely mental
acts or playing games;
(d) methods for the treatment of the human or animal body by surgery or
therapy, and diagnostic methods practised on the human or animal
body: Provided that this paragraph shall not apply to products used in any such
methods.

* The above is excluded as they do not constitute an “idea” but are either things which
already exists in nature or are scientific experiments and also they are not problems arising
in the field of technology.
Contrary to Public Order or Morality

Section 31. Grant of patent

(1) The grant of a patent shall not be refused and a patent shall not be invalidated
on the ground that the performance of any act in respect of the claimed invention
is prohibited by any law or regulation, except where the performance of that act
would be contrary to public order or morality.
Prejudicial to the Interest or Security of the Nation
Section 30A. Prohibition of publication of information which might be
prejudicial to the nation.

(1) Subject to any direction of the Minister, where an application for a patent is
filed or is deemed to have been filed at the Patent Registration Office and it
appears to the Registrar that the application contains information the
publication of which might be prejudicial to the interest or security of the
nation, he may issue directions prohibiting or restricting the publication of
that information or its communication whether generally or to a particular
person or class of persons.
(3) Where directions issued by the Registrar under subsection (1) are in
force in respect of an application, the application may proceed to the
stage where it is in order for the grant of a patent but no patent shall be
granted in pursuance of such application.
4. Requirements for Patentability/Qualifications

Section 11: new, inventive step, industrially applicable

An Invention is patentable if three essential elements are fulfilled:

The invention is new;

It involves an inventive step;
The invention is industrially applicable.
Question: What is new? or Novelty (section 14)

• How to assess newness?

• Through a comparison of the invention with existing products already
available in the market (also known as “prior art”)

• The inventor must disclose the invention in order for there to be an increase to the pool
of knowledge. This indicates that the invention is new as otherwise there is nothing that
he has contributed / added to the existing pool of knowledge. Thus the “newness” is
statutorily embodied in section 11 in the form of the novelty requirement. Pursuant to
section 14 a invention is new if it is not anticipated by the prior art.
• SKB Shutters Industries Sdn Bhd & Anor Manufacturing Sdn Bhd V Seng Kong Shutter
Industries Sdn Bhd & Anor [2015] 6 AMR 358
Section 14: Novelty

(1) An invention is new if it is not anticipated by prior art.

(2) Prior art shall consist of —
(a) everything disclosed to the public, anywhere in the world, by written-
publication, by oral disclosure, by use or in any other way, prior to the
priority date of the patent application claiming the invention;
(b) the contents of a domestic patent application having an earlier priority
date than the patent application referred to in paragraph (a) to the
extent that such contents are included in the patent granted on the basis of
the said domestic patent application.
• What is Prior art? consists of everything disclosed to the public, anywhere in the
world by written publication, oral disclosure, by use, by an earlier granted patent
or in any other way before the date on which an application for patent over an
invention is made.

• Case law discusses the meaning of ‘anticipated by prior art’.

General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd (No 1)
[1972] RPC 457 (CA)
• “To determine whether a patentee’s claim has been anticipated by an
earlier publication it is necessary to compare the earlier publication
with the patentee’s claim. The earlier publication must, for this
purpose, be interpreted as at the date of its publication, having
regard to the relevant surrounding circumstances which then existed,
and without regard to subsequent events. The patentee’s claim must
similarly be construed as at its own date of publication having regard
to the relevant surrounding circumstances then existing. If the earlier
publication, so construed, discloses the same device as the device
which the patentee by his claim, so construed, asserts that he has
invented, the patentee’s claim has been anticipated, but not
otherwise. In such circumstances the patentee is not the true and
first inventor of the device and his claimed invention is not new
within . . . .
• The earlier publication and the patentee’s claim must each be construed as
they would be at the respective relevant dates by a reader skilled in the art
to which they relate having regard to the state of knowledge in such art at
the relevant date. The construction of these documents is a function of the
court, being a matter of law, but, since documents of this nature are almost
certain to contain technical material, the court must, by evidence, be put in
the position of a person of the kind to whom the document is addressed,
that is to say, a person skilled in the relevant art at the relevant date.

• If the art is one having a highly developed technology, the notional skilled
reader to whom the document is addressed may not be a single person but
a team . . . When the prior inventor’s publication and the patentee’s claim
have respectively been construed by the court in the light of all properly
admissible evidence as to technical matters, the meaning of words and
expressions used in the art and so forth, the question whether the
patentee’s claim is new . . . falls to be decided as a question of fact.
• If the prior inventor’s publication contains a clear description of, or clear instructions to
do or make, something that would infringe the patentee’s claim is carried out after the
grant of the patentee’s patent, the patentee’s claim will have been shown to lack the
necessary novelty, that is to say, it will have been anticipated. The prior inventor,
however, and the patentee may have approached the same device from different starting
points and may for this reason, or it may be for other reasons, have so described their
devices that it cannot be immediately discerned from a reading of the language which
they have respectively used that they have discovered in truth the same device; but if
carrying out the directions contained in the prior inventor’s publication will inevitably
result in something being made or done which, if the patentee’s patent were valid,
would constitute an infringement of the patentee’s claim, this circumstance
demonstrates that the patentee’s claim has in fact been anticipated.

• If, on the other hand, the prior publication contains a direction which is capable of being
carried out in a manner which would infringe the patentee’s claim, but would be at least
as likely to be carried out in a way which would not do so, the patentee’s claim will not
have been anticipated, although it may fail on the ground of obviousness.
• To anticipate the patentee’s claim the prior publication must contain
clear and unmistakable directions to do what the patentee claims to
have invented. A signpost, however clear, upon the road to the
patentee’s invention will not suffice. The prior inventor must be
clearly shown to have planted his flag at the precise destination
before the patentees.

• Each of these documents must be considered separately. For this

purpose it is not permissible to combine earlier unconnected
publications to show anticipation, for, if combination of earlier
unconnected publications is necessary to assemble all the elements
of the invention said to have been anticipated, it follows that no one
man has previously.”
a) Prior art includes any information, whether in tangible or intangible
form, disclosed to the public anywhere in the world prior to the priority
date.
• There is no difference where the information forming the prior art has been
disclosed. Whether in Malaysia or elsewhere.
• Language is not a requirement- so long as the information is disclosed to the
public it forms a part of prior art.
• Information does not necessarily be made available to the public- it is prior
art even if the document is not reasonably accessible to a Malaysia.
• Any oral disclosure, by use of otherwise is deemed to be part of prior art.
• Traditional knowledge passed through generations forms as prior art.

Sungei Kahan Palm Oil Sdn Bhd & Anor v YKL Engineering Sdn Bhd [2020] MLJU
953
b) Information given in Confidence?
It still falls within prior art (PA ‘83) provides some redress.

c)Priority date: This is the date that is usually set aside as some sort of
a cut off point at which an invention is to be assessed against the prior
art to determine novelty.
• Statutory exclusions from prior art…
Some disclosures are excluded- the PA ‘83 excludes some types of
information that have been disclosed to the public from being considered
part of the prior art for assessing novelty. These are provided in section
14(3)…(4).

• Disclosure by the Applicant / predecessor in title (This is to allow the inventor to

test the commercial viability of his invention before making a decision whether to
commit himself to the expenses of a patent prosecution…)

• Disclosure through and abuse of rights of the applicant/predecessor (no practical

effect)

• Medical use exception/Section 13(1)(d) (The mere fact that the product is not novel
will not destroy the novelty of the use of that product for a method of medical
treatment. This provides and incentive for the Pharmaceutical companies to develop
new methods of using a known substance for medical treatment)
• The PA ‘83 provides an exception for the patentability of a known substance or composition for
the patentability of a known substance or composition for use a method of treatment by surgery,
therapy or diagnosis in the situation provide in section 14(4).
• This means where a substance or composition is part of the prior art but a new medicinal or
veterinary use of that product is found, the mere fact that the product is not novel will not
destroy the novelty of the use of that product for a method of medical treatment.

• The exception provides an incentive to pharmaceutical companies to develop new methods of

using a known substance for medical treatment.

• This exception to section 13(1)(d) is a product claim which is restricted to the substance or
composition when presented or packaged for the specific use. Ex: presented as “for use of
medicament”/ “use of as an anti-bacteria” / “for curing disease Y”.
• This is also called the “Swiss type” claim. A claim in patent law is a format previously used to
protect the use of a known substance for the manufacture of a medicament for a new therapeutic
application, often in the context of pharmaceutical patents, with a structure like “Use of [known
substance] for the treatment of [new indication].”

• The novelty lies in the new pharmaceutical use even though the substance or composition is
known.
• John Wyeth & Brother Ltd’s Application [1985] RPC 545
• Held: that section 2(6) of the UK Patent Act 1977 encompassed second and
subsequent medical uses which were drafted in the Swiss style format. The
Swiss style claim in the case was “the use of guanidine in the preparation of
an anti-diarrhoeal agent for treating or preventing diarrhoea. Prior to that,
guanidines were known pharmaceuticals used to lower blood pressure. The
claim was allowed by the English Patent Court. The case also held that Swiss
Type Claims were process claims since they were in reality a claim to the
method of manufacture.

• Merck Sharp & Dohme Corp & Anor V Hovid Bhd [ [2017] AMEJ 0017, HC
• Held that the Malaysian Guidelines for Patent Examination allows Swiss type claims in
the form of “Use of a substance or composition X for the manufacture of a medicament
for therapeutic application Z” for second and subsequent medical use which are new and
inventive.
• Reference cases

• Premier Products Co Ltd & Anor v Zamrud Fibre Industries (M) Sdn
Bhd [1994] 3 AMR 2324/ [1994] 4 CLJ 1042

• Intercontinental Specialty Fats Sdn Bhd v Asahi Denka Kogy KK[2000]

4 MLJ 775

• Heveafoam Asia Sdn Bhd v PF (Teknologi) Sdn Bhd [2001] 2 MLJ 660
Question: What is an Inventive Step?
Section 15: Inventive step.
An invention shall be considered as involving an inventive step if, having
regard to any matter which forms part of the prior art under paragraph
14(2)(a), such inventive step would not have been obvious to a person
having ordinary skill in the art.

• The “person having ordinary skill in the art” is a hypothetical person created by
the law. It is not any specific person.
The test for obviousness is given in Windsurfing International Inc v Tabur Marine
(Great Britain) Ltd [1985] RPC 59 (CA).

(i) identifying the inventive concept embodied in the patent;

(ii) imputing to a normally skilled but unimaginative addressee what was common
general knowledge in the art at the priority date;
(iii) identifying the differences if any between the matter cited and the alleged
invention; and
(iv) deciding whether those differences, viewed without any knowledge of the
alleged invention, constituted steps which would have been obvious to the skilled
man or whether they required any degree of invention.
• Technograph Printed Circuits Ltd v Mills & Rockley (Electronics)
Ltd [1972] RPC 346 (HL).

To whom must the invention be obvious?

• It is not disputed that the hypothetical addressee is a skilled
technician who is well acquainted with workshop technique and who
has carefully read the relevant literature. He is supposed to have an
unlimited capacity to assimilate the contents of, it may be, scores of
specifications but to be incapable of a scintilla of invention.
• Reference cases

• PLG Research Ltd v Ardon International Ltd [1995] RPC 287

• Sanofi –Aventis (M) Sdn Bhd & Anor v Fresenius Kabi (M) Sdn Bhd &
Anor [2012] 4 CLJ 532

• See Hau Global Sdn Bhd v Mah Sing Plastics Industries Sdn Bhd [2018]
1 MLJ 213
Question: What is Industrial Application?

Section 16. Industrial application. An invention shall be considered industrially

applicable if it can be made or used in any kind of industry.
5. What is a Utility Innovation
A utility innovation is an exclusive right granted for a “minor” invention
which does not require to satisfy the test of inventiveness as required
of a patent.

Section 17: Definition

For the purposes of this Part and any regulations made under this Act
in relation to this Part, “utility innovation” means any innovation which
creates a new product or process, or any new improvement of a known
product or process, which is capable of industrial application, and
includes an invention.
• Section 17A. Application. (1) Except as otherwise provided in this
Part, the provisions of this Act, subject to the modifications in the
Second Schedule, shall apply to utility innovations in the same
manner as they apply to inventions. (2) Sections 11, 15, 26, Part X,
and sections 89 and 90 shall not apply to utility innovations.

• Section 17B. Conversion from an application for a patent into an

application for a certificate for a utility innovation, and vice versa. (1)
An application for a patent may be converted into an application for a
certificate for a utility innovation.
Section 85: Refusal to grant patent by the Registrar.

The Registrar in the exercise of his powers shall have the right to refuse to grant a
patent for products or processes scheduled under regulations made by the Minister
under this Act where it appears to the Registrar that the granting of such a patent
would be prejudicial to the interest or security of the nation.
 Part 2
• Exclusions; Ownership; Rights;
• Dealing; Duration of protection;
• Infringement; Enforcement
1. Ownership Rights/ Rights to a Patent
Section 18. Right to a patent
(1) Any person may make an application for a patent either alone or jointly with
another.
(2) Subject to section 19, the rights to a patent shall belong to the inventor.
(3) Where two or more persons have jointly made an invention, the rights to a
patent shall belong to them jointly.
(4) If two or more persons have separately and independently made the same
invention, and each of them has made an application for a patent, the right to a
patent for that invention shall belong to the person whose application has the
earliest priority date.
Section 22. Joint owners
Where the right to obtain a patent is owned jointly, the patent may
only be applied for jointly by all the joint owners.

Section 31. Grant of patent

(2A) Where two or more persons have separately and independently
made the same invention and each of them has made an application
for a patent having the same priority date, a patent may be granted on
each application.
Section 20. Inventions made by an employee or pursuant to a commission

(1) In the absence of any provisions to the contrary in any contract of employment or for the
execution of work, the rights to a patent for an invention made in the performance of such
contract of employment or in the execution of such work shall be deemed to accrue to the
employer, or the person who commissioned the work, as the case may be:
Provided that where the invention acquires an economic value much greater than the parties could
reasonably have foreseen at the time of concluding the contract of employment or for the
execution of work, as the case may be, the inventor shall be entitled to equitable remuneration
which may be fixed by the Court in the absence of agreement between the parties.

(2) Where an employee whose contract of employment does not require him to engage in any
inventive activity makes, in the field of activities of his employer, an invention using data or means
placed at his disposal by his employer, the right to the patent for such invention shall be deemed to
accrue to the employer in the absence or any provision to the contrary in the contract of
employment:
Provided that the employee shall be entitled to equitable remuneration which, in the absence of
agreement between the parties, may be fixed by the Court taking into account his emoluments, the
economic value of the invention and any benefit derived from it by the employer.

(3) The rights conferred on the inventor under subsections (1) and (2) shall not be restricted by
contract.
2. Patent Application

(i) Application to the Patent Registration Office of the Intellectual

Property Corporation of Malaysia for a national patent under
Part VI of the Patents Act 1983,

(ii) Application for international filing under the Patent Cooperation

Treaty in Part XIVA of the Act
• Section 23. Requirements of application. Every application for the grant of
a patent shall comply with the regulations as may be prescribed by the
Minister under this Act.

• Section 23A. Applications by residents to be filed in Malaysia first. No

person resident in Malaysia shall, without written authority granted by the
Registrar, file or cause to be filed outside Malaysia an application for a
patent for an invention unless –
(a) an application for a patent for the same invention has been filed in the
Patent Registration Office not less than two months before the application
outside Malaysia; and
(b) either no directions have been issued by the Registrar under section 30A
in relation to the application or all such directions have been revoked.
Section 62A. Applications in contravention of section 23A.
Any person who files or causes to be filed an application for a patent in
contravention of section 23A commits an offence and is liable on
conviction to a fine not exceeding fifteen thousand ringgit or to
imprisonment for a term not exceeding two years or to both.
Section 24. Application fee.
An application for the grant of a patent shall not be entertained unless
the prescribed fee has been paid to the Registrar.

Section 25. Withdrawal of application.

An applicant may withdrawn his application at any time during its
pendency by submitting a declaration in the prescribed form to the
Registrar, and such withdrawal may not be revoked.
Section 26. Unity of invention.
An application shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive concept.

Section 26A. Amendment of application.

The applicant may amend the application: Provided that the
amendment shall not go beyond the disclosure in the initial application.
3. National Filing

• Patents Regulations 1986 and shall come into force on the 1st October
1986.
• Regulation 5. Application for Grant of Patent.
(1) An application shall contain‐
(a) a request for the grant of a patent;
(b) a description;
(c) a claim or claims;
(d) a drawing or drawings, where required; and
(e) an abstract.
(2) The application shall be filed at the Patent Registration Office.
• Regulation 5A. Filing of an international application.
(1) An international application shall be filed in three copies.
(2) Where an international application is filed in less than three copies,
the Patent Registration Office shall prepare the additional copies
required and the applicant shall pay to the Patent Registration
Office the prescribed fees for preparing such additional copies

Regulation 6. Name and declaration of inventor.

(1) The application shall contain the name and address of the inventor.
(2) An inventor who does not wish to be named in a patent may, by
declaration in writing signed by him and submitted to the Registrar,
indicate that he does not wish to be so named.
Regulation 7. Request for the grant of a patent.
(1) A request for the grant of a patent shall be made to the Registrar on
Form 1 together with the payment of the prescribed fee.
(2) The title of the invention shall indicate clearly and concisely the
subject‐matter to which the invention relates.

Regulation 8. Names and addresses. Names and addresses given in the

application shall in all cases be the full names and addresses.
Regulation 9. Nationality and residence.
(1) The applicant's nationality shall be indicated by the name of the State of
which he is a national or, if the applicant is not a natural person, the name of
the State under whose laws it is constituted.
(2) The applicant's residence shall be indicated by the name of the State of
which he is a resident.

Regulation 10: Applicant's right to patent.

(1) Where the applicant is the inventor, the request shall state that fact.
(2) Where the applicant is not the inventor, the request shall be
accompanied by a statement justifying the applicant's right to the
patent.
(3) For the purposes of sub regulations (1) and (2), the request shall be
made in Form 22 and shall be submitted together with Form 1 and Form
17.
Regulation 12: Description.
(1) The description shall first state the title of the invention as appearing in
the request and shall ‐
(a) specify the technical field to which the invention relates;
(b) indicate the background art which, as far as is known to the applicant,
can be regarded as useful for the understanding, searching and
examination of the invention, and, wherever possible, cite the
documents reflecting such art;
(c) disclose the invention in such terms that it can be understood and 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;
(d) briefly describe figures in the drawings, if any;
(e) describe the best mode contemplated by the applicant for carrying
out the invention, using examples where appropriate and referring to
the drawings, if any; and
(f) indicate explicitly, when it is not obvious from the description or
nature of the invention, the way in which the invention is industrially
applicable and the way in which it can be made and used or, if it can
only be used, the way in which it can be used.
(2) The description shall be presented in the manner and order
specified in sub‐ regulation(1) unless, because of the nature of the
invention, a different manner or a different order would result in a
better understanding and a more economical presentation.

(3) The description shall not contain drawings.

Regulation 13: Claims
(1) The claims shall be clear and concise and fully supported by the
description; and the number of the claims shall be reasonable taking into
consideration the nature of the invention.
(2) If there are several claims they shall be numbered consecutively in arabic
numerals.
(3) Claims shall not contain drawings and shall not, unless necessary, rely, in
respect of the technical features of the invention, on references to the
description or drawings.
(4) Where the application contains drawings, the technical features
mentioned in the claims shall, wherever possible be followed by
reference signs relating to such features and placed between
parentheses, subject to the following:
(a) reference signs which do not particularly facilitate quicker understanding of a
claim, should not be included;
(b) the same features, when denoted by reference signs, shall, throughout the
application, be denoted by the same signs.
(5) The claims shall define the invention in terms of the technical features of
the invention.
(6) Whenever appropriate, claims shall contain –
(a) statement indicating those technical features of the invention which
are necessary for the definition of the claimed subject‐matter but
which, in combination, are part of the prior art;
(b) a characterizing portion, preceded by the words "characterized in
that", "characterized by", "wherein the improvement comprises",
or any other words to the same effect stating concisely the
technical features which, in combination with the features stated
under paragraph (a), it is desired to protect.
Regulation 16: Abstract.
(1) The abstract shall commence with a title for the invention.
(2) The abstract shall contain‐
(a) a summary of the disclosure as contained in the description and the
claims and drawings, if any; and
(b) where applicable, the chemical formula which, among all the
formulae contained in the application, best characterizes the
invention.
(3) The summary mentioned in sub‐regulation (2)(a) shall indicate the
technical field to which the invention pertains and shall be drafted in a
way which allows the clear understanding of the technical problem, the
gist of the solution of that problem through the invention, and the
principal use or uses of the invention.
(4) The abstract shall be as concise as the disclosure permits and shall
preferably not contain more than one hundred and fifty words.
(5) The abstract shall not contain statements on the alleged merits or
value of the invention or on its speculative application.
(6) Each main technical feature mentioned in the abstract and
illustrated by a drawing in the application shall be followed by the
reference sign used in that drawing placed between parentheses.
(7) The abstract shall not contain drawings but shall be accompanied by
the most illustrative of any drawings furnished by the applicant.
(8) The abstract shall be so drafted that it constitutes an efficient
instrument for the purposes of searching in the particular technical
field, in particular by making it possible to assess whether there is a
need to consult the description, the claims or the drawings.
3. Preliminary Examination
(1) Where an application for a patent has a filing date and is not withdrawn,
the Registrar shall examine the application and determine whether it
complies with the requirements of 22 this Act and the regulations made
under this Act which are designated by such regulations as formal
requirements for the purposes of this Act.

Regulation 26: Preliminary examination.

(1) The requirements of regulations 5, 6, 7 (1), 8, 9, 10, 11, 18 and 51 shall be
formal requirements for the purposes of section 29 (1) of the Act. (2) Where
section 29 (2) of the Act applies, the Registrar shall notify the applicant of his
findings and the applicant shall make any observation on such finding or any
amendment to the application or both within three months from the date of
mailing of the Registrars notification.
These are:
• Reg 5: Application for grant of patent,
• Reg 6: Name and declaration of inventor,
• Reg 7: Request for the grant of a patent,
• Reg 8: Names and addresses,
• Reg 9: Nationality and residence,
• Reg 10: Applicant's right to patent
• Reg 11: Common representative,
• Reg 18: Physical requirements, and
• Reg 51: Address for service
4. Substantive Examination
Section 29. Preliminary examination.
(1) Where an application for a patent has a filing date and is not withdrawn,
the Registrar shall examine the application and determine whether it
complies with the requirements of 22 this Act and the regulations made
under this Act which are designated by such regulations as formal
requirements for the purposes of this Act.

Section 30.
Substantive examination and modified substantive examination. (1) Where a
request for substantive examination has been filed under subsection 29A(1),
the Registrar shall refer the application to an Examiner who shall ‐ (a)
determine whether the application complies with those requirements of this
Act and the regulations made under this Act which are designated by such
regulations as substantive requirements for the purposes of this Act; and (b)
report his determination to the Registrar.
Regulation 27C. Substantive examination.
(1) The requirements of sections 13,14,15 and 16, Part V, and sections
26, 26A, 26B, and 27 of the Act and regulations 7 (2), 12 to 17, 21 and
50 shall be substantive requirements for the purposes of section 30 (1)
of the Act.
• These are:
Section 13: Non-patentable inventions,
Section 14: Novelty,
Section 15: Inventive step,
Section 16: Industrial application,
Part V (sections 18–22): Rights to a patent,
Section 26: Unity of invention,
Section 26A: Amendment of application,
Section 26B: Division of application
Section 27: Right of priority
Reg 7(2): Title of invention,
Reg 12: Description,
Reg 13: Claims,
Reg 14: Dependent claims,
Reg 15: Drawings,
Reg 16: Abstract,
Reg 17: Measures, terminology and signs,
Reg 21: Declaration claiming priority, and
Reg 50: Signatures by partnerships, companies and associations.
Section 29A. Request for substantive examination or modified
substantive examination.
(1) If an application for a patent has been examined under section 29
and is not withdrawn or refused, the applicant shall file, within the
prescribed period, a request for a substantive examination of the
application.
Reg 27. Request for substantive examination.
(1) A request for a substantive examination shall be made to the
Registrar on Form 5 together with the payment of the prescribed fee
within eighteen months from the filing date of the application.
5. Public Inspection
S 34. Public inspection.

(1) The Registrar shall make available for public inspection after eighteen months from the priority date or filing date of a
patent
application and upon payment of the prescribed fee—
(a) the name, address and description of the applicant and the
name and address of his agent, if any;
(b) the application number;
(c) the filing date of the application and, if priority is claimed, the priority date, the number of the earlier application and the
name of the State in which the earlier application was filed or where the earlier application is a regional or an international
application, the name of the country or countries for which and the office at which it was filed;
(d) the particulars of the application including the description, claim or claims, drawing or drawings, if any, and the abstract
and any amendments to the application, if any;
and
(e) any change in ownership of the application and any reference to a licence contract appearing in the file relating to the
application.
6. Grant of Patent
Section 31 (2): Where the Registrar is satisfied that the application complies
with sections 23, 29 and 30, he shall grant the patent and shall
forthwith—
(a) issue to the applicant a certificate of grant of the patent and a copy of the
patent together with a copy of the Examiner’s final report; and
(b) record the patent in the Register.
(3) As soon as possible thereafter the Registrar shall—
(a) cause to be published in the Gazette a reference to the grant
of the patent; and
(b) make available to the public, on payment of the prescribed
fee, copies of the patent.
Duration of validity
S 35. Duration of patent.
(1) Subject to subsections (1B) and (1C), the duration of a patent shall be
twenty years from the filing date of the application.
(1A) Without prejudice to subsection (1) and subject to the other provisions
of this Act, a patent shall be deemed to be granted and shall take effect on
the date the certificate of grant of the
patent is issued.
(2) Where a patentee intends at the expiration of the second year from the
date of grant of the patent to keep the same in force he shall, twelve months
before the date of expiration of the second and each succeeding year during
the term of the patent, pay the prescribed annual fee:
Provided, however, that a period of grace of six months shall be allowed
after the date of such expiration, upon payment of such surcharge as may be
prescribed.
(3) If the prescribed annual fee is not paid in accordance with subsection (2),
the patent shall lapse, and a notice of the lapsing of the patent for non-
payment of any annual fee shall be published in the Gazette.
Rights of a Patent Owner
Section 36. Rights of owner of patent.
(1) Subject and without prejudice to the other provisions of this
Part, the owner of a patent shall have the following exclusive
rights in relation to the patent:
(a) to exploit the patented invention;
(b) to assign or transmit the patent;
(c) to conclude licence contract
(2) No person shall do any of the acts referred to in subsection (1)
without the consent of the owner of the patent.
(3) For the purposes of this Part, “exploitation” of a patented invention
means any of the following acts in relation to a patent:
(a) when the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling or using the product;
(ii) stocking such product for the purpose of offering for sale, selling or
using;
(b) when the patent has been granted in respect of a process:
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a), in respect of a
product obtained directly by means of the process.
Section 40. Joint ownership of patent applications or patents.
• In the absence of any agreement to the contrary between the parties,
joint owners of a patent application or patent may, separately, assign
or transmit their rights in the patent application or patent, exploit the
patented invention and take action against any person exploiting the
patented invention without their consent, but may only jointly
withdraw the patent application, surrender the patent or conclude a
licence contract.
Section 39. Assignment and transmission of patent applications and patents.

(1) A patent application or patent may be assigned or transmitted.

(2) Any person becoming entitled by assignment or transmission to a patent
application or patent may apply to the Registrar in the prescribed manner to
have such assignment or transmission recorded in the Register.
(3) No such assignment or transmission shall be recorded in the
Register unless—
(a) the prescribed fee has been paid to the Registrar;
(b) in the case of an assignment, it is in writing signed by or
on behalf of the contracting parties.
(4) No such assignment or transmission shall have effect against third parties
unless so recorded in the Register.
 Part 3
Infringements

S 58. Acts deemed to be infringement.

Subject to subsections 37(1), (2) and (3) and section 38, an
infringement of a patent shall consist of the performance of any act
referred to in subsection 36(3) in Malaysia by a person other than
the owner of the patent and without the agreement of the latter
in relation to a product or a process falling within the scope of
protection of the patent.
• The Patents Act 1987 recognises two types of infringements: ‘direct
infringement’ (s 59(1)) and ‘imminent infringement’ (s 59(2)).

85. Direct infringement:

Section 59(1): The owner of the patent shall have the right to institute
Court proceedings against any person who has infringed or is infringing
the patent.

Section 60(1): If the owner of the patent proves that an infringement

has been committed or is being committed, the Court shall award
damages and shall grant an injunction to prevent further infringement
and any other legal remedy.
Imminent infringement:
Section 59(2): The owner of the patent shall have the same right
against any person who has performed acts which make it likely that an
infringement will occur, which in this Part is referred to as an
“imminent infringement”.

Section 60(2): If the owner of the patent proves imminent

infringement the Court shall grant an injunction to prevent
infringement and any other legal remedy
• Construction of Claims
In the construction of claim, there are two approaches used by the
Malaysian courts:
• Pith and marrow construction,
• Purposive construction.
The literal construction of claim is not used as it may deprive the patentee
effective protection of his invention.

Merck & Co Inc v Generics (UK) Ltd [2004] RPC 31 (ChD).

• Laddie J: “The purpose of a patent is to convey to the public what the
patentee considers to be his invention and what monopoly he has chosen to
obtain. These are not necessarily the same. The former is primarily to be
found in the specification and the latter is primarily to be found in the
claims.”
Pith and Marrow Construction

The leading case for the pith and marrow construction approach is
Rodi & Wienenberger AG v Henry Showell Ltd [1969] 12 RPC 367 (HL).
Lord Upjohn:
In considering the claim the court must ascertain what are the essential integers of
the claim; this remains a question of construction and no general principles can be
laid down . . . Secondly, the essential integers having been ascertained, the
infringing article must be considered. To constitute infringement the article must
take each and every one of the essential integers of the claim . . . Furthermore,
where the invention, as in this case, resides in a new combination of known
integers but also merely in a new arrangement and interaction of ordinary working
parts it is not sufficient to show that the same result is reached; the working parts
must act on one another in the way claimed in the claim of this patent. This is well
illustrated by Birmingham Sound Reproducers Ltd v Collaro Ltd . . .
Rodi & Wienenberger AG v Henry Showell Ltd was accepted in Lim
Choong Huat v Syntlz Enterprise Sdn Bhd [2010] 1 CLJ 860 (HC). •
Hamid Sultan Abu Backer JC:
In essence, the infringement tests require one to consider three
factors, namely: (i) determine the “essential” integers (inessential
integers is not important because there may be mechanical equivalent)
of the plaintiff’s patent; (ii) once the “essential” integer is determined,
one must then consider whether “each” and “every” “essential” integer
is taken by the defendants; (iii) determine whether each of the
defendants’ “works” the “same way” as claimed by the plaintiff in their
Patent.
• Purposive Construction

Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 (HL). • Lord
Diplock:
“A patent specification should be given a purposive construction rather than
a purely literal one derived from applying to it the kind of meticulous verbal
analysis in which lawyers are too often tempted by their training to indulge.
The question in each case is: whether persons with practical knowledge and
experience of the kind of work in which the invention was intended to be
used, would understand that strict compliance with a particular descriptive
word or phrase appearing in a claim was intended by the patentee to be an
essential requirement of the invention so that any variant would fall outside
the monopoly claimed, even though it could have no material effect upon
the way the invention worked.”
Declaration of Non-Infringement

Section 62. Declaration of non-infringement.

(1) Subject to subsection (4), any interested person shall have the
right to request, by instituting proceedings against the owner
of the patent, that the Court declare that the performance of a
specific act does not constitute an infringement of the patent.
• Defences
Section 37. Limitation of rights.
(1) The rights under the patent shall extend only to acts done for industrial
or commercial purposes and in particular not to acts done only for scientific
research.
(1A) The rights under the patent shall not extend to acts done to make, use,
offer to sell or sell a patented invention solely for uses reasonably related to
the development and submission of information to the relevant authority
which regulates the manufacture, use or sale of drugs.

(2) Without prejudice to section 58A, the rights under the patent shall not
extend to acts in respect of products which have been put on the market—
(i) by the owner of the patent;
(ii) by a person having the right referred to in section 38;
(iii) by a person having the right referred to in section 43;
(iv) by the beneficiary of a compulsory licence within the meaning of
section 48.
(3) The rights under the patent shall not extend to the use of the
patented invention on any foreign vessel, aircraft, spacecraft or land
vehicle temporarily in Malaysia.
(4) The rights under the patent shall be limited in duration as provided
for in section 35.
(5) The rights under the patent shall be limited by section 35A by the
provisions on compulsory licences as provided in sections
51 and 52 and by the provisions on the rights of Government or any
person authorized by the Government as provided in section 84
Section 58A. Acts deemed to be non-infringement.
(1) It shall not be an act of infringement to import, offer for sale, sell or
use—
(a) any patented product; or
(b) any product obtained directly by means of the patented process or
to which the patented process has been applied, which is produced by,
or with the consent, conditional or otherwise, of the owner of the
patent or his licensee.
(2) For the purposes of this section, “patent” includes a patent granted
in any country outside Malaysia in respect of the same or essentially
the same invention as that for which a patent is granted under this Act.