Malaysia Q&A

The minimum requirements for securing a filing date (and priority date) of a Malaysian patent application to be issued by the Malaysian IP Office (MyIPO) are: a) the name and address of the applicant(s), b) the name and address of the inventor(s), c) a patent specification comprising a description, claims and any necessary drawings; and d) the country and filing date of any earlier application whose priority is claimed. It is preferable, although not essential, to file the following additional information and documents with the initial application; e) the serial number of any priority application and the symbol of the International Patent Classification (IPC) allocated to it (if available), f) the state of incorporation/nationality of the applicant; g) an abstract of the invention; h) an Appointment of Agent form signed by the applicant and i) if the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor(s), normally by virtue of assignment, employment or any other agreement.

For item (e), the serial number of any priority application that is not provided at the time of filing must be submitted within three months of the filing date. The other items (f) through (i) may be filed later, if necessary, during the preliminary examination that occurs soon after filing the application. An adverse preliminary examination report has a three-month response term. There is no requirement or provision for the filing of an assignment from inventor to applicant.

In order to enter the prosecution stage of a patent application, a request for substantive examination must be filed within eighteen months of the Malaysian filing date for a direct national application, and within four years of the international filing date for a PCT national phase application. There are two options: Normal Substantive Examination and Modified Substantive Examination.

Under Normal Substantive Examination, MyIPO will conduct its own search and substantive examination of the application, assisted whenever possible by the results of any search and examination of the same invention in recognized foreign juris-dictions. For this purpose, the request for normal substantive examination must be accompanied by (i) the filing details of all related patent applications made in Australia, the United Kingdom, the European Patent Office, Japan, Korea, the United States and under the PCT; (ii) the serial numbers of any patents granted on those applications; and (iii) any available search and examination results of those applications including reports prepared under the PCT.

Certified English translations are required for any documents not in English. In current practice, an Examiner will sometimes proceed to conduct Normal Examination without waiting for the above information or materials to be submitted. A deliberate failure to comply with the requirement may render the patent liable to invalidation. The requirement is not an ongoing one, but an Examiner may call for further information or documents to be filed in the course of the examination.

A request for Modified Substantive Examination may only be filed when a corresponding Australian, European, United Kingdom, Japanese, Korean or United States patent has been granted for the same invention. The request for Modified Substantive Examination must be accompanied by a certified copy of the foreign patent relied on and, if the patent is not in English, a certified translation thereof into English. The description, claims and drawings of the Malaysian application must also be brought into substantial agreement with those of the granted foreign patent. Under modified substantive examination, the application under-goes a simplified examination process. Modified Examination can only be based on a single foreign patent.

Malaysian patent applications are examined generally in filing date order. Filing a request for examination early will not necessarily result in earlier examination. In the case of Normal Substantive Examination, applicants are usually encouraged or required by an Examiner to amend their application for substantial conformity to any corresponding foreign patent granted in one of the previously-mentioned countries.

Upon successful completion of the substantive examination, a Clear Examination Report will be issued. The application will normally proceed to grant shortly after issuance of this clear report. Effective from 01 June 2016, if an application proceeds directly to allowance without the issuance of any examination report, the following shall apply. The applicant is allowed a term of two months for the filing of any voluntary amendment and a term of three months for the filing of any voluntary divisional application. These terms run from the mailing date of the clear report and are not extendible. The grant of the patent will be held in abeyance pending their expiry, unless the applicant specifically informs MyIPO to proceed immediately with grant.

The term of protection is 20 years calculated from the Malaysian filing date. This term of protection is non-extendible.

Annual renewal fees are payable onlyafter grant of the patent. The first renewal fee is due one year from the date of grant. The payment of renewal fee is a yearly exercise.

The High Court of Malaya in Kuala Lumpur has delivered a judgement on 14 November 2018 relating to the trial of Kingtime International Limited (i.e. Plaintiff 1) and Gryphon Energy (Asia-Pacific) Sdn. Bhd. (i.e. Plaintiff 2) vs Petrofac E&C Sdn. Bhd. (i.e. Defendant), which dealt with the principles of interpretation of claims in a patent infringement matter.

Kingtime International Limited is currently the patent owner of two granted Malaysian patents i.e. MY-144898-A and MY-145004-A, related to Mobile Offshore Production Unit" (i.e. "MOPU"). A license for both Malaysian patents is granted to Gryphon Energy (Asia-Pacific) Sdn. Bhd. Both Kingtime International Limited and Gryphon Energy (Asia-Pacific) Sdn. Bhd had filed an infringement suit against Petrofac E&C Sdn. Bhd for the alleged infringement of two Malaysian patents.

Both Kingtime International Limited and Gryphon Energy (Asia-Pacific) Sdn. Bhd have claimed the following matters:

1. Petrofac E&C Sdn. Bhd. has infringed Claim 1 of the Malaysian patent no. MY-145004-A by making, offering for sale, selling, and using MOPU in an oil field in Sepat (i.e. "Sepat MOPU") located off the coast of Terengganu.

2. Petrofac E&C Sdn. Bhd has infringed Claim 13 of the Malaysian patent no. MY-145004-A and Claim 1 of Malaysian patent no. MY-144898-A by using a method to install the Sepat MOPU.

In defence by way of counterclaim, Petrofac E&C Sdn. Bhd applied to invalidate both Claims 1 and 13 of the Malaysian patent no. MY-145004-A and Claim 1 of Malaysian patent no. MY-144898-A.

During the trial, expert witnesses were called in by both Plaintiffs 1 and 2 and the Defendant to give evidence to assist the High Court.

One of the Plaintiff's expert witness testified that in 2010, Petronas Carigali Sdn. Bhd (i.e. Petronas) wished to develop an early production system or EPS in Sepat. Petronas has since prepared tender specification for Sepat EPS. Petronas was only interested to work with four companies including the Defendant Plaintiff 2 negotiated with the Defendant to submit a joint bid for the tender. During the negotiations, the Defendant had been informed that the requirements of the tender fell within the scope of the two Malaysian patents (which were then pending registration). Plaintiff 2 and the Defendant then entered into a Confidentiality and Non-Disclosure Agreement". However, the negotiations failed and the Plaintiff 2 did not participate further into the tender. The Defendant was awarded the Sepat EPS contract by Petronas. The Defendant claimed that they had submitted an alternative proposal to Petronas based on the tried and tested Cendor MOPU (Cendor Field Development Project – an earlier project successfully completed by the Defendant in September 2006). The Defendant claimed that the alternative proposal was not based on the two Malaysian patents on trial and was accepted by Petronas.

The essential integers of the three Malaysian patent claims provides the following:

1. The "wellhead deck" or WHD is "removably attached" to the hull and/or deck frame and

2. The sub-sea conductor frame (SSCF) is "removably attached" to the mat or at least one connecting leg.

The Defendant has relied on five US Patents which have the words "removably attached" which refer to the mode of attachment for objects. The Defendant's expert witness has testified that the "wellhead deck" or WHD and sub-sea conductor frame (SSCF) are attached to the Sepat MOPU by welding (which is commonly used in the construction industry), and submitted that there is nothing novel regarding the three Malaysian patent claims. The Defendant further opined that if the words "removably attached" in the three Malaysian patent claims mean that the WHD can be removed from the Sepat MOPU by cutting the welds, then the three Malaysian patent claims have been anticipated by the Cendor MOPU. The Cendor MOPU predated the priority date of the two Malaysian patents. The Defendant concluded that the inventions in the three Malaysian patent claims are not new because they have been anticipated by Cendor MOPU.

The Plaintiff's expert witness has testified that the WHD and SSCF are "removably attached" if they have been designed to have the ability of being removed on some occasion during their design life. The Court was unable to accept the opinion of the Defendant's expert witness on the meaning of the term "removably attached" in the three Malaysian patent claims. According to the Plaintiff's expert witness, the WHD and SSCF are "building blocks" which are initially added to the offshore unit and installed as one unit but the WHD can later be detached from the offshore unit and be used independently by tying the WHD to other production units. The High Court has accepted the opinion of the Plaintiff's expert witness on the meaning of "removably attached" in the three Malaysian patent claims. (sentence incomplete?)

The High Court has relied on three tests to decide the patent infringement issue, i.e. the Essential Integers Test, the Improver's Test, and the Actavis Test.

By applying the Essential Integers Test, the High Court decided that the Sepat MOPU has all the essential integers of all three Malaysian patent claims. Based on the Improver's Test, the High Court has decided that the Sepat MOPU does not have a material effect on the way the inventions in the three Malaysian patent claims work and satisfied that the Defendant's design, fabrication, installation, and use of Sepat MOPU has infringed all three Malaysian patent claims. By applying the Actavis Test, the High Court decided that the Defendant's design, completion, installation and use of Sepat MOPU has infringed all three Malaysian patent claims.

Therefore, in summary, by applying the three Tests and based on the Plaintiff's expert witnesses opinions, the High Court has decided that the Defendant's use of the method of construction, installation, and operation of Sepat MOPU has infringed Claim 1 of Malaysian patent no. MY-144898-A and Claim 13 of Malaysian patent no. MY-145004-A within the meaning of Section 36(1)(a) of the Patents Act 1986 (exploitation of the patented process) and the Defendant's making, offering for sale, and use of the Sepat MOPU has infringed Claim 1 of Malaysian patent no. MY-145004-A. The decision is under appeal by the Defendant.

While the Essential Integers and Improver Tests have judicial precedent, having been upheld in prior Court of Appeal decisions, there is no previous occasion in which the Actavis Test has been applied in Malaysia. The Actavis Test developed by the United Kingdom's Supreme Court in 2017 is considered to be the UK's first application of a doctrine of equivalents. Opinion in the Malaysian patent and legal profession is divided on relevance of the Actavis Test in Malaysia. However, it appears the majority view is that Malaysia should stick with purposive construction and not extend the scope of protection beyond the actual claim language. The policy and statutory background in Europe that contributed to the UK's move towards applying a doctrine of equivalents does not apply in Malaysia. Singapore has also recently rejected the application of Actavis in the case Lee Tat Cheng v Maka GPS Technologies Pte Ltd ([2018] SGCA 18).

Overall, in our opinion, the Kingtime case only called for interpretation of the term "removeably attached". The Malaysian High Court managed to decide that issue based on the expert evidence and application of the basic principles of purposive construction. It is questionable whether the alleged infringement exhibited any variant that needed to be considered separately after claim construction.

Infringement occurs when unauthorized exploitation of the patented invention takes place. It is worth noting that there is no contributory (or indirect) infringement of a Malaysian patent.

Infringement proceedings must be taken by the patent owner within five years of the act(s) of infringement (two years in the case of a utility innovation certificate).

For a patent granted in respect of a product, infringement consists of:

i) making, importing, offering for sale, selling or using the product; and

ii) stocking such product for the purpose of offering for sale, selling or using.

For a patent granted in respect of a process, infringement consists of using the process; and doing any of the acts set out under (i) and (ii) above in respect of a product obtained directly by means of the process.

The Patents Act 1983 and the Patents Regulations 1986 govern patent protection in Malaysia.

Patents typically cover any inventions ranging from a process, method, product of manufacture, composition of matter and others. This question can also be easily answered by noting what inventions that cannot be patented which is covered in the next question 10.

An aggrieved person may seek invalidation of a granted Malaysian patent by way of application to the Malaysian High Court, or by way of counterclaim in an infringement action, on any of the following grounds:

a) the claimed invention is not patentable;

b) the description or claims do not comply with the Patents Regulations;

c) any drawings necessary for understanding the claimed invention were not furnished;

d) the right to the patent does not belong to the person to whom the patent was granted; and

e) incomplete or incorrect information (on corresponding foreign cases) has been deliberately provided or caused to be provided in connection with a request for normal substantive examination.

Any declaration of invalidity may be partial or full, and is effective back to the date of grant. The patent is therefore treated as never granted to the extent it is declared invalid.

An invention is defined as an idea of an inventor which permits in practice the solution to a specific problem in the field of technology (Section 12 of the Malaysian Patents Act 1983).

An invention is only patentable if it is new, involves an inventive step and is industrially applicable (Section 11 of the Malaysian Patents Act 1983). An invention is regarded as "new" if it is not anticipated by "prior art" and "prior art" is simply defined to mean everything disclosed to the public anywhere in the world by oral disclosure, by written publication, by use or in any other way, prior to the priority date of the patent application claiming the invention. An invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the prior art, such inventive step would not have been obvious to a person having ordinary skill in the art. The invention is also assessed by its capability of industrial application if it can be made or used in any kind of industry.

There are categories of inventions which are not patentable as listed under Section 13 of the Malaysian Patents Act 1983 as follows:

Inventions consisting of any of the following are expressly excluded from patentability:

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 microorganisms, microbiological processes and the products of such microbiological processes;

c) schemes, rules or methods for doing business, performing purely mental acts or playing games; and

d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.

Nevertheless, the exclusion (d) above is without prejudice to the patentability of a novel medical use of any known substance or composition. In practice, claims of first and second medical use category are normally accepted during prosecution.

Patent rights are only enforceable by the patent owner by way of a civil action in the Malaysian High Courts. There are presently no administrative proceedings available for the enforcement of patent rights. However, there is a specialised Intellectual Property High Court in Kuala Lumpur, Malaysia and most civil actions for patent infringement are filed here. However, there is no legal prohibition for a patent owner to institute a civil action in the High Courts in other states of Malaysia if the parties reside outside Kuala Lumpur.

The format of a patent infringement trial is the same as any general civil suit trial. Due to the nature of patent infringement in Malaysia, where substantial dispute as to facts is inevitable, civil action is generally brought by way of a writ of summons together with a statement of claim setting out the material facts of the claim made and the remedies sought. Malaysia adopts the common law system of pleadings where the parties are required to exchange pleadings within the prescribed time frame. After being served with the statement of claim, the defendant must file his or her defence and counterclaim (if any) within the prescribed period, followed by a reply by the plaintiff if necessary. Where the defendant disputes the validity of the patent, he or she must include the particulars of objections, setting out the grounds of objections clearly in his or her defence.

There is no trial by affidavit in Malaysia. Parties are required to prove their case by calling witnesses who would state their cases in the first stage of trial, namely examination in chief, by way of written witness statements. However, all witnesses must be present in court during the trial for cross-examination. Experts Witnesses are invariably called to assist the court during a patent suit. In fact, expert opinions on prior art and the technical aspects of the case are indispensable in a patent trial.

Malaysia does not have a jury system. Hence, all disputed issues are decided by a single judge. A trial will typically last between 1 to 3 weeks, depending on the complexity of the matter and the issues in dispute. Depending on the complexity of the matter, a patent infringement law-suit typically takes about 9 to 18 months while proceedings in the appellate court may take about 6 to 12 months.