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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

There are two forms of protection available under the Patents Act:

  • Patents – an invention is patentable if it is new, involves an inventive step and is industrially applicable.
  • Utility innovation – an innovation is eligible for a utility innovation certificate if it is new and industrially applicable.

What are the limits on patentability?

The following are excluded from patentability:

  • discoveries, scientific theories and mathematical methods;
  • plant or animal varieties or essentially biological processes for the production of plants or animals, other than manmade living microorganisms, microbiological processes and the products of microorganism processes;
  • schemes, rules or methods for doing business, performing purely mental acts or playing games; and
  • methods of treatment for humans or animals by surgery or therapy, and diagnostic methods practised on humans or animals.

However, these restrictions do not apply to products used in any such methods.

To what extent can inventions covering software be patented?

A computer program claimed by itself or as a record on a carrier is not patentable, irrespective of its content. This typically remains true where a computer program is loaded onto a known computer. However, if the subject matter as claimed makes a technical contribution to the prior art, patentability should not be denied merely on the ground that a computer program is involved in its implementation. This means, for example, that program-controlled machines and program-controlled manufacturing and control processes should normally be regarded as patentable subject matter. Further, it follows that, where the claimed subject matter is concerned only with the program-controlled internal working of a known computer, the subject matter could be patentable if it provides a technical effect.

To what extent can inventions covering business methods be patented?

Under Malaysian patent law, business methods are excluded from patentability.

To what extent can inventions relating to stem cells be patented?

The Patents Act does not explicitly exclude the patentability of stem cell-related inventions. However, biological processes for the production of plants or animals are excluded from patentability. 

Are there restrictions on any other kinds of invention?

Inventions that would be contrary to public order or morality are excluded from patentability.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A one-year grace period is available if the disclosure:

  • occurred within one year of the date on which the patent application was submitted; and
  • was due to or a consequence of:
    • acts committed by the applicant or its predecessor in title; or
    • any abuse of the rights of the applicant or its predecessor in title.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

No patent opposition procedure is available in Malaysia. 

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

A patent can be challenged only in the courts.

How can patent office decisions be appealed in your jurisdiction?

Anyone aggrieved by a Patent Office decision or order may appeal to the court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

On average, it takes four to five years for a patent to be granted. The cost of filing a patent application with 10 claims through to grant (based on the assumption that no adverse examination report is issued) is approximately $2,000, which includes professional charges and relevant official fees. Additional costs will be incurred if an adverse examination report is issued. These costs may vary significantly depending on the complexity of the issues raised and the actions required.

It is possible to shorten the timeframe for grant by filing a request for expedited examination, which can shorten the timeframe to within two months of the filing and approval of the request for expedited examination. Permission to file a request for expedited examination must be obtained and accompanied by a statutory declaration outlining the reasons for the request. The registrar will accept the following reasons:

  • The invention is in national or public interest.
  • Infringement proceedings are taking place or there is evidence of potential infringement with regard to the patent.
  • The applicant has already commercialised the invention or plans to commercialise it within two years of the filing date of the request for expedited examination.
  • Grant of a patent is a condition to obtain monetary benefits from the government or other institutions recognised by the registrar.
  • The invention relates to green technologies that will enhance the quality of the environment or conversion of energy resources.
  • Other reasonable grounds support the request.

Once approved, a request for expedited examination must be filed within five working days of the date of approval. An examination report will be issued within a month of the date of request, and if a clear report is issued, the application proceeds to grant. In the event of an adverse examination report, only one opportunity is given to respond to the examination report. If the examiner is unconvinced by the response, the application will revert to the normal substantive examination procedure.

Apart from the expedited examination option, the modified substantive examination option and the Patent Prosecution Highway (based on the examination work of the Japan Patent Office) is also available, as is the Association of Southeast Asian Nations (ASEAN) Patent Examination Cooperation, which is a regional patent search and examination results sharing programme adopted by nine participating ASEAN countries.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Infringement suits
Civil patent infringement suits allow patent owners to claim various types of relief against infringers (eg, injunctions, full discovery, general damages, costs and delivery up). Where required, patent owners can apply to the high court for interim injunctions or even an Anton Piller order, which allows entry into the infringer’s premises in order to take possession of all incriminating evidence for use during the patent infringement suit.

Cease and desist letters
Before filing a civil suit, patent owners typically issue a clear warning to the alleged infringers by way of a cease and desist letter, to alert them of the potential civil suit and attempt to resolve the issue without court involvement. As some alleged infringers are ‘innocent’ infringers – that is, they are unaware of the infringement – cease and desist letters allow for prompt resolution in these types of case.

Public warning notices 
Another strategy employed by patent owners is the publication of public warning notices in leading newspapers. Public warning notices are used to notify the public of the existence of the particular patent, its claims and that the owner is asserting its right to the invention and ability to exploit the invention, as set out under the Patents Act 1983. This serves as a public notice and, once published, potential infringers cannot claim to have been unaware of the existence of the patent in question. 

What scope is there for forum selection?

Infringements of a Malaysian patent must be filed with the high courts. The Courts of Judicature Act 1964 governs which high court a claim will fall under. Malaysia has two high courts – the High Court of Malaya and the High Court of Sabah and Sarawak. The High Court of Malaya has jurisdiction in all West Malaysia states, while the High Court of Sabah and Sarawak has jurisdiction in the East Malaysia states of Sabah and Sarawak. Each state then has its own high court.

The appropriate court will depend on:

  • where the cause of action arose;
  • where the defendant(s) resides or has a place of business; and
  • the location of the facts on which the proceedings are based or alleged to have occurred.

In addition, there is a specialised Intellectual Property High Court located in Kuala Lumpur; however, this court does not take away the jurisdiction of other state high courts in relation to IP cases. The Intellectual Property High Court handles only IP cases and has shown its willingness to accept cases across all other states, with the exception of cases occurring in Sabah and Sarawak. 

Pre-trial
What are the stages in the litigation process leading up to a full trial?

The stages in the litigation process leading up to trial are as follows:

  • The proceedings are initiated by filing of a writ, together with a statement of claim.
  • If the defendant chooses to contest the claim, it must enter appearance and file its defence (sometimes together with a counterclaim for invalidation of the patent).
  • The plaintiff then files notice for pre-trial case management. The registrar calls up the matter and provides its directions to set the matter down for trial, which typically includes:
    • a statement of agreed facts;
    • a statement of issues to be tried;
    • bundle of documents;
    • concurrent evidence (for expert witnesses);
    • witness statements;
    • submissions; and
    • bundle of authorities.

On compliance with case management directions, the court will fix the trial dates.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

As the courts are increasingly interested in reducing backlogs and delays in the resolution of cases, it is now more difficult for defendants to delay proceedings, as there is typically a set timetable during pre-trial case management for the submission of deliverables.

That said, defendants can delay proceedings by requesting more time to prepare counterclaims and seek expert evidence and witnesses to the claims raised against them.

The judge has the discretion to issue an ‘unless order’, which may result in a default judgment against the defendant if it fails to comply strictly with the directions and timetables during pre-trial. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A party may challenge the validity of a patent by filing an invalidation suit against the patent in question. If the party has already been served with an infringement suit, it may respond by filing its defence and an invalidation counterclaim.

By filing an invalidation suit, the party can allege that the patent is invalid based on the criteria outlined in the Patents Act – that is, that the patent:

  • is not novel;
  • is not new;
  • has no inventive step;
  • is not industrially applicable;
  • is not an invention; or
  • is contrary to public order and morality. 

At trial
What level of expertise can a patent owner expect from the courts?

The high courts have a dedicated Intellectual Property High Court, which is presided over by a single judge, who will hear all IP cases. 

Are cases decided by one judge, a panel of judges or a jury?

Patent cases heard in the high courts are presided over by a single judge.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Not applicable. 

What role can and do expert witnesses play in proceedings?

Expert witnesses are often used in patent cases, as they have the knowhow and expertise to elaborate on the technical aspects of an issue. The courts are typically receptive towards expert evidence, as it will help them in the assessment of the case, especially in relation to specialised industries and technologies.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Malaysia does not generally recognise the doctrine of equivalents. 

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes, interim or interlocutory injunctions are available on application to the court. The following items must be considered in applying for an interim injunction:

  • There must be a genuine serious issue to be tried.
  • The court must consider where justice of the case lies – that is, the harm caused by granting the injunction and the harm caused by refusing grant, and which party would suffer greater injustice.
  • The court must determine whether damages would constitute an adequate remedy.
  • The court must consider whether there was a delay in the application for an interim injunction.

How are issues around infringement and validity treated in your jurisdiction?

If there are both infringement and validity issues, the judge has the discretion to deal with both proceedings in the same suit or may opt to deal with the invalidity proceedings first.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The courts will abide by the Patent Act and regulations. However, as Malaysia is a common law country, the courts will also consider jurisprudence from other common law countries –particularly commonwealth countries (eg, the United Kingdom and Australia) – as a point of comparison when delivering judgments.

Damages and remedies
Can the successful party obtain costs from the losing party?

Yes, although the judge has discretion regarding whether to award costs. That said, costs are normally awarded. 

What are the typical remedies granted to a successful plaintiff?

Where plaintiffs prove infringement, the court will award damages, grant an injunction to prevent further infringement and award any other legal remedies as deemed appropriate. This may include:

  • the delivery up or destruction of infringing goods;
  • reimbursement of expenses incurred; and
  • discovery of the extent of the infringing activities. 

How are damages awards calculated? Are punitive damages available?

On conclusion of the case, the assessment of damages will be calculated and a separate hearing will be held to assess the damages suffered. Damages are typically compensatory and not punitive.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

In line with Section 60 of the Patents Act, if the plaintiff proves that infringement occurred or is occurring, the court will grant an injunction to prevent infringement and any other legal remedy. The court can set the scope of an injunction; however, it will apply only to the party that is a party to the suit.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

This depends on the complexity of the case and number of witnesses involved. The proceedings may last from six to 20 days, after which the judge will deliberate and deliver his or her judgment, usually within four to 10 weeks. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

This depends on the complexity of the case, relevant evidence and the scope of the work required. On average, it costs approximately $70,000 to $200,000 to take a case through to a first-instance decision, depending on whether it is a simple infringement action or if it involves other aspects (eg, counterclaims of invalidation).

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

A losing party may appeal against a judgment or order to the Court of Appeal. The usual grounds of appeal are that the first-instance judge erred in its appreciation of the facts and did not apply the principles of law accurately. Appeals are a re-hearing and, unless otherwise narrowed down by the parties, the Court of Appeal will hear the entire case again. Appeals typically take about one-and-a-half to two years to be heard and decided.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Malaysia has another dispute resolution option in the form of the Kuala Lumpur Regional Centre for Arbitration (KLRCA), which was established in 1978. It is a non-profit, non-governmental and independent international body, which applies the United Nations Commission on International Trade Law Rules for Arbitration. The KLRCA provides a system for the mediation and conciliation of various trade and commercial disputes, including patent infringement cases.