Enforcement through the courts

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).

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