The application and registration numbers for patents and designs in Malaysia in 2018 are healthy and generally trending upward. However, the proportion of new filings from local applicants has somewhat decreased in recent years. As the Malaysian economy is primarily export-oriented, many local applicants remain focused on securing patent protection outside of Malaysia. There is continued strong interest in Malaysia from overseas, albeit with many large corporate applicants focused more on quality than quantity of applications.
2018 was another quiet year on the statutory front for Malaysian patents and design, with no legislative changes. The most significant change was the opening of a new patent prosecution highway (PPH) pilot programme with the China National Intellectual Property Administration (CNIPA) on July 1 2018.
The PPH is an available option to expedite prosecution of Malaysian patent applications. With this latest addition, the Intellectual Property Corporation of Malaysia (MyIPO) now has PPH agreements with three foreign patent offices, namely, the Japan Patent Office (JPO), the European Patent Office (EPO) and CNIPA.
Under the PPH, a patent applicant may request accelerated examination by MyIPO based on favourable examination results of a corresponding JP, EP, CN or PCT application by the JPO, EPO or CNIPA.
After the PPH request is filed, MyIPO will review the request and issue a decision (to accept or reject) on the request within two weeks. If accepted, the Malaysian application will be allocated to an examiner for examination. Any office action will be issued within three months. The applicant must respond within two months. Provided the application as filed with the PPH request, or as amended in response to the office action, meets all requirements, the application will proceed to grant. A final decision on grant should be obtainable within six months of submitting the PPH request.
Apart from these three PPH programmes, the options for applicants seeking to expedite prosecution of their patent applications include modified examination, ASPEC and expedited examination. The wide range of options is showing good results, based on the higher numbers of patents granted by MyIPO in recent years.
In mid-November 2018, MyIPO's online filing system was shut down temporarily. A month later a totally new online platform, IPOnline2U, was quietly introduced. The old online filing system was essentially a one-way process for agents to file applications and other prosecution documents. The new system is geared towards two-way communication of information and documents. This requires users to actively monitor their inboxes and download items such as office actions and certificates.
While the new platform shows much promise in terms of speed and functionality, there is a long laundry list of things that need fixing from the perspective of professional representatives. Among the more controversial changes is the elimination of the earlier prepaid accounts from which deductions of official fees could be conveniently made. The payment process now requires users to make payments via bank transfer, or in the future credit card.
The Malaysian Intellectual Property Association (MIPA) has been actively engaging with MyIPO, holding monthly meetings to provide feedback from its members on the issues they face and changes they desire. The reintroduction of prepaid accounts has been one of the core demands from the profession, though it remains to be seen whether this payment mechanism can be brought back in the future.
The Malaysian courts of all levels have continued to churn out decisions on IP matters at an impressive pace.
Following the well-known SKB Shutters case, another local patent dispute - Spind Malaysia v Justrade Marketing - reached Malaysia's Federal Court, this time to answer questions of law on the proper approach to be taken for the assessment of inventive step.
In the original High Court case, the plaintiff as patent owner sued the defendants being their former marketing agent and consultant, for patent infringement in respect of a competing product. The defendants counterclaimed for invalidation of the patent. Following trial, the High Court decided that the patent was invalid for lack of invention, novelty and inventive step. The issue of infringement then did not need to be decided.
The plaintiff appealed, and the Court of Appeal unanimously dismissed the appeal, having concluded there was no cogent reason to disturb the specific findings of the learned trial judge that the invention was not new and lacked inventive step in particular with reference to an earlier-published United States patent.
The plaintiff sought leave to appeal to the Federal Court, and leave was granted in respect of the following three questions of law:
Question 1 – Whether for the purpose of considering whether a patented invention is inventive (or not obvious), the court is required to apply and carry out the four-step test from the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd (or more commonly known as the Windsurfing test)?
Question 2 – Whether there is a distinction to be drawn between determining the "claimed features" of the claims of a patent (for the purposes of assessing novelty and infringement) and determining the "inventive concepts" of the invention in the patent (for the purpose of assessing inventiveness)?
Question 3 – If the answer to Question 2 is in the affirmative, whether an assessment of the "inventive concepts" of the invention is to be confined to just the claims of the patent or should be construed from reading the patent specification as a whole and with the common knowledge of the skilled person?
As a general principle the Federal Court does not determine academic questions. However, this general rule is not without exceptions for example, in order to correct and clarify the position of the law stated in the judgment of the Court of Appeal. The paramount consideration is that the matter must involve a question of general principle decided for the first time or a question of importance upon which further argument and a decision of the Federal Court would be to public advantage. The court was of the view that the questions before them were of such a nature. It was also noted that SKB Shutters was the only Federal Court case decided so far on the requirement of an inventive step. Further clarification and guidance in this area of law are required. Hence, it was still appropriate to answer the questions of law, even though the invalidity of the patent would remain unaffected.
Before turning to decide on the applicability of the Windsurfing test in Malaysia, the court conducted a review of the history of and rationale for having an inventive step requirement.
Lack of inventive step first emerged in the case law as a separate ground of invalidation, distinct from novelty, in the United Kingdom in the late 19th century under the rubric of "lack of subject matter". It was first incorporated into statute in the UK's Patents and Designs Act 1932, which recognised a ground of revocation that "the invention is obvious and does not involve any inventive step having regard to what was known or used prior to the date of the patent". Today, the statutory requirement of an inventive step in Section 15 of the Malaysian Patents Act 1983, as a pre-condition to be met for the grant of a patent, is to be construed in line with the relevant legislation in Australia, the United Kingdom and Singapore.
As for the rationale, the court referred to the High Court of Australia's decision in Lockwood that the requirement reflects a balance of policy considerations in patent law – to encourage and reward inventors, without inhibiting improvements of existing technology by others.
The court also emphasised that an inventive step is a requirement distinct from, and in addition to, novelty. Logically, the question of inventive step only arises where the invention is novel so that it differs in some identifiable respect from the prior art.
Next, the court briefly set out the facts of the Windsurfing case and made a review of case law to assess judicial attitudes to the four-step test that was derived from it. Overall, the Windsurfing test was seen as useful. It provided a structured approach to inventive step and avoided going straight to the issue of obviousness by reference to a general impression as to the evidence as a whole. All the same, it was noted that Singapore's Court of Appeal had expressed some reservations, pointing out that the test had been criticised as over-complicating the statutory definition. Thus, the test was regarded as no more than a useful guide.
Ultimately, the Federal Court's decision on Question 1 was crafted in the following terms:
We find merit in the Windsurfing test as a good starting point for analysing the issue of inventive step. The structured test offers a useful framework for considering the various factors involved in the assessment, and provides some clarity of reasoning and consistency of approach. That said, we agree with the caution noted in First Currency Choice [by the Singapore Court of Appeal] against over-elaborating the statutory requirement. While the four-step test will be a helpful guide in most cases, the individual steps should not be taken as set in stone and mechanically applied, especially where the evaluation of a straightforward factual scenario may be derailed by ancillary debates on niceties. The court must always bear in mind that the ultimate question, expressed in section 15 of the Patents Act 1983 and contained in the fourth and final step, is simply whether the invention is obvious to a person having ordinary skill in the art, having regard to the prior art.
The reformulation in Pozzoli does not purport to alter the basic principles in the Windsurfing test. Properly understood, we consider the relative simplicity of the original Windsurfing test sufficient and advantageous, and thus find it unnecessary to adopt the restated version of the test in Pozzoli.
As for Questions 2 and 3, after a review of the relevant case law, the court was left in no doubt that the inventive concept was to be distilled from the claims, not generally from the specification as a whole. Further, the court rejected a suggestion that the "problem and solution" approach be adopted for the purposes of determining the inventive concept. Based on the requirement of Section 12 that defines the meaning of invention in terms of problem and solution, the Federal Court was of the view that applying the same approach to inventive step under Section 15 would conflate two distinct statutory requirements.
The Federal Court's decision on Questions 2 and 3 was thus framed in the following terms:
Based on the discussion above, we answer Question 2 as follows: in determining both the scope of the claims for assessing novelty and the inventive concept for assessing inventiveness, the court must look at the claims in the patent. However, the inventive concept is not one and the same as the claims; it is the core or essence of the invention.
We answer Question 3 in the negative. The inventive concept of an invention is to be assessed by reference to the claims. It cannot be a vague or generalised concept excluded from the claims but derived from the specification as a whole.
Overall, this careful guidance from Malaysia's apex court is to be welcomed. It provides a clear signpost to the route to be taken in most cases when assessing one of the most difficult and contentious aspects of patentability.
Dave A Wyatt is an executive director and head of patents and industrial designs at Henry Goh. He is a European patent attorney and a registered Malaysian patent, industrial design and trademark agent. Dave has given presentations on Malaysian IP law and practice to local institutions of higher learning, business councils and industry and professional associations, as well as in public educational seminars. Although his practice has focused on patent and design prosecution, as patent disputes and litigation have been increasing in Malaysia in recent years he has come to be in demand as a patent attorney expert witness.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice.