Direct Infringement

Question 1

1.1
What is the meaning of direct infringement in your jurisdiction?
One definition : Infringement of all claim elements by a single actor results in direct infringement of that claim, for example, a) for a method claim, all steps are performed by the same entity; and, b) for an apparatus claim, all claim elements are part of a single product.

1.2
How should we draft claim that would be useful for direct infringement in your jurisdiction?

1.3
If a claim is directed towards two components and company A makes both components, is company A liable for direct infringement in your jurisdiction?

1.4
Do all claim steps have to be performed in the same country/jurisdiction for there to be direct infringement? If yes, then how should claims be drafted to get around issues of extra-territoriality?

1.5 Is indirect infringement as good as direct infringement in your jurisdiction? How likely are courts to hold a company liable for indirect infringement in your jurisdiction?


Answer 1

1.1
a) For a method or process claim, direct infringement in Malaysia is where every step in a particular independent claim has to be fulfilled if there is to be direct infringement. If it is dependent claim, every step in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement.
b) For an apparatus or product claim, direct infringement in Malaysia is where every element in a particular independent claim has to be fulfilled if there is to be direct infringement. If it is a dependent claim, every element in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement.

1.2
To draft claims that will be useful for direct infringement in Malaysia, independent claims should be drafted such that each independent claim comprises fewer elements/steps involved in a particular invention.
Corresponding dependents claims will have to be drafted to cover various embodiments of the said invention. However, it has to be noted that if fewer elements/steps per claim are drafted, care has to be taken to see that there is unity of invention.

1.3
If none of the individual components in them self are within the scope of the claim, the short answer is NO because each components has to be compared against the claim to see whether it is infringing.
However, in the event that company A assembles both components, imports, offers for sale, sells or uses or stocks for the those purposes the components as one complete product, then company A is liable for direct infringement.


1.4
As this pertains to a method or process patent, the short answer is NO. As the Patent Act provides that a product obtained directly by means of the process is infringing.
Therefore, even if part of the process, (i.e. some of the steps) is performed in another country/jurisdiction, there will be infringement if the said product is “imported, offered for sale, sold used or stocked for those purposes” in Malaysia.

1.5
The principle of indirect infringement is available in the United Kingdom by virtue of section 60 (2) of the 1977 Act that states "without the consent of the proprietor, a person supplies or offers to supply in the UK, a person other than the licensee or other person entitled to work the invention with any of the means relating to an essential element of the invention for putting the invention into effect when he knows or it is obvious to a reasonable person in the circumstances that those means are suitable for putting and are intended to put the invention into the UK".
However, there is no such provision available in Malaysia with regards to indirect infringement. In Malaysia, infringement with regards to a patent that has been granted for a product pertains to making, importing, offering for sale, selling or using or stocking for the purpose of offering for sale, selling or using the product and infringement with regards to a patent that has been granted for a process pertains to using the process or making, importing, offering for sale, selling or using a product obtained directly by means of the process (product-by-the-process or method).