Patent Systems and Enforceability

Question 1
What type of examination does your patent office employ (full substantive examination, formalities only, etc.)? If examination is substantive, how experienced/ trained are the examiners?

Answer 1
The patent examination procedure in Malaysia is carried out by the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO). The examination of a patent application is divided into 2 stages; preliminary examination (or formalities examination) where the patent application is examined as to form and substantive examination where the patent application is examined to substance and an applicant has a choice of either filing a request for a full or modified substantive examination.

Preliminary examination commences soon after the patent application has been filed at MyIPO. Substantive examination on the other hand commences after the applicant files a request for substantive examination and this request has to be made within a prescribed period as prescribed by the Malaysian Patent Act. The applicant may choose to defer the substantive examination by filing a request for deferment before the expiration of the prescribed period. With this request, the prescribed period for filing a request for substantive examination will be extended and no further extension of the same is allowed thereafter.

In the preliminary examination stage, the Registrar examines the application and determines whether it complies with formal requirements designated by the regulations of the Patents Act. In the substantive examination stage, if the applicant requests for a full substantive examination, the examiner will examine the application for patentability on its own merit. If the applicant requests for a modified substantive examination, the Malaysian application must be amended to conform to a corresponding patent granted in the prescribed countries i.e. EPO, USA, UK, AU, JP or KR. In such a situation, the examiner will examine the application for formalities only as the substantive examination has already been conducted in the patent office which grants the corresponding foreign application.

There are currently about 70 to 80 patent examiners, appointed after the corporatisation of the Patent Office in 2004. Most of the senior examiners have been trained in EPO and some in USPTO and JPO.

Question 2
In the past year, about how many patent infringement suits have been filed in your country? In the past five years? We’re looking for an order of magnitude response, e.g., 10, 100, 1000?

Answer 2
We would estimate that there might be about 60 patent infringement suits filed in Malaysia last year. Up to 35 of these may have been settled at the pre-trial stages. In the last 5 years we estimate about 170 suits would have been filed and about 40 would have gone through a full hearing. Our Firm is currently undertaking 6 litigation suits on patents in Malaysia.

Question 3
Overall, how experienced is your court system with patent infringement matters? Are judges technically competent? Are judges required to have experience before being seated (can they come directly from law school to the bench)?

Answer 3
The courts in Malaysia rely on precedent case laws and if not available, the court will rely on English Laws as well. The judges are competent in interpretation of the law but on their own, they may not be very competent. Having said that, there have been a few decisions that were sound and rational.

Question 4
Do you have a special IP court? If so, what cases does it handle?

Answer 4
Yes. In year 2007, the Intellectual Property Court in Malaysia was established and it consists of 15 Sessions Courts in every state to handle intellectual property cases and 6 High Courts in the 6 states with the most number of intellectual property infringement cases. For more details on this matter, please visit www.myipo.gov.my

Question 5
Do your courts rely on technical experts? If so, what is the extent of the role of the technical experts – do they just provide expert advice to judges who render the final decision, or do the experts in effect render the court’s decision, also?

Answer 5
Yes, courts in Malaysia do rely on technical experts to provide expert advice to judges who render the final decision.

Question 6
Do your courts treat all parties equally or is there a bias toward infringers or patent holders, local or foreign entities, plaintiffs or defendants, etc.?

Answer 6
In our view the courts treat all parties equally with no special bias towards any party.

Question 7
Is invalidity a defense to infringement?

Answer 7
Yes, however the burden of proof will be heavier on the party alleging invalidity. The court can close request patentees to limit their claim scope.

Question 8
Is a speedy trial possible? Is it easy to obtain? Does the outlook for a speedy trial change if invalidity is invoked?

Answer 8
A speedy trial is possible and a judge could be requested for an early hearing date. It is not easy to obtain a speedy trial, as the judge has to be convinced of the urgency of the matter especially where damages are irreparable etc.

Question 9
What is the average duration of a patent suit in your country? Again, we’re looking for an order of magnitude response, e.g., 1 year, 5 years, 10 years?

Answer 9
The average duration of a patent infringement suit in Malaysia is about 12 to 24 months if heard in the IP court.

Question 10
What is the average cost of filing and trying a patent infringement suit? This is another question where an order of magnitude response is sufficient, e.g., 10,000USD, 100,000USD, or 1,000,000 USD.

Answer 10
It depends on the complexity of the case and the amount of work and time involved.

Question 11
What are the maximum damages that can be awarded to a patent holder? Again, order of magnitude response is sufficient, e.g., 10,000 USD, 100,000 USD, or 1,000,000 USD, etc.

Answer 11
There are no maximum limits to damages that can be awarded, as the court will compensate the plaintiff to the amount of loss he has managed to prove.

Question 12
Does your patent system allow for provisional rights? If so, on what basis?

Answer 12
As of now, patent applications filed in Malaysia are not published in printed form. After 18 months from the priority date, the bibliographic details of the application are open for public inspection. This public inspection of a pending application is a form of provisional protection, wherein, upon grant, the patent owner may claim damages from parties that have used of the invention prior to grant without authorization from the patent owner. The international publication of a PCT application that designates Malaysia has an equivalent effect in terms of provisional protection. For more information, please visit the patent office website at www.myipo.gov.my

Question 13
What is the predictability of court decisions?

Answer 13
The court decisions are reasonably predictable in respect of clear cases. It is equivalent to the English courts (as a comparison).

Question 14
Are court decisions easy to enforce?

Answer 14
The decisions are easy to enforce within jurisdiction of Malaysia.

Question 15
Are preliminary injunctions and/or seizure actions available? Easy to obtain? Easy to enforce?

Answer 15
Preliminary injunctions and/or seizure (known as Anton pillar orders) are available. There are not easily obtainable but the court would grant them if the criteria is satisfied such as an arguable case is shown and the balance of convenience favours the party applying (for an injunction) or the party can show that the infringing articles are likely to be taken out of jurisdiction (for seizure). Once granted, the orders are easy to enforce, as a party can be cited for contempt if there is any breach.

Question 16
What measures are in place to prevent importation or exportation of infringing goods? Similarly, what measures are in place to prevent infringing goods in transit from passing through the country? Have these measures been utilized, and if so, to what degree of success?

Answer 16
Pursuant to border measure provisions in Malaysia, there is a provision to restrict importation and entry of infringing goods into Malaysia. However, Border Measure only applies to goods imported and brought into Malaysia for trade and does not apply to goods in transit to another country.

Question 17
Does the system allow discovery, meaning a court sanctioned detailed examination of the other parties’ files?

Answer 17
Discovery can be an essential prayer of the preliminary injunctions discussed above.

Question 18
Does your patent law include a theory or doctrine of equivalents, meaning that inventions that are just outside of the claimed invention are considered to be covered by the claims?

Answer 18
The doctrine of equivalents is not being adapted in Malaysia. The closest equivalent to this doctrine as being adapted by the courts in Malaysia is the “purposive construction”. Otherwise a strict literal interpretation of claims is used.

Question 19
What remedies are available? Are there compensatory damages? Punitive damages? Restraining orders? Other remedies?

Answer 19
The remedies that are available are compensatory damages or an account of profits. Punitive damages are rarely awarded. The court can also grant restraining orders such as a permanent injunction.

Question 20
Does your law provide for compulsory licenses? If so, is your law compatible with GATT/TRIPS? If not, how does it differ?

Answer 20
Sections 48 until 54 of the Patents Act provide provision on compulsory licenses. The provisions in the Malaysian law are compatible with GATT/TRIPS. Kindly refer to www.wto.org or www.wikipedia.org for more information.

Question 21
What is the date of latest substantive amendments to the Patent Law.

Answer 21
The latest substantive amendments to the Malaysian Patents Act 1983 came into force on 16th August 2006. For more clarifications visit the Patent Office website at www.myipo.gov.my

Question 22
Is an English translation of the latest version of the Patent Law available?

Answer 22

Question 23
Is there likely to be a change in Patent Law in the near future?

Answer 23
Yes, the Patents Act 1983 will be amended in the near future to include clearer provisions on biotechnology and a depository library for micro-organisms. For more clarifications visit the Patent Office website at www.myipo.gov.my

Question 24
Does your patent law allow patents for business methods or software?

Answer 24
Business method or software inventions, per se, are not patentable. However, if a business method or software invention is provided with a technical solution to solve a technical problem, the invention is patentable subject to the novelty, inventiveness and industrial applicability requirements.

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