Patent Protection, Enforcement And Court System In Malaysia

PROTECTION
Question 1

What is the term of protection of a patent in Malaysia?

Answer 1
In Malaysia, a Patent last for twenty (20) years counted from the date of filing.

Question 2
Is it possible to extent the lifetime of a patent?

Answer 2
No.

ENFORCEMENT

Question 1
What are the types of patent enforcement action are available in Malaysia?

Answer 1
§ Ex-parte injunctions (Anton Piller Orders and Mareva Injunctions);
§ Interlocutory injunction;
§ Permanent Injunction;
§ Damages and
§ Delivery up of the infringing goods by the defendant.

Question 2
How can the patent owner most effectively make his point to stop an infringement?

Answer 2
Obtain an injunction.

Question 3
Are protective orders available in Malaysia?

Answer 3
Yes.

Question 4
Does the Malaysian patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?

Answer 4
No.

Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?

Answer 5
Possible. Time frame for an inter parte is between 2 – 4 months. If ex parte, than it would be heard urgently in a week or two.

Question 6
Is it possible to seek seizures / inspections of suspect goods?

Answer 6
Yes.

Question 7
How long would a patent infringement / patent invalidation case take? At typically what cost?

Answer 7
1. Infringement action duration 24 – 36 months.
2. Invalidation action duration 24 – 36 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.

Question 8
How are damages / royalties assessed?

Answer 8
Plaintiff’s loss of profits or defendant’s account of profits.

Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Malaysia?

Answer 9
Yes. Only for a claim for costs.

COURT SYSTEM

Question 1
Briefly describe any cases of patent invalidation or patent infringement in Malaysia?

Answer 1
MyIPO has until now not allowed a third party to inspect and to obtain copies of any documents other than the granted patent specification themselves, unless there is written consent from the patent owner. The stand taken by MyIPO is that any communication between the applicant and MyIPO, other than the granted specification, should remain confidential, even after grant of the patent.

In this case, the applicant submitted that the written consent from the patent owner would only required for pending patent applications, as the same were confidential but not for granted patents. The fact that the patent has been duly granted shows that the element of confidentiality no longer exists and therefore a third party should be entitled to inspect the file at the Registry and to obtain the case history and any relevant extract. It was also argued that if Parliament intended to restrict public access only to the granted specification, then the said restriction would have been specified in the Patents Act.

On principles of statutory interpretation, it was submitted that if a statute is clear and unambiguous, a literal interpretation should be taken of the words in the statute. In this case section 34(1) clearly provides that a patent file can be inspected and extracts can be obtained as soon as the patent application proceeds to grant.

Based on these submissions the Court granted the application.

This is a positive development as far as the Malaysian patent regime is concerned, as in any litigation concerning the granted patent; the prosecution history can now be brought up to show whether concessions were made by the applicant to MyIPO, which will be a factor taken into account by the court in construing the claims.


Question 2
How efficient are the courts in disposing IP litigation cases in Malaysia?

Answer 2
Reasonably efficient.

Question 3
Are the judges technically qualified?

Answer 3
No.

Question 4
Do the courts rely on precedent cases decided in foreign countries?

Answer 4
Yes, United Kingdom and Australia.

Question 5
How are foreigners treated by the courts in Malaysia?

Answer 5
Same as locals.

Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?

Answer 6
2 – 4 years.

Question 7
What step(s) must be taken to appeal a court decision in Malaysia?

Answer 7
A notice of appeal is filed within 30 days from the date of the decision at the Court of Appeal.