Under the patent law of Malaysia, is there any circumstance under which Reference A below could be deemed prior art to Application Z below?

	A	Z
Application Type	PCT Application	National Phase Entry in Malaysia
Filing Date	1 January 2009	1 September 2010
Priority Claim	1 January 2008; US Provisional app.	PCT, 1 March 2009. US Provisional app, 1 March 2008.
Publication Date	1 July 2009
Applicant	B	C
Contents of app	Identical	Identical
Contention	Is A deem as prior art to Z?

  Note : B ≠ C 

A. PROSECUTION OF Z’s PATENT APPLICATION IN MALAYSIA

Section 14 (2) of the Malaysian Patents Act 1983 defines the term prior art on what material is taken into account in considering whether an invention is "novel". For sake of clarity, we reproduce the same as follows:

(2) Prior art shall consist of--

(a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;

(b) the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic

            patent application.

In the context of A and Z as outlined above, we opine that A could be deemed as prior art in respect of Novelty during prosecution of Z’s application in Malaysia.

B. LITIGATION OF Z’S PATENT IN MALAYSIA

In any case if Z’s application prevails in Malaysia during prosecution and mature into a granted patent whereby A is not cited against Z and if there is litigation on Z, an example case law as provided below may apply.

In the case of SANOFI- AVENTIS (MALAYSIA) SDN BHD & ANOR v. FRESENIUS KABI (MALAYSIA) SDN BHD;

The Learned  Judge in her Judgment dated 28 June 2011 (see para. 60 below) has pointed out that in considering "novelty" it covers both material which would have been available to the skilled addressee and also material contained within unpublished pending patent applications. Whereas for considering "inventive step" the "prior art"/"state of the art" is limited to material which would have been available to the skilled addressee: unpublished pending patent applications are not to be taken into account.

For sake of clarity, we reproduce para. 60 of the said Judgment:

[60] It is to be noted that the provisions of the two Acts are effectively the same in defining what is the "prior art"/"state of the art". For the purposes of considering "novelty" it covers both material which would have been available to the skilled addressee and also material contained within unpublished pending patent applications. For the purposes of considering "inventive step" the "prior art"/"state of the art" is limited to material which would have been available to the skilled addressee: unpublished pending patent applications are not to be taken into account.

PRIOR ART (NOVELTY)

Therefore, in the context of A which claims priority to US Provisional application dated 1 January 2008; the said US Provisional application is an unpublished patent application on 1 January 2008 which matures into a PCT application on 1 January 2009.  A is with an earlier priority date as compared to Z. Therefore, A is novelty destroying to Z.

PRIOR ART (INVENTIVE STEP)

As discussed above, unpublished patent applications are not considered as prior art in respect of Inventive Step. A was published on 1 July 2009 which was after the priority date of Z (1 March 2008). Therefore, A will not be taken into account in respect of prior art when considering “inventive step”.

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