MALAYSIA: FUKUYAMA’S MALAYSIAN PATENT IS REVOKED

December 1st, 2014

 

In the case of Fukuyama Automation Sdn. Bhd. v Xin Xin Engineering Sdn. Bhd. and Wong Thiam Fook, the High Court of Malaya in Shah Alam, Selangor Malaysia held that the Fukuyama’s Malaysian Patent to be lacking novelty and held that the Patent was invalid.

Fukuyama Automation Sdn Bhd. (hereinafter referred to as “the Plaintiff”), is a Malaysian company had acquired Fukuyama Netukan Co. Pte Ltd.’s Malaysian Patent No. MY-124281-A (hereinafter referred to as “the Malaysian Patent”) on 11 July 2011. The Plaintiff manufactures, sells and installs glove stripping machine.

The Plaintiff had filed a patent infringement action against a Malaysian company Xin Xin Engineering Sdn. Bhd. (hereinafter referred as “the 1st Defendant”) and Wong Thiam Fook (hereinafter referred as “the 2nd Defendant”) who is a director and shareholder of the 1st Defendant. The 1st and 2nd Defendants are collectively referred to as “the Defendants”.

Plaintiff claimed that the defendant has infringed the patent and that the Plaintiff was unable to penetrate into the Malaysian market due to the competition from the Defendants. The Plaintiff claimed that the Defendants had infringed the said Malaysian Patent by producing, manufacturing, supplying and offering the apparatus which consists the similar features.

The Plaintiff had submitted that the invention of apparatus for peeling off thin film material works by a mold is dipped into a liquid compound (which can be natural latex, nitrile of vinyl).

The Plaintiff had also alleged that based on a patent search conducted using the Intellectual Property Corporation of Malaysia (MyIPO)’s online patent database, they have found out that the Defendants were trying to register for a patent for an invention entitled “Apparatus and Method for Unmoulding a Flexible Film Article” which claims an invention which is similar to the one disclosed in the Malaysian Patent.

The Defendants on the other had counter-claimed for the Malaysian Patent to be revoked for lacking novelty. In particular, they have brought to the court’s attention of Japanese Patent No. 2812353 (hereinafter referred to as “the Japanese Patent”) which corresponds to the Malaysian Patent. Significantly, the Malaysian Patent application was filed in Malaysia 31 months after the filing date of the Japanese Patent. The Defendants had then argued that the claims of the Malaysian Patent cannot be novel as the Japanese Patent has been published on 19 December 1995 that is way before the Malaysian Patent was filed in Malaysia i.e. on 10 January 1998.

The Plaintiff had argued that the Malaysian Patent although similar but it is not identical to the Japanese Patent. It has indicated that there were many differences in terms of the technical features of the invention disclosed in the Malaysian Patent compared to the invention disclosed in the Japanese Patent.

The Defendants had provided a list of distinguished expert witnesses to support their case. The expert witnesses include industry experts and patent experts who have commented on the technical aspects of the invention as well as the patentability aspects of the Malaysian Patent. It is must be noted that all the industry experts had concluded that the Defendants’ product does not infringe the Malaysian Patent and the patent experts had concluded that the Malaysian Patent lacks novelty in view of the prior publication of the Japanese Patent.

The Court held that the Malaysian Patent was not novel as it has been anticipated by the disclosure in the Japanese Patent and had declared that the Malaysian Patent was not valid and therefore not enforceable. The Court had also ordered that a sum of RM50,000.00 (approximately USD16,000.00) to be paid by the plaintiff to the defendants.