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MALAYSIA: PATENT FOUND TO INVALID

10th January, 2019

In a recent patent infringement dispute between Hong Yik Plastics (M) Sdn Bhd. (hereinafter referred to as the “Plaintiff”) and Ho Shen Lee (M) Sdn Bhd., as well as TNL Plastic Manufacturer Sdn Bhd. (hereinafter referred to as the “Defendants”), the High Court had to decide on the following issues:

  • Whether there was patent infringement on the Plaintiff’s patent
  • Whether the Plaintiff’s patent was invalid.

On the first issue, the Court had to decide preliminarily whether the Plaintiff’s claim was caught by limitation. Section 59(3) of the Patents Act 1953 states that court proceedings for patent infringement may not be instituted after 5 years from the act of infringement. However, the Plaintiff in their Statement of Claim had not pleaded the date of infringement.  As such, the Court commented that it would be difficult to determine the remedy even if infringement was proved when such a material fact was left out in the pleadings.

Based on the evidence provided, the Court concluded the act of infringement to be before 10th February 2012. However, the Plaintiff had filed the suit only on 13 March 2017, which was after 5 years and thereby exceeding the limitation period provided under s59(3) of the Patents Act 1953. Thus the Plaintiff’s claim was dismissed.

The Defendants in this case had also made a counter claim for invalidation of the Plaintiff’s patent, thus leading to the second issue as to whether the Plaintiff’s patent was invalid. The Court found that the Plaintiff’s witness, who is the inventor of the patent, relied heavily on his patent agent to do the necessary to apply for the patent. The Court also held that there was a failure to disclose on the patent agent’s part when he did not mention the existing prior art in the patent form or document.

Therefore, the Court concluded that the Plaintiff’s patent should be invalidated on the ground that the Plaintiff’s invention was not patentable. This is because the invention was not new. There was no novelty as there was existence of prior art. Furthermore the Plaintiff and his patent agent had given incomplete information to the Patent Registrar when they had failed to disclose the existing prior art. The Defendant’s counterclaim is thus allowed with costs.