UK: Inventive Step In Malaysia

Last Updated: 2 September 2018
Article by Chris Hemingway

The Federal Court has recently issued a decision, reported as Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Anor [2018] 4 MLJ, which is significant as it is only the second time a patent case has reached the apex court in Malaysia.

Readers may recall that the first patent decision by the Federal Court, reported as SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ, resulted in the finding that if an independent claim in a patent is held invalid, all the claims dependent thereon must also be held invalid, due to the inability of the court to 'redraft' a dependent claim to include the text of the independent claim. This decision significantly weakened the patent system, causing great concern among both practitioners and patent owners alike. The local IP associations worked with the Intellectual Property Corporation of Malaysia (MyIPO) in preparing amendments to the Patents Act to address this issue (primarily adding a clarification to explicitly give the Court the power of amendment) and submitting the same to the AG Chambers. However, a draft bill has not yet been prepared and given the dramatic change of government in May (the first time in over 60 years), it seems unlikely that the proposed amendments will be laid before Parliament anytime soon.

The Spind case concerned Malaysian patent MY-125567-A for a floor trap which had five features, namely: (i) embedded in the floor slab; (ii) allowed liquid to flow in a concentric S-flow manner; (iii) had three parts which formed a gully/trap; (iv) designed to enable a built-in water seal to be formed ('fluid tight feature'); and (v) capable of being repaired in the event of damage to the internal parts. It was common ground that features (i)–(iii) were also present in prior art patent US3042210, but there was a difference in opinion for the remaining features. The High Court found that the patent was invalid for not being an invention, as well as lacking novelty and inventive step, a decision which was affirmed by the Court of Appeal. Leave was granted to appeal to the Federal Court and raise the following questions:

  1. whether for the purpose of considering whether a patented invention is inventive (or not obvious), the court is required to apply and carry out the four-steps test from the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (or more commonly known as the 'Windsurfing test')
  2. whether there is a distinction to be drawn between determining the 'claimed features' of the claims of a patent (for the purposes of assessing novelty and infringement) and determining the 'inventive concepts' of the invention in the patent (for the purpose of assessing inventiveness)?
  3. if the answer to question 2 is in the affirmative, whether an assessment of the 'inventive concepts' of the invention is to be confined to just the claims of the patent or should be construed from reading the patent specifications as a whole and with the common knowledge of the skilled person?

Prior to answering question 1 the Federal Court reviewed case law on inventive step over the last 100 years or so, primarily from the UK (as Malaysian law is based on the same), but including other countries too, culminating in endorsement of the Windsurfing test as 'a good starting point for analysing the issue of inventive step'. Nevertheless, they also agreed with the caution noted by the Singapore court in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR 335 CA against over-elaborating the statutory requirement, and ultimately the court must always bear in mind that the question is 'simply whether the invention is obvious to a person having ordinary skill in the art, having regard to the prior art'. Interestingly the Federal Court found it unnecessary to adopt the restated version of the test in Pozzoli SPA v BDMO SA and another [2007] EWCA Civ 588 CA, and there was no discussion on the doctrine of equivalents as more recently established in Actavis UK Limited and others (Appellants) v Eli Lilly and Company [2017] UKSC 48. Therefore question 1 was answered in the affirmative in that the Windsurfing test is the preferred approach for inventive step.

In answering questions 2 and 3, the Federal Court referred to their earlier decision in SKB Shutters , which in turn referred to Electric and Musical Industries Ltd&Ors v Lissen Ltd&Anor (1939) 56 RPC 23 where it was stated 'one looks at the language of the claims which define the scope and monopoly claimed' and restated 'that in the determination of novelty and inventive step alike, it is the claims that must be considered'. In addition, the following was quoted 'what the court is concerned with is not the inventive concept, if any, in the preferred embodiments but the inventive concept put forward in the claims' from Brugger and others v Medic-Aid Ltd [1996] RPC 635 Ch D. Furthermore the 'problem and solution' approach was rejected, following Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202 HC. Nevertheless, the Federal Court subsequently applied the principles of purposive construction as set out in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2004] UKHL 46 HL i.e. 'what the person skilled in the art would have understood the patentee to be using the language of the claim to mean'.

Therefore question 2 was answered in the affirmative: 'in determining both the scope of the claims for assessing novelty and the inventive concept for assessing inventiveness, the court must look at the claims in the patent. However, the inventive concept is not one and the same as the claims; it is the core or essence of the invention'.

Question 3 was answered in the negative. 'The inventive concept of an invention is to be assessed by reference to the claims. It cannot be a vague or generalised concept excluded from the claims but derived from the specification as a whole'.

The answers for questions 1 and 2 probably do not give too much concern for practitioners, who are familiar with the Windsurfing test and Kirin Amgen purposive construction. However, there is scope for confusion and misinterpretation in relation to the answer to question 3, especially if it is taken out of context.

Reading the answer to question 3 in isolation may give the impression that the claims alone define the invention without reference to the rest of the specification. However, when read in context it is apparent that this is not the case and the purposive construction approach is appropriate. Nevertheless it should be noted that the inventive feature (which may be an effect or function) must be stated in the claim to avoid being disclaimed. Overall this appears to be a reasonable balance.

With reference to the patent in suit, feature (iv) was purposively construed as being disclosed by the prior art (or was obvious in light thereof), and feature (v) was disregarded as the relevant text was not found or alluded to in the claims. It may be of note that feature (v) was only referred to in the background – notwithstanding the omission from the claims perhaps the argument for inclusion as an inventive step may have been stronger if it had been stated as an advantage after the embodiment of the invention in the description or elsewhere.

There are several other points of interest. The Malaysian Patents Act defines an invention as 'an idea of an inventor which permits in practice the solution to a specific problem in the field of technology'. The High Court found that the patent was not an invention as there was no specific problem in the field; and that even assuming there was such a problem, it was not a general problem in the field of technology but only related to an existing product. This was not challenged in the Court of Appeal and not raised as an issue to the Federal Court. However there is now a concern in light of the High Court decision that a much higher threshold has to be reached to meet the requirement of being an invention. It seems unlikely that this view is correct, especially given that Malaysian law also provides for an incremental invention in the form of a 'Utility Innovation' (a type of Utility Model requiring novelty only), and it is unfortunate that the Federal Court did not take it upon themselves to review the same.

Another point raised was in relation to the admissibility of Expert Witness evidence. It is common for parties in Malaysia to each hire a patent attorney, often from a more developed country, to assist the Court in understanding the technology and construing the claims. However the Federal Court has affirmed the stance from SKB Shutters in that the role of the Expert Witness 'is primarily to assist the court in the technology; it is for the court itself to don the mantle of the skilled person and determine the question of inventiveness'. The Federal Court also quoted the evidence Act 'when the court has to form an opinion upon a point of foreign law or of science or art ... the opinions upon that point of persons specially skilled in that foreign law, science or art... are relevant facts'. In this case the Expert Witness had no hands-on or practical experience of plumbing and sanitary systems and therefore his personal opinion on the inventiveness was deemed not admissible. This seems like a rather harsh judgement based on equating the real 'persons specially skilled' under the Evidence Act with the nominative 'person having ordinary skill in the art' under the Patents Act, which are not the same thing. As a result, it appears that the evidence from patent attorneys as expert witnesses may be less likely to be considered admissible in future.

Notwithstanding the concerns mentioned above, the Federal Court judgement provides useful guidance on inventive step, which is often regarded as one of the most difficult areas of patent law. It is hoped that the issue regarding the maintenance of dependent claims will be resolved in the near future.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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