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Petty Invention Revoked in Malaysia!

A utility innovation (“UI”) is an exclusive right granted for a minor or petty invention that falls short of the inventive step and novelty bars required for patent protection. Just like a patent, a UI can be revoked and invalidated notwithstanding the Patent Registry’s finding that the UI claim and description adequately met the requirements of the Patent Act 1983 and the Patent Regulations 1986. It must be noted that the Patent Registry grants the certificate of UI merely on an ex-parte basis. The issue of whether an applicant has fully complied with the pre-requisites can seldom be conclusively determined at the application stage at the Patent Registry. This is the reason that the Act makes the court the ultimate adjudicator to decide on the validity of the UI.

It is a requirement that the description of a UI must disclose the innovation in such terms that it can be understood in a manner sufficiently clear and complete for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any advantageous effects of the invention with reference to the background art. One of the reasons the Plaintiff is statutorily required to disclose the details of the UI together with the methodology involved in its working is to enable others to make use of the UI and benefit from it after the expiration of the monopoly period enjoyed by the applicant, namely an initial period of 10 years, which may be extended for another two 5-year term. However, renewal after 10 years is dependent upon use in Malaysia or satisfactory explanation of non-use.

The description of the UI must also state the best mode (sometimes referred to as the “preferred embodiment”) contemplated by the applicant for carrying out the innovation by using examples whenever appropriate and by referring to the drawings, if any. This is provided in Regulation 12 (e) of the Regulations. If the description does not consider nor address the different variant factors that are responsible for or can give rise to different outcome of the composition, a person skilled in the art would face difficulty in comprehending the words used in light of common general knowledge and would not be able to determine the utility of the innovation without subjecting the claim to undue experimentations. Non-compliance with this requirement is a ground for revocation after grant. This ground has indeed been invoked by Ecotherm (TFT) Sdn Bhd as a counter claim to revoke and invalidate Kendek Industry Sdn Bhd’s UI No. MY-107629-A for “material composition of parts for use in dipped latex products industry,” after being sued for infringement.

The Defendant contends that the Plaintiff’s claim of “movable parts” is not defined in the descriptions. “Moveable parts” may entail the whole thing that are moved and can be moved. As a person skilled in the art, the Defendant’s expert witness is not able to provide a non-exhaustive list of moveable parts which are sought to be protected by the Plaintiff from reading the claim. Said expert witness further explained that the language of the claim could have simply said “a moveable part being a roller or plurality of rollers made from a composition … etc, or “a moveable part comprising a roller or rollers made from a composition … etc”, “which comprises”, “including”, “consisting of”, or even “consisting essentially of”. Having agreed with the explanation of the expert witness, Dato’ Azahar was of the opinion that “depending on the context of usage, these phrases, when followed by examples of different parts of moveable parts in the dipped latex industry could be taken to be exhaustive and hence, are able to give the innovation so claimed better form of clarity and conciseness.” The learned judge then found that the claim of the UI did not comply with Regulation 13(1) in that it is neither clear nor concise nor it is fully supported by the description.

The claim also failed to specify the exact or permissible workable range in percentage terms of the compositions for each and different type of named polymers and fibre glass. The Defendant, therefore, submitted that the manner in which the claim is drafted has resulted in vagueness and inconclusiveness. In this regard, the learned judge does not think “it is permissible to construe the claim by reference to the subjective thoughts, intentions, and purposes of the Plaintiff” as the claim did not set clearly and distinctly what the Plaintiff sought or desire to protect. To this, the learned judge made reference to the case of Kirin-Amgen v Hoechst where Lord Hoffmann said the following:-

“The need to set clear limits upon the monopoly is not only … the interests of others who need to know the area ‘within which they will be trespassers’ but also in the interests of the patentee, who needs to be able to make it clear that he lays no claim to prior art or insufficient enabled products or processes which would invalidate the patent.”

It therefore follows that a UI is liable to be revoked and invalidated if the claims were not set out with reasonable degree of precision and particularity, contrary to Regulation 12 (c) of the Regulations.

On the ground that the Plaintiff’s UI falls foul of Regulations 12(c) and (e) and 13(1), the learned judge dismissed the Plaintiff’s application and allowed the Defendant’s counter claim and made a declaration that MY-107629-A is and has always been invalid and unenforceable and an order that MY-107629-A be revoked and invalidated as of its date of grant.

Hence, it is clear that the registration of a UI, if not proper, could be revoked eventually by any interested or opposing party. In view of this, all parties interested in registering a UI in Malaysia should take reasonable care and proper professional advice in drafting their UI to avoid any untoward incident of their UI being revoked after grant.