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Malaysia – Validity Of Prior Art Ruled Separate To Disclosure

Prior art constitutes all information that has been disclosed to the public in any form before a given date, that might be relevant to a patent’s claims of originality. It may include any patent related to the invention regardless of whether the patent is valid or not, as the act of publication or use of the patent would amount to a disclosure.

In a patent invalidation case between IEV International (the plaintiff) and Sadacharamani Govindasamy (the defendant) in Malaysia, the plaintiff commenced action to invalidate Malaysia patents MY-119064-A (064 Patent) and MY-119147-A (147 Patent) on the grounds of lack of novelty and inventive step in view of the plaintiff’s patent MY-103283-A (283 Patent) entitled “Apparatus for the combating of marine growth on offshore structures”.The defendant made allegations concerning the validity of the plaintiff’s patent and referred to the invalidation action (OS D4-24-44-1994) and invalidation order made with regard to the plaintiff’s patent. However, the court was of the view that in any event, the validity of the plaintiff’s patent was not an issue in the proceedings and the matter in issue was the validity of the defendant’s patents. According to the court, those allegations were made merely to confuse the issues as the defendant had no grounds to show the validity of his patents and as such, chose to attack the validity of the plaintiff’s patent.

Peter Finney, giving expert evidence on behalf of the plaintiff said: “It is clear to me that the defendant’s arguments in relation to the applicability of the IEV patent as a prior publication are fundamentally flawed. If the defendant’s assertion was correct, no prior published patent application would be considered as prior art until such time as the validity of the associated claims had been determined by the court. This is manifestly absurd.” Finney continued:“The validity of IEV’s claims is an irrelevant issue in this case. This is a fundamental point of patent law across the world and for this reason the defendant’s argument is wholly unfounded – indeed I am astonished they have run this argument. The validity of the prior art is an entirely separate issue to that of disclosure, and cannot be taken into account when considering the novelty and/or inventive step of the claims of the defendant’s patent”.

The court, having carefully considered the evidence of both the plaintiff and the defendant, ruled that the defendant’s patents in question are not patentable.

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