Patent Litigation in Malaysia

The main laws relating to patents in Malaysia are the Patents Act 1983 (PA 1983) and the Patents Regulations 1986, which both came into force on 1 October 1986. Malaysia is a common law country and follows the doctrine of judicial precedent. Malaysia is a party to the (i) Paris Convention for the Protection of Industrial Property 1883 (since 1 January 1989), (ii) WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS) (since 1 January 1995) and (iii) Patent Cooperation Treaty 1970 (since 16 August 2006), in no order of their priorities.

The Constitution is silent as to the primacy of international law over statutes, or vice versa. In the event of a conflict, the general rule is that domestic statutes must prevail. This is based on the common law principle of the supremacy of acts of Parliament, as further exemplified in the case of PP v Wah Ah Jee.

Patent Enforcement Agencies in Malaysia

Plant_ProtectionThe patent infringement actions can only be carried on by the specialised IP High Court set up in Kuala Lumpur to hear such proceedings. If the defendant resides or owns a business outside the territories of Malaysia, the claim must be filed in the High Court of that particular country. Judges who preside over IP cases may have undergone relevant IP trainings, but are unlikely to have any technical or scientific expertise or background. The parties can call their own expert witnesses to guide the judge on technical issues.

In the case of American Express Bank Ltd v Mohamad Toufic Al- Ozeir & Ors [1995] 1 MLJ 160, the court held that in exercising this discretion, the principles of forums non conveniens will be applied, taking into account factors such as:

  • Convenience and expense of hearing the case in Malaysia, rather than another jurisdiction.
  • Availability of witnesses.
  • The law governing the relevant transaction.

Moreover, only practising advocates and solicitors who are members of the Malaysian Bar can represent the parties before the judge in court. All proceedings, other than the giving of evidence by a witness in court, must be conducted in Malay, the national language of Malaysia. However, the court will usually permit the proceedings to be conducted in English in IP cases, especially in patent cases where the subject matter is technical in nature.

Patent Infringement Proceedings

The format of a patent infringement trial is the same as any general civil suit trial. Given the nature of patent infringement suits, where substantial dispute related to facts is difficult to escape, a civil action is generally brought by way of a writ of summons along with a statement of claims setting out the material facts of the claim and the remedies sought for the contentions. Malaysia is equipped with the common law system of pleadings, which is primarily based on precedents, where the parties are required to exchange pleadings within the prescribed time frame. After being served with the statement of claim, the defendant must file the defence and counterclaim within the prescribed period, followed by a reply by the plaintiff if necessary. Where the defendant disputes the validity of the patent, he or she must include the particulars of objections, setting out the grounds of objections clearly in his or her defence.

There is no trial by affidavit in the country. Parties have to prove their case by calling witnesses who state their cases in the first stage of trial, namely examination in chief, by way of written witness statements. However, all witnesses must be present in court during the trial for cross-examination.

Experts are invariably called to assist the court during a patent suit. In fact, expert opinions on the issues of novelty and inventive steps are indispensable in a patent trial.

Malaysia does not have a jury system and hence disputed issues are decided by a judge (or judges). A trial will typically last between one and two weeks, depending on the complexity of the matter and the issues in dispute.

The burden of proof in a patent infringement suit is the civil burden of balance of probabilities. This same burden of proof applies to the issues of infringement, invalidation and unenforceability.

To make out a case for infringement, the following need to be proved:

  • that each and every essential integer or feature of the plaintiff’s patented claim is taken by the defendants; and
  • the defendants’ product works the same way as the plaintiff claims in his or her patent.

Therefore, these provisions are relevant to the regime related to patent infringement.

Conclusion

To summarize, patent protection provides the innovators exclusive rights to protect the innovation and ensure that the incentives are provided for their time and efforts. There are provisions that also facilitate licensing and assignment of the exclusive rights to third parties so that there are no disputes and the public interest is also fulfilled. There is a requisite punishment for infringement by third parties. Hence, the protection is requisite with respect to the innovators.

Author: Tanya Saraswat – a student at School of Law, Narsee Monjee Institute of Management Studies, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010