MALAYSIA
MALAYSIA
ONE NEEDS AN EXPERT WHOSE KNOWLEDGE OF THE FIELD OF THE INVENTION CAN BE EQUATED AS FAR AS POSSIBLE WITH THAT OF THE FICTIONAL ‘SKILLED PERSON’.
Patents in action
Patenting activity in Malaysia no longer stops at MyIPO. Patents are enforced by civil actions in the High Court. In 2007, Malaysia began to introduce IP Courts and it plans to have an IP High Court in each of the six states that have the most IP disputes. Te introduction of specialised IP Courts in Malaysia, with dedicated judges, is certainly one of the most noteworthy and positive milestones on the IP scene in recent years. IP cases are now given a much higher priority and can reach trial within 18 months or so.
Several patent disputes have already been heard and decided by the Kuala Lumpur IP High Court. Among the decisions issued in 2011, the following three cases are noted:
In Ranbaxy (Malaysia) Sdn Bhd v E.I. du Pont de Nemours and Company, the plaintiff (Ranbaxy) sought to invalidate two claims of the defendant’s (Du Pont) Malaysian patent that covered potassium losartan in crystalline form, which can be used for treating hypertension and congestive heart failure. Ranbaxy also sought a declaration that it did not infringe those claims. The plaintiff had obtained regulatory approval in Malaysia to market a pharmaceutical containing potassium losartan. The defendant counterclaimed for infringement of one of the claims in dispute. Various attacks on validity were dismissed. The plaintiff was found to have infringed the patent and an injunction was ordered.
Positive Well Marketing Sdn Bhd v OKA Concrete Industries Sdn Bhd was an infringement action relating to the plaintiff’s (Positive Well) patent for a slope protection system. Te defendant’s (OKA Concrete) counterclaim for invalidation failed and infringement was found. In relation to the invention’s novelty, it was confirmed that a lack of novelty objection cannot be constructed by combining separate items of prior art. As for inventive
178 World Intellectual Property Review e-Digest 2012
step, greater weight was given to the evidence of one of the plaintiff’s technical witnesses who was a geotechnical expert, as compared with the defendant’s witness who admitted in cross-examination to having limited knowledge of the field of the invention.
B. Braun Melsungen AG & Anor v Terumo Kabushiki Kaisha concerned the plaintiff’s (B. Braun’s) patent for a safety intravenous catheter. Te patent survived a counterclaim for invalidity. However, the patent claims were held not to have been infringed as three essential features of the claims were determined by the judge to be missing in the defendant’s (Terumo’s) product.
From the stream of decisions that have been issued by the Kuala Lumpur IP High Court since its inception, a clear message emerges: the choice of expert witnesses has a significant bearing on the outcome of each case. One needs an expert whose knowledge of the field of the invention can be equated as far as possible with that of the fictional ‘skilled person’. At the same time, the expert must not be overly-qualified in terms of demonstrating inventive faculties. Presenting an expert who has these qualities and appears honest, impartial and objective to the judge will not in itself win a case. It will, however, assist the court to assume the mantle of the person skilled in the relevant art, and thereby to reach a fair decision based on the facts.
Legislative updates
In February 2011 significant procedural changes in patent and trademark procurement with amendments to the regulations were introduced. In particular, there is now a formal process for expediting the examination of both patents and trademarks, eg, in cases of potential or ongoing infringements.
In November 2011, an amended Trade Descriptions Act 2011 entered into force. Tis new act reduced the duration and scope of Trade Description
www.worldipreview.com
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