Inventive Step In Malaysia

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:

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') whether there is a...