In general, patent litigations are instituted in the High Court. The relevant sections under the Patents Act 1983 (“the Act”) that provide for both invalidation and infringement proceedings, i.e. section 56 [“Any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent”] and section 59 [“The owner of the patent shall have the right to institute Court proceedings against any person who has infringed or is infringing the patent”] contemplate institution of these proceedings in “Court”. “Court” in turn has been defined by the Act to mean “the High Court, or the Judge thereof”.

In Kuala Lumpur, IP disputes including patent litigations are filed in the Intellectual Property Court (“IP Court”), a specialised court that was set up back in 2007 to hear specifically said IP disputes. At present, aside from the IP Court in Kuala Lumpur (“IPKL”), there are no other IP Courts. There had been cases where IP disputes filed in other High Courts were directed to be transferred to the IPKL.  However, there is no one standard practice guide as to when matters could or should be transferred. Parties however are not prevented from seeking transfer of the IP disputes and in the past, such transfer had been allowed where the predominant cause of action arose or occurred in Kuala Lumpur and that the crucial aspect of the claim concerns IP. In Tan Tiang Huat & Anor v Lim Yee Hui & Anor [2024] 9 CLJ 141, the defendants had set up a rival business in Kuala Lumpur, poaching staff to work there and committing the tort of passing off in the establishment of the business. In allowing the transfer of the case to the Kuala Lumpur IP Court, the Judge took into account the fact that the primary cause of action arose or occurred in Kuala Lumpur. Further, since a crucial aspect of the plaintiff’s claim involved passing off, the matter was deemed to be more appropriately tried by the IP Court.

An IP Judge presides over IP disputes in the IP Court. He or she is not a technical judge but would be assisted by experts called by contending parties. Pursuant to Order 40 rule 1(1) of the Rules of Court 2012 (“ROC”), the court may on its own motion or on the application of any party, at any time, appoint its own independent expert as well.

Arbitration has certainly gained traction in various disputes, and there is now growing discussion and interests as to its viability vis-à-vis patent disputes. Arbitration in patent disputes allow parties to gain some control over the means in which their rival contentions could be settled. They could even carve out the parameters and impact of any decision reached, and this is especially attractive in cases where the disputes involve corresponding patents across multiple jurisdictions. However, decisions in arbitration disputes may not necessarily be binding on third parties. Please also see question 20 below for a further discussion on ADR in the context of patent litigation.

The duration of patent litigation proceedings (first instance) depends on the complexity of the subject matter at hand. A highly complex subject matter might involve a team of persons skilled in the art (POSITA), and that could translate into several expert witnesses for different areas of expertise, being called by a party or parties to the proceedings. Other factors such as the number of patent claims which are alleged to have been infringed could also affect the duration of the proceedings. Both infringement and invalidity proceedings are usually heard together, though it is also not uncommon by the presiding judge to consider the issue of validity first in his grounds of judgment, followed by infringement; the rationale being, if the subject claim is held invalid, there will not be infringement in the first place.

In general, the court may in the interests of expediency, decide on the issue of liability and remedy in one single trial. The court is further assisted by the pronouncement made in the Circular 2/2021 issued by the Chief Judge of Malaya on 30 March 2021, wherein all proceedings relating to assessment of damages should be heard by the Judge hearing the case, rather than the deputy registrar. Exceptionally, there may well be instances when the Court may order a bifurcated trial, or split trial, wherein the court will decide on the issue of liability first, followed by the determination on the quantum of damages.

The timeline for obtaining a first instance decision on infringement and/or validity proceedings typically ranges from 1 to 1½ years from the date the proceedings commence.

Any party who is dissatisfied with the decision of the High Court has a right to appeal to the Court of Appeal. The appeal will be on both facts and the laws. In general, an appellate court should not interfere with the factual findings of a trial judge unless it was satisfied that the decision of the trial judge was “plainly wrong” where in arriving at the decision it could not reasonably be explained or justified and so was one which no reasonable judge could have reached. See the Federal Court case of Ng Hoo Kui & Anor v Wendy Tan Lee Peng, Pentadbir Kepada Harta Pusaka Tan Ewe Kwang, Simati & Ors [2020] 12 MLJ 67.

Further appeal to the apex Court, i.e. the Federal Court is only possible upon the grant of leave to appeal by the Federal Court. In order to obtain leave, the appellant must demonstrate that its proposed question or questions of law, upon which leave is premised, must be question of general principle to be decided for the first time; or a question of importance upon which further argument and a decision by the Federal Court would be to the public advantage.

The courts may issue interim decisions on particular issues. However, interim decisions which do not finally dispose of the parties’ rights cannot be appealed until the court delivers its final decision. This is in line with the Federal Court decision in Asia Pacific Higher Learning Sdn Bhd v Majlis Perubatan Malaysia & Anor [2020] MLJU 54, which confirmed that a decision made during a trial that does not finally dispose of the parties’ rights is non-appealable.

While appeal does not automatically result in proceedings being stayed, Judges have the discretion to grant stay if “special circumstances” are shown.  The list for ‘special circumstances’ is not exhaustive.

Section 58 of the Act defines acts of infringement as consisting of performance of acts of exploitation of the patent in Malaysia by a person other than the owner of the patent and without agreement of the latter in relation to a product or process falling within the scope of protection of the patent. The term “exploitation” is further defined in section 36(3) of the Act as referring to, in the instance when the patent has been granted in respect of a product, the acts of (i) making, importing, offering for sale, selling or using the product; and (ii) stocking such product for the purpose of offering for sale, selling or using.  In the instance when the patent has been granted in respect of a process, (i) the use of the process; and (ii) the doing of any of the acts in respect of the product that has been obtained directly by means of a process.

There is no provision under the Act that provides specifically for indirect or contributory patent infringement. However, owing to the broad definition of the term “exploitation” under section 36(3) of the Act, it is possible for multiple parties to be sued for patent infringement. Further, it is possible to pursue actions under common law, such as the tort of conspiracy to injure, if parties have acted in a combination of efforts with the intent to harm the patent holder’s interests.

Construction of Scope of Protection of Patent Claims

In construing patent claims, Malaysian court adopts the principle of purposive construction.  See the Federal Court case of Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Anor [2018] 4 MLJ 34 wherein it was stated:

“A purposive construction is to be adopted to give effect to what the person skilled in the art would have understood the patentee to be claiming (Catnic Components Ltd and Another v Hill and Smith Ltd [1982] RPC 183 at pp 235–236). The threshold question is: what would the person skilled in the art have understood the patentee to be using the language of the claim to mean?”

 Prosecution History Estoppel

Reference to prosecution history would most likely involve an officer from the patent office (MyIPO) to appear in court with the relevant prosecution file. An officer from MyIPO understandably can rely on section 33A(3) of the Act, which provides that no person in the employment of MyIPO shall be required to attend any court for the purpose of producing (a) any document relating to a patent application or patent which may be obtained pursuant to the provisions of the Act; or (b) any document which is not to be made available to any third party in accordance with this Act.  Compare this with the decision of the UK Supreme Court case of Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 (“Actavis”) which allowed certain limited rare instances where English courts would be allowed to refer to the prosecution history, namely, where (a) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point; or (b) that it would be contrary to the public interest for contents of the file to be ignored.  Note though that there are however certain aspects of Actavis (such as its infringement tests) which had already been adopted by the High Court in Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd ([2018] MLJU 1840.

Accordingly, it remains to be seen whether notwithstanding section 33A(3) of the Act, a party in a patent suit may apply to court for a subpoena to compel a person within the employment of MyIPO to disclose the contents of a patent’s file wrapper which, for instance, is not to be made available to any third party in accordance with the Act and could arguably fall within section 33A(3) of the Act.

Some of the more notable key defences to patent infringement include:

1. Where the alleged product or process is argued to fall outside the scope of the patent claim. In determining this, the court will apply the relevant infringement test, namely the Essential Integers test. In the case of there being a variant, the court has in the past applied the Improver test (Improver Corp v. Remington Consumer Products Ltd [1990] FSR 181) which then assesses the materiality of the variant, the obviousness of the immaterial variant at the date of publication of the patent to a reader skilled in the art, and whether the reader skilled in the art nevertheless has understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention (See Cadware Sdn Bhd v Ronic Corporation [2013] 6 MLJ 19). More recently, the Malaysian courts have applied the Actavis test in Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd ([2018] MLJU 1840.
2. Another ground of defence would be to raise invalidity challenges against the relevant patent claim or part of its claim under section 56(2)(a) of the Act. These grounds challenge the very essence of a validly subsisting patent. Any invalidated patent or claim or part of a claim shall be regarded as null and void from the date of the grant of the patent, and on that premise, no infringement could be said to have occurred in the very first place. The grounds for invalidation had been exhaustively listed out under section 56(2) and the more common ones include lack of novelty, absence of an inventive step, lack of industrial applicability, insufficient disclosure, or that the plaintiff is not the rightful holder of the patent.
3. The defence of prior use (i.e., where the defendant had manufactured the patented product or used the patented process before the filing date or publication date of the patent). Such prior use must have been carried out in good faith in Malaysia as of the priority date. This defence is not commonly raised as it depends on the factual matrix of the case at hand. Moreover, this defence may not be assigned or transferred except as part of the business of the person concerned.

Section 56(2) of the Act sets out the grounds in which a patent may be invalidated. The grounds in which the court may invalidate a patent are where:

(a) what is claimed as an invention in the patent:

• is not an invention within the meaning of “invention” defined in section 12 of the Act;
• is excluded from protection under section 13 of Act as non-patentable inventions; or
• is excluded from protection under section 31(1) of Act as the performance of any act in respect of the claimed invention would be contrary to public order or morality.
• is not patentable because it does not comply with the requirements of sections 11 (patentability), 14 (novelty), 15 (inventive step) and 16 (industrial applicability);

(b) the description or the claim does not comply with the requirements of application under section 23;

(c) any drawings which are necessary for the understanding of the claimed invention have not been furnished; or

(d) the right to the patent does not belong to the person to whom the patent was granted.

Prior art is defined by the Act and shall consist of (a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention; or (b) the contents of a domestic patent application having an earlier priority date than the patent application referred in (a) to the extent that such contents are included in the patent application on the basis of the said domestic patent application. The Court of Appeal in the case of See Hau Global Sdn Bhd v Mah Sing Plastics Industries Sdn Bhd [2018] 3 CLJ 359 held that in order to constitute anticipation, the prior art must also be an enabling document in the sense that it must not only identify exactly the invention, it must do so in a way that will enable persons who are skilled in the art to recognise, perceive and work the invention as claimed.

For purposes of assessing novelty, each potential prior art must be assessed separately and independently of the other from the lens of a skilled person in the art as at the date of the document’s publication. Mosaicing of prior arts is however permissible when assessing inventiveness provided an unimaginative man with no inventive capacity will do so.

A patentee cannot seek to amend a patent that is in the midst of patent litigation pursuant to section 79A(3) of the Act. However, post-litigation amendment is permissible and has been affirmed by the Federal Court (our apex Court) in Merck Sharp & Dohme Corp & Anor v Hovid Bhd [2019] 12 MLJ 66. The Federal Court impliedly allowed (or did not disallow) amendment to the claim after the conclusion of the case. See also section 33C of the Act where the Court has the power to order rectification of the Register. Such power includes the power to amend an entry wrongly made in or remains in the Register, including invalidated patents.

The Act explicitly states that the duration of a patent is 20 years from the filing date of the application or 15 years from the date of grant, whichever is longer. No other form of patent term extension is available.

Experts with academic background or experience in the relevant field of the art are usually called to the court to testify as POSITA and assist with the construction of technical matters arising in patent documents. The role of POSITA had been expressly recognised by the Federal Court in the cases of SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 9 CLJ 405 and Spind Malaysia Sdn Bhd v. Justrade Marketing Sdn Bhd & Anor [2018] 4 CLJ 705 wherein POSITA do get called to the court to “educate the court in the technology – they come as teachers, as makers of the mantle for the court to don”. In practice, parties from both sides may and usually will call their own respective expert witnesses to testify in court. However, the Court may on its own motion or on the application of any party to the proceedings, appoint an independent expert. Such an appointment may extend to two or more experts, if need be.

Order 40A Rule 3 of the ROC stipulates that unless the Court directs otherwise, expert evidence must be presented in a written report, signed by the expert, and attached to an affidavit which shall be duly affirmed by the same expert. Under Rule 4 of the same Order, with the Court’s permission, a party may submit written questions to the opposing party’s expert about his report. The expert must then respond in writing, and the answers will be considered part of the expert’s report.

Irrespective by whom the expert has been appointed for, the expert’s primary duty is to assist the Court on matters within his or her expertise. The expert’s duties to the Court override the expert’s duties to the party who calls the expert to testify.

Regardless of the written reports and response that the experts may be directed to give, in response to any queries raised, experts remain subject to cross-examination by the opposing party during the course of the trial.

Ultimately though, the court remains the final arbiter of the facts. See the case of CHD Global IP Sdn Bhd &Anor v. Uni-Vessel Automation Sdn Bhd [2011] 1 LNS 1789.

Discovery are usually ordered by the court after close of pleadings and before the hearing of the patent action.  Pursuant to Order 34 of the ROC, the court may give directions during pre-trial case managements, and these usually include the filing of documents which parties intend to rely upon.  In this regard, the court would give, amongst others, directions as to the period of time within which parties should categorise respective parties’ documents before filing the same with the Court.

It is also possible to also seek discovery of certain documents or information for the purpose of or with a view of identifying possible parties before the commencement of the proceedings.  However, there are stringent requirements that need to be met before the grant of such discovery proceedings. Such application must be supported by an affidavit (a) stating the grounds for the application, the material facts pertaining to the intended proceedings and whether the person against whom the order is sought is likely to be party to subsequent proceedings in Court; and (b) in any case, specifying or describing the documents in respect of which the order is sought and show, if practicable by reference to any pleading served or intended to be served in the proceedings, that the documents are relevant to an issue arising or likely to arise out of the claim made or likely to be made in the proceedings or the identity of the likely parties to the proceedings, or both, and that the person against whom the order is sought is likely to have or have had them in his possession, custody or power. The Court is usually careful to ensure that such discovery is not a form of fishing expedition by the applicant.

Although discovery of documents are usually made during the pre-trial case management, parties are not precluded from seeking discovery on its own from the opposing side. Under Order 26 of the ROC, a party to any cause or matter may apply for leave from the court to serve interrogatories on the opposing party. These interrogatories must relate to matters in question between the parties and require the opposing party to respond under oath via affidavit. The Court will specify a period for compliance, which must be at least 14 days from the date the interrogatories are served.

Section 36(4) of the Act creates the legal presumption that if someone is producing the same product covered by a process patent, they are using the patented process unless they can provide evidence to the contrary. This shifts the burden of proof to the alleged infringer, meaning they must show that their method of producing the product is different from the patented process.

In rebutting the legal presumption in section 36(4), the alleged infringer is not required to disclose any manufacturing or commercial secrets if the court is satisfied that such disclosure would be unreasonable, unnecessary, or harmful to the alleged infringer’s business interests.

Parties in patent litigation may safeguard the confidentiality of information and/or documents that they wish to rely upon during the course of litigation by applying to the Court for a Protective Order or Sealing Order (“the Order”). Such orders are granted by the court pursuant to their power under Order 92 rule 4 of the ROC and serve to protect the confidentiality of information and documents by, amongst others, limiting the number of individuals who can have access to the confidential information or documents, the redaction of confidential information in publicly filed documents and specifying the use and handling of confidential information or documents.

The party who wishes to protect the confidential information and/or document will have to file the application for the Order with the court. The Court may grant the Order based on the consent of the parties or fix a hearing to decide whether to grant the application. In Kingtime International Ltd & Anor v. Petrofac E&C Sdn Bhd [2020] 1 CLJ 862, the High Court outlined the considerations courts should take into account in deciding whether to grant a protective order, as follows:

• public interest which requires all relevant evidence be disclosed to the court so as to enable the court to decide justly the case in question;
• the plaintiff’s right to apply for discovery of all relevant documents in support of the plaintiff’s claim; and
• the need to protect the defendant’s proprietary interest in the confidential information in question.

When granting the Order, the Court may impose certain condition, including but not limited to:

• the segregation of the confidential information and/or documents from other documents that have been filed with the court;
• the sealing of the confidential information and/or documents with a sealing note requiring the package containing such information or document to not be opened or accessed except in accordance with the terms of the Order and permission of the Court; and
• the non-disclosure of the confidential information and/or documents for public inspection by any person.

The post-grant opposition procedure was introduced by the recent amendment via section 45 of the Patents (Amendment) Act 2022 (“Amendment Act”).

Under section 55A of the Act, any interested person may within the prescribed period apply to the Registrar to initiate opposition proceedings by filing a Notice of Opposition against the patent owner regarding the grant of a patent in the prescribed manner on certain grounds of invalidation. “Prescribed period” has not been defined. An “interested person” includes the Federal Government, State Governments, and others with a legitimate interest. Non-residents of Malaysia shall have to provide security for the costs of the opposition proceedings, as determined by the Registrar, when filing the Notice of Opposition. The grounds of invalidation under the post-grant procedure are confined to the following:

(a) The claimed invention is not an invention under section 12, is non-patentable under sections 13 or 31(1), or does not meet the requirements of novelty, inventive step, and industrial applicability under sections 11, 14, 15, and 16;

(b) The description or claims do not comply with section 23; and

(c) Any necessary drawings for understanding the invention have not been furnished.

The Registrar may establish an ad hoc opposition committee to provide recommendations. At the end of the opposition proceedings, the Registrar shall decide decide whether to: (a) maintain the patent; (b) maintain the patent with amendments; or (c) invalidate the patent.

If the patent is maintained (with or without amendments), no further court proceedings can be brought against the patent by the interested person, unless it is by way of a counterclaim for invalidation or an appeal to the High Court under section 88.

Section 56A of Act disallows court invalidation proceedings from being instituted while an opposition is pending, unless both parties agree, or the interested person is a defendant in an infringement case. Before invalidation proceedings may be instituted in the Court, the interested person shall have to notify the Registrar of his intention to institute proceedings in the Court and he shall have to withdraw the notice of opposition in the prescribed manner.

To date, post-grant opposition has yet to be implemented. It is expected that some forms of regulations in connection with post-grant opposition procedures will be put in place prior to such implementation.

Although Malaysian courts may seek to align their decisions with those of other jurisdictions, the Federal Court of Malaysia has made it clear in Merck Sharp & Dohme Group & Anor v. Hovid Bhd [2019] 9 CLJ 1 that in a situation where an issue regarding intellectual property rights of a particular product and an identical or similar issue also arises regarding the same product in a Malaysian case, foreign decisions are not legally binding. At the most, they are persuasive in nature. This approach is appropriate, as pleadings, witnesses (including POSITAs) and their testimonies, as well as the nature of cross-examination questions posed by foreign counsel may differ among jurisdictions.

The Malaysian courts do not have jurisdiction to consider questions of infringement or validity in respect of foreign patents that are not filed at MyIPO. To date, there are no reported local cases addressing the conditions under which a court would grant an anti-suit injunction in relation to foreign patent infringement or validity proceedings.

In Malaysia, ADR is not widely used in patent disputes, largely because these cases often involve intricate issues of patent validity that require the opinions of specialized experts and the judgment of the court. Furthermore, in patent infringement cases, the primary remedy sought by patent holders is usually injunctive relief, making litigation the more attractive option for such cases. Currently, Malaysia does not impose mandatory ADR provisions specifically for patent disputes. However, under the Mediation Act 2012, courts have the discretion to refer disputes, including intellectual property matters, to mediation. While not compulsory, mediation is often suggested or encouraged by courts as a way to facilitate faster and more cost-effective resolutions.

Nevertheless, ADR holds significant potential for resolving international IP disputes. Through ADR, parties can consolidate a multi-jurisdictional dispute into a single procedure, eliminating the expense, complexity, and risk of inconsistent outcomes that may arise from litigating in different countries. This flexibility allows parties to resolve cross-border patent conflicts more efficiently, making ADR an attractive option for disputes involving patents protected in multiple regions. As such, while ADR may not be a common solution in local patent disputes, though it could offer considerable benefits in an international context.

It is advisable for a patent owner to study the allegedly infringing product or process as against any patent claim or claims that he wishes to rely on, prior to the commencement of a patent action.  This could be done with the assistance of an expert in the relevant field of the art.  The patent owner should also test the strength of its claim by considering the likely defences that the alleged infringer may raise including any potential invalidation challenges that may be raised.  The viability of sending a demand letter to the alleged infringer prior to such commencement should also be considered.

In general, only patent owners have the right to bring a patent infringement action. A licensee, unless restricted by the licence arrangement, or a beneficiary of a compulsory licence under the Act (“Beneficiary”) may bring a patent infringement action if he proves that the owner of the patent, despite having received the request by the Beneficiary to institute Court proceedings for infringement, refuses or fails to do so within three months from the date of recent of the request and after having notified the owner of the patent of his intention to do so.  In such cases, the patent owner can still join in the proceedings.

Notwithstanding that the three-month period referred to above has not been satisfied, the Court shall, on the request of the Beneficiary, grant an appropriate injunction to prevent infringement or to prohibit its continuation, if the beneficiary proves that immediate action is necessary to avoid substantial damage.

Under section 56(1) of the Act, only an “aggrieved person” has the standing to do bring an invalidity action against a patent. “Aggrieved Person” has been broadly defined by the courts and cases in the past suggest that the person bringing such an action should only cross the threshold of its being a mere busybody. In the case of IEV International Pty Ltd v. Sadacharamani Govindansamy [2008] 3 CLJ 593, the High Court judge clarified that the term “aggrieved person” does not carry a special or technical meaning and should be interpreted broadly. It includes anyone who could reasonably be disadvantaged—legally or practically—by the continued registration of the patent. Furthermore, the court emphasized that “aggrieved persons” are not limited to those with manufacturing rights, but rather extend to anyone with a genuine, practical interest in the matter, beyond merely being a busybody.

Interim injunctions are available as remedies in patent litigation proceedings. An interim injunction may be granted if the requirements as outlined in the case of American Cyanamid Co v Ethicon Ltd [1975] AC 396 are met: (i) there are bona fide and serious issues to be tried; (ii) damages would not be an adequate remedy if an interim injunction is not granted; (iii) where damages were not an adequate remedy, there is an undertaking as to damages by the applicant; (iv) the balance of convenience lies in favour of the applicant; and (v) if the balance appears even, the status quo should be preserved. See the application of the principles of American Cyanamid by the High Court in the case of Aventis Farma SA (Malaysia) Sdn Bhd & Anor v. Rohibul Sabri Abas & Anor [2008] 7 CLJ 525.

Order 29 Rule 2 of the ROC states that an application for interim injunction may be made by a notice of application supported by an affidavit and where the case is one of urgency, may be made ex parte. In Pacific Centre Sdn Bhd v United Engineers (M) Bhd [1984] 2 MLJ 143, it was held that the court may grant an ex parte interim injunction in cases “where it is genuinely impossible to give notice without defeating the purpose of the order”.

Unless earlier revoked or set aside, an interim injunction obtained on an ex parte application shall automatically lapse 21 days from the date it was granted, pursuant to Order 29 Rule 2B of the ROC.

Section 60(1) of the Act provides that if a patent owner proves that an infringement has been committed or is being committed, the court shall award “damages” and grant “an injunction” to prevent further infringement and “any other legal remedy”. Section 60(2) of the Act further states that if the infringement is proven to imminent, the court shall grant an injunction to prevent the infringement and any other legal remedy. Injunctions are invariably sought for in patent infringement suits. In practice, patent owners often seek for the right to elect between damages for their losses and an account of the profits earned by the defendant.

The basis for damages in patent infringement is to put a patent owner, as nearly as possible, to the same position as the owner of the patent would have been in but for the patent infringement.

In practice, the Court has been known to grant the winning litigant the right to elect between (a) having its damages assessed (“assessment of damages”) or (b) an account of the infringer’s profit (“account of profit”).  For the winning litigant to make an informed decision as to which to elect, the Court would usually order post-judgment discovery wherein the infringers are ordered to disclose all documents and information relating to their infringing activities.

Additional and exemplary damages are not expressly provided for under the Act, unlike the Copyright Act 1987 for example. However, this should not prevent the Court from considering and ordering such damages if deemed appropriate. Moreover, the use of the open-ended phrase “any other legal remedy” in section 60(1) (in the case of a patent infringement) and section 60(2) (in the case of imminent infringement) of the Act allows for such possibility.

Although injunctions are equitable reliefs, the grant of injunctions is specifically provided for under section 60 of the Act.  Section 60(1) of the Act provides that, if the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and “shall” grant an injunction to prevent further infringement and any other legal remedy. Injunction can also be granted in instances of imminent infringement. Pursuant to section 60(2) of the Act, if the owner of the patent proves imminent infringement, the Court shall grant an injunction to prevent infringement and any other legal remedy.

A strict interpretation of these two sections would mean that the only instance where injunction would not be granted is when the acts of infringement are no longer in occurrence or are no longer imminent.  However, the High Court in the case of Billion Prima Sdn Bhd & Anor v Nuctech Company Limited & Anor [2019] MLJU 420 clarified and took the view that despite the word ‘shall’ employed in the Act, it had the discretion not to grant an injunction in a patent infringement case.  This is by virtue of sections 50, 52 [illustration (r)] and 53 of the Specific Relief Act 1950 which provide that an injunctive is an equitable remedy.

Any interested person shall have the right to request that the Court make the declaration that the performance of a specific act does not constitute an infringement of the patent.  Proceedings for a declaration of non-infringement may be instituted together with proceedings to invalidate the patent. See the case of Ranbaxy (M) Sdn Bhd v EI Du Pont Nemours and Co [2012] 4 MLJ 34. However, in this case, the High Court found infringement and accordingly, the Plaintiff’s application for declarations of non-infringement and invalidation were dismissed.

The High Court has a wide and unfettered discretion to grant costs, subject to the express provisions of any written law and the ROC. As a general rule, the costs usually follow the event, except when it appears to the Court that in the circumstances of the case, some other order ought to be made. In assessing the costs payable, the Court shall have regard to all relevant circumstances, including, (a) the complexity of the cause or matter of which it arises and the difficulty or novelty of the question involved; (b) the skill, specialized knowledge and responsibility required of, and the time and labour expended by the solicitor or counsel; (c) the number and importance of the documents; and (d) the place and circumstances in which the business involved is transacted.

This includes the costs in calling the POSITA, though again, the court retains the view to revise the costs that are to be granted, taking into account the reasonableness of the costs claimed.

The costs that are to be granted at each appellate level would in essence take into account the complexity of the matter at hand. Although the costs at the High Court are treated as separate from the costs at the appellate court, the appellate court has the discretion to review the costs already granted at the High Court and make order accordingly.

Save under rare and exceptional instance where court would grant costs on an indemnity basis, courts in general grant costs on a standard basis with a view of reimbursing a party (usually the successful party). The costs award is not meant to compensate nor is it be regarded as a form of remedy. Under the standard basis, the courts are guided by the two limbs of consideration, namely, (i) a reasonable amount in respect of all costs reasonably incurred by successful party shall be allowed [1^st limb]; and (ii) if there is any doubt as to the reasonableness of the costs incurred or whether the costs so incurred was reasonable, the doubt shall be resolved in favour of the party paying [2^nd Limb].  In exceptional instances, court may grant costs on an indemnity basis.

Security for costs may be ordered against the plaintiff especially if the plaintiff is based abroad; the primary aim being to ensure that the defendant would be afforded some form of costs in the event the latter prevails in the proceedings brought about by the plaintiff.  There is no hard and fast rule vis-à-vis the quantum that is to be granted, and this very much depends on the complexity of the case. The means of placement of costs vary, and can include the placement of the sum in the court, or the issuance of bank draft, amongst others.  However, although security for costs have been ordered against foreign plaintiffs, that is not necessarily always the case. The court shall have regard to all the circumstances of the case and will only order security if it thinks it just to do.

Malaysia has seen patent growth in a mixture of areas involving various key sectors of the country.  For the past ten years, the patent scenes have seen the likes of disputes involving pharmaceuticals and machineries, and this is likely to continue in the near future.

The decision of any foreign courts or bodies (including Unified Patent Court) (usually on patent validity) is not binding on the outcome of IP disputes concerning the corresponding local patent in Malaysia and remain persuasive, if at all. The relevant applicable principles of Malaysian laws as well as the testimony of the experts continue to be of relevance.  Parties continue to be bound by the parameters of their own pleadings.

The Court across various levels (first instance and appellate) will continue be asked to weigh in on the construction of relevant provisions within the Patents Act 1983.  For example, in the Federal Court case of Sungei Kahang Palm Oil Sdn Bhd & Anor v YKL Engineering Sdn Bhd [2020] MLJU 953, the Court was asked to consider the extent of public disclosure in the novelty context under section 14 of the Act. Where opportunities arise, the apex Court (Federal Court) had in the past been asked to affirm certain positions concerning patent constructions in the country, flowing from the development in other countries especially the UK.

This trend is likely to continue over the next twelve months. The rise in PCT filings in Malaysia will also likely result in issues affecting a patent in foreign jurisdiction being ventilated with respect to its corresponding patent in Malaysia.

The Act had recently undergone its latest amendment via the Amendment Act to align the country’s patent laws with the current international standards and developments in patent protection. It remains to be seen if there are other areas that require improvement though the rolling out of the procedures governing post-grant opposition proceedings, introduced by the very same Amendment Act, are very much awaited.

One of the challenges within the international patent system is the translation requirement imposed by certain patent offices, which can complicate and increase the costs of the patent prosecution.  Additionally, varying formality requirements across countries for documents such as powers of attorney and other supporting document could further create administrative burden for applicant vying for protection in these countries.  However, applicants do benefit from the option of being able one the one hand to defer filing in different jurisdictions and yet on the other, being able to preserve the priority date while waiting for the outcomes of search and examination reports.  This flexibility enables applicant to make a more informed decision about whether to designate or enter the national phase in other countries.  The administrative aspects of international filings under the Patent Cooperation Treaty (PCT) are also streamlined as deadlines and timelines are usually standardised across jurisdictions.  Moreover, international filings under the PCT offer the more cost-effective route than separate national flings, thus providing a cohesive framework for applicants seeking patent protection internationally.  As a member of ASEAN, Malaysia also benefits from initiatives such as the ASEAN Patent Examination Cooperation (ASPEC) program, wherein search and examination results of patent applications are shared amongst participating patent offices, thus allowing applicants in these participating countries obtain corresponding patents faster and more efficiently.