In IEV International Pty Ltd v Sadacharamani a/l Govindasamy [2008] 2 MLJ 754, the High Court of Malaysia considered the issue of novelty in relation to improvements made to an existing patent right and whether to allow a patent invalidation action brought by the original patentee.

BACKGROUND FACTS

The Plaintiff in this case, IEV International Pty, had been manufacturing products known as ‘Apparatus for the Combating of Marine Growth on Offshore Structures’ in Malaysia since 1988. The products, designed and invented in 1986, had been manufactured, sold and installed in Malaysia, as well as exported worldwide for over 19 years. The Plaintiff had applied and obtained a patent for the products on 29 May 1993.

The Defendant, Mr Sadacharamani a/l Govindasamy, was an ex-employee of the Plaintiff who, during January 1991 to December 1992, had accessed a wide range of confidential information and documents regarding the Plaintiff’s products and patent. After having left the Plaintiff’s company for about seven months, the Defendant subsequently lodged a patent with what he alleged was an improved product. He filed his application for patents on 1st September 1993 for Patent No MY-119147-A and on 3rd September 1993 for Patent No MY-119064-A respectively. The said patents were granted approximately 12 years after the date of filing, on 31 March 2005 and 30 April 2005 respectively.

Thereafter, the Plaintiff sought for an order to invalidate the Defendant’s patents pursuant to Section 56 of the Patents Act 1983 on the grounds that the alleged invention of the Defendant was not patentable as it did not comply with the requirement of the Patents Act 1983, and that the rights of the alleged inventions of the Defendant did not in actual fact belong to the defendant but to the Plaintiff.

In reply the Defendant argued that the invention and drawings filed in the Defendant’s patents were different from that of the Plaintiff.

THE DECISION OF THE HIGH COURT

The High Court, in considering the Plaintiff’s application, explained the meaning of ‘aggrieved person’ stating that the words had no special technical meaning and should be liberally construed. High Court Judge, Dato’ Ramly Ali J (Judge Dato’) reasoned as follows: –

“The words ‘aggrieved person’ have been given a wide interpretation as including all persons who have a real practical interest in the issue. This does nor necessarily equate with manufacturing rights so long as the plaintiff can show that it has a real practical or genuine interest beyond that of a mere busybody”

Judge Dato’ held that the Plaintiff had clearly satisfied the above requirement and therefore qualified as an aggrieved person. He further went on to consider The General Tine & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 and Gadd and Mason v Mayor etc of Manchester [1892] 9 RPC 516 at 525 in relation to novelty and decided in favour of the Plaintiff. He held that the alleged invention of the Defendant formed part of the state of art and was anticipated by ‘prior art’ as defined in Section 14(2) of the Patents Act 1983. His reasoning was based on the fact that the inventions were already in use, made available and disclosed to the public.

In arriving at this decision, his Lordship accepted the evidence adduced by the Plaintiff in the form of articles published between December 1990 and May 1991 by the Plaintiff in various countries, including Malaysia, setting the role of the Plaintiff in inventing, developing and manufacturing the device or the products in question. The Court also took into account the dates of use of the said products by the Plaintiff as opposed to those of the Defendant.

Significantly, the Court considered Section 15 of the Patents Act 1983 wherein an invention shall be considered as involving an inventive step if, having regard to any matter which forms part of the prior art under Para (a) of subsection (2) of Section 14, such inventive step would not have been obvious to a person having ordinary skill in the art.

In this regard, His Lordship was satisfied that the alleged invention of the Defendant would be obvious to a person having ordinary skill in the art taking into account the disclosure by the Plaintiff, the articles published by the Plaintiff and the use of the product in various parts of the world even before the Defendant’s patent was granted. The Malaysian Court went on further to observe that the Defendant’s patent did not portray any technical advancement or improvement and it is obvious that the alleged inventions of the defendant were mere workshop changes or superficial changes or common place design features made to the Plaintiff’s design.

In arriving at this conclusion, the Court relied on the various expert evidence tendered by the Plaintiff through several expert witnesses, which showed that there was no novelty or inventive step in the Defendant’s patent. The Court also noted the fact that the expert evidence adduced by the Plaintiff was not in any way controverted or disproved by any expert evidence whatsoever adduced by the Defendant.

Therefore the approach taken by the High Court seems to indicate that the Courts adopt a strict approach in recognizing patentee’s rights; so long as an allegedly improved patent lacks technical improvements or if the invention is a mere superficial change to the original patent pursuant to the Patents Act 1983.