Malaysia – Declaration of Non-Infringement, Invalidation and Infringement Proceedings: A Malaysian Perspective

Declaration of Non-Infringement

In Malaysia, any interested party has the right to apply to the IP Court for a ‘Declaration of Non-Infringement’ whereby the court may make a declaration, as against a patent owner, that the performance of a specific act does not constitute an infringement of the Malaysian patent concerned.

However, should the act in question already be a subject of an infringement proceeding, the defendant therein is not permitted to apply for a Declaration of Non-Infringement.

An application for a Declaration of Non-Infringement may be made in combination with an invalidation proceeding, provided the applicant concerned is not the defendant in a related infringement proceeding.

The Malaysian Patents Act (“the Act”) requires the applicant of a Declaration of Non-Infringement to prove that the act in question, be that in relation to a product or a process, does not constitute an infringement of the patent concerned. The Act also requires the applicant to notify any existing beneficiaries of a compulsory licence granted for the patent about the application and the beneficiaries’ right to join in the proceedings. The patent owner is similarly obliged to notify any licensee under a licence contract, subject to the provisions thereof.

A Declaration of Non-Infringement, if granted, clears the way for the applicant to continue or begin to perform the specified act. However, there is no certainty that the applicant will limit its act to specifically that for which the Declaration of Non-Infringement has been applied, or was granted by the court.  As such, at any point in time during the proceedings for a Declaration of Non-Infringement or after grant of thereof, the patent owner may initiate infringement proceedings against the applicant, should the latter exceed the stated limit of its specified act. However, infringement proceedings may not be instituted after five years from the act of infringement.

Issuance of notifications prior to infringement proceedings

As part of the provisions for enforcement of rights under the Act, an owner of a patent may notify its infringer of the existence of the patent through public notices as well as specific cease and desist notifications, prior to instituting an infringement proceeding. Should the infringer, thereafter, fail to voluntarily refrain from performing the infringing act, an infringement proceeding may be initiated against the same.  And, unlike certain other jurisdictions, relief against groundless threats of suits is not available in Malaysia to any party who is being sued for infringement.

Infringement proceedings

In an infringement proceeding, if the patent owner proves that an infringement has been committed, the court may order an inquiry as to damages, for an account of profits, and /or such other remedy as the court deems fit, including an injunction to prevent further, or a continuation of the, infringement. Additionally, pending the outcome of the whole action, the court may grant an interim injunction should the patent owner be able to prove that an immediate remedy is necessary to avoid the incurrence of substantial and irreversible damage.

Process patents

In the case of a patent for a process for making a product, a party would be assumed to be infringing the process if it had imported the product into Malaysia, even if the process was performed outside Malaysia. Therefore, in such a case, once the patent owner has established that the product concerned was imported into Malaysia, the burden, thereafter, shifts to the importer to show that the patented process was not infringed in the making of the imported product.

Patents that are subject to compulsory licensing and licence agreement

In the case where a patent is subject to a compulsory licence, or a licence agreement, the beneficiary or licensee thereof may notify the patent owner of the infringement. Should the patent owner refuse or fail to institute the infringement proceedings within three months of receipt of such notification, the beneficiary, or licensee (subject to the terms of the licence), may initiate infringement proceedings in the place of the patent owner.  Further, the court shall, upon request by the beneficiary or licensee, grant an appropriate injunction to prevent the infringement, if the appropriate legal criteria are met.

Invalidation proceedings

An invalidation proceeding may be instituted as a stand-alone suit by any aggrieved party; as an alternative claim in a Declaration of Non-Infringement proceeding (as briefly mentioned above); or as a defence to an infringement suit. The court shall invalidate a patent if it is satisfied that the subject matter of the invention is non-patentable as described in the Act, not novel or inventive, or lacks industrial applicability. Other grounds for invalidation include the failure to provide necessary drawings for a clear understanding of the claimed invention, and the provision of incomplete or incorrect information to the Registrar during the filing of the request for examination.

Malaysian courts are receptive to evidence of judgments in invalidation proceedings that were heard before foreign courts, such as the United Kingdom, the United States of America, etc.  Therefore, where the issues in contention in both a foreign court and Malaysian court, are common, the decisions of foreign court may be used as admissible evidence in a parallel invalidation proceeding before a Malaysian court. Besides judgement in invalidation proceedings, prosecution history file wrappers of corresponding patents filed and granted in foreign countries may also be used in the invalidation proceedings before the Malaysian courts.

Use of expert opinions

Expert opinions comprising detailed analysis and illustrations of the technological issues in contention, by an independent person skilled in the art, are often used by opponents in invalidation or infringement proceedings, either in support of the proceedings, or in resisting them.

Conclusion

Like in many countries, the Malaysian Patents Act makes available various avenues of recourse or redress, to parties who have been, or who stand to be, aggrieved one way or the other, either by a grant of a patent or an application therefor. Depending on each situation, a party may choose a particular recourse or remedy, as is appropriate in the circumstances.  In recent years, Declaration of Non-Infringement, invalidation and infringement proceedings have become increasingly popular in addressing patent related disputes in Malaysia, especially in the pharmaceutical industry.

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