The court established that the Defendant's application infringed the Plaintiff's utility innovation by containing all essential integers, affirming the necessity of purposive construction in patent claims.

[After Trial]

Azlan Sulaiman:

Introduction

[1] This Judgment is on the Plaintiff's action for infringement of its registered utility innovation.

Preliminaries

The Patents Act 1983

[2] A utility innovation ("UI") has been described as a mini-patent. Indeed, there is no Utility Innovation Act and the primary legislation governing utility innovations is the Patents Act, 1983 ("Act").

[3] Part IVA of the Act is entitled "Utility Innovations". Section 17 of the Act provides:

"Definition.

For the purposes of this Part and any regulations made under this Act in relation to this Part, "utility innovation" means any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application, and includes an invention."

[4] Section 17A of the Act provides:

"Application.

(1) Except as otherwise provided in this Part, the provisions of this Act, subject to the modifications in the Second Schedule, shall apply to utility innovations in the same manner as they apply to inventions.

(2) Sections 11, 15, 26, Part X, and ss 89 and 90 shall not apply to utility innovations."

[5] Section 36 of the Act sets out the rights of a patent/utility innovation owner. Sub-sections (1), (2) and (3) provide:

" Section 36 . Rights of owner of patent

(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:

(a) to exploit the patented invention;

(b) to assign or transmit the patent;

(c) to conclude license contracts;

(d) to deal with the patent as the subject of a security interest.

(2) No person shall do any of the acts referred to in subsection (1) without the consent of the owner of the patent.

(3) For the purpose of this Part, "exploitation" of a patented invention means any of the following acts in relation to a patent:

(a) when the patent has been granted in respect of a product:

(i) making, importing, offering for sale, selling or using the product;

(ii) stocking such product for the purpose of offering for sale, selling or using;

(b) when the patent has been granted in respect of a process:

(i) using the process;

(ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the process."

[6] Section 58 of the Act provides for what constitutes infringement of a patent or UI.

"58. Acts deemed to be infringement

Subject to subsection 37(1), (2) and (3) and s 38, an infringement of a patent shall consist of the performance of any act referred to in subsection 36(3) in Malaysia by a person other than the owner of the patent and without the agreement of the latter in relation to a product or a process falling within the scope of protection of the patent."

[7] The UI here, in simple terms, is in respect of an interactive security management system based on mobile devices. The Plaintiff successfully registered it as Malaysian Utility Innovation No MY-188397-A ("397 UI"); it was filed on 15 August 2016, published on 15 February 2018 and granted on 7 December 2021.

The Claims As The Scope Of Protection

[8] Even though the actual 397 UI document contains information on the registration particulars; details of prior art, the identities of the inventors and the owner; an abstract; the field of invention; background, summary; drawings and their brief descriptions of the drawings; and a detailed description, it is the Claims of 397 UI that we would look to ascertain the scope of protection of 397 UI.

[9] In Electric & Musical Industries Ltd v. Lissen Ltd [1938] 4 All ER 221 , Lord Atkin said:

"The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit, and not to extend, the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document, and not as a separate doc