Patents must demonstrate novelty and inventive steps; failure results in invalidation.

[1] This is an appeal against the decision of the High Court in respect of a claim seeking to invalidate a patent, namely Malaysian Patent No: MY-148055-A ('MY-055') registered by the defendant, who is the appellant here. After a full trial, the High Court made the following orders:

(a) The plaintiff's claim for the invalidation of MY-055 is dismissed. The plaintiff is the respondent in this appeal;

(b) The learned trial judge allowed the plaintiff's prayer in para 19 (c) of the Statement of Claim as amended, which reads as follows:

"A declaration that the manufacture, importation, distribution, stocking, supply, sale and/or offering to supply or sell the plaintiff's wing shaped pallets, limited only to model N4-131-1SLW manufactured by the plaintiff or its licensees or distributors does not constitute an infringement of any and all of the claims of Malaysian Patent No. MY-148055-A;"

[2] Both the plaintiff and the defendant appealed against this decision. The defendant filed an appeal against the grant of prayer 19(c) as amended, in respect of the amendment, as well as the grant of the said prayer.

[3] The plaintiff cross-appealed against the decision in respect of the dismissal of its claim for the invalidation of MY-55.

[4] The parties will be referred to as follows:

(a) the appellant will be referred to as the defendant;

(b) the respondent will be referred to as the plaintiff.

The Background Facts

[5] The salient facts are set out comprehensively in the judgment of the learned trial judge and we adopt the same here.

[6] Both the plaintiff and the defendant are in the business of manufacturing, selling and distributing of pallets.

[7] The defendant is the owner of the MY-055 Patent which was invented by Cheah Chee Chon (DW1), in respect of an invention entitled "Wing-Shaped Pallet for Handling & Storing Loads". The MY-055 Patent was granted under the Patents Act 1983 on 28 February 2013 and is in force until 27 July 2030.

[8] A brief description of the MY-055 Patent is set out as follows:

"The present invention generally relates to a pallet utilized for handling and storing loads. More particularly, a wing-shaped pallet constructed for handling and storing loads including bag-packaged materials in cargo transportation, shipment and logistic services industries."

[9] There are five claims in the MY-055 Patent. Claim 1 of the MY-055 Patent is a product claim that is directed to a wing-shaped pallet. Claims 2-5 are dependent on Claim 1. The Claims read as follows:

"Claim 1

A wing-shaped pallet (20) for handling and storing loads, comprising of:

A base (30) characterized by a plurality of vertical structure members connected orthogonally with at least one horizontal support member (33), a plurality of treads on the bottom surface of the horizontal support member (33) for producing friction between said base (30) and a conveying means;

A planar platform (50) including bottom a surface (53) and a top surface (52) for receiving loads, having greater dimension than the base (30) thereby forming an overhanging area;

A plurality of studs (31) extending perpendicular from base (30) each positioned at every intersection of the vertical structure member (32) and the horizontal support member (33), wherein said studs (31) are coupled to the bottom surface (53) of the planar platform (50);

A plurality of anti-slip means (60) mounted on the base, the top surface (52) and the bottom surface (53) of pla