The validity of a patent requires it to be novel and involve an inventive step, as defined under statutory provisions.

[1] The present appeal concerns the validity of a patent relating to a plumbing product known as the SPIND Floor Gully/Trap. The appellant brought an action for, inter alia, infringement of the patent against the respondents. The respondents filed a counterclaim seeking a declaration that the patent is invalid.

[2] On 27 November 2014, the High Court dismissed the appellants claim and allowed the respondents counterclaim.

[3] On 22 March 2016, the appellants appeal was unanimously dismissed by the Court of Appeal.

[4] Leave to appeal was granted by this Court on 20 July 2016 in respect of the following questions of law:

(i) Whether for the purpose of considering whether a patented invention is inventive (or not obvious), the Court is required to apply and carry out the four-step test from the case of Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd [1985] RPC 59 (or more commonly known as the Windsurfing test ), ie the first is to identify the inventive concept embodied in the patent in suit. Thereafter, the Court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention. Finally, the Court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention ? (Question 1)

(ii) Whether there is a distinction to be drawn between determining the claimed features of the claims of a patent (for the purposes of assessing novelty and infringement) and determining the inventive concepts of the invention in the patent (for the purpose of assessing inventiveness)? (Question 2)

(iii) If the answer to Question 2 is in the affirmative, whether an assessment of the inventive concepts of the invention is to be confined to just the claims of the patent or should be construed from reading the patent specifications as a whole and with the common knowledge of the skilled person? (Question 3)

[5] We heard this appeal on 22 August 2017, and adjourned the matter for our decision. We now give our decision and our reasons for the same.

Material Facts

[6] The appellant is a company in the business of designing and manufacturing plumbing products, including one known as the SPIND Floor Gully/Trap. The appellant is also the registered proprietor of Malaysian Patent No: MY- 125567-A (MY-567) entitled Improvement in and relating to floor traps since 30 August 2006.

[7] The 1st respondent is a company in the business of supplying construction materials and related products. The 1st respondent was appointed as the appellants marketing agent for the SPIND Floor Gully/Trap in Vietnam from October 2010 to March 2011.

[8] The 2nd respondent is a shareholder and Director of the 1st respondent. He was appointed as the appellants marketing consultant from April 2008 to March 2011.

[9] On 12 May 2011, the 1st respondent filed patent application P12011002144 entitled Top Accessible Drainage Floor Trap with built-in control valve with the Malaysian Intellectual Property Office (MyIPO). The patent was commercially developed into the 1st respondents PAZTEE Floor Gully Trap. The 2nd respondent was named the inventor of the product.

[10] The appel