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2024 MarsdenLR 2367
HIGH COURT MALAYA KUALA LUMPUR
ASP PRO SDN BHD – Appellant
Versus
NANOMALAYSIA BERHAD & ORS – Respondent
[Civil Suit No: WA-22IP-66-11/2023]
A party cannot be sued for patent registration issues if it has no jurisdiction or role in the patent application process, as established under the Patents Act 1983.
Headnote:(A) Patents Act 1983 – Sections 8(1) and 33C(b) – Intellectual Property Corporation of Malaysia Act 2022 – Claim against MyIPO for patent registration – Plaintiff failed to plead a cause of action against MyIPO, which is not a party to patent applications under the PA – MyIPO's role is limited to administrative functions and does not include jurisdiction over patent reliefs. (Paras 2, 4, 6, 10, 12)
(B) Defamation – Claim against 2nd Defendant – The court did not address the defamation claim in this judgment as it pertained solely to the application against MyIPO. (Para 1)
Facts of the case: The Plaintiff claims to be the inventor of a graphene-based product and alleges that the 1st Defendant is improperly registering a patent for it. MyIPO was added as a nominal defendant but had no cause of action pleaded against it. (Paras 1-2)
Findings of Court: The court found that the Plaintiff's claims against MyIPO were unsustainable and ordered the claim to be struck out. (Paras 14-15)
Issues: Whether the Plaintiff has established a cause of action against MyIPO and whether MyIPO should be included as a party in the action. (Paras 2, 4)
Ratio Decidendi: The court ruled that MyIPO, as an administrative body, cannot be held liable for patent registration issues and that the Plaintiff had sued the wrong party. (Paras 6, 10)
Result: MyIPO's application to strike out the Plaintiff's claim was allowed, with costs awarded to MyIPO. (Paras 14-15)
JUDGMENT
(Striking Out Application)
Introduction
[1] In this action the Plaintiff essentially makes two claims The first is that it is the inventor of a product described as a"graphene-based car jump starter power bank" ("the Product"), and that the 1st Defendant is attempting to steal a march on it by submitting Patent Application No PI2021007886 ("the Patent Application") to register a patent over the Product as its inventor/owner. The second is a claim against the 2nd Defendant for defamation. The Plaintiff has added the 3rd Defendant, Perbadanan Harta Intelek Malaysia, the Intellectual Property Corporation of Malaysia ("MyIPO") as a nominal defendant for the first claim. MyIPO takes umbrage with being added as a defendant and applied to strike out the Plaintiffs action against it ("MyIPO's Application"). I allowed MyIPO's Application, on four grounds. This Judgment sets them out.
Ground 1: No Cause Of Action Pleaded Against MyIPO
[2] In para 3 of the Pernyataan Tuntutan, the Plaintiff identified MyIPO and set out what it believed were its functions. In para 5 of its Pernyataan Tuntutan, the Plaintiff expressly pleaded:
"Plaintif menamakan Defendan Ketiga sebagai Defendan nominal yang mempunyai kuasa untuk pendaftaran harta intelek di Malaysia, yang mana Defendan Ketiga telah menerima permohonan Defendan Pertama untuk pendaftaran harta intelek bernombor:
P12021007886, dan setakat kepada tarikh pemfailan Writ Saman dan Penyata Tuntutan ini, permohonan pendaftaran tersebut masih dalam proses tapisan "under substantive examination" dan belum diluluskan untuk pendaftaran."
That is in effect the sum total of what the Plaintiff says about MyIPO in the body of the Pernyataan Tuntutan encapsulating paras 1-32. No cause of action and no adverse allegations are pleaded against MyIPO. MyIPO is only mentioned in some of the reliefs sought in paras 33 (a) to (t) of the Pernyataan Tuntutan, which I shall come to in the second ground.
[3] In First Malaysia Finance Bhd v. Dato' Mohd Fathi bin Haji Ahmad, [1993] 2 MLJ 497, the respondent had brought an action against five defendants, the appellant being the fifth. As against the first four defendants, he claimed the price of his shares which he alleged the first four defendants had purchased but failed to pay him. As against the fifth, in the relief section of the claim, he claimed discovery of certain information, ie any relevant accounts showing payment, if any, of the purchase price by the first four defendants, without making any allegations of wrongdoing against the appellant. The appellant applied to strike out the claim against it, which application was initially dismissed by the High Court but allowed on appeal by the (then) Supreme Court, for the simple reason that no cause of action had been pleaded as against the appellant.
[4] Applying the same reasoning, the Plaintiff's claim against MyIPO should similarly be struck out.
Ground 2: The Plaintiff Sued The Wrong Party
[5] Of the relief the Plaintiff expansively sets out in paras 33 (a) to (t) of the Pernyataan Tuntutan, only four are against MyIPO. They are in paragraphs (b), (d), (e) and (m), as follows:
"(b) satu perintah injunksi untuk menghalang Defendan ketiga secara sendirinya atau pekerja-pekerjanya atau ejen-ejennya daripada mendaftarkan Foreground IP tersebut atau mana-mana penggubahan atau modifikasi terhadapnya yang pada pandangan mana-mana pihak yang berkemahiran di dalam teknologi ini (those skilled in the art) adalah merupakan terbitan daripada Foreground IP tersebut;
(d) satu perintah injunksi interim untuk menghalang Defendan Ketiga secara sendirinya atau pekerja-pekerjanya atau ejen-ejennya daripada mendaftarkan Foreground IP tersebut atau mana-mana penggubahan atau modifikasi terhadapnya yang pada pandangan mana-mana pihak yang berkemahiran di dalam teknologi ini (those skilled in the art) adalah merupakan terbitan daripada Foreground IP tersebut sehingga pelupusan penuh tindakan ini;
(e) bahawa sekiranya pe
