The court held that human error in failing to respond to a patent examination report does not justify refusal of the application, and the Registrar erred in applying amended regulations instead of original provisions allowing extensions.

JUDGMENT

Azlan Sulaiman JC:

Introduction

[1] This case involves an application by an applicant, who is applying to register a patent, for an extension of time to respond to an Examiner's Report under s 30 of the Patents Act 1983 ("Act"). In the course of the Judgment I will also touch on some of the other provisions for extending time under the Act.

Salient Background Facts

[2] The salient background facts set out below are not in dispute.

[3] On 3 January 2018, the Plaintiff, through its agent ("Plaintiff's Agent"), filed Malaysian Patent Application No: PI 2018000013 in respect of an invention entitled "Oxysterols and Methods of Use Thereof" ("Patent Application") with the Registrar of Patents, Intellectual Property Corporation of Malaysia ("Registrar") in the requisite forms 2A, 22 and 17 and enclosing other relevant documents for, inter alia, the Malaysian national phase entry of the Patent Application.

[4] On 6 July 2020, the Plaintiff filed voluntary amendments to the claims in the Patent Application and, pursuant to reg 27(1A) of the Patents Regulations 1986 ("Regulations"), requested for a Substantive Examination of the Patent Application ("Substantive Examination").

[5] In 2022, the Act was amended by the Patents (Amendment) Act 2022, and those amendments came into force on 16 March 2022. The Regulations were also amended by the Patents (Amendment) Regulations 2022, and those amendments came into force just days later on 18 March 2022.

[6] By a Notice dated 30 March 2022 ("Registrar's Notice"), the Registrar sent to the Plaintiff a Substantive Examination Adverse Report on the Patent Application ("Substantive Examination Adverse Report"). The grounds stated in the Substantive Examination Adverse Report were that the Patent Application did not comply with the substantive requirements under s 30(1) of the Act. In short:

(i) the Plaintiff's corresponding European Patent No: EP3319611B1 for the same invention ("Plaintiff's European Patent") had been granted with claims which are narrower in scope than the claims in the Plaintiff's Patent Application;

(ii) the present claims in the Plaintiff's Patent Application are prima facie not novel and/or inventive as required by ss 14 and 15 of the Act having regard to the cited prior art; and

(iii) the claims should be amended.

[7] In the Registrar's Notice, the Registrar further invited the Plaintiff to respond to the Substantive Examination Adverse Report:

"You are invited to respond to this report. In accordance with regs 27C/27D/27E, a response should be filed at the above Office or Branch Offices within THREE (3) MONTHS from the date of mailing, otherwise this application may be refused under s 30(3) of the Patents Act 1983 ."

The date of mailing mentioned here was 30 March 2022. Thus, according to the Registrar's Notice, the Plaintiff's response to the Substantive Examination Adverse Report was to be filed on or before 30 June 2022.

[8] The Plaintiff did not file any response to the Substantive Examination Adverse Report by 30 June 2022. Though the Plaintiff did not deny receiving the Substantive Examination Adverse Report on or around the said mailing date, it had evidently overlooked it. This is because on 16 March 2023, around 81/2 months after that deadline in the Registrar's Notice had expired, the Plaintiff applied to reinstate the Patent Application and for an extension of time to respond to the Substantive Examination Adverse Report ("Reinstatement/ EOT Application"). Together with the Reinstatement/EOT Application, the Plaintiff enclosed a Statutory Declaration by the Patent's Agent deposed to on 16 March 2023 ("Statutory Declaration") stating, inter alia, that the Substantive Examination Adverse Report had been discovered on "a routine check of the application by a staff member in March 2023", that it had been "inadvertently overlooked" and that "the mistake was caused by human error and was completely unintentional."

[9] Further, annexed to the Statutory Declaration was a lette