Utility innovations, governed by the Patents Act, must prove novelty and compliance under specified sections, with invalidation demands clear burden of proof from the aggrieved party.

Azlan Sulaiman J:

Overview

[1] The Plaintiffs action against the Defendant is for infringement of its utility innovation ("III"), namely Utility Innovation No: MY-152248-A ("Ul 248"). The Plaintiff alleges that the carpet underlay with the trademark "TROCELLEN" and/or also known as "Trocellen Carpet Underlay" (collectively, "Defendant's Products") that the Defendant uses, manufactures, imports, supplies, distributes, sells and/or offers for sale and/or deals with in the market infringes Ul 248.

[2] Apart from contending that it is not infringing Ul 248, the Defendant further contends that the Plaintiffs action for infringement is time-barred, and further counterclaims to invalidate Ul 248 on the grounds that:

(i) it is not novel or new; and

(ii) the description and the claim(s) do not comply with the requirements of the Patents Act 1983 and the Patents Regulations, 1986.

The approach

[3] Based on that general overview, the issues to be decided therefore encompass Ul infringement and Ul invalidation. However, in this Judgment they will be dealt with in reverse order, for the simple reason that, if Ul 248 is invalidated, then the consequential effect of that finding is that it should never have been certified as a Ul in the first place, and there would be no issue at all of infringement of Ul 248 by the Defendant. Tackling invalidation first was the approach of the Federal Court in Spind Malaysia Sdn Bhd v. Justrade Marketing Sdn Bhd & Ors 2018 MarsdenLR 1663 ; [2018] 4 MLJ 34 ; [2018] 4 CLJ 705 ; [2018] 3 AMR 32 , and in the High Court in Kingtime International Ltd & Anor v. Petrofac E & C Sdn Bhd 2018 MarsdenLR 1457 and in Merck Sharp & Dohme Corporation & Anor v. Hovid Bhd 2022 MarsdenLR 1001 , which involved the scenario of a patent infringement claim being countered by a patent invalidation claim

[4] After dealing with both invalidation and infringement of Ul 248, this Judgment will round-off with the consequential relief to be ordered.

[5] However, before doing so, it may be opportune to take a closer look at Ul 248.

Ul 248

[6] A Ul is not a patent. Instead, it is an exclusive right granted for a 'minor' invention that falls short of the inventive step and novelty bars required for patent protection. It is at times described as utility models, petty patents. A Ul is something which innovates an existing product and method.

[7] There is no Utility Innovation Act in Malaysia. Rather, the law governing a Ul is the Patents Act, 1983 ("Act"). Section 17 of the Act provides:

"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 as invention."

[8] Section 17A(1) of the Act then provides:

"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 way as they apply to inventions."

[9] That Second Schedule mentioned in s 17A(1) essentially substitutes the word "patent" with "utility innovation" wherever found in the provisions of the Act that apply to Uls. Thus, whenever any other provision of the Act is hereinafter cited, it shall be as per the Second Schedule to avoid the constant repetitive of "read with the Second Schedule of the Act".

[10] Ul 248 is titled "Foam Backed Carpet Cushion", has a filing date of 14 November 2007, and has one Claim, namely:

"A foam-backed carpet cushion roll installation extending over a total length of