Azahar bin Mohamed,J

JUDGMENT

This action is in respect of a "utility innovation" under the Patent Act 1983 (the Act). A utility innovation is not a patent. A utility innovation 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 or by some other name. A utility innovation is protected for an initial period of 10 years, which may be extended for another two 5- year term. AH in all, it provides a total protection for a total of 20years.

The subject matter of the utility innovation in the present suit relatesto a roller, which is a moveable part in the dipped latex industry toproduce dipped latex products such as condoms, balloons, glovesand finger cots.

According to Kendek Industry Sdn Bhd (the Plaintiff), the utilityinnovation discloses a composition for a movable part in the saidindustry using plastics and fibre-glass as a mixture.

The Plaintiff claims that Ecotheram Sdn Bhd (the Defendant) hadinfringed its utility innovation No MY 107629 A for ""MaterialComposition of Parts for Use in Dipped Latex Products Industry" (theUi).

For ease of reference, I reproduce below the Plaintiff's rollers forwhich, according to the Plaintiff, the UI protects under the Act.

The Plaintiff contends that the Grey EC Roller manufactured by theDefendant had infringed the Ul in question.

On the other hand, the Defendant counter claims that the Ul grantedis not a validly granted utility innovation in that it did not meet therequirements of either the Act or the Patents Regulations 1986 (theRegulations).

At this point, it is convenient to make a short summary of the rivalcontentions of the parties.

The Plaintiffs case

The Plaintiff is the owner of certificate of the Ul. The filing date of theapplication of the Ul is 17.9.1993. It was validly granted on 15.5.1996. The certificate is still valid and subsisting. The validity of thecertificate was challenged in the High Court (Kuala Lumpur) in SuitNo. D5-22-788-1996 and the Court after a full trial held on 29.6.1999that the certificate to be valid.

The Ul was innovated by Lai Chee Fong (PW1), from the PlaintiffCompany, to solve the problems caused by rollers used before17.9.1993 in the manufacturing of dipped latex products industry.Before 1993, rollers were made of cast iron, rubber or mild steel. Therollers ran on the metallic tracks in the production line. The metal-to-metal contact created problems; there were contamination and noise pollution. The metal-to-metal abrasion resulted in the metal particles falling down into the latex tank below causing pinholes in the dipped latex products produced. All the manufacturers of dipped latex products faced this problem. No one in the industry except for PW1 decided to embark on a research and development exercise to resolve this problem. He thought of various alternatives and considered whether the use of other materials to replace the metallic rollers was a viable solution. He considered the properties of each material and assessed which material could last for long period under high temperature and resist wear and tear. He was on the lookout for a material that did not result in fine particles dropping into the latex tank causing pinholes.

PW1 started to conduct intensive research in early 1990 in his office and in one injection-moulding factory. His research was tested out under confidential disclosure agreement with the factory. Three (3) years after he initiated his research activities, PW1 found a workable range of composition, which could be used, for the rollers and other movable parts in the dipped latex industry.

Having expended close to RM 80,000 for the research and development of his innovation, PW1 immediately sought a patent lawyer and filed an application for the Ul for at the Malaysian Intellectual Property Office (MylPO).

There is no evidence that rollers in the dipped latex industry were made of polymers