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2010 MarsdenLR 2351
HIGH COURT (KUALA LUMPUR)
AZAHAR BIN MOHAMED, J
Kendek Industry Sdn Bhd – Plaintiff
Versus
Ecotherm (TFT) Sdn BHd – Defendant
SUIT NO D-22(IP> 1487-2005
Sri Dev Nair( Sri Dev Nair&Nalia) for the plaintiff
S.F. Wong (Michelle Loi with him) (Shearn Delamor) for the defendant
Important Points
Subject
Intellectual Property - Patents and Utility Innovations
Act Referred
Patents Regulations 1986: R.5, R.12, R.12(c), R.12(e), R.13, R.13(1), R.15
Headnote
(B) Construction of claims - The court must adopt the mantle of the notional skilled man to determine the ambit of the claim based on common general knowledge. The common general knowledge is derived from a commonsense approach to what would in fact be known to an appropriately skilled addressee.
(C) Function of claims - The primary object of claims is to define clearly and with precision the monopoly claimed so that third parties may know the exact boundaries of the area within which they would be trespassers. If language is avoidably obscure or ambiguous, the innovation is invalid.
Facts of the case:
A company holding a utility innovation for a material composition of movable parts used in the dipped latex industry sued another company for infringement. The defendant counterclaimed that the utility innovation was invalid, asserting that the claims were neither clear nor concise and that the description was insufficient and unworkable, failing to meet the requirements of the Act and Regulations.
Findings of Court:
The court found that the use of the phrase "such as rollers" and the term "movable parts" were too vague and general, failing to define the legal limits of the monopoly. Furthermore, the term "other like polymers" was not defined. The description failed to address critical variant factors, such as the combination of different polymer types with fibre-glass and the impact of the rigorous industry environment, rendering the innovation unworkable for a skilled person without undue experimentation.
Issues: Whether the utility innovation was validly granted and whether the claims and description complied with the statutory requirements of being clear, concise, and sufficient for a person skilled in the art to perform the innovation.
Ratio Decidendi: A utility innovation is invalid if the claims are avoidably obscure or ambiguous and the description fails to provide an enabling disclosure or the best mode of performance. The failure to specify the exact workable range of compositions and the use of overly broad, undefined terms prevent the public from knowing the boundaries of the monopoly, thus violating the requirements of the Patents Regulations.
Result: Counterclaim allowed; utility innovation declared invalid and revoked from the date of grant; plaintiff's claim dismissed.
Legal Category Hierarchy
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intellectual property
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patents
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utility innovations
- validity
- infringement
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utility innovations
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patents
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 polym
