JUDGMENT

IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR

(COMMERCIAL DIVISION)

[SUIT NO: D-22(IP)-1487-2005]

JUDGMENT

This action is in respect of a "utility innovation" under the Patent Act 1983 (the Act) . A utility innovation is not a patent.

The subject matter of the utility innovation in the present suit relates to a roller, which is a moveable part in the dipped latex industry to produce dipped latex products such as condoms, balloons, gloves and finger cots.

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

The Plaintiff claims that Ecotheram Sdn Bhd (the Defendant) had infringed its utility innovation No MY 107629 A for "Material Composition of Paris for Use in Dipped Latex Products Industry" (the UI).

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

The Plaintiff contends that the Grey EC Roller manufactured by the Defendant had infringed the UI in question.

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

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

The Plaintiff's case

The Plaintiff is the owner of certificate of the UI. The filing date of the application of the UI is 17.9.1993. It was validly granted on 15. 5.1996. The certificate is still valid and subsisting. The validity of the certificate was challenged in the High COURT (Kuala Lumpur) in Suit No. D5-22-788-1996 and the COURT after a full trial held on 29.6.1999 that the certificate to be valid.

The UI was innovated by Lai Chee Fong (PW1), from the Plaintiff Company, to solve the problems caused by rollers used before 17.9.1993 in the manufacturing of dipped latex products industry. Before 1993, rollers were made of cast iron, rubber or mild steel. The rollers 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