MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
Further, the Malaysian Patent Law does not make it mandatory for assignments and/or licences to be recorded with the Patent registry. It is, however, advisable for such assignments and/or licences to be recorded to ensure: • proper documentation of the transfer or licensing; • clear public notice of the rights involved; • fewer unnecessary office actions; and • a more straightforward enforcement process. An assignment agreement and/or licensing agreement is required for the recordal of the assignment and/or licensing of a patent in Malaysia. 1.5 Patent Infringement and Defences Patent infringement in Malaysia generally arises when (i) the feature of the patented claim is used without authorisation; or (ii) the infringing product works the same way as the patented claims. The common defences raised by an infringer are as follows. • The patent is not new and is anticipated by prior art; therefore, it is not patentable. • The patent does not involve an inventive step and is obvious to a person having ordinary skill to pro- duce it. • The patent is not industrially applicable and cannot be made or used in any kind of industry. • The patent is not an invention; it is a discovery, a scientific theory and a mathematical method. Exhaustion of rights, compulsory licences, propor- tionality and FRAND are also available defences in Malaysia, although less common than the defences listed above. 1.6 Patent Enforcement and Remedies In Malaysia, the Malaysian High Court is the court of first instance to determine patent disputes. Depending on the court’s availability and the complexity of the matter, a typical patent dispute may be concluded within one to two years from the date of filing. If the validity of a patent is challenged during the publication period, the relevant forum for opposition
is the Intellectual Property Corporation of Malaysia (MyIPO). Once the opposition period expires, an inter- ested party can still challenge the patent’s validity by filing an invalidation proceeding in the Malaysian High Court. It is common in Malaysia for parties to request a stay of proceedings at MyIPO if they have already filed a lawsuit in the High Court, in order to allow the court to determine both the patent’s validity and any infringement issues. When validity is challenged in foreign patent offices, although patents are territorial rights, the assessment of validity (particularly regard- ing novelty and inventive step) is based on a world- wide standard. Consequently, findings of invalidity in foreign jurisdictions can be considered persuasive in Malaysian courts, but a final ruling on validity in Malay- sia requires a court order, as Malaysian courts are not automatically bound by foreign decisions unless explicitly provided in law. In practice, when invalidity proceedings are initiated in both Malaysian courts and foreign patent offices, the parties often choose to run them concurrently rather than stay one while the other is ongoing. This approach depends on the specific circumstances of each case, especially cost and time considerations and is ultimately a strategic decision made by the parties involved. An interim injunction is a remedy that can be sought when filing an infringement and/or invalidation pro- ceeding. Besides this, other remedies available in an infringement case, subject to the court’s discretion, include: • a declaration of infringement; • a permanent injunction to prevent further infringe- ment; • an order to deliver or destroy infringing materials; and • monetary damages, which can be awarded as a lump sum or based on an account of profits. Additionally, the court may award aggravated, exem- plary or punitive damages, among others. As for legal fees and costs, these are generally recoverable at the court’s discretion, depending on the complexity of the case and in accordance with the standard scale of costs prescribed under the Rules of Court 2012.
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