In the recent High Court decision of IEV International v Sadacharamani a/l Govindasamy [2008] 2 MLJ 754, the Court allowed the plaintiff's application to invalidate two of the defendant's patents.
The plaintiff had, since 1988, been manufacturing, selling and installing products known as "Apparatuses for the combating of marine growth structures" in Malaysia. The plaintiff claimed that these products were designed and invented in 1986. The plaintiff had in fact patented the products in Malaysia with a priority date of May 15 1987, which was granted on May 29 1993 and had also patented the invention in 14 other countries worldwide including Denmark, the United Kingdom and the United States.
Ironically enough, the defendant was employed as a marketing and contracts manager with the plaintiff in 1991 and 1992 and had access to a wide range of the plaintiff's confidential information and documents. The defendant had patented what he claimed was an improved product and filed the patent applications on September 1 1993 and September 3 1993 respectively, both of which were granted 12 years later in 2005.
The plaintiff's application to invalidate the defendant's patents was based on the grounds that the plaintiff was an aggrieved person and that the invention was not patentable and also that the right to the patent did not belong to the defendant.
On the issue of aggrieved person, the Court held that it is sufficient that the applicant have a genuine business or trading interest within the territorial ambit of the registration. In this case the Court held the plaintiff was an aggrieved person.
On the issue of whether the invention was patentable, it had to be novel and have an inventive step. In this case the plaintiff presented the Court with expert evidence from a European Patent Attorney and a Chartered British Patent Agent as well as a local expert from the Standards Institute, which provided a detailed claims analysis.
The Court held the defendant's alleged invention was anticipated by the prior art based on the drawings in the plaintiff's patent, which was published before the defendant's application. Furthermore, before the priority dates of the defendant's patents there were articles published in various countries including Malaysia on the invention and the plaintiff's products and services were already used in the market.
The Court also found that the defendant's patents did not portray any technical advancement or improvement on the state of the art, and were only superficial changes to the plaintiff's design.
On the defendant's main argument that the plaintiff's own patents were invalid, the Court held that the validity of the plaintiff's patents were not in issue in these proceedings and since the defendant's patents were anticipated by the prior art and were obvious the Court held that defendant's patents should be revoked.
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