The Malaysian Intellectual Property Office (MyIPO) has not, until now, allowed a third party to inspect and obtain copies of any documents other than the granted patent specification, unless the patent owner gives written consent. This is despite the provisions in sections 33 and 34(1) of the Patents Act, which allow any party to inspect and obtain extracts of granted patent files. The position taken by MyIPO is that any communication between the applicant and MyIPO, other than the granted specification, should remain confidential, even after grant of the patent.
As a result, MyIPO would reject an application by a party that wanted to obtain a complete file history of a particular granted patent on the grounds set out above.
Recently a challenge to this was made in the High Court in the case of Patrick A/L M.G. Mirandah v Ketua Pengarah Perbadanan Harta Intelek Malaysia. The applicant, through their counsel Messrs Miranda & Samuel, argued that the written consent of the patent owner would only be required for pending patent applications (on grounds of confidentiality) but not for granted patents. The fact that the patent had been duly granted showed that the element of confidentiality no longer existed and therefore a third party should be entitled to inspect the file at the Registry and to obtain the case history and any relevant extracts. It was also argued that if Parliament intended to restrict public access only to the granted specification, then the restriction would have been specified in the Patents Act.
On principles of statutory interpretation, it was submitted that if a statute is clear and unambiguous, a literal interpretation should be taken of the words in the statute. In this case section 34(1) of the Patents Act clearly provides that a patent file can be inspected and extracts can be obtained as soon as the patent application proceeds to grant. Based on these submissions the Court granted the application.
This is a positive development as far as the Malaysian patent regime is concerned, because in any litigation concerning the granted patent, the prosecution history can now be brought up to show whether concessions were made by the applicant to MyIPO, which will be a factor that the court will take into account in construing the claims.
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Patrick Mirandah |
