Malaysia

Malaysia
Shearn Delamore & Co. Timothy Siaw
1. SOURcEs OF LAW
1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briey describe the role of international, federal or state laws and relevance of court decisions, list and briey describe relevant statutes and international treaties.)
The main governing legislation for patent law in Malaysia is the Patents Act 1983 (Patents Act), which came into force on 1 October 1986, replacing the previous re-registration of United Kingdom granted patents regime under the Registration of United Kingdom Patents Act 1951, the Patents Ordinance of Sarawak and the Registration of United Kingdom Patents Ordinance of Sabah and the Patents (Rights of Government) Act 1967 were repealed. Malaysia is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPs Agreement) and a member of the Paris Convention for the Protection of Industrial Property since 1 January 1989 and the Patent Cooperation Treaty since 16 August 2006.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conict?
The Patents Act and patent regulations are the primary source of patent law in Malaysia and prevail over all non-legislative sources. As the Patents Act is subject to the interpretation of the courts, precedents in case law are either persuasive or binding. Decisions of higher courts bind the lower courts and decisions of the courts of the same level are of persuasive value.

2.

2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
Civil proceedings to enforce a patent are initiated in the High Court. The Commercial Division of the High Court has a dedicated Intellectual Property Court presided over by a single judge to hear all intellectual property cases. Appeals from the High Court are made to the Court of Appeal with the Federal Court being the court of final appeal. The courts, including the appellate courts, are receptive to expert evidence being adduced to elucidate on matters of a technical nature or industry practice or requiring specialised knowledge.

COURT SYsTEM

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2.2 Does the patent ofce or any other government body have any jurisdiction in patent litigation?
No.

2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government body (eg the patent ofce)?
The courts may deal with infringement and invalidity proceedings in the same suit. The judge has the discretion to deal with both proceedings simultaneously or to deal with the invalidity proceedings first.

2.4 Who can represent parties before the courts handling patent litigation and/or the government body dealing with patent validity issues?
Only counsel who has been admitted as an Advocate and Solicitor of the High Court of Malaya, Sabah or Sarawak may represent a party in a patent invalidation proceeding before the courts in Malaysia.

2.5 What is the language of the proceedings? Is there a choice of language?

All proceedings, other than the giving of evidence by a witness in court are to be conducted in the Malay language, the national language of Malaysia, as provided under the National Language Act 1963/67. However, the court may permit the proceedings to be conducted in the English language where warranted in the interests of justice. Any document filed with the High Court of Malaya has to be in the national Malay language and may be accompanied by a translation into English. Any document filed with the High Court of Sabah and High Court of Sarawak has to be in the English language and may be accompanied by a translation into Malay.

2.6 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
As Malaysia is a common law country and part of the Commonwealth, the decisions of other Commonwealth countries, in particular the United Kingdom, Singapore and Australia are of persuasive authority and may be relied on if the legislative provisions in question are similar to or are in para materia with the provisions in the Patents Act and regulations.

3.

3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
A patent is infringed when a product or process falling within the scope of the protection of the patent is exploited without the patentees consent. To ascertain whether a product or process falls within the scope of protection
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of the patent, the claims of the patent will be construed purposively rather than strictly literally. The doctrine of equivalents is generally not recognised by the courts in Malaysia.

3.2 What defences are available to an alleged infringer?

As a defence, the defendant may allege that the patent is invalid by reason of the following: Not an invention. The alleged invention is not an invention, that is to say, not an idea that permits, in practice, a solution to a specific problem in the field of technology. Not patentable. The alleged invention is excluded from being patentable under the Patents Act. The following inventions are specifically excluded from being patentable under section 13 of the Patents Act: (i) discoveries, scientific theories and mathematical methods; (ii) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, microbiological processes and the products of such micro-organism processes; (iii) schemes, rules or methods for doing business, performing purely mental acts or playing games; and (iv) methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body. Contrary to public policy. The performance of any act in respect of the claimed invention would be contrary to public order or morality. Not new. The alleged invention is not patentable because it is not new since it has been anticipated by prior art. Prior art is defined as everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, before the priority date of the claim. Disclosures which occurred within one year of the filing of a patent application will be disregarded when ascertaining the novelty of the invention if the disclosure was made by the patent applicant or its predecessor in title or if the disclosure was by reason of any abuse of their rights. No inventive step. The invention is obvious having regard to what was known or used before the priority date. Not industrially applicable. The invention cannot be made or used in any of kind of industry. Description or claim does not comply with the Patents Regulations 1986. The specification is ambiguous or does not sufficiently and fairly describe the invention and the method by which it is to be performed, or does not disclose the best method known to the applicant for the patent and for which he was entitled to claim protection. Regulation 12 of the Patents Regulations 1986 states that the description shall state the title of the invention as appearing in the request and shall: (i) specify the technical field to which the invention relates; (ii) indicate the background art which, as far as is known to the applicant, can be regarded as useful for the understanding, searching
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and examination of the invention, and wherever possible, cite the documents reflecting such art; (iii) disclose the invention in such terms that it can be understood and in a manner sufficiently clear and complete for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any advantageous effects of the invention with reference to the background art; (iv) briefly describe figures in the drawings, if any; (v) describe the best mode contemplated by the applicant for carrying out the invention using examples where appropriate and referring to the drawings, if any; and (vi) indicate explicitly, where it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable and the way in which it can be made and used or, if it can only be used, the way in which it can be used. No drawings. The drawings that are necessary for the understanding of the claimed invention have not been furnished. Patentee not entitled. The right to the patent does not belong to the person to whom the patent was granted. Incomplete or incorrect information. False or incomplete information has been deliberately provided, or caused to be provided, to the Registrar when filing a request for substantive examination by a patentee or his agent.

Other defences In addition to the defences set out above, the following special defences must be specifically pleaded: The product complained of was not obtained by the patented process, or at any rate not directly. The patentee has exhausted his rights, that is to say, the patented product or product obtained directly by means of the patented process was produced in Malaysia or elsewhere by, or with consent, conditional or otherwise, of the owner of the patent or his licensee. The acts complained of were performed privately either for purposes which are not industrial or commercial, or for scientific research relating to the subject matter of the invention. The acts complained of were reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs. The acts complained of were performed in connection with a foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia. The acts were performed after notification in the Gazette that the patent has lapsed and before notification in the Gazette that the patent has been reinstated. The rights were granted pursuant to a compulsory licence. The act was authorised by the government.

3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
The Malaysian Competition Act 2010 has been passed but has not yet to
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come into force. It is expected to come into force in 2012. Under section 45 of the Patents Act, any act or condition in a licence contract shall be invalid in so far as it imposes upon the licensee, in the industrial or commercial field, restrictions not derived from the rights conferred by the owner of the patent, or which are unnecessary for the safeguarding of such rights, provided that: restrictions concerning the scope, extent or duration of exploitation of the patented invention, or the geographical area in, or the quality or quantity of the products in connection with which the patented invention may be exploited; and obligations imposed upon the licensee to abstain from all acts capable of prejudicing the validity of the patent shall not be deemed to constitute such restrictions. Under section 49 of the Patents Act, any person may to apply to the Registrar of Patents for a compulsory licence three years from the grant of the patent or four years from the filing date of the patent application, whichever is later, if: there has been no production of the patented product or application of the patented process in Malaysia without any legitimate reason; or the patented product is not for sale in Malaysia, or if it is, it is sold at unreasonably high prices or does not meet the public demand for any legitimate reason. Further, under section 84 of the Patents Act, the government may decide, even without the agreement of the owner of the patent, to exploit or designate a third person to exploit a patented invention: where there is national emergency or where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the government, so requires; or where a judicial or relevant authority has determined that the manner of exploitation by the owner of the patent or his licensee is anticompetitive.

3.4 On what grounds can a patent be invalidated?

Please see question 3.2 above.

3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
The Patents Act provides for any aggrieved person to institute proceedings to invalidate only some of the claims or some parts of a claim. A patent application may be converted into an application for a certificate for utility innovation and likewise, an application for a certificate for utility innovation may be converted into a patent application.

3.6

Is it possible to amend the patent claims during a lawsuit?

The Patent Office will not allow any amendment to patent claims that are the subject of ongoing legal proceedings.

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3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
An action for patent infringement may be time-barred if the action is commenced after a period of five years from the act of infringement. Coming to court with unclean hands, eg misconduct on the part of the patent owner by knowingly stating falsehood in an affidavit or statutory declaration, may deny the patent owner of any equitable remedies that he might be otherwise be entitled to.

3.8 Can a patent holder bring a lawsuit claiming both patent infringement and unfair competition for the same set of facts?
It is possible that the same set of facts may give rise to a cause of action for patent infringement and the common-law tort of passing off.

4.

4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to be eligible to sue?
An infringement of a patent is actionable upon the suit of the patent holder. Section 61 of the Patents Act further provides that any licensee of a patent may request the owner of the patent to institute court proceedings for any infringement indicated by the licensee, who may specify the relief desired. The licensee may institute proceedings in his own name three months after making the request if the patent owner refuses or fails to institute the proceedings. The patent owner shall have the right to join in the proceedings. Notwithstanding the above, the court may grant the licensee an appropriate injunction to prevent patent infringement or to prohibit its continuation before the three-month period, if the licensee proves that immediate action is necessary to avoid substantial damage.

PARTiEs TO LiTiGATiON

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?
Any interested person shall have the right to institute proceedings to request that the court declare that the performance of a specific act does not constitute an infringement of the patent.

4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
The company is a separate legal entity from its shareholders and directors and the courts are reluctant to look behind the corporate veil unless the company is being used as a vehicle to evade legal obligations or to commit fraud. Further, a company director may be personally liable for acts of infringement committed by the company if he has acted as a joint tortfeasor
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with the company, ie where he has exclusive or substantial control over the activities of the company and played a key role in the infringing activities of the company. Under section 59(2) of the Patents Act, the patent owner shall also have the same right against any person who has performed acts which make it likely that an infringement will occur, ie imminent infringement as against a direct infringer.

4.4

Is it possible to add or subtract parties during litigation?

The courts are empowered, either of their own motion, or upon the application of any party, to order at any stage of proceedings the following; that a person improperly or unnecessarily made a party, or ceasing to be a proper or necessary party, cease to be a party; to add as a party any person who ought to be joined to effectively and completely determine all matters in dispute, or any person where there may be an issue between them and a party to the action relating or connected to the action which would be just and convenient to determine.

5. ENFORcEMENT OpTiONs

5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
The patent owner may commence civil proceedings in court to enforce its patent rights.

5.2 Are criminal proceedings available? If so, what are the sanctions?
There are no specific provisions for criminal proceedings for patent infringement.

5.3 Are border measures available?

There are no specific provisions for border measures for patent infringement.

5.4 Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings? What are the consequences, if any, for making unjustied threats of patent infringement?
It is not compulsory to send a cease and desist letter to an alleged infringer before patent proceedings are initiated. Presently, there are no provisions in the Patents Act in relation to the unjustified threats of patent infringement. Under the common law, unjustified threats may constitute actionable torts of unlawful interference with a trade or business and trade libel.

5.5 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
The courts do not grant cross-border or extra-territorial injunctions as patent
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rights are territorial in nature. However, the courts may have jurisdiction over a person who does not reside or has no place of business or has no property within Malaysia if such person is one of several defendants who have been sued where the other defendants are residing or have a place of business or have property within Malaysia.

5.6 To what extent do courts recognise the blocking effect of torpedo actions abroad?
Torpedo actions abroad do not affect the Malaysian courts ability to decide on the validity or infringement or other issues pertaining to Malaysian patents.

5.7 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your patent ofce recognise and execute an arbitral award declaring a patent invalid? How widespread are ADR methods and in which sectors?
The Kuala Lumpur Regional Centre for Arbitration (KLRCA), established under the auspices of the international legal body of the Asian-African Legal Consultative Organisation, provides a neutral system for the settlement of disputes in trade, commerce and investment with and within the Asia Pacific region including patent disputes. The KLRCA is an independent arbitral institution and any arbitration conducted under the Rules of the KLRCA is excluded from the supervision or intervention of the courts. Additionally, the KLRCA provides a system for the conciliation and mediation of disputes. The Rules under the KLRCA for conciliation and mediation incorporate provisions of the UNCITRAL conciliation rules. There are no provisions in the Patents Act for the patent office to recognise and execute an arbitral award declaring a patent invalid. Further, interim injunctive relief is not a remedy available pending the determination of disputes by way of ADR.

6.

6.1 What is the format of patent infringement proceedings?

Patent infringement proceedings are filed at the High Court.

PROcEdURE iN CiVil COURTs

6.2 Are disputed issues decided by a judge or a jury?

In patent disputes, a judge sitting alone in the High Court shall hear and determine on both issues of fact and law. Upon an appeal from a High Courts decision to the Court of Appeal, the proceedings in the Court of Appeal are heard and disposed of by three judges or such greater number of judges as may be determined by the President of the Court of Appeal. Proceedings in the Federal Court are disposed of by three judges or such greater number of judges as may be determined by the Chief Justice.

6.3 To what extent are documents, afdavits, witnesses and/ or (court-appointed or party appointed/private) experts used? Is it possible to cross-examine witnesses? To the extent party appointed/
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private experts are used in patent proceedings in your country, what is the evidential value of their opinions and/or testimony? Is it possible to confront court appointed experts and party appointed/private experts at trial (expert conferencing)?
Under the Rules of the High Court, Order 40, the High Court is empowered, upon the application of any party, to appoint an independent expert or experts to inquire and report upon any question of fact or opinion not involving questions of law or of construction. Parties may apply to crossexamine an expert witness on its report. The evidential value of the opinions and/or testimony of party appointed/ private expert will depend on the qualifications, experience and expertise of the expert in relation to the subject matter of inquiry. The testimony of the expert is subject to cross-examination.

6.4 Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?
Evidence from criminal proceedings is admissible in civil proceedings and vice versa.

6.5 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
The Rules of the High Court 1980, Order 24 sets out the mechanism for the discovery and inspection of documents at the pre-trial stage. First, there is a requirement for the mutual discovery of documents at the close of pleadings whereby parties to an action shall make and serve on each other a list of documents which are or have been in their possession or custody relating to any matter in question in the action. Second, the High Court is empowered to order the discovery of documents on the application of any party to an action upon the failure by another party to comply with the requirements for discovery under the Rules of High Court 1980. The High Court may further order that the party make discovery and file an affidavit verifying the lists of documents to be filed, and a copy to be served on the applicant. The documents listed by a party to an action for discovery shall be available for inspection and the taking of copies by the other party. The High Court is empowered to make an order for such documents to be made available for inspection and the taking of copies, on the application of any party to the proceedings, upon the failure of the other party to produce any documents listed for discovery for inspection and taking of copies. Failure to comply with the rules of discovery may, in more serious cases, result in an action being dismissed, or a defence being struck out and judgment entered accordingly.

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6.6 What level of proof is required for establishing infringement or invalidity?

A patent holder has to show on the balance of probabilities that an infringement has occurred in order to succeed. Likewise, a party claiming that the patent to an invention is invalid has to show on a balance of probabilities that the invention is either not eligible for a patent, or does not qualify for protection, or both.

6.7 How long do patent infringement proceedings typically last? Is it possible to expedite this process? Is it possible to agree on a binding timetable of for the proceedings, for example, in the context of a case management conference?
Patent infringement proceedings may typically take about 5 to 15 or more days of hearing, depending on the number of witnesses and the complexity of the technology and issues involved. During a pre-trial case management hearing, the judge may set a binding timetable for the proceedings.

6.8 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of a defendant?
A defendant may delay infringement proceedings by seeking more time to prepare its defence and to obtain expert evidence and by counter-claiming for invalidation of the claims in question. The court will stay proceedings pending arbitration if there is an agreement that parties will resolve the dispute by arbitration. The judge may issue an Unless Order ie unless the defendant strictly complies with the pre-trial directions and timetable for preparation for trial, judgment in default may be entered against the defendant.

7. FiNAl REMEdiEs

7.1 What remedies are available against a patent infringer (permanent injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
An injunction may be granted and damages awarded against an infringer. Where infringement is imminent, section 61 of the Patents Act provides that the court shall grant an injunction to prevent infringement and any other legal remedy. The plaintiff may ask the court for discovery of the extent of the defendants infringing activities and claim for the delivery-up and destruction of the infringing goods; an account of profits made by the defendant or compensation for damages and loss suffered by the plaintiff; as well as for reimbursement of costs and expenses incurred.

7.2 To the extent it is possible to obtain a permanent injunction against a patent infringer, does the grant of a permanent injunction
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automatically follow a nding of patent infringement or does the court have judicial discretion to deny the grant of a permanent injunction notwithstanding a nding of patent infringement? Are there any specic rules for particular subject matter, for example, pharmaceutical patents, or for particular plaintiffs, for example, nonpractising entities?
Under section 60 of the Patents Act, the court shall award damages and grant an injunction to prevent further infringement and any other legal remedy if the patent owner proves that an infringement has been committed or is being committed. There are no specific rules for specific subject matters or particular plaintiffs.

7.3 Does the grant of a permanent injunction have to refer to the item(s) alleged to infringe the patent or may the grant of an injunction be broader in scope? Is the effect of an injunction limited to the patent infringer or is it also effective against third parties such as the infringers suppliers or customers?
Although the judge may grant an injunction that is broader in scope, it will be difficult to enforce the injunction against third parties who are not a party to the suit.

7.4 What monetary remedies are available against a patent infringer (reasonable royalty, lost prots, account of prots, or some other basis)? Are punitive damages available? If so, under what conditions? Are liability and quantum of monetary remedies assessed by the court at the same time or is the quantum assessed at a separate, later stage from liability?
Upon a finding of infringement and liability, a separate hearing will be held for an assessment of the damages suffered by the plaintiff or an account of the profits made by the defendant. A reasonable royalty or licence fee approach may be considered by the court if the plaintiff has existing licensees but there are no provisions in the Patents Act for punitive damages to be awarded.

8.

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions? Is urgency a condition for the court to grant preliminary relief? If so, how is it determined?
Pre-emptive remedies such Anton Piller orders and interim or interlocutory injunctions (ex parte and inter partes) are available upon application to court with a certificate of urgency. The principles for the granting of interlocutory injunctions laid down in the landmark case of American Cyanamid Co. v Ethicon Ltd. [1975] AC 396 have been adopted by the Court of Appeal in Malaysia in Keet Gerald Francis Noel John v Mohd. Noor bin Abdullah & Ors. [1995] 1 MLJ 193. The judge
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should consider the following in an application for an interim injunction: whether there is a bona fide serious issue to be tried; having found that an issue has been disclosed that requires further investigation, whether the justice of the case lies in taking into account all relevant matters, including the practical realities of the case and the harm the injunction would produce by its grant, against the harm that would result from its refusal; and the judge must have in the forefront of their mind that the requested remedy is discretionary, intended to produce a just result for the period between the date of the application and the trial proper and to maintain the status quo. The balance of convenience must favour the grant of the interim injunction. The judge will consider whether it is the plaintiff or the defendant that would suffer greater hardship and injustice if the interim injunction were granted or refused. The judge will also consider whether the damages likely to be suffered can be quantified in monetary terms and, whether the defendant is capable of and is in a financial position to pay. Sometimes, instead of an interim injunction being granted, the judge may, depending on the facts and circumstances, order that part of the proceeds of the defendant be held in a joint account as security for any damages that the defendant may be ordered to pay eventually. The plaintiff will be required to give an undertaking as to damages in the event the plaintiff fails to obtain judgment after trial as part of the interim injunction order. Injunctive relief is equitable in nature. An application for an interim injunction must be applied for as soon as the plaintiff becomes aware that its patent is infringed. Any inordinate delay in the application may be fatal unless it is justified and adequately explained. In an ex parte application for an interim injunction, all material facts must be disclosed. Any suppression or misrepresentation of any material fact, even due to an error of judgment, may be fatal and result in the ex parte injunction being set aside and the plaintiff being liable for all damages suffered. Apart from the interlocutory injunction, a Mareva injunction may also be obtained if the plaintiff has evidence that the defendant is dissipating its assets to avoiding having to pay damages likely to be ordered against it. The defendants bank accounts may be frozen and the order may extend to assets outside Malaysia. The onus is on the plaintiff to establish the need for such an order.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Where an ex parte interim injunction is sought under Order 29 rule 1(2) of the Rules of the High Court 1980, the plaintiff has to show that there is urgency in obtaining the injunction and notification to the defendant could not be made in time. Any delay by the plaintiff in the making of an application for an order under Order 29 rule 1(2) would be grounds for the refusal to grant the order.
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Special requirements have been laid down in the Rules of the High Court 1980 for an ex parte injunction application.. The affidavit in support must contain a clear and concise statement of: the facts giving rise to the claim against the defendant in the proceedings; the facts giving rise to the claim for the interlocutory relief; the facts relied on as justifying the application ex parte, including details of any notice given to the defendant or, if none has been given, the reason for not giving any; any answer asserted by the defendant, or which he is thought likely to assert, either to the claim in the action or to the claim for interlocutory relief; any facts known to the applicant which might lead the court not to grant relief ex parte; whether any previous similar ex parte application has been made to any other judge, and if so, the order made in that previous application; and the previous relief sought. The ex parte injunction order must be served within one week of the date of the order and it will automatically lapse at the end of 21 days from the date on which it is granted. The judge must fix a date for hearing of the application on an inter partes basis before the expiry of 21 days.

8.3 Is it possible to le a protective writ, ie a letter setting out possible defences by a potential defendant, at the court at which an ex parte application may be led against that defendant? If so, is the protective brief communicated to the plaintiff and what effects does it have on the preliminary injunction proceedings?
There are no provisions for filing a protective writ. Instead, the potential defendant may send the letter to the patent owner stating its desire to be represented in an application for an injunction and demanding that the patent owner brings to the judges attention the letter and the possible defences set out in it.

8.4 Is the plaintiff entitled to ask for an order that the defendants premises are searched and that a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement? If not, what other mechanisms, if any, are available for seizing and preserving evidence pre-trial?
Where there is a risk that evidence essential to a plaintiffs case may be destroyed or concealed, the plaintiff may apply to the courts for an Anton Piller order which compels the defendant to permit the plaintiff to enter the premises specified in the order to inspect and take into custody any documents and articles specified in the order. Any document or article taken into custody may be used by the plaintiff as evidence.

8.5 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The defendant may put the validity of the patent in issue in preliminary injunction proceedings but the judge should not attempt to decide the
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full merits at this stage and the decision whether to grant the preliminary injunction will be based on the balance of convenience once it is decided that there is a serious bona fide issue of patent infringement to be tried.

8.6 What is the format of preliminary injunction proceedings?

An application for interim injunction is made by way of a summons in chambers accompanied by an affidavit in support. An inter partes interim application will be heard by the judge in chambers based on affidavit evidence filed by both parties.

8.7 To what extent are documents, afdavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
An application for an interlocutory injunction is supported by affidavit evidence. The affidavit in support of the application sets out the facts and the grounds on which the injunction is based. Expert reports and statements may be exhibited to the affidavits as hearsay evidence is permitted for interlocutory applications provided the source of the information is stated.

8.8 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The judge is not required to decide on the full merits of the infringement or invalidity claims at the preliminary injunction proceedings. The plaintiff is only required to establish that there is a serious issue to be tried based on the affidavit evidence filed.

8.9

How long do preliminary injunction proceedings typically last?

Preliminary injunction proceedings can generally be concluded on the day of the hearing and the decision given immediately after the hearing.

8.10 Where a preliminary injunction is granted, is it necessary to start main proceedings to conrm the preliminary injunction?
After a preliminary injunction is granted, the judge will typically give directions and a timetable for the preparation for trial.

8.11 If a preliminary injunction is granted and the main infringement action is nally lost, can the defendant claim damages for the unjustied preliminary injunction? If so, how are the damages calculated? Must the plaintiff provide some form of bond/guarantee to compensate the defendant in the event the preliminary injunction is later held to have been wrongly imposed?
The plaintiff is required to give an undertaking as to damages as part of the injunction order. Should the plaintiff finally lose the infringement action at trial, it will have to honour the undertaking to compensate the defendant for damages the defendant had suffered as a result of the injunction which had prevented the defendant from conducting its trade and business. Further, the defendant may make an application that the plaintiff fortifies
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its undertaking with a bond or bank guarantee if there is evidence that the plaintiff is not in a financial position to honour its undertaking as to damages.

9. AppEAl PROcEdURE

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
A defeated party may appeal against a judgment or order from the High Court to the Court of Appeal if the infringement suit contains a claim for an injunction, a form of specific relief. A defeated party at the Court of Appeal may apply for leave to appeal to the Federal Court if: there is a question of general principle decided for the first time or a question of importance upon which a decision of the Federal Court would be of advantage to the public; or the decision relates to the effect of any provision of the constitution.

9.2 If an appeal is led, is relief usually stayed pending the outcome of the appeal?
An appeal does not operate as a stay of the order or judgment pending the outcome of the appeal.

9.3

How long do appeal proceedings typically last?

It will typically take about two years for an appeal to be heard and decided.

10. LiTiGATiON COsTs

10.1 What level of cost should one expect to incur to take a case through to a rst instance decision, preliminary injunction proceedings and/or appeal proceedings?
The legal costs for patent litigation will largely depend on a number of factors such as the complexity of the technology, facts and issues involved, the number of witnesses and days of hearing and the seniority and reputation of the solicitors and counsel engaged.

10.2 Are attorneys fees and costs recoverable from the losing party?
Costs of the litigation may be recovered from the losing party but the judge has discretion whether to award costs or not.

11. FORThcOMiNG lEGislATiON

11.1 What are the important developing and emerging trends in your countrys patent law?
An emerging trend is the ongoing efforts by the Patent Office to improve the patent registration system. In February 2011, the Patent Office provided a system for electronic filing of patent applications and prescribed a procedure for making a request for an expedited examination of a patent application
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Malaysia

where one of the grounds is that there are infringement proceedings taking place or evidence showing potential infringement.

11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
There are proposed amendments to the Patents Act, among others, to provide for the extension of the patent term, the recordal of security interests in patents, the introduction of a new section on innocent infringement where the court shall not award damages or an account of profits and a remedy for groundless threats of infringement proceedings.

12. UsEFUl REFERENcEs

12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Intellectual Property Corporation of Malaysia www.mipc.gov.my Malaysian Intellectual Property Association www.mipa.org.my.

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