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04 August 2020
In general, when an individual asks "how can I protect my invention?", only one answer comes to mind: patents. While this is not wrong, most individuals are unaware of the patent's lesser-known sibling – the utility innovation.
Utility innovations are commonly known as 'minor' or 'petty' patents. Much like patents, owners of a granted utility innovation have exclusive rights to exploit said utility innovation for 20 years.(1)
This article examines Emerico Sdn Bhd v Maxvigo Solution Sdn Bhd, the subject matter of which was a utility innovation entitled 'a protective sleeve' (the UI).(2)
Emerico Sdn Bhd is involved in the design, manufacture and trade of IT solutions and related hardware for a variety of industries (eg, banking, telecoms, aviation, insurance and logistics). Emerico realised that the conventional modes of applying for bank cards or opening bank accounts were outdated. Clients no longer need to be physically present at a bank to apply for a bank card or open an account. However, to allow such mobile applications, several individual components are required – namely, a computing device, a portable biometrics device and a card reader for authenticating and verifying the client's identity.
With that problem in mind, Emerico conceived and conceptualised the UI. The UI integrates each individual component of a computing device, a portable biometrics device and a card reader into one device which also provides protection to the electronic device affixed to the UI.
The defendant company is involved in similar business to Emerico. Unbeknown to Emerico, the defendant sold a protective sleeve known as the 'SMARTPAD' or 'MAT' (the infringing product), which consists of each and every feature or integer of the claim of the UI (the infringing act).
On discovering the infringing act, Emerico commenced a utility innovation infringement action against the defendant. The defendant counterclaimed that the UI was invalidated for purported:
Emerico successfully defended the defendant's invalidation counterclaim and successfully claimed for utility innovation infringement. In the learned judge's grounds of decision, he made several key findings.
The key issues in this case are as follows.
Should the UI be invalidated for alleged procedural non-compliance?
The UI was initially filed as a patent. The patent was subsequently divided(3) and converted into a utility innovation – one of which was the UI.(4)
The court found that:
Should the UI be invalidated on the ground of novelty?
It is trite that for novelty to be destroyed, each and every element of the claim must be present in a single prior art – prior arts cannot be mosaicked together. In the defendant's invalidation reports, the common denominator for its experts was that the essential integer of the UI was common general knowledge (CGK). CGK was irrelevant for the purposes of this case based on the following:
The court found that:
Role of expert evidence
Experts' primary duty is to assist the court in arriving at the right decision. Experts' evidence should not only be independent but also be seen to be independent.(7) During the preparation for trial (exchange of documents phase), the defendant served two expert reports (the initial reports) to Emerico, intending for them to be included as documents for the trial. Emerico objected to the inclusion of the same as 'documents' as this contravened Order 40A of the Rules of Court 2012.(8)
When the defendant's expert reports were ultimately filed in accordance with Order 40A of the Rules of Court, they were prepared by different experts (the subsequent reports). Curiously, the subsequent reports were almost identical to the initial reports; the differences were only minor, grammatical and stylistic. On this basis, Emerico submitted that the subsequent reports should be disregarded by the court as it would be beyond comprehension to think that the defendant's subsequent reports had been independently produced.
The court found that:
This case serves as a reminder that:
For further information on this topic please contact Bahari Yeow Tien Hong or Lim Zhi Jian at Gan Partnership by telephone (+603 7931 7060) or email (email@example.com or firstname.lastname@example.org). The Gan Partnership website can be accessed at www.ganlaw.my.
(1) The duration of a utility innovation is for an initial period of 10 years, which may be extended for another two five-year terms. All in all, a utility innovation provides protection for a total of 20 years.
(3) Section 26B of the Patents Act 1983 allows for the division of a patent application into two or more applications; Regulation 19A of the Patents Regulations 1986 provides for a three-month timeframe to request the division of an application.
(4) Section 17B of the Patents Act allows for an application for a patent to be converted into an application for a certificate for a utility innovation, and vice versa. Section 17B(4) provides for a six-month timeframe to request a conversion.
(8) Order 40A of the Rules of Court 2012 provides the requirements for a written report to be filed in court, which include the requirement that expert evidence to be given at the trial of any action be given in a written report signed by the expert and exhibited in an affidavit sworn to or affirmed by them, testifying that the report exhibited is theirs and that they accept full responsibility therefor.
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