APAA e-Newsletter (Issue No. 36, August 2023)

Duty of Disclosure in Patent Prosecution in Malaysia – How Far Can It Go?

Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)


The Court of Appeal recently made available its written grounds in respect of two appeals stemming from actions for the invalidation and infringement of Malaysian patent MY-142862-A, for an invention entitled “System for Image Inspection of Movable Object and Dodging Method” (“Patent 862”).

Before deciding on the substantive appeal, the Court of Appeal considered a motion which was filed to regularise an amended memorandum of appeal which was wrongly dated, was not signed and was not endorsed. While the motion was ultimately dismissed, the Court of Appeal went on to consider the issue which the amended memorandum of appeal sought to bring before the Court – the alleged suppression of evidence during the prosecution of Patent 862 – a novel issue which has not been raised or decided upon in Malaysia before.

To better understand the argument which the appellants were seeking to make, a brief recap of a few important dates during the prosecution of Patent 862 is necessary.

Priority date 13.10.2006
Filing date 25.12.2006
Request for substantive examination filed 07.11.2007
Withdrawal of priority claim 13.04.2009
Narrowing of claims in China 07.11.2009
Narrowing of claims in Europe 18.02.2011

The Intellectual Property Corporation of Malaysia (“MyIPO”) issued a letter dated 25.07.2016 stating that it was not informed that the respondents have withdrawn the priority claim in their PCT application upon which Patent 862 was based, or that they have narrowed the claims for its corresponding patents in China and Europe. This letter was admitted as fresh evidence during the appeal.

On this premise, the appellants argued that the respondents have suppressed information and / or deliberately caused incomplete or incorrect information to be provided to MyIPO, which should consequently lead to the invalidation of Patent 862. They also argued that the respondents had a continuing duty to provide MyIPO with details on the withdrawal of priority claim and narrowing of claims even after they filed their request for substantive examination.

In this regard, the Court of Appeal considered the inclusion of the words “at the time of filing” in Section 29A(4) of the Patents Act 1983 (“Act”) and the use of past tense in Regulation 27(3) of the Patents Regulations 1986 (“Regulations”) and found that the information which the respondents had to disclose were limited to information or documents already in existence at the time of filing of the request for substantive examination.

There is no continuing duty of disclosure and there was therefore no suppression as the withdrawal of priority claim and narrowing of claims took place after the request for substantive examination was filed.

The appellants further argued that there is a duty of candour upon the respondents because the prosecution of a patent is similar to an ex parte application. This is because only the applicant is in dialogue with MyIPO throughout the prosecution process, no third party will be granted access to correspondence exchanged between the applicant and MyIPO and there is no pre-grant opposition proceedings. Invalidation proceedings is only available after a patent has been granted. Hence, the respondents were duty bound to make full and frank disclosure of all facts pertaining to its patent application.

However, the Court of Appeal dismissed this argument for the following reasons:-

  1. The prosecution is an administrative proceeding specifically governed by the Act and Regulations while ex-party applications are governed by the Rules of Court 2012.
  2. More importantly, substantive examination is involved during the prosecution of a patent application where an examiner will conduct his own search / investigation. In an ex parte application, reliance is placed on the applicant’s evidence.
  3. Patent grants are statutory in nature which are governed by the Act and Regulations and nothing more. Any duty of good faith must be confined to that stated in the Act and Regulations.

In addition, the Court of Appeal recognised that patent rights are territorial in nature. As such, the narrowing of claims in China and Europe is irrelevant to the question of whether Patent 862 was properly granted. As such, no merit was found with regard to the appellants’ argument that there has been suppression of evidence and Patent 862 was eventually found to have been valid and infringed.

It remains to be seen whether either party will appeal against the decision of the Court of Appeal but a judgment by the Federal Court on this issue would provide welcomed clarity to this novel and most interesting argument.