30 April 2020
In the recent case of Emerico Sdn Bhd v Maxvigo Solution Sdn Bhd1 (“Emerico”), the High Court of Malaya held the Actavis test/doctrine of equivalents is applicable in patent and utility innovation infringement cases in Malaysia.
In assessing whether a variant of an invention falls within the scope of a patent, the Courts have traditionally applied the Improver’s test. The differences between the Actavis test and the previous Improver’s test are tabulated below.
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Improver’s Test |
Reformulated in Actavis |
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Q1 |
Does the variant have material effect upon the way the invention works? If no … Q2 |
Notwithstanding that it is not within the literal meaning of the relevant claims of the Patent, does the variant achieve substantially the same result in substantially the same way as the inventive concept revealed by the patent? If yes … Q2 |
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Q2 |
Would this have been obvious to the skilled person as at the date of publication of the patent? If yes … Q3 |
Would it be obvious to the skilled person, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? If yes … Q3 |
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Q3 |
Would the skilled person nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If no = Infringement |
Would the skilled person have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? If no = Infringement |
The claims in Emerico are as follows:
i. A protective sleeve for an electronic device;
ii. A connector tab extended to the recess for contacting with a socket connector of the electronic device; and
iii. Wherein the biometric information retrieval means and the connector tab are connected to the input and the output ports of the circuit board for establishing a communication link between the biometric information retrieval means and the electronic device when the electronic device is attached to the connector tab and seated in the recess
The defendant’s product does not have a protective sleeve per se, but the electronic device sits in a protective recess which the Court viewed as a variant of a “protective sleeve”. The infringing product also does not have a connector tab but the Court, relying on a disassembly demonstration, concluded that there is a male USB port connected to the infringing product which is an equivalent of a connector tab.
However, one may come to the same conclusion by applying the Improver’s test if the “protective sleeve” can be purposively construed to include the recess of the product and if the “connector tab” can be purposively construed to include the male USB port.
In Singapore, the Supreme Court has rejected the Actavis Test on the grounds that:
i. It is inconsistent with the Singapore Patents Act which limits the extent of the protection conferred by a patent to that specified in the claims as purposively interpreted in the light of the description and any drawings in the patent specification
ii. The Singapore Patents Act, unlike the UK Patents Act, is not bound by Article 2 of the Protocol on Interpretation of Article 69 to the European Patent Convention (the “Protocol”).
iii. it tilts the balance too far in favour of the patentee; and
iv. it gives rise to undue uncertainty.
The Malaysian Patents Act is similarly not bound by the Protocol, and one may be prudent to exercise caution when applying the Actavis test in cases where the alleged infringed product does not fall within the literal meaning of the relevant claims of the patent.
For further information, please contact:
Timothy Siaw, Partner, Shearn Delamore & Co
timothy@shearndelamore.com
