patents act 1983

BFM Podcast: PURAJAYA ROOTS FOR TONGKAT ALI

I was interviewed by BFM Radio over a statement by Parti Sosialis Malaysia Chief Dr Jeyakumar Devaraj regarding a warning notice by Biotropics Malaysia Berhad which has taken out a patent for the bioactive component of Tongkat Ali (Patent No. MY-134867-A – corresponding patent can be seen here). In gist, Dr Jeyakumar said that patent laws have been misused to create monopolies over a natural product like Tongkat Ali which has been used for its medicinal properties “for centuries”.

I was asked to explain what this patent is about and the scope of it.

MESTECC and Massachusetts Institute of Technology (MIT) have joint ownership of a Tongkat Ali extract- what does that mean and will this impact communities that harvested the traditional herb for centuries? We speak to an IP lawyer.

Produced by: Tasha Fusil
Presented by: Kelvin Yee, Kam Raslan, Aiman Rashad



NEP Holdings fails in its patent infringement action

The Plaintiff, NEP Holdings (Malaysia) Berhad sued the Defendant, C.K. Filtration Technology Sdn. Bhd for infringement of Malaysian Patent No. MY 142566-A (“MY 566 Patent”) entitled “Improvement in the Mechanism of Water Treatment System” by manufacturing, assembling, stocking, marketing, distributing, selling and offering for sale an infringing product known as CK KING FILTER which consists of features of the MY 566 Patent by using a variant to the essentials features of the MY 566 Patent. The Plaintiff’s product that has been marketed since the establishment of the Plaintiff named Diamond Master Filter was initially based on the MY 566 Patent but no longer so since the establishment of the Defendant.

The Defendant refuted the Plaintiff’s claim and filed a counterclaim that the MY 566 Patent is invalid on the grounds of lack of novelty, lack of inventive steps and lack of description pursuant to section 56(2)(a) and (b) of the Patents Act 1983.

The Plaintiff alleged that the CK KING FILTER has all the essential features of the MY 566 Patent. The Defendant claims that the CK KING FILTER does not have, among others, the inner drum and magnetization assembly.

Held:

1. The MY 566 Patent is valid on the ground that it is not disclosed by prior arts, and it is not
obvious and the claims and the description of the Patent is sufficiently disclosed. Therefore, the MY 566 Patent is valid. Hence, the Defendant’s counter claim is dismissed with costs to the Plaintiff.

2. The inner drum is an essential integer of the MY 566 Patent. The importance of the inner drum is clear because the design of the MY 566 Patent requires two (2) connectors that has to be connected with the inner drum to direct the water flow from the input. The CK KING FILTER does not have the inner drum.

3. There was no evidence to show that the CK KING FILTER has the magnetized assembly. The CK KING FILTER has not infringed the MY 566 Patent. Accordingly, the Plaintiff’s claim for infringement is dismissed with costs to the Defendant.

[Editor’s Note: Plaintiff’s appeal dismissed with costs; costs RM20,000.00 awarded to the Defendant; deposit to Respondent towards costs.]

[Download: High Court Judgement]

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