Patent Infringement Laws | Malaysia


An extract of Malaysia Patent Act | PATENTS ACT, 1983 on patent infringements

INFRINGEMENT – PATENT


Section 58. Acts deemed to be infringement. Subject to subsections 37(1), (2) and (3) and section 38, an infringement of a patent shall consist of the performance of any act referred to in subsection 36(3) in Malaysia by a person other than the owner of the patent and without the agreement of the latter in relation to a product or a process falling within the scope of protection of the patent.

Section 58A. Acts deemed to be non‐infringement. (1) It shall not be an act of infringement to import, offer for sale, sell or use ‐ (a) any patented product; or (b) any product obtained directly by means of the patented process or to which the patented process has been applied, which is produced by, or with the consent, conditional or otherwise, of the owner of the patent or his licensee. (2) For the purposes of this section, “patent” includes a patent granted in any country outside Malaysia in respect of the same or essentially the same invention as that for which a patent is granted under this Act.

Section 59. Infringement proceedings. (1) The owner of the patent shall have the right to institute court proceedings against any person who has infringed or is infringing the patent. 50 (2) The owner of the patent shall have the same right against any person who has performed acts which make it likely that an infringement will occur, which in this Part is referred to as an “imminent infringement”. (3) The proceedings in subsections (1) and (2) may not be instituted after five years from the act of infringement.

Section 60. Injunction and award of damages. (1) If the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy. (2) If the owner of the patent proves imminent infringement the Court shall grant an injunction to prevent infringement and any other legal remedy. (3) The defendant in any proceedings referred to in this section may request in the same proceedings the invalidation of the patent, in which case the provisions of subsections 56(2) and (3) shall apply.

Section 61. Infringement proceedings by licensee and beneficiary of compulsory licence. (1) For the purposes of this section, “beneficiary” means ‐ (a) any licensee unless the licence contract provides that the provisions of this subsection do not apply or provides different provisions; (b) the beneficiary of a compulsory licence granted under section 51. 51 (2) Any beneficiary may request the owner of the patent to institute Court proceedings for any infringement indicated by the beneficiary, who shall specify the relief desired. (3) The beneficiary may, if he proves that the owner of the patent received the request but refuses or fails to institute the proceedings within three months from the receipt of the request, institute the proceedings in his own name, after notifying the owner of the patent of his intention but the owner shall have the right to join in the proceedings. (4) Notwithstanding that the three‐month period referred to subsection (3) has not been satisfied, the Court shall, on the request of the beneficiary, grant an appropriate injunction to prevent infringement or to prohibit its continuation, if the beneficiary proves that immediate action is necessary to avoid substantial damage.

Section 62. Declaration of non‐infringement. (1) Subject to subsection (4), any interested person shall have the right to request, by instituting proceedings against the owner of the patent, that the Court declare that the performance of a specific act does not constitute an infringement of the patent. (2) If the person making the request proves that the act in question does not constitute an infringement of the patent, the Court shall grant the declaration of non‐infringement. (3) (a) The owner of the patent shall have the obligation to notify the licensee of the proceedings and the licensee shall have the right to join in the proceedings in the absence of any provision to the contrary in the licence contract. (b) The person requesting the declaration of non‐infringement shall have the obligation to notify the beneficiaries of the compulsory licence granted under section 51 of the proceedings and the said beneficiaries shall have the right to join in the proceedings. 52 (4) If the act in question is already the subject of infringement proceedings, the defendant in the infringement proceedings may not institute proceedings for a declaration of non‐ infringement. (5) Proceedings for a declaration of non‐infringement may be instituted together with proceedings to invalidate the patent, except where invalidation of the patent is requested under subsection 60(3).

Section 62A. Applications in contravention of section 23A. Any person who files or causes to be filed an application for a patent in contravention of section 23A commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Section 62B. Publication of information in contravention of Registrar’s directions. Any person who publishes or communicates information in contravention of any direction issued by the Registrar under section 30A commits an offence and is liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.