“Check it before you wreck it”

By Haziq Adam

Communication has always been a significant key performance indicator for every profession especially for those in the consultation field. A simple miscommunication may be the “butterfly effect” to destroy a client’s life and business. Communication between clients and consultants should be clear and precise without holding back any hidden information.

Not too long ago, an interesting dispute took place between Hong Yik Plastics (M) Sdn Bhd (plaintiff) and Ho Shen Lee (M) Sdn Bhd and TNL Plastic Manufacturer Sdn Bhd (defendants). Hong Kong Ming, a director of the plaintiff, made claims for declaratory and other prohibitory reliefs and damages arising out of alleged patent infringement of their patent entitled “Throating for forming a groove on a ledge”.

From the other side of the room, the defendant argued that Hong Kong Ming is not the owner of the plaintiff’s patent and the plaintiff’s patent is not patentable due to not being novel and not involving inventive steps. Further, the defendant counterclaimed for invalidation of the plaintiff’s patent.

Interestingly, the plaintiff had instructed solicitors to write a letter to the defendants in 2013 referring to an earlier letter dated in 10 February 2012, alleging infringement. However, the plaintiff only filed a suit against the defendant in 13 March 2017. From section 59 (3) of the Patents Act 1983, the plaintiff is not entitled to institute a suit for infringement of patent because the 5 year limitation had been exceeded.

Further, the Court doubted the evidence of the plaintiff as the plaintiff was unable to explain to the Court the so-called “detailed instructions” to enable the patent agent to draw the detailed drawings, and draft the explanations. The Court expressed its concern that if Hong Kong Ming is not able to explain it to the Court, how then could he have been able to explain it to his patent agent? Moreover, Hong Kong Ming did not even know what prior art was, and left everything to his patent agent, who claimed that since Hong Kong Ming did not ask him to research prior art, he did not do so. The plaintiff did not even know if the drawings were computer-aided and explained that he had instructed his patent agent to “do up the drawings” thinking that the patent agent was able to produce them. Hong Kong Ming did say that he gave the patent agent something to look at. However, the Court found that the object provided by the plaintiff and the drawing prepared by the patent agent were different.

The Court found the plaintiff was heavily dependent on his patent agent, so much so that the agent was able to apply for an amendment of the patent without Hong Kong Ming’s instructions. This begs the question of whether it was really Hong Kong Ming’s invention.

In terms of novelty, the key features had existed way before the grant of Hong Kong Ming’s patent. Moreover, the Court noted that the patent agent did not even mention prior art in the document. This is considered material failure due to failure to disclose. The nail in the coffin was when the defendant showed that corner bead and groove joint combinations have been in existence since 2006, with one registered in the US Patent Office in 1959. Hong Kong Ming even mentioned that he had bought a sample of a corner bead for the patent agent as reference for the drawings.

The Court found that the plaintiff’s patent should be invalidated on the grounds that the invention was not novel, existed in prior art, and that plaintiff and his agent gave incomplete information and failed to disclose prior art. Consequently, the plaintiff’s claim was dismissed with costs and the defendant’s counterclaim was allowed with costs of RM 80,000 to be paid by the plaintiff to the defendant.

This case highlights the importance of thorough communication regarding each step of the patenting process between the inventor/patent owner and the patent attorney, and the importance of filing an infringement suit before it is too late. Here at KASS, it is always emphasized that future consequences may arise from errors like these. With this in mind, we are motivated to not just professionally serve our clients, but also to educate our clients in depth about their decision making.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.