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How to Determine Inventive Concepts and Inventive Steps of An Invention

Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Pang Cheng Hoon

The decision of the Federal Court (“FC”) concerns the validity of a Malaysian patent in respect of a floor trap (“the said patent”)

The facts of the case show that the Appellant brought an action against the Respondent for, inter alia, infringement of the said patent and the Respondent in return, filed a counterclaim seeking a declaration that the patent is invalid on the usual grounds of lack of novelty and inventive step. The High Court ruled in favour of the Respondent and the decision was affirmed by the Court of Appeal and hence the appeal.  

Leave was granted by the Federal Court in respect of the following questions of laws:

Whether for the purpose of considering whether a patented invention is inventive (or not obvious), the court is required to apply and carry out the 4-steps test from the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59?

Whether there is a distinction to be drawn between determining the “claimed features” of the claims of the patent (for the purpose of assessing novelty and infringement) and determining the “inventive concepts” of the invention in the patent (for the purpose of assessing inventiveness)?

If the answer to question 2 is in the affirmative, whether an assessment of the “inventive concepts” of the invention is to be confined just to the claims of the patent or should be construed from reading the patent specifications as a whole and with the common knowledge of the skilled person?

Question 1 – Whether the Court is Required to Apply the 4 Step Windsurfing Test

The Appellant’s counsel argued, based on numerous case laws, that the Windsurfing test should be adopted. Further, the High Court has failed to apply the first two steps of the Windsurfing test, namely the identification of the “inventive concept” of the invention and the assumption of the mantle of a person skilled in the art.

The FC in answering question 1, examined a plethora of UK and Singapore cases and pointed out the rationales for the Windsurfing test. It then held that the Windsurfing test is a very important and useful guidance in determining the inventive steps of a patent, stating that it provides a structured test and useful framework for considering the various factors involved in the assessment of inventive steps. The Windsurfing test also provides some “clarity of reasoning and consistency of approach”.

However, the FC went on to clarify that, the individual steps as laid down in the Windsurfing test should not be taken as “set in stone and be applied mechanically, especially where the evaluation involves a straightforward factual scenario”.

The FC then went on to deal with step two of the Windsurfing test which is the donning by the court of the mantle of the notional person skilled in the art. The FC stated that there is no requirement for an expert witness to approximate to the notional skilled person and the court may construe patent claims without the assistance of an expert who approximates the hypothetical person skilled in the art. The decision affirms the principles previously enunciated in another FC case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ 293. It is to be noted that the apex court took the opportunity to clarify the statement “court can construe patent claims without the assistance of a person skilled in the art” found in the SKB Shutters case. (hereinafter shall be referred to as “the underlined statement”). It first reaffirms the correctness and applicability of Technip France which clearly spelled out the role of experts in the issue of construction of patent claims. Thereafter it clarifies that the underlined statement must be read in context and with reference to Technip France. If read in this manner, it is clear that the underlined statement mean that the court may construe patent without the assistance of an expert who “approximates the hypothetical person skilled in the art, with all his attributes and disposition included”.

Question 2 and 3 Dealt Together

Question 2 and 3 deals with the inventive concept of a patent and whether such inventive concepts must be stated in the claims of the patent or whether it can be derived from specifications of the patent.

It is submitted by the Appellant’s counsel that there is distinction to be drawn between the “claimed features” of a patent which are understandably stated in the claims and the “inventive concept” of an invention. In assessing the “inventive concept” of an invention for the purpose of determining the inventive step involved, the whole patent specifications which include the claims, descriptions and drawings must be looked at.

The FC first expounded on the functions of the claims is to define clearly and with precision the monopoly claimed. Their primary object is to limit and not to extend the monopoly as extending such monopoly might be anticipated by an older patent. It follows that, the inventive concept of a patent must necessarily be identified in the claims as “what ultimately determine whether a patent should be granted is the inventiveness which is sufficiently inventive to deserve the grant of a monopoly”.

As for the question of what constitute “inventive concepts” of an invention, the FC held that they are not to be equated with everything stated in the claims. It adds that the “inventive concepts” is “the core, or kernel, or essence of the invention”. It thus appears that the FC agreed with the Appellant’s contention that there is a distinction to be drawn between the “inventive concepts” and the “claimed features” of a patent.

However, the FC held that in determining both the scope of the claims in assessing inventiveness or inventive steps, the court must look at the claims. Hence the inventive concept of an invention is to be assessed by reference to the claims alone. It cannot be “a vague or generalised concept excluded from the claims but derived from the specifications as a whole”. As such, question 3 is answered in the negative.

Applying the Principles of Law to the Facts of the Case

It is the Appellant’s case that the Appellant’s floor trap as patented discloses three inventive concepts, namely the “reparability features”, the fluid tight feature and the installation method. It is the Respondent counsel’s contention that all these features are anticipated by a prior art namely US Patent No. 210.

The FC adopted a purposive construction to give effect to what the person skilled in the art would have understood the patentee to be claiming.

Applying the principle of purposive construction, the court found that the reparability feature is not expressly stated nor alluded to in the language of claim 1. As such, the monopoly of the Appellant’s patent cannot be extended to include the “reparability features” which admittedly are stated in the “background” section of the specifications.

Further the FC also issued a cautionary note against appellate interference with the trial’s judge finding of facts on the question of inventive concept.

Hence, on these grounds, the FC affirmed the decisions of both the High Court and the Court of Appeal and held that the Appellant’s patent was invalid for lack of novelty and inventive step.

Significance of the Case

This is the first case of the highest authority which explains the various important principles and concepts involved in patent law. It elucidated the difference between the “inventive concepts” and “inventive steps” and the claimed features of an invention. It laid down the fundamental rule on how to determine the “inventive concepts” of an invention (when considering the issue of inventive step) in that it must be determined by reference to the clear wording of the claims alone.

The decision also clarified certain confusion engendered by the case of SKB Shutters, particularly on the role of an expert in a patent litigation. It clarifies that there is no requirement for an expert witness to approximate the notional skilled person with all the necessary characteristics or attributes. However, it does not mean that the court can construe patent claims without the assistance of such expert at all.

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