0n 26 September 2010, Jimi Heselden, a British businessman who recently bought the Segway company was happily riding the famed “Segway” scooter in his huge Yorkshire estate. In a tragic turn, the Segway scooter ran over the cliff and into a river and Heselden was immediately killed. At that time, Segway scooter was a much touted invention of US inventor Dean Kamen.
Surely not every invention has tragic consequence. On the contrary, many inventions brought much happiness, fame and fortune to their inventors or owners. Take the example of the “One Click” patent of Amazon which was granted by the US Patent Office in 1999. It has reportedly generated billions for Amazon.
The Hidden Value of Patent
Many of us are totally oblivious to the immense commercial value of an invention or for that matter, the importance of an intellectual capital in the form of a patent in any business enterprise. The vast majority of companies are simply unaware of the often-enormous economic and competitive values that lie untapped within their patent portfolios. To borrow the euphemism popularized by Kevin Rivette and David Kline, it is like you have Rembrandt paintings lying dustily in the attic.
Balancing Market Monopoly and Public Interest
The modern history of protecting one’s invention started in Venice in 1474. In the UK, the first piece of legislation which attempted to protect invention was The Statute of Monopolies, 1623. In its own archaic language, it allowed “patent monopolies” for 14 years upon “any manner of new manufacture”. Stripped of legal niceties, it merely meant that the State would grant a monopolistic right in the form of “letters patent” to the inventors. As a trade-off, the inventors must disclose their inventions in a clear manner so that it can be used by a ‘person ordinarily skilled in the art’. The philosophy of protecting patent is pretty simple: the State will grant a limited protection for any invention for a period of between 15 to 20 years in exchange of the full technical information related to it. Once the protection period has expired, the inventions are free to be exploited by anyone. It is believed that with the required statutory protection given by the Government, inventors would be encouraged to engage in more inventive activities and come out with more novel inventions. This will ultimately benefit the society at large as the innovative ideas as disclosed in the patents will add to the pool of existing technological knowledge in a particular field. In this manner, society will progress in innovation and it will enjoy the fruits of the inventive members within it.
Flash of Genius can be Present in Mundane Objects
The image Thomas Edison or Albert Einstein or a mad scientist with fuzzy hair will immediately come to mind when we talk about invention. This is of course a myth. The reality is that not every invention needs to be Einstein-que or earth-shattering like the atomic bomb. On the contrary, a cursory search at Google Patent will show that many mundane objects have been or are still protected by patents. For instance, a gadget to boil eggs, the yellow “post-it” note and the ubiquitous paper clip are subject matters of granted patents. Indeed flash of genius can be present in many mundane objects.
The Requirements for Patenting a New Invention
In 1983, Malaysia has its own national patent legislation. It is called the Patents Act, 1983. It came into force on 1 October 1986. Before the passage of this legislation, we could only obtain patent protection by first registering a patent in the United Kingdom and then re-register it in the three component regions of Malaysia. With the passage of the 1983 Act, we could obtain a national patent by filing an application with our local patent office.
The most frequently asked question which an intellectual property law practitioner like me has encountered is: how do I get a patent?
The answer is to first get your invention written down clearly in a document which is commonly called “patent specification”. However, before this is done, it is imperative that the invention must possess the following requirements:
the invention must be “new” in the sense that it has not been disclosed to the public anywhere in the world. The disclosure can be in the form of written publication, actual usage, actual article or even oral presentation or even sample shown in an exhibition;
the invention must involve “an inventive step”. The question whether an invention involves an “inventive step” can be asked in another manner: whether the so-called “inventive step” (i.e. the “inventive feature or element”) of the invention is obvious to a person who has ordinary skill or experience in the subject matter; and
the invention must be “industrially applicable”. This last requirement is normally easily satisfied as long as the invention can be commercially or industrially exploited. The rationale of this requirement clear, that is it is to prevent granting of patent for some theoretical invention which cannot be put into practical use.
In order for a patent to be valid, all the above three requirements must be present. Anyone who has some experiences in patent litigation will inform you that most patent litigation are fought on the above three issues. If a patent is proved to have been lacking in any of the above requirements, it can be cancelled or invalidated. Thus as a prudent measure, before an eager inventor spend enormous money in getting its patent specification drafted, it is advisable to ask the patent drafter to conduct the necessary “searches” to ensure that there are no other prior publications or disclosure which will nullify the invention.
Once the patent specification is properly drafted, the other steps of getting a patent granted are relatively straight-forward. The first step is to fill up the prescribed forms and then file them with the patent office. You should of course consult a patent lawyer or agent for this important step.
The obtaining of a patent for any innovative breakthrough is an indispensable step to secure a cutting edge for achieving continuous growth of a business in this competitive environment.
The Malaysian Court of Appeal has recently decided that the courts are not bound by “hard and fast” legal principles when it comes to deciding on the proprietorship of a trademark among related entities.
In Pathmanathan v Portcullis (Singapore) Pte Ltd (Civil Appeal No W-02(IPCV)(W)-1798-09/2016), which concerned a dispute between different entities that were previously part of the Portcullis group of companies, the Court of Appeal was faced with the thorny issue of the proprietorship of a trade mark used within the group.
The corporate structure of the Portcullis group is rather elaborate:
the Portcullis companies in Malaysia – the third to twelfth appellants/defendants in this appeal were owned by Portcullis Holdings (Malaysia) Sdn Bhd (‘PH’), the second appellant/defendant; and
the respondent, Portcullis (Singapore) Pte Ltd, and PH were both owned by Portcullis Holdings International Limited (‘PHIL’), which in turn was wholly owned by First Finance Holdings Ltd.
On 2 April 1998 a memorandum of agreement was signed by the first appellant/defendant, George Pathmanathan, and PHIL, whereby George was given 25% of the shares in PH. Sometime in 2006, George filed a minority oppression petition against PHIL, among others. The High Court ruled in George’s favour and ordered PHIL to transfer 75% of its shares remaining in PH to George. As a result, PH and the Portcullis Malaysian entities became wholly owned by George.
Subsequently, George filed two applications to register the PORTCULLIS marks in Malaysia. However, he was outdone by the respondent, Portcullis (Singapore), which managed to register twelve PORTCULLIS word and device or pictorial marks in various classes in Malaysia. Armed with the registrations, the respondent proceeded to sue the appellants for passing off, trade mark infringement and copyright infringement. The respondent contended that, when PH ceased to be part of the Portcullis group, its right to use the PORTCULLIS marks and logo also ceased.
In response, the appellants argued that the acquisition of PH by George was together with the goodwill and the other IP rights of the respective companies by virtue of the memorandum of agreement. Accordingly, the appellants led a counterclaim to expunge the twelve registered trade marks registered in the name of the Singaporean entity from the register.
In an extensive decision, the High Court ruled in favour of the Singaporean entity, based predominantly on the factual finding that it was the first user of the PORTCULLIS marks and logo in Malaysia.
Court of Appeal decision
At the appellate level, the Court of Appeal summarised the issue at hand in the following manner:
In the context of a corporate group, how is the issue of ownership of trade marks, corporate names and goodwill determined, including whether the principle of ‘first user’ is applicable when determining such ownership within a corporate group?
In answering this question, the court referred to the English Court of Appeal’s decision in Scandecor Development AB v Scandecor Marketing AB((1998) EWCA Civ 1282). It held that, while the ‘first user’ principle is useful when determining any issue relating to the use of trade marks between unrelated competitors, such approach would not apply to cases involving related entities. If the court were to adopt the conventional approach, then the Singaporean entity would obviously prevail as it was the first user of the PORTCULLIS marks.
Instead, the court examined the facts of the dispute and highlighted one of the clauses in the memorandum of agreement, which provided that the goodwill and other IP rights shall vest in the respective Malaysian companies. Given that the ownership of PH was transferred to George, the goodwill in the PORTCULLIS marks and logo remained with the Malaysian entities. The High court’s decision was therefore overturned.
Interestingly, the Court of Appeal chose to deviate from a long line of cases – including the apex court’s decision in Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia ( 6 MLJ 465), which held that proprietorship of a trade mark is established by first use of the mark within the country. In arriving at its conclusion that the Malaysian entities retained goodwill in the PORTCULLIS mark, the Court of Appeal placed great emphasis on a contractual provision in the memorandum of agreement. This raises the important question of whether contractual provisions on the alleged ownership of a trade mark should take precedence over the exclusive rights of a registered trade mark owner.
和合本修订版之《以弗所书》第4章第15节说，我们要用爱心“说诚实话”（照上面的讨论，可以理解为“讲论真理“），“各方面向着基督长进”。这句很好：因为我们各方面的长进，是朝向基督。基督是我们的榜样，我们向他学习，以他马首是瞻。最终是连结与他这位“元首” （或“头“ – head）。英文NRSV版《圣经》是说we must grow up in every way into him who is the head, into Christ。这个into有百川汇海的意味，最终我们都归于基督这个“大海”，融合了。
我们都知道，保罗用“身体“（body）这个意象（imagery ）来代表教会。用身体这个意象，主要是要带出一个非常重要得信息：身体有不同的器官 （organs），各个器官必须是连结得甚为结实，牢靠，不会断落的。和合本修订版用了一个相当好的形容词：“接连得紧凑”。英文NRSV版《圣经》则 说每个器官是借着筋（ligament）连结，缝纫起来的（knit together by every ligament ）。大家都吃过猪肉，牛肉，也吃过牛筋，知道牛筋是非常坚韧的。骨容易折断，但筋却不容易扯断。
保罗也说每个器官要“各按各职，照着各体的功能彼此相助“，英文说：each part is working properly ，那么身体（教会）就会增长，而且保罗也指出一个至关重要的真理： 这种的生长是在爱中进行的。或者更准确的说是：不是教会数量增长而已，更重要的是爱心日渐生长。 英文NRSV版《圣经》的表达方式较为清楚：We must grow up in every way into Him who is the head, into Christ, from whom the whole body, joined and knit together by every ligament with which it is equipped, as each part is working properly, promotes the body’s growth in building itself up in love.
一般上我们都认为这十条诫命是写在两个石版（stone tablet）上的。有人认为一个石版分别刻5条诫命；有的则认为一个石板刻4条，另外一个是6条（就如我Powerpoint里的图片所示）。英国All Nations Christian College的圣经研究讲师David L. Baker认为十诫分成爱神与爱人两大部分（参他的著作The Decalogue: Living as the People of God, Apollos, 2017）。这跟旧约《利未记》19章18节及《申命记》6章5节，以及新约耶稣所说的两大诫命（参《马太福音》22章34-40节，《马可福音》12章28-34节）是相符的。而十诫中第一到第五诫命是属于一组，这组是关系到“爱神“（Love God），其他的诫命则是关系到“爱人“。Baker把第五个诫命放在第一块石版，即“爱神”这边，意思是说，孝敬父母就是爱神的表现；如果你爱神，必定要孝敬父母。
The apex court of Malaysia has recently delivered an important decision which touched on the key requirement of inventive step involved in an invention and how to determine such inventive step.
In Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Pang Cheng Hoon (Federal Court of Malaysia Civil Appeal No. 02(f)-55-08/2016(W)), the following three questions of law were referred to the FC:
1. 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  RPC 59 (or more commonly known as the ‘Windsurfing test’)? (Question 1)
2. Whether there is a distinction to be drawn between determining the “claimed features” of the claims of a patent (for the purposes of assessing novelty and infringement) and determining the “inventive concepts” of the invention in the patent (for the purpose of assessing inventiveness)? (Question 2)
3. If the answer to Question 2 is in the affirmative, whether an assessment of the “inventive concepts” of the invention is to be confined to just 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 3)
The appeal relates to a patent for an invention which is simply called a “floor trap” granted to the Appellant. The Appellant sued the Respondents for infringement of patent and the Respondents counterclaimed to invalidate the patent for lack of novelty and inventiveness. The Appellant’s claim was dismissed and the Respondents’ invalidation counterclaim was allowed by the High Court. The appeal to the Court of Appeal was also dismissed. Leave was subsequently granted by the FC for the 3 questions mentioned above to be answered.
In answering Question 1, the FC considered the Windsurfing test to be a good starting point for assessing inventiveness – describing the test as “a useful framework…[and which] provides some clarity of reasoning and consistency of approach”. However, it cautions that the individual steps should not be considered as being “set in stone and mechanically applied”. Ultimately, the question is simply whether the invention is obvious to the person having ordinary skill in the art, having regard to prior art. The 4-steps Windsurfing test was summarised to the following:
Step 1: Identify the inventive concept embodied in the patent.
Step 2: Assume the mantle of person having ordinary skill in the art, and impute to him the common general knowledge at that date.
Step 3: Identify the differences between the prior art and the alleged invention.
Step 4: Determine whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the person having ordinary skill in the art.
The FC described the test for Step 4 to be an objective test and a question of a fact and two types of evidence can be considered: –
primary evidence in the form of the opinions of expert witnesses; and
secondary in the form of contemporary events and commercial success of the alleged invention.
On the evidentiary value to be given to expert opinions, the FC viewed such evidence as “generally valuable and often necessary”. However, the ultimate question of fact, i.e. whether the step was obvious or not, must be determined by the court and the court is not bound to follow the expert’s opinion. This reaffirms the position taken by the FC in the earlier case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor  6 MLJ 293 (“SKB Shutters”).
As for secondary evidence, the FC held that such evidence is not in itself conclusive on the question of obviousness and care should be taken when conferring proper weight to such evidence. Question 1 was thus answered in the affirmative.
Question 2 and Question 3 were considered together. The FC declared that “[t]he starting point in patent litigation, whether to determine novelty, obviousness, or infringement, is… to ascertain the scope of the claims in a patent”. As such, the inventive concept of a patent must be identified from the claims. The FC further explained that “[i]t is the inventive concept that the patentee has put forward as underpinning his monopoly that must be identified”. Accordingly, inventive concept is to be distilled from the claims and not from the patent specification as a whole. It also follows that technical advantages of an invention which the patentee aimed to achieve, but are not included in the scope of the claims, do not constitute an inventive concept. The FC was however careful to point out that while inventive concept is to be determined from the claims, it is not to be equated with everything stated in the claims. Rather, inventive concept is the “essence of the idea” or “the core (or kernel, or essence) of the invention”.
Question 2 was thus answered in the following manner: in determining both the scope of the claims for assessing novelty and the inventive concept for assessing inventiveness, the court must look at the claims in the patent. However, the inventive concept is not one and the same as the claims; it is the core or essence of the invention. Question 3 was answered in the negative.
This recent Spind decision by the FC is important for patent litigation as it confirms the application of the Windsurfing test for determining whether an invention is inventive or not. The decision also explains how the inventive concept of a patent can be ascertained – from the claims. Patent drafters would also wish to take note of the court’s position in this regard. Based on this decision, it is imperative that patent drafters ensure that the “core (or kernel, or essence) of the invention”, i.e. the inventive concept, be specifically included in the claims of the patent.
(Contributed by Teo Bong Kwang & Ng Yueng May, Messrs. Wong Jin Nee & Teo, Kuala Lumpur, 29 March 2018. Used by permission)
前两天到我最爱的书局Kinokuniya去，本意是要买本Moleskin日记本给儿子；免不了去浏览令人垂涎，琳琅满目的书籍。结果就是两袋书，其中一本是丹尼尔·克莱恩（Daniel Klein） 的Every Time I Find the Meaning of Life, They Change It （Oneworld, 2015年出版）。作者是位78岁的美国作家，写小说也写非小说 （non-fiction），包括与他人合写了一本畅销书，叫做《柏拉图与鸭嘴兽一块上酒吧》（Plato and a Platypus Walk into a Bar）。
在本书142页（我只能用页数，因为这本书没有目录，也没章题，章数），作者克莱恩引述了培根（Francis Bacon）的名言：“一点哲学引向无神主义，但是深邃哲学则带领人的心思到宗教”（原文作：A little philosophy inclineth man’s mind to atheism, but depth in philosophy bringeth men’s minds about to religion”）。作者自谦的说他可能没有资格评论，因为他无法探研哲学的深处，但是他还是能捉到这句名言的重点。他接着说：“亚里斯多德的名言：‘当你知道得越多，那你会发现你不知道的更多’，培根是从这个想法开展他的看法的。承认自己所知的有限，而更重要的是，我们能够知道的是那么少，真的是一种大开眼界的想法（a real eye opener）。但是这不能阻止我们想要知道的更多，或者至少保持一直探索的态度。对未知的追寻，肯定让我们心思倾向于寻求属灵事物（any wondering about the unknowable certainly inclineth a mind toward the spiritual）。
另外一章是谈到怀疑主义大师大卫·休谟（David Hume, 1711-1776）的那一句：“对宇宙来说，人的生命不比一只牡蛎来得重要”（The life of a man is of no greater importance to the universe than the at of an oyster）（参本书第81页）。 休谟认为人只是宇宙这个巨大机器中的一个小零件，渺小得没什么意义。但是作者认为我们可以用另一个角度来看这个牡蛎比喻。虽然我们的生命微小，但是可以有巨大的涟漪作用 （ripple effect）。他引用Frank Capra 的电影It is a Wonderful Life 来说明。主角George Bailey认为他对不起他的家人与社群而想在圣诞节前夕自杀，但是Bailey 的守护天使Clarence出现，让Bailey 看到如果没有他，整个社区将会不一样。
此外，克莱恩也引用英格玛·伯格曼（Ingmar Bergman）的电影 《芬妮与亚历山大》（Fanny and Alexander）中的一段对白，来带出这个信息：
“世界是一窝的强盗，黑夜经已降临；邪恶已经挣脱锁链，像疯狗般的横行世界。邪恶的毒素影响了我们每个人，无人幸免。因此让我们还能快乐的时候，继续快乐吧，让我们继续善良，慷慨，充满爱心，做个好人吧。我们无需感到羞耻，其实是必须，在我们微小的世界取乐吧。”（It is necessary and not at all shameful to take pleasure in the little world）（参页84-85）
从本书，我也学习到，思索本身就是一种的喜乐，而其重要性不亚于其他肉体感官好处。根据作者说这是英国哲学家罗素（Bertrand Russell）所强调的（参页58-60）。他引述罗素的说话：”The goods of the mind are at least as important as the goods of the body”。
书中有一章谈到友情的可贵，引述了美国哲学家爱默生（Ralph Waldo Emerson）的名言：“老朋友的其中一个好处，就是你能愚笨的与他们相处”（It is one of the blessings of old friends that you can afford to be stupid with them）（页64），读后让我心有戚戚矣。
在宗教观念上，作者自称是一个不可知论者（Agnostic），但他对宗教仍然是非常尊重，且持开放的态度（参页145）。 所传达的仍然是一个积极的人生态度，在讨论叔本华的悲观主义那一章（页30-34），作者引用伍迪·亚伦（Woody Allen ）的电影Hannah and Her Sisters 的男主角密奇（Mickey）在片尾的一段独白，来说明其实我们能从生命中的小乐趣，重拾对生命的喜悦感。而就是这些小乐趣，让我们在看来充满绝望的境况继续向前。正如王尔德（Oscar Wilde）所说：“我们每个人都身处阴沟，但当中有些人却看着满天星星。”（We are all in the gutter, but some of us are looking at the stars”）
古代希腊（约公元前4世纪）的哲学家第歐根尼（Diogenes）曾说：“狗与哲学家作了很多很大的好事，但是他们得到最少的报酬。”英文是这么说的：“Dogs and philosophers do the greatest good and get the fewest rewards” 。[我想很多人会把“哲学家”这词，换成他现在正在做的职业或工作]
Diogenes是希腊众多哲学派系中称为“Cynic”的，他也被称为Diogenes the Cynic。 而“Cynic”这个词是来自希腊文，意思是说“像只狗“（dog-like）。因为Diogenes生活举止活脱脱就像只狗。他说狗很自然，不做作；要吃东西就吃东西，要撒尿撒尿。狗只活在当下，不用为过去或未来烦恼。Diogenes 常赞赏推崇这种生活方式。一生据说说是住在一个木桶（亦说是装死人的瓮），所拥有的所有财产只包括这个木桶、一件斗篷、一支棍子、一个面包袋。他鄙视社会的虚伪，卫道之士。我们的仁兄也因此仿效狗狗，肆无忌惮的公开撒尿。中文把Cynic翻译为“犬儒”。嗯，还是第一次看到两者的联系。
不只是Diogenes从狗学到人生哲理，大哲学家柏拉图也说：“Your dog is a true philosopher” . 不相信，去翻阅《理想国》第二卷，当中苏格拉底与格劳孔（Glaucon） 有关“哲学王” （philosopher king） 当拥有的素质的对话。