Rembrandts in the Attic – the Forgotten Value of Patent


By Teo Bong Kwang*

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.


Photo by Lam Been Koon

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 litigations will inform you that most patent litigations 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.


* This article first appeared in “Focus” Magazine in 2018.

Breaking new ground: Court of Appeal rules that ‘first use’ principle is not applicable to disputes between related entities

By Teo Bong Kwang and Eugene Ee

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 ([2015] 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.

(This article first appeared in the 26 November 2018 issue of World Trademark Review  Used by permission.)

The Federal Court Sheds Light on the Inventive Step of an Invention


Light in Autumn

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 [1985] 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 [2015] 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)


今天翻阅1995年,本地基督教出版社文桥为我出版的第一本书《情牵法律》。看到其中一篇淡到当年法律学院毕业后实习的情况;文中有提到我的实习师傅,已故拿督彼得穆尼爵士博士(Dato’ Dr. Sir Peter Mooney )的一些事迹。兹将它摘录如下,以纪念穆老:


好了,离开了安全、温暖,单纯的校园后(为什么温暖的东西似乎总是单纯的?),要投入社会,人家所说的那个大染缸。实在无暇去想社会是怎么个样子的,同学们都迫 不急待地找实习的律师楼。因为1986年正值经济不景之时,搞到人心惶惶。不知道是不是虚荣心作祟,我跟另外两位女同学选上了吉隆坡最大间,最有名气的纪思龄律师楼。

律师公会的规矩是每一个“实习学生”(补注:英文称为Pupil或Student,即实习律师也),都必须有个“师傅”(Pupil Mater),这名师傅 必须拥有7年执业经验,他负有教诲他的“入关弟子”之责任,以致他能成为一名有足够“法律知识、有正义感,庄重自守,品格又高超”的律师,以免有损律师公会清誉。换句话说,如果当了9个月的廉价劳工后,师父不为我们美言几句,我们就没有翻身的日子了。除此 ,通常能不能在实习后,继续留在该律师楼做一名正式律师,也有赖师傅的推荐了。所以被谁选上成为“入关弟子”,他喜不喜欢你,是事关重大的。

我听说我的师傅是纪思龄律师楼的第二号老板(补注,即穆老),心中压力大得很,担心不能胜任他所托之工。第一天上班时心跳一百,八点半准时到办公室(后来才知道师傅每天是八点十五分就报到)。纪思龄办公室的行政经理,一名不苟言笑的中年妇女,领我到我的“办公室”,即一个安排了几张连接在一起的桌子,几张椅子,两面用了板隔开,一以免靠墙的小角落。(后来我才知道这个地方叫做“学生巷”(补注:英文称为chambering lane,chambering 就是法律实习的意思),有点类似少林寺的木人巷吧?)。在“学生巷”里有另外两名实习学生(律师),一个格子小小,永远笑脸迎人的Lydia,另外一个是高个子,性格开朗的Andrew;大家打个招呼,寒暄了几句。甫坐定,有一位高个子的女律师进来,劈口问道:“New student?” 她是我们的师姐,就快要离开“学生巷”了。她告诉我们这些新的实习律师说,必须准备一张纸,然后周游整个律师楼去拜会纪思龄约16位老板。我们唯命是从,当天就硬着头皮去找老板们谈谈,彼此认识一下。最重要的是要他们在“觐见纸”上签个大名。

desk lamp当然第一个要“觐见”的是我的师父啦!我恭敬地问师父的秘书Miss Kong,是否能见他。她按了电话,几分钟后对我说OK。我心中忐忑不安的敲了房门,里面传来微弱的“come in”。推开门,心中暗忖,这么暗暗的,只有一盏台灯的亮光?微光中只见一位满头白发,脸上带着绅士笑容的白种人站立起来说:“How do you do?”洋腔十足;我不知所措的寒暄几句,大家坐下。我坐在他桌子前的一张椅子上,等候师父的盘诘。他问我有关本国土地法内英国衡平法(补注:English equitable principles)的可用性。这个问题在法律学院曾经研究过,因此我对答如流。接着他问道:“Can you get me the Incorporation of Franciscan Brothers Ordinance?” 我只听到“Brother, brother “ 声,其他的词汇,我无论怎样竖起耳朵,也分辨不出他的洋腔来。厚着脸皮,我嗫嗫嚅嚅地说:“Pardon me?” 他才重复一遍。当时心中大叫不妙,记忆中没有这个法令。只好唯唯诺诺地说我去找找。这是与师傅的初次过招,表现应是不过不失。

其实我的师傅是一名思想精细,学识渊博,受人尊敬的律师。每每与他商讨后,走出他的房间,总觉得自己太渺小了。他专门做些没有其他律师有能力办的大案,或者“奇难杂案”,偏偏他又喜欢问我们这些学生一些显然是能力不及的问题。每次在找了一些资料后,总是战战兢兢的把自己的“法律意见”( Legal opinion,即 一种针对某些法律问题的分析及提供解决方法的意见)呈上,等待他的评估。最高兴的时刻,当然是自己的“意见”被证实是正确的时候。…….

(原文题目为“Call to the Bar”, 写于1993年,刊登于《情牵法律》(吉隆坡:文桥传播中心,1995)页26-28)



上个周末本国著名作家陈团英(Tan Twan Eng)电邮他的近作The Garden of Evening Mists 之台湾版《夕雾花园》之书评给我。 星期一上班第一件事,就是略略读了这三篇台湾作者所写的中文书评。我简略的把我的看法告诉团英。电邮往返间,他捎来噩耗,说道我法律实习时期的师傅(pupil master)拿督彼得穆尼博士爵士(Dato’ Dr . Sir Peter Mooney)已经谢世;且丧礼正在进行着。听到消息,令我怅然了好阵子。

Dato Petre Mooney

约四年前,在国油的管弦乐团音乐会中看到拿督彼得穆尼,当时他精神奕奕,风度翩翩,依然一幅英伦雅儒绅士的气度。中场时,我自动上前与他打个招呼;看他的反应,大概他已忘了我这个不太出色的实习学生。但是依然谦逊有礼,用他一贯的轻声细语挚诚问候交谈。记得30年前,当我还在Skrine 律师楼实习时,同事告诉我他是个非常尽责的“师傅”,一定会细心教导他属下的实习律师。而且还会定时与他的实习学生一起吃午餐。这些说法果然一点也不虚假,他时常独自约我们吃午餐。坦白说那几顿午餐是吃的挺不自在的,一是不知道该说 些什么。二来穆老说话非常小声,特有的爱尔兰腔调更是让我这个甘榜(Kampong) 来的华校生大为紧张,心里暗叫不妙。许多时候需要竖起耳朵,才略微听到他在说些什么。

印象中当年穆老作了许多的慈善工作;在实习期间,他给我最多的任务 (assignment),就是查阅一些有关天主教医院的法律条文。记得他曾叫我看一些慈善信托(Charitable Trust)的冗长法律文件是否符合本地法律的要求,写个法律意见(Opinion)给他审核,令我叫苦连天。好不容易写完了,战兢地交上功课,还以为师傅会把它丢到废纸箩里。没想到他尽量采用我所写的东西,只是做出必须作的修改(当然是满江红)。他叫我侍立在旁,看看那些需要做出修改。当时他还是用手书写法律文件,记得他在草稿纸上振笔如飞,一下笔就甚少需要再修订。足见早拟功夫(Drafting Skill)一流;读了他所写的作品,才知道什么是一流的法律头脑,一流的法律意见。

记得我进入律师公会当天晚上(英文叫做Call to the Bar ),他还邀请了我,与当时Skrine 的一位律师 D.P. Naban (现为Lee Hishamuddin 的大老板),以及我的另外一个实习律师同事Chee Yoke Yang到他Gasing Hill 的别墅吃晚餐。晚餐过后,他还为我们弹了一点钢琴助兴。

其实他不需要请我们这两个微不足道的实习律师吃饭,但是这就是Peter Mooney —一个不折不扣的绅士,君子。有学问,但没有架子,乐于助人,照顾后备。一想起他,我心中是温暖的。团英说他为本国的律师专业增添许多的分量(英文作 : Gravitas),我完全同意。他的离去肯定是本国律师界的一个大损失。