“The court was left in no doubt that the inventive concept
was to be distilled from the claims, not generally from the
Question 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 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.
The court considered the applicability of the Windsurfing test
in Malaysia. Overall, the Windsurfing test was seen as useful as
it provided a structured approach to inventive step and avoided
going straight to the issue of obviousness by reference to a
general impression as to the evidence as a whole.
An excerpt of the Federal Court’s decision on question 1
is provided here:
“We find merit in the Windsurfing test as a good starting
point for analysing the issue of inventive step. The structured
test offers a useful framework for considering the various
factors involved in the assessment, and provides some
clarity of reasoning and consistency of approach. That
said, we agree with the caution noted in First Currency
Choice by the Singapore Court of Appeal against over-elaborating
the statutory requirement.
“While the four-step test will be a helpful guide in most
cases, the individual steps should not be taken as set in
stone and mechanically applied, especially where the
evaluation of a straightforward factual scenario may be
derailed by ancillary debates on niceties. The court must
always bear in mind that the ultimate question, expressed
in section 15 of the Patents Act 1983 and contained in the
fourth and final step, is simply whether the invention is
obvious to a person having ordinary skill in the art, having
regard to the prior art.
“The reformulation in Pozzoli v BDMO, 2007 does not
purport to alter the basic principles in the Windsurfing test.
Properly understood, we consider the relative simplicity of
the original Windsurfing test sufficient and advantageous,
and thus find it unnecessary to adopt the restated version
of the test in Pozzoli.”
Malaysia
specification as a whole.”
As for questions 2 and 3, after a review of the relevant
case law, the court was left in no doubt that the inventive
concept was to be distilled from the claims, not generally
from the specification as a whole. Further, the court
rejected a suggestion that the “problem and solution”
approach be adopted for the purposes of determining the
inventive concept.
Based on the requirement of section 12 that defines the
meaning of invention in terms of problem and solution,
the Federal Court said that applying the same approach to
inventive step under section 15 would conflate two distinct
statutory requirements.
Overall, this careful guidance from the Federal Court,
Malaysia’s highest court, is to be welcomed. It provides
a clear signpost to the route to be taken in the majority
of cases when assessing one of the most difficult and
contentious aspects of patentability. n
Dave Wyatt is executive director and head of patent and
industrial design at Henry Goh.
He can be contacted at: dave@henrygoh.com
www.worldipreview.com IP Pages 2019 87