Msc Status 4.0 msc status

Patentable Inventions according to the Malaysian Patent Act.

Your specification must be New, which means that the invention has not been publicly disclosed (the onus is on the examiner to 'dig' out the information) in any form (prior art, peer disclosures), anywhere in the world (probably in the major economies);

* Involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and

* Industrially applicable, meaning it can be mass produced.


Inventive Step

"Inventive Step" according to Lord Hoffmann in Biogen Inc v Medeva plc [1997] RPC 1 at 34:

"Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case the inventive idea will be doing the new thing. Sometimes it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it."


Inventive Step & Obviousness

One is used by Europeans and the latter is used by the US. But both are similar. In the Malaysian context, both are used to mean the same. But what are they?


European Strategy to determine Inventive Step.

The problem-solution approach essentially consists in three steps:

1. identifying the closest prior art, i.e. the most relevant piece of prior art or a suitable starting point for assessing inventive step, and determining the difference(s) between the invention and the closest prior art;

2. determining the technical effect brought about by the difference(s), and that defines the objective technical problem (namely, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves); and

3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.[6]


Examples of Inventive Steps

1. An invention which provides a solution to a long-existing technical problem, which have been sought by others but evades being resolved

2. An invention which involves a series of steps to achieve or arrive at the desired result and is not merely one step away from a prior art

3. An invention which has not been produced by competitors, or by anyone, the reason being the solution intended by the invention was not obvious to them.


What may not be inventive step prerequisite includes: a mere modification of an existing product or process; a mere substitution of an existing equivalent which is commonly known.


The US version of Non-Obviousness

Non-obviousness

Loosely, something that is not readily apparent. Non-obviousness is one of the requirements for obtaining a patent. A supposed invention is usually obvious if someone of ordinary skill in a relevant field could easily make the invention based on prior art. Further to that: if someone of ordinary skill in a relevant field could not make the invention based on prior art unless with the inventor pointing the way! That is non-obviousness!


But if with all said and done the final arbiter of non-obviousness lies with the examiner which will remain arguable in a court of law. That is why patent can be invalidated in a court of law.