Monday, 16 July 2012

Patent professionals as expert witnesses? Not a good idea in Malaysia

An interesting issue arose recently in the Kuala Lumpur High Court, Malaysia, in Ronic Corporation v Cadware Sdn Bhd (D5-22IP-74-2010), an infringement claim and invalidity counterclaim in respect of a patent for a 'device for sensing and alarming the absence of water in a home machine for manufacturing soybean milk, watery bean curd and bean curd", the patent disclosing a circuit used for sensing and sounding an alarm when the absence of water is sensed.

The issue of invalidity was heard first and the defendant invoked as its expert witness a practising patent agent.  The expert evidence on the other side was supplied by an engineer specialising in electronics engineering and a professor specialising in the field of electrical engineering, brought in from Korea.

Holding the patent to be valid, the court expressed the view that the expert called by the defendant was not a person skilled in the art, as such a person must have a practical interest in electronic circuits in his or her day-to-day work (ie an engineer specialising in electronics or similar). A patent agent cannot be considered to have practical interest in the matter, said the court, as he or she would not have considered the invention at all, had he or she not been called as a witness in this case.

Source: "High Court upholds validity of patent and dismisses defendant's challenge", Contributed to International Law Office by Michael Soo and Wendy Lee (Shook Lin & Bok, Kuala Lumpur).

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