“Novel Today, Rejected Tomorrow?” – What is Novel for Patents in Malaysia

A Common Problem Faced by Entrepreneurs Before Filing a Patent

You spent months — or in many cases, years — developing an invention or process to solve a real-world problem. People around you call it innovative and your investors seem interested.

But here’s a question many inventors overlook until it is a little too late:

Is Your Invention Really “New” from a Patent Perspective?

What if your ‘new’ invention is not actually new?

From a patent perspective, novelty is not about whether your competitors or customers know about your invention. It is about whether your invention has ever been disclosed to the public, anywhere in the world, before your patent is filed.

Often times, many promising patent applications fail, not because the invention lacks value, but because novelty has already been lost before the patent application is even filed.

What This Article Covers: Novelty in Malaysian Patent Law

This article will look into:-

1. The first patent requirement in Malaysia – novelty

2. How novelty is assessed in a patent application

3. A simple guide on how to conduct basic novelty checks before filing a patent

4. Case studies showing how novelty can be preserved, or lost

What are the Requirements for a Patentable Invention in Malaysia

For an invention or process to be patentable in Malaysia, it must satisfy all 3 requirements as per Section 11 of the Malaysian Patents Act 1983:-

1. Novelty – Your invention must be new and not previously disclosed to the public

   [Section 14 of the Malaysian Patents Act 1983].
   

2. Inventive Step – Your invention must not be obvious to a person skilled in the relevant field [Section 15 of the Malaysian Patents Act 1983].
   

3. Industrial Applicability – Your invention must be capable of being made or used in any kind of industry [Section 16 of the Malaysian Patents Act 1983].

How These Three Requirements Work Together in a Patent Application

During a patent application, these requirements are not assessed in isolation.

Among them, novelty is usually examined first. This is because once novelty is lost, the invention automatically fails, regardless of how inventive or industrially useful it may be. For this reason, novelty often becomes the earliest and most decisive filter in the patent examination process.

This is also why many valuable ideas fail to obtain protection under Intellectual Property law, even though they appear commercially promising.

1st Requirement – Novelty in Patent Law

From the above, you would probably think “is it really necessary to go into detail on the first requirement of novelty?”. The word itself is self-explanatory. The invention just has to be new, right?

You’d be surprised to learn that novelty is often the first and most decisive hurdle—and the most misunderstood by first-time applicants.

What Constitutes “Novelty” in a Patent?

Simply put, an invention is novel if it does not exist in the prior art.

In the context of patent law and intellectual property, prior art refers to everything that has been made available to the public, anywhere in the world, by any means, before a patent application is filed [Section 14 of the Malaysian Patents Act 1983].

This global standard is important. It means that novelty is not limited to Malaysia, nor is it limited to whether your competitors are aware of your invention.

What is Considered Prior Art for Novelty Assessment?

Prior art includes, but is not limited to:

• Published patent documents

• Academic journals and research papers

• Product brochures and catalogues

• Websites, videos and online demonstrations

• Seminars and talks

If your invention has been disclosed in any of these forms — even unintentionally — it may no longer be considered new for the purpose of patent registration.

Common Ways Inventors Accidentally Lose Novelty

Many inventors lose novelty without realising it. Common examples of unintentional disclosure include:

• Launching a product before filing a patent application

• Presenting the invention at a conference or pitching event

• Pitching to investors without a non-disclosure agreement (NDA)

• Publishing research findings online

• Uploading prototypes or demonstrations on social media

From a patent perspective, once the information is accessible to the public, novelty may already be lost — even if the disclosure was brief or informal.

Are There Any Exceptions to the Novelty Rule in Malaysia?

The Malaysian Patents Act 1983 does provide limited exceptions in certain circumstances, such as disclosures made at officially recognised exhibitions.

However, these exceptions are narrow, fact-specific, and risky to rely on in practice. Many patent applications fail because applicants assume an exception applies, only to find that it does not.

Rule of Thumb for Entrepreneurs and Inventors

Therefore, the rule of thumb is simple: File first. Disclose later.

This single principle can often mean the difference between a successful patent application and a permanently lost opportunity for Intellectual Property protection.

Easy Preliminary Steps to Check if Your Invention is Novel

While searches conducted by professionals like patent agents are more comprehensive, inventors can perform preliminary searches themselves using publicly available databases.

These preliminary steps are often useful before committing to a full patent application or patent registration.

Why Conduct a Preliminary Patent Novelty Search?

A proper search can bring about a list of benefits, namely:

• Reducing the risk of rejection

• Help refine and strengthen patent claims

• Save costs in the long run

• Provide insight into competitors and technological trends

For entrepreneurs and inventors, these early checks can help determine whether an invention is worth pursuing further under Intellectual Property protection.

Common Free Patent Databases Inventors Can Use

These are some of the most commonly used patent databases that are freely accessible and suitable for inventors conducting basic novelty checks:

1. Intellectual Property Corporation of Malaysia (MyIPO) Patent Search

   Used to search for patents filed in Malaysia
   

2. Google Patents

   Used to search for patent documents from multiple jurisdictions worldwide
   

3. World Intellectual Property Organization (WIPO) - PATENTSCOPE

   Used to search for patents filed internationally under the Patent Cooperation Treaty (PCT)
   

4. Espacenet (European Patent Office)

   Used to search a large collection of global patent publications

These tools are commonly relied upon during the early stages of a patent novelty assessment.

Limitations of Self-Conducted Novelty Searches

While these public databases are helpful, please be mindful that self-conducted searches have limitations. Patent documents can be highly technical, written in different languages, and classified under complex systems. As a result, relevant prior art may still be missed.

Therefore, professional advice still remains critical, especially for commercially valuable inventions or when you are preparing a formal patent application.

From Theory to Practice: How Courts Assess Novelty in Real Patent Disputes

The preliminary searches discussed above help inventors assess risk before filing a patent application. However, the true test of novelty often only emerges when a patent is challenged in court.

A good illustration of how Malaysian courts analyse novelty — especially where prior disclosure and confidentiality are involved — can be found in the following cases.

Case Study: KENDEK vs DIP CHAIN — When the Court Found the Patent to Be Novel

Can an Invention Still Be Novel Even If It Was Shared with Third Parties?

This case relates to one of Malaysia’s most important industries — the rubber glove manufacturing industry.

The decision in Kendek Products Sdn Bhd v. Dip Chain Manufacturing Sdn Bhd [2024] 4 CLJ 44 illustrates how the Court found an improvement to be novel, even though the drawings of the invention had been disclosed to third parties who were members of a joint venture.

The Background of the Dispute

Here, the dispute is in relation to an improved design for a mechanical component used in the dipping process used to manufacture rubber gloves (“Patent”) which has been registered by the Plaintiff, Kendek Products Sdn Bhd (“Kendek”).

The mechanical component in question is the holder which secures the ceramic former to the conveyor chain in a dipping machine.

In simple terms, a dipping process involves the following:

1. Conveyor system attaches ceramic moulds shaped like human hands (called formers) using holders.
   

2. Formers are repeatedly dipped into liquid latex, dried, and processed until latex gloves are formed.
   

3. Gloves are then removed from the formers.

Kendek sued Dip Chain Manufacturing Sdn Bhd, the Defendant (“DIP Chain”) for patent infringement.

The Novelty Challenge Raised by the Defendant

To fight the infringement claim, DIP Chain denied infringement and counterclaimed that the Patent lacked novelty because drawings of the Patent had already been disclosed by third parties (“KLE”) before the Patent was filed in 2005.

To support its case, DIP Chain produced KLE’s drawings from 2002 to 2004 as well as trading documents, such as invoices, from 2014 to 2018.

In its defence, Kendek argued that:

• No public disclosure: The drawings did not amount to prior art because there was no proof that the drawings had ever been disclosed to the public before the filing date (aka patent’s priority date).

• Confidentiality under a joint venture: Even if the drawings existed, the drawings were created as part of the joint venture between Kendek and KLE. As such, the drawings were protected by confidentiality and could not be considered as a “prior art” that was disclosed to the public.

Court’s Decision on Novelty

Issue 1: Did the Drawings Constitute Prior Art?

The Court held that although KLE’s drawings from 2002 to 2004 were produced, DIP Chain failed to produce any trading documents prior to the filing date of 7 April 2005.

This absence of evidence suggested that the drawings were not disclosed to the public. Accordingly, the drawings did not constitute prior art for the purpose of assessing novelty

Does Confidentiality Prevent Prior Art?

The Court relied on:

1. YKL Engineering Sdn Bhd v Sungei Kahang Palm Oil Sdn Bhd & Anor [2022] 8 CLJ 32 – where the Federal Court held that information is “disclosed to the public” if it is communicated to someone who is free, in law and equity, to use it.
   

2. Newacres Sdn Bhd v Sri Alam Sdn Bhd [1991] 3 CLJ 2781 - where it was held that joint ventures give rise to fiduciary relationships which imposed duties of trust and confidence between the parties.

Here, from the evidence adduced by Kendek, the Court was satisfied that there was a joint venture between Kendek and KLE, and that KLE’s drawings were created as part of the joint venture.

As such, the disclosure of the drawings did not constitute a disclosure to the public, and novelty was preserved.

Key Takeaway from Kendek v Dip Chain

This case demonstrates an important point for entrepreneurs and inventors:

Not every disclosure destroys novelty, but only disclosures made to the public, without confidentiality, will do so.

However, relying on confidentiality arguments after the fact is risky and highly evidence-dependent.

A Contrast Case: When a Patent Failed the Novelty Test Due to Prior Art and Unclear Claims

The Kendek v Dip Chain case shows how novelty can be preserved where disclosures are confidential and not made to the public.

However, novelty can fail just as decisively when all essential features are already disclosed in a single prior art document, or when the patent claims do not clearly define what is being protected.

This contrast is clearly illustrated in the following case.

Case Study: SPIND vs JUSTRADE – Why Clear Patent Claims Matter for Novelty

When Does a Patent Fail the Novelty Requirement?

In Spind Malaysia Sdn Bhd v. Justrade Marketing Sdn Bhd & Anor [2016] 3 CLJ 136, the Court looked into how a patent can fail the novelty requirement when all essential features are already found in a single piece of prior art, and when the claimed invention is not clearly defined in the patent claims.

Background of the Dispute

The Plaintiff, Spind Malaysia Sdn Bhd (“Spind”) designs and manufactures plumbing products including the SPIND floor gully/trap used to channel wastewater while preventing the escape of foul odours in buildings. Spind is the owner of the patent to protect the design and workings of the SPIND floor gully/trap (“Patent”).

Over time, Spind introduced several improved versions of the SPIND floor gully/trap, culminating in the SPIND 6 version.

The Defendants, Justrade Marketing Sdn Bhd (“Justrade”), was engaged as Spind’s marketing agent and marketing consultant up until 2011. Problems arose when Spind found that Justrade began selling their own floor gully trap after they no longer worked for Spind.

Spind sued Justrade on the grounds that alleged that Justrade’s product infringed the Patent.

The Novelty Challenge Raised by Defendant

Justrade counterclaimed that the Patent was not novel because a United States patent (“Prior Art”) had already disclosed all the features of the Patent. Spind defended by saying that the Patent is novel due to 2 essential differences.

Court’s Analysis and Decision on Novelty

The Court agreed with Justrade and held that:-

• Difference 1: Fluid-tight seal

Upon analysis, the Court found that although the Prior Art did not use the words “fluid tight”, it described components that “tightly abut together”.

The Court found that these 2 terms essentially share the same meaning and therefore this is covered by the Prior Art.

Accordingly, this feature was already anticipated by the Prior Art.

• Difference 2: Reparability feature

Spind argued that its Patent was novel because it allows damaged internal parts to be removed and replaced without breaking the floor slab.

Having gone through the Patent’s claim, the Court found that this feature was not clearly and expressly claimed. By relying on the cases of General Tire & Rubber Co v. Firestone Tyre Rubber Co Ltd [1972] RPC 457 and Electric & Musical Industries v. Lissen Ltd [1938] 4 All ER 221, the Court reaffirmed the principle that:-

“The function of patent claims is to define the monopoly clearly and precisely, and what is not claimed is disclaimed.”

As this feature was not clearly claimed, the Court treated it as disclaimed, meaning it could not be relied upon to establish novelty.

Key Takeaway from SPIND v JUSTRADE

This case highlights a crucial point for entrepreneurs and inventors:

Novelty is assessed by comparing what is claimed against a single piece of prior art — not by what you intended to protect.

Even if an improvement exists in practice:

• It will not save novelty if all essential features are already disclosed in one prior art document; and
  

• It will be treated as abandoned if it is not clearly and expressly claimed.

Conclusion

Novelty is the foundation of patent protection. As novelty can never be recovered once it is lost, understanding what constitutes novelty — and how easily it can be destroyed — is essential. Early planning, controlled disclosure, and informed searching can make the difference between a granted patent and a costly rejection.

If you are unsure whether your invention is truly new, or if you would like assistance on conducting a proper novelty assessment, contact us for a discussion on your invention and the strategies towards securing meaningful protection worldwide!

Written by,

Sarah Lee

Senior Legal Executive

LL.B (HONS), LL.M

Advocate & Solicitor of Malaya (Non-practising)

Lawrence Tan  

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor

Disclaimer:

This article is provided for general informational purposes only and does not constitute legal advice.

For advice tailored to your specific situation, please contact us separately, or consult a qualified patent agent, patent attorney, or legal professional.