“Is Your Invention Inventive?” Understanding the Inventive Step Requirement for Patents in Malaysia
- IP Gennesis
- 10 minutes ago
- 10 min read
Many a times, unique never-before-seen inventions are created, attracting eager investors ready to capitalise on them. To protect such inventions, patent applications are filed with the expectation that the patent registration will be granted.
Unfortunately, the reality is that many inventions fail to obtain patent protection — not because the idea already exists, but because the invention lacks an inventive step under patent law.
Understanding the inventive step requirement in Malaysian patent law is therefore crucial before filing a patent application.
What This Article Covers: Inventive Step in Malaysian Patent Law
This article will discuss:
The second patent requirement in Malaysia – inventive step
Who qualifies as a person having ordinary skill in the art (PHOSITA)
What qualifies as inventive step – the test of obviousness
Relevant Malaysian patent case studies
Requirements for a Patentable Invention in Malaysia
Under Section 11 of the Patents Act 1983, an invention or process must satisfy three key requirements before it can be granted a patent in Malaysia.
Novelty
Your invention must be new and must not have been previously disclosed to the public anywhere in the world.
This requirement is governed by Section 14 of the Patents Act 1983
Inventive Step
Your invention must not be obvious to a person having ordinary skill in the relevant field of technology (PHOSITA).
This requirement is governed by Section 15 of the Patents Act 1983
Industrial Applicability
Your invention must be capable of being made or used in any kind of industry, meaning that it must have practical application.
This requirement is governed by Section 16 of the Patents Act 1983.
We have previously discussed the requirement of novelty in another article available at this link. In this article, we will focus on the inventive step requirement in patent law.
2nd Requirement: Inventive Step in Patent Law
When talking about inventions and innovations, it is obvious that there must be some degree of inventiveness. Because of this, it is often misunderstood that even the slightest inventiveness would automatically fulfil the inventive step requirement for a patent application.
However, in the context of patent registration, the legal threshold for inventive step is higher.
Under Section 15 of the Malaysian Patents Act 1983, an invention is said to involve an inventive step if, having regard to the prior art, the invention is not obvious to a person having ordinary skill in the art (PHOSITA).
In simpler terms, an invention involves an inventive step if it is not something that a regular expert in that field could have easily figured out by looking at what already exists.
If an invention is considered obvious, then it does not involve an inventive step and cannot qualify for patent protection or patent registration.
What Is “Prior Art” in Patent Law?
Another key concept in assessing inventive step is prior art.
“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.
This definition is provided under Section 14 of the Malaysian Patents Act 1983.
Prior art may include
Earlier patent documents
Academic journals and research papers
Existing products
Product brochures and catalogues
Websites, videos and online demonstrations
Seminars and talks
or any other information that forms part of the publicly available knowledge before the filing of a patent application.
Who Is a Person Having Ordinary Skill in the Art (PHOSITA)?
A person having ordinary skill in the art, also known as PHOSITA, refers to a person having the average and typical level of knowledge, skill, and experience in the specific field or technical art to which the invention relates.
A PHOSITA does not refer to an extraordinary person with above average talent or exceptional intellect. Instead, the concept represents a typical skilled professional in that field.
When assessing inventive step in a patent application, the question is therefore not whether the invention appears clever to the inventor, but whether it would have been obvious to a PHOSITA based on the existing prior art.
What Is the Test of Obviousness in Patent Law?
The concept of obviousness is used to determine whether an invention involves an inventive step.
In the Malaysian case of Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Anor [2018] 4 CLJ 705, the Federal Court reformulated the test originally established in the English case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.
The court adopted a four-step test for assessing obviousness.
The Four-Step Test of Obviousness
When assessing whether an invention involves an inventive step, the following four steps are applied:
Identify the inventive concept embodied in the patent
Identify the core idea or key feature of the invention.
Assume the mantle of a PHOSITA and impute to him the common general knowledge at that date
Consider the perspective of a person having ordinary skill in the art, together with the common general knowledge in the field at the relevant date.
Identify the differences between the prior art and the alleged invention
Compare the invention with existing prior art to determine what is new or different.
Determine whether those differences would have been obvious to a PHOSITA
Assess whether, without knowledge of the alleged invention, those differences would have been obvious to a person having ordinary skill in the art.
If the answer is yes at the end of this four-step obviousness test, the invention does not involve an inventive step and the patent application may fail.
How Courts Address the Issue of Inventive Step
Illustrations of how Malaysian courts analyse inventive step in patent cases can be found in the following decisions.
Case Study: Kendek v DIP Chain — Patent Involves Inventive Step
This case relates to 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 that certain improvements were not obvious to a person having ordinary skill in the art (PHOSITA) and therefore involved an inventive step for the purpose of patent protection.
Background
The dispute concerned an improved design for a mechanical component used in the dipping process for manufacturing rubber gloves (the “Patent”), which had been registered by Kendek Products Sdn Bhd (“Kendek”).
The mechanical component in question was a holder that secures the ceramic former to the conveyor chain in a dipping machine.
For context, the dipping process in glove manufacturing generally involves the following steps:
A conveyor system attaches ceramic moulds shaped like human hands (known as formers) using holders.
The formers are repeatedly dipped into liquid latex, dried, and processed until latex gloves are formed.
The finished gloves are then removed from the formers.
Kendek brought a patent infringement claim against Dip Chain Manufacturing Sdn Bhd (“DIP Chain”).
Inventive Step Challenged by DIP Chain
To defend the infringement claim, DIP Chain denied infringement and counterclaimed that the patent lacked novelty and inventive step.
In essence, DIP Chain argued that the alleged invention was obvious when compared with the prior art, and therefore should not qualify for patent protection.
Court’s Decision on Inventive Step
The Court applied the four-step test of obviousness, and the reasoning can be summarised as follows:
1. Identify the inventive concept
The inventive concept was the improved former holder design, which included:
a D-shaped shaft, and
a D-shaped locking plate aperture
These improvements ensured precise orientation of the former and allowed the former guides to be shorter, making it easier and faster to change the former compared to the prior art.
2. Determine the common general knowledge of a PHOSITA
At the filing date of the patent application, the common general knowledge of a PHOSITA was that former holders typically used:
a round-shaped shaft, and
a round-shaped locking plate aperture
Compared with the prior art, the patented design made removal and replacement of the former significantly easier.
3. Identify the differences between the prior art and the alleged invention
The primary differences between the prior art and the alleged invention were:
the shape of the shaft, and
the shape of the locking plate aperture
The patented design replaced the conventional round configuration with a D-shaped configuration.
4. Determine whether the differences would have been obvious to a PHOSITA
Although a PHOSITA may consider modifying the design to reduce angular movement in the locking mechanism, the Court found that reconfiguring the holder to use a D-shaped shaft and matching D-shaped locking plate aperture would not have been obvious, as there was no suggestion of such configuration in the prior art.
Accordingly, the Court held that the improvement was not obvious to a PHOSITA.
Therefore, the patent involved an inventive step.
Key Takeaways from Kendek v DIP Chain
1. Small design changes can still involve an inventive step
Even though the improvement involved a relatively simple modification, namely changing a round shaft and aperture to a D-shaped configuration, such modification can still qualify as an inventive step if it produces a meaningful technical improvement.
2. Practical improvements that solve real industry problems may support inventive step
In this case, the patented design addressed real operational problems in the rubber glove manufacturing process, particularly making the removal and replacement of formers easier and faster.
Because the improvement solved a practical industry problem, the Court accepted that the invention represented a genuine technical advancement rather than something obvious to a PHOSITA.
A Contrast Case: When a Patent Is Deemed Obvious
It can be seen in the case of Kendek Industry Sdn Bhd v DIP Chain Manufacturing Sdn Bhd how even a relatively simple modification can qualify as an inventive step so long as the solution is not obvious to a person having ordinary skill in the art (PHOSITA).
However, not every improvement can satisfy the inventive step requirement under Malaysian patent law. In some cases, the alleged inventiveness may simply be an obvious variation of existing technology, particularly where the features are already disclosed in prior art.
This contrast is illustrated in the following case.
Case Study: Spind v Justrade — Patent Lacked Inventive Step
In Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Anor [2016] 3 CLJ 136, the High Court examined whether a Malaysian patent lacked novelty and inventive step because the claimed features had already been disclosed in earlier prior art.
The Court ultimately held that the patent was invalid for lack of novelty and inventive step.
Background of the Dispute
Spind Malaysia Sdn Bhd (“Spind”) designs and manufactures plumbing products, including the SPIND floor gully/trap, which channels wastewater while preventing the escape of foul odours in buildings.
Spind was the registered proprietor of Malaysian Patent No. MY-567, titled “improvement in and relating to floor traps”. The patent application was filed on 5 August 1997.
Over time, Spind introduced several improved versions of the SPIND floor gully/trap, culminating in the SPIND 6 version.
Justrade Marketing Sdn Bhd (“Justrade”) had previously been appointed as Spind’s marketing agent and marketing consultant. The relationship ended in 2011.
Subsequently, Spind discovered that Justrade began selling its own floor gully trap product known as the PAZTEE floor gully trap, which Spind alleged was similar to the SPIND design.
Spind therefore commenced legal proceedings alleging that Justrade had infringed its patent and industrial designs.
Inventive Step Challenged by Justrade
In response, Justrade counterclaimed that Spind’s patent was invalid, arguing that:
The patent lacked novelty, and
The patent lacked inventive step.
Justrade relied on a prior art reference — United States Patent No. 3,042,210 (“USP 210”), titled “Drainage Trap” — which had already disclosed the relevant technical features.
Court’s Analysis and Decision
The Court analysed the issue using the test of obviousness, which includes identifying the inventive concept of the patent.
Several features were argued to constitute the inventive concept.
1. Reparability Feature
Spind argued that the invention allowed the trap to be repaired by replacing damaged internal parts.
However, the Court found that this reparability feature was not expressly stated in Claim 1 of the patent.
Under patent law principles, features not claimed are considered disclaimed. Therefore, the Court held that the reparability feature could not form part of the inventive concept.
2. “Fluid-Tight” Feature
Spind argued that the invention created a fluid-tight seal between components.
However, the Court found that the prior art USP 210 already disclosed the same functional result, as the prior art described components that “tightly abut together”, which necessarily implied a fluid-tight contact surface in a drainage trap.
Therefore, this feature could not constitute a new inventive concept.
3. Installation Method
Another alleged inventive feature was the installation method of the trap.
The Court held that this was merely a guideline for installing the product, rather than a technical advancement in the field of technology.
As such, it did not contribute to inventiveness.
Court’s Conclusion
After analysing the features relied upon by Spind, the Court concluded that:
The patent was anticipated by prior art (USP 210)
The alleged inventive features were either already disclosed, not claimed, or not technological advances
As a result, the Court held that Malaysian Patent MY-567 lacked novelty and inventive step, and the patent was therefore invalid and expunged from the Patent Registry.
Key Takeaways from Spind v Justrade
1. An invention must add something new and go beyond existing technology
A patent may fail the inventive step requirement if it does not introduce any real technical advancement beyond what is already known in the prior art.
2. Features already disclosed in prior art cannot be inventive
Where a technical feature already exists in prior art, it cannot be treated as a new inventive concept.
3. Only features claimed in the patent can form the inventive concept
Patent protection is limited to what is clearly claimed in the patent claims.
If a feature is not stated in the claims, it is considered disclaimed and cannot support inventiveness.
Conclusion
Inventions may only satisfy the inventive step requirement under patent law if they offer a non-obvious technical improvement beyond existing knowledge or prior art.
Small but meaningful innovations may qualify as an inventive step, provided that the improvement would not have been obvious to a person having ordinary skill in the art (PHOSITA). Conversely, obvious variations of existing technology or features already disclosed in prior art will generally fail the inventive step requirement.
For this reason, entrepreneurs and inventors should carefully assess the inventiveness of their inventions before filing a patent application, as this is one of the key requirements for patent protection in Malaysia and many other jurisdictions.
If you are unsure whether your invention satisfies the inventive step requirement, or if you would like assistance in conducting a proper patentability assessment, feel free to contact us for a consultation on your invention and strategies to protect it worldwide.
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.
Written by,
Legal Counsel
LL.B (HONS), LL.M
Advocate & Solicitor of Malaya (Non-practising)
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor
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