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Getting The Deal Through


Published: March 2019


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  • 1.

    Lawsuits and courts
    What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

  • 2.

    Trial format and timing
    What is the format of a patent infringement trial?

  • 3.

    Proof requirements
    What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

  • 4.

    Standing to sue
    Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

  • 5.

    Inducement, and contributory and multiple party infringement
    To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

  • 6.

    Joinder of multiple defendants
    Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

  • 7.

    Infringement by foreign activities
    To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

  • 8.

    Infringement by equivalents
    To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

  • 9.

    Discovery of evidence
    What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

  • 10.

    Litigation timetable
    What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

  • 11.

    Litigation costs
    What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

  • 12.

    Court appeals
    What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

  • 13.

    Competition considerations
    To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

  • 14.

    Alternative dispute resolution
    To what extent are alternative dispute resolution techniques available to resolve patent disputes?

  • 15.

    Types of protectable inventions
    Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

  • 16.

    Patent ownership
    Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

  • 17.

    Patent invalidity
    How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

  • 18.

    Absolute novelty requirement
    Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

  • 19.

    Obviousness or inventiveness test
    What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

  • 20.

    Patent unenforceability
    Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

  • 21.

    Prior user defence
    Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

  • 22.

    Monetary remedies for infringement
    What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

  • 23.

    Injunctions against infringement
    To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

  • 24.

    Banning importation of infringing products
    To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

  • 25.

    Attorneys’ fees
    Under what conditions can a successful litigant recover costs and attorneys’ fees?

  • 26.

    Wilful infringement
    Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

  • 27.

    Time limits for lawsuits
    What is the time limit for seeking a remedy for patent infringement?

  • 28.

    Patent marking
    Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

  • 29.

    Voluntary licensing
    Are there any restrictions on the contractual terms by which a patent owner may license a patent?

  • 30.

    Compulsory licences
    Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

  • 31.

    Patenting timetable and costs
    How long does it typically take, and how much does it typically cost, to obtain a patent?

  • 32.

    Expedited patent prosecution
    Are there any procedures to expedite patent prosecution?

  • 33.

    Patent application contents
    What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

  • 34.

    Prior art disclosure obligations
    Must an inventor disclose prior art to the patent office examiner?

  • 35.

    Pursuit of additional claims
    May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

  • 36.

    Patent office appeals
    Is it possible to appeal an adverse decision by the patent office in a court of law?

  • 37.

    Oppositions or protests to patents
    Does the patent office provide any mechanism for opposing the grant of a patent?

  • 38.

    Priority of invention
    Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

  • 39.

    Modification and re-examination of patents
    Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

  • 40.

    Patent duration
    How is the duration of patent protection determined?

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Wong Jin Nee & Teo (“WJNT”) is an IP & Technology specialist firm, providing a full spectrum, integrated, high-quality, proactive and value added services to organizations in their creation, clearance, protection, portfolio management, enforcement, monetisation and sustainability of IP and technology.

View more information about Wong Jin Nee & Teo

Kuala Lumpur
13A-5, Level 13A, Menara Milenium
8 Jalan Damanlela
Bukit Damansara
Kuala Lumpur
T: +603 2092 3322
F: +603 2092 3366


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