The topic under discussion was whether Malaysia should adopt a doctrine of equivalents in the construction of patent claims for infringement purposes, in line with the UK Supreme Court’s Actavis decision. Actavis had in fact been considered in the recent Kuala Lumpur High Court decision of Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd.
The session took the form of a debate, with Dave advocating that the Malaysian courts should stick with purposive construction and not extend the protection of the claim beyond its language as would be understood by the skilled addressee. On the other hand, a fellow practitioner who is a senior IP litigator advanced the case that the doctrine of equivalents may be applied for the benefit of patent owners.
At the end of the discussion, including questions from the moderator and the floor, a show of hands revealed a majority in favour of sticking with purposive construction and not adopting any doctrine of equivalents. Interestingly, Singapore’s Supreme Court recently rejected application of the Actavis test in an unrelated case. However, the Kingtime decision is under appeal so only time may tell what is Malaysia’s final judicial position on the matter.