Understanding Patent: Protect Your Ideas and Inventions
What is a Patent?
Patent can be understood as an exclusive right granted by the government to an inventor or assignee of an invention, in which those rights are granted only for a limited period of time, in exchange for detailed disclosure of the invention to the public. In Malaysia the law that governs this matter is Patent Act 1983 (which will be referred as the ACT in this article) and Patent Regulation 1986 and other applicable law such . Section 12 of the Act defined an invention as the idea of an inventor to a solution for a specific technological problem. There are 3 elements to succeed in patent registration which are firstly, it be novel. Secondly, the invention must involve inventive step. Thirdly, it must be industrially applicable.
Elements of Patent
1. Novelty
Novelty means it must be original and must not be a part of the prior art. The reference must be made to Section 14(2) of the Act whereby it provides that prior art includes everything disclosed to the public everywhere in the world, in whatever form either by written, oral or others prior to the priority date of patent application claiming the invention. It means that prior art is the first invention or disclosed to the public. To ensure novelty in an invention, the Non-Disclosure Agreement (NDA) between the parties involved in ensuring the completion of the invention and the owner should be made
By the above statement it can be deduced that the novel patent can only be disclosed once it has been registered to avoid it from being considered as part of prior art. However, if the registration of the patent takes place within the grace period, the prior disclosure does not exhaust the novelty of the said patent. Malaysia operate 12 months as the grace period as conferred under Section 14(3)(a) of the Act.
2. Inventive steps
Under this prerequisite, the salient test should be applied is whether the invention is so obvious to the Person Having Ordinary Skill In The Are (PHOSITA). If it is so obvious to the PHOSITA then there are no inventive steps made. This is because if it is so obvious to PHOSITA, it shows that the steps taken had already been disclosed and consequently proving the lack of novelty.
3. Industrially applicable
The patent must be capable of being applicable in any industry i.e, F&B,
Duration of Protection
Section 35 the Act, the law protects the registered patent for 20 years.
Current Issue : Can an AI be an owner of a patent?
In Malaysia’s position, this issue itself is not yet widely discussed and our law does not specifically provide for an AI to not be allowed to be an inventor. But Section 12 of the Act clearly mentioned the word inventor and additionally, Regulation 6 of Patent Regulation 1986 provides that in patent application, it shall provides with the name and address of the inventor and if the inventor do not wish to provides for such, the inventor may declare by writing to the Registrar. By this provisions, it means the legislature intended the inventor to be referred to a human being.
In other Countries such as in the US, Australia, UK and South Africa’s position, indeed, the law clearly provides that the inventor refers to an individual inventing the invention but the individual refers to a natural person and when “individual” is used, it refers to a person, a human being. This position had been laid down in the case of Thaler v Vidal1 (widely known as DABUS’s case). In this case, Dr. Stephen Thaler who is the owner of DABUS (an AI), applied for a patent registration but for DABUS as an owner in the US and a few other countries UK, Australia and South Africa. Nevertheless, those countries eded up rejected his application and held that and AI cannot be registered as the owner of patent application. Nevertheless it must be noted that but this does not limit the invention invented by a natural person with the help of an AI to be patentable as long as that person had made a significant contribution in the claimed invention2 and this is known as AI-assisted invention. The US Patent and Trademark Office had
adopted the test used to determine inventorship in the case of Pannu v Lolab Corp, to determine whether the AI-assisted invention is patentable, the inventor must :
“(1) contribute in some significant manner to the conception or reduction to practice of the invention,
(2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and
(3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”
Thus, from this, it can be concluded that if the inventor cannot prove that he had significantly contributed in the AI-assisted invention, the claimed invention is unpatentable. Although the decision in the above cases has no precedent in Malaysia, from the words used in Patent Act 1983 and Patent Regulation 1986, it seems that Malaysia holds the same position. As some people might think that Malaysia’s position in regards to this issue is still ambiguous, therefore it seems that there is a need for the amendment of such law to provide for the clarity.
