Kingtime International v Petrofac E&C Sdn Bhd [2018] AMEJ 1369 was a case regarding Kingtime International Ltd (hereinafter referred to as Kingtime) who was a registered patent owner of two Malaysian patents, (Patent 898 and Patent 5004). Kingtime then issued licenses of the patents to Gryphon Energy (Asia-Pacific) Sdn Bhd (hereinafter referred to as Gryphon).
Upon claiming that another party, Petrofac E&C Sdn Bhd (hereinafter referred to as Petrofac) has infringed their patents, Kingtime and Gryphon have brought the action to court under patent infringement and patent invalidation.
This article will highlight on the two issues presented in this case:
- Whether a licensee, Gryphon, has the right to sue Petrofac.
- Whether Petrofac was liable for patent infringement before Kingtime receives the grant of patent.
For the first issue, the court held that Gryphon has no right to sue Petrofac, as licensee has no authority or cause of action to sue a patent infringer.
The only circumstances where a licensee could do so was when the licensee has requested the patent owner to file a patent infringement case, and the patent owner refused to do so within three months.
The other circumstance where a licensee could do so is if within the three months period, the licensee made an application to court for a restraining order to stop patent infringement or its continuation. However, there must be prove that immediate action is needed to avoid substantial damage to the licensee. Otherwise, the licensee needs to wait for three months for the patent owner to file for an infringement case.
In this case, Gryphon did not satisfy either of the two circumstances. Hence, Gryphon had no right to sue Petrofac for patent infringement.
It was held by the court that Kingtime was the only authorized party to bring the matter of patent infringement, for they are the patent owner.
For the second issue, the court further held that Petrofac was indeed liable for patent infringement even if the infringement occurred before Kingtime receives the grant of patent. The court referred to the Patents Act and held that the grant of patent is 20 years upon the patent filing date.
This reflects well on Malaysian system of first-to-file rule, where protection is given to the person who first files their patent.
It can be seen that despite the intricacy of the proceedings, the protection was given to the party who has registered their patent. Patent registration is utmost important, in order for you to avoid other parties to replicate and duplicate your invention, thus taking away the profits that come with it.
At Tee IP, we can advise you on how to best protect your patent. Please do not hesitate to contact any of our team members for further details.
