Pua Siau Kee discusses the High Court’s recent decision in Mohammad Mubde Absi & Ors v Hyat Collections Sdn Bhd (Civil Suit No.: WA-22IP-15-04/2017) on whether an instant (ready-to-wear and pinless) “hijab” (headscarf) is patentable.

Background

The Plaintiffs, who are the co-owners of Patent No. MY-153705-A in relation to a pre-wrapped headscarf known as Bokitta Hijab (“Patent 705”), commenced action against the Defendants for infringing Patent 705 by distributing and selling “Hyat” headscarves (“Hyat Hijab”). The Defendants counterclaimed to invalidate Patent 705 on several grounds, including Patent 705’s lack of novelty and inventive step.

Can Patent 705 be invalidated?

In order to succeed in their claim for patent infringement, the Plaintiffs were required to establish that Patent 705 is patentable in that it is (i) an “invention”; (ii) “new”; and (iii) involves an “inventive step”, pursuant to the Patents Act 1983 (“PA”).

Is the Bokitta Hijab an “invention”?

The Court held that the Bokitta Hijab is an invention within the literal meaning of section 12(1) of the PA. In this regard, the Court stated that the term “technology” in the said provision has a wide meaning and encompasses ideas regarding ready-to-wear and pinless hijabs. Patent 705 further provides a solution to the problems arising from traditional hijabs which require a longer time to wear, more amount of fabric, and the usage of pins to secure the scarf. In the Court’s view, to hold otherwise would cause injustice to fashion designers who come up with ideas to resolve specific problems in the fashion industry but are unable to protect and exploit such ideas by way of patents.

Is the Bokitta Hijab “new”?

The Court was of the view that the invention of the Bokitta Hijab is novel within the meaning of section 14(1) of the PA for the following reasons:

• There is no evidence that the essential integers reflected in Claim 1 of Patent 705 were publicly known or available before the filing date of Patent 705. Such prior evidence is referred to as “Prior Art”.
• There is no evidence that a “person skilled in the art” (“POSITA”) is able to design the Bokitta Hijab based on Prior Art.
• Applying the “reverse infringement test”, there is no proof that any Prior Art would constitute an infringement of Patent 705.

Does the Bokitta Hijab involve an “inventive step”?

The Court was satisfied that the Bokitta Hijab involves an inventive step pursuant to section 15(1) of the PA. In arriving at its decision, the Court applied the four-step test laid down in the UK Court of Appeal case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and held that:

• the inventive step in Patent 705 is the pre-wrapped feature of the Bokitta Hijab which is formed by a series of stitched seams which makes it pinless and easy to wear (“Inventive Step”);
• in applying this test, the Court shall assume the mantle of the POSITA and impute itself with the common general knowledge regarding hijabs on the filing date of Patent 705;
• the difference between the Prior Art and Patent 705 is that the former does not have the Inventive Step (“Difference”); and
• if the POSITA has no knowledge of the Inventive Step and without the benefit of hindsight –
• the Difference would not have been obvious to the POSITA; and/or
• the Difference would require a certain degree of invention by the POSITA.

The commercial success of the Bokitta Hijab constitutes secondary evidence to support the above finding that the invention in Patent 705 involves an inventive step.

Since Patent 705 is valid, have the Defendants infringed Patent 705?

The Court held that the Plaintiffs have successfully proven that the Defendants have sold Hyat Hijabs in contravention of Patent 705. The Court had particularly relied on, amongst others, the following observations in the UK High Court case of Improver Corp & Ors v Remington Consumer Products Ltd & Ors [1990] FSR 181:

• The features of the Hyat Hijab which are different from the essential integers reflected in Claim 1 of Patent 705 do not have a material effect on the way the invention in Claim 1 works (“Immaterial Variants”);
• The Immaterial Variants would have been obvious to the POSITA regarding hijabs on the date of publication of Patent 705;
• It is also noted that the Hyat Hijab has the same inventive concept as the Bokitta Hijab.

Accordingly, the Defendants’ counterclaim was dismissed whilst the Plaintiffs’ claim for patent infringement was allowed by the Court.

Comments

This is the first case of patent infringement in Malaysia involving an article of clothing and is thus likely to have an impact on future cases involving new fashion or creative clothing products. It is hoped that this decision will promote innovation and encourage people across all kinds of industries to explore patent protection in Malaysia, including those in the fashion industry.