DOSHIN RUBBER PRODUCTS (M) SDN BHD v OR TAN TENG

Case Significance

Illustrates sections 19 and 20 of the Patents Act 1983: an invention made in the course of employment using the employer's resources belongs to the employer, which may compel assignment of patents registered in the employee's name.

This High Court decision, in the Commercial Division at Kuala Lumpur, concerns the ownership of patents created by an employee and the statutory rule that assigns rights in employee inventions to the employer. The plaintiff company brought an originating summons under section 19 of the Patents Act 1983 seeking an order for the assignment to it of patents registered in the name of the defendant, a former employee. Because the defendant is a natural person named only as a party, this analysis refers to that party by role, while the plaintiff company is named. After considering the documentary evidence and submissions, the court allowed the originating summons.

The governing question was whether the inventions had been made by the defendant in the performance of his contract of employment, so as to belong to the employer under the Patents Act 1983. Sections 19 and 20 of the Act allocate rights in inventions made by an employee: where an invention is made in the execution of an employment contract, the right to the patent belongs to the employer, absent any provision in the contract to the contrary. The court therefore examined whether the defendant was employed by the plaintiff, whether the inventions were created in the performance of his employment duties, and whether the contract of employment contained any provision reserving the patent rights to the defendant.

On the evidence, the court found that the inventions had been made in the performance of the defendant's duties while he was employed by the plaintiff, using data and means placed at his disposal by the plaintiff. There was no evidence that the inventions predated the plaintiff's existence, and no licence or other agreement between the parties governing the use of the patents — features that had proved decisive against similar claims in other cases. Accordingly the court ordered the patents to be assigned to the plaintiff. The judgment is a useful illustration of the operation of sections 19 and 20 of the Patents Act 1983: an invention made in the course of employment, using the employer's resources, belongs to the employer, and the employer may compel its assignment.