Knowledge & News

Malaysian Federal Court rules that amendment of claims is allowed in court proceedings

6 September 2019

The Federal Court has recently issued a majority decision in Merck Sharp & Dohme Corp v Hovid Berhad [2019], which is significant as it is only the third time a patent case has reached the apex court in Malaysia.

Readers may recall that the first patent decision by the Federal Court, reported as SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ, resulted in the finding that if an independent claim in a patent is held invalid, all the claims dependent thereon must also be held invalid, due to the inability of the court to ‘redraft’ a dependent claim to include the text of the independent claim. This decision significantly weakened the patent system, rendering dependent claims worthless (as they could no longer be used as fallback positions), and causing great concern among both practitioners and patent owners alike. The local IP associations worked with the Intellectual Property Corporation of Malaysia (MyIPO) in preparing amendments to the Patents Act to address this issue (primarily adding a clarification to explicitly give the Court the power of amendment) and submitting the same to the AG Chambers. However, given the dramatic change of government in May 2018 (the first time in over 60 years), it seemed unlikely that the proposed amendments would be laid before Parliament with any urgency.
 
Fortunately the new Merck decision has largely addressed the above concern. The Federal Court reviewed the SKB Shutters decision and explained that when an independent claim contained all the features of a dependent claim (as for example may occur in chemistry claims where multiple options are included in the independent claim, with the dependent claims corresponding to the limitations for each option), and the prior art also comprised the same multiple options as the independent claim, then invalidation of the independent claim would lead to invalidation of the dependent claims (as determined in the earlier SKB Shutters case). However, it will be appreciated that this type of claim, referred to as ‘Type 1’ in the decision, is not commonly used.
 
Claims of ‘Type 2’ are more prevalent wherein the dependent claims comprise additional features not found in the independent claim, and after reviewing the law and practice of several other countries, the Federal Court determined that invalidation of this type of independent claim would not automatically lead to invalidation of the dependent claims.
 
Furthermore the Federal Court stated that the conclusion drawn in SKB Shutters that amendments under the Act are prohibited, was not entirely accurate, and an application to amend a dependent claim may be permitted during court proceedings, and made after proceedings.
 
In conclusion, the Federal Court overturned the earlier position and confirmed that independent claims and dependent claims should be treated separately in court proceedings. If an independent claim is invalidated, the court has to look at dependent claims separately to determine the validity of patent, and the application may be amended by combining the features of a dependent claim with an independent claim to confer validity thereon. In other words, normal service has been resumed.
 
Footnote: It may be pertinent to note that the minority view of the Federal Court indicated that the dependent claims would fall if the independent claim was invalidated, effectively based on the ‘Type 1’ claim described above (and the Merck claim was deemed to be of this type), but noted that a dependent claim may survive if it had independent features, i.e. a ‘Type 2’ claim, essentially agreeing with the majority on this point. 

Authors

Chris Hemingway

Chris Hemingway Director Kuala Lumpur (Malaysia) Chartered (UK) and European Patent Attorney, European Trade Mark and Design Attorney, Registered (MY) Patent, Trade Mark and Industrial Design Agent

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