From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 31 December 2015

Patent amendments not allowed during court proceedngs, rules Malaysia's highest court

The AmeriKat teaching her trainee kittens about the
merits of looking outside one's own patent jurisdiction
It is so easy to get wrapped up in one's own orbit. What impacts you right here and right now, be it your local weather, your commuter train delays or the decision of your local patents judge, is often as far as your daily horizon ventures. However, it is becoming increasingly important that IP practitioners look further afield as to what is happening in IP law and practice in other jurisdictions. Much like a lion, the IPKat prides itself in bringing news of important decisions from other jurisdictions.

This week, IPKat friend NG Kim Poh from Kuala Lumpur based firm Shook Lin & Bok, reports on a landmark patent validity and infringement decision of the Federal Court of Malaysia in SKB Shutters Manufacturing Sdn. Bhd v Seng Kong Shutter Industries Sdn. Bhd. & Anor (FCCA No. 02(f)-97-12-2014) (FC) (26-10-2015) in which otherwise independently valid dependent claims suffer a terrible fate. Over to Kim Poh:
"At first instance, the High Court upheld the validity of Malaysian Patent No. MY-128431-A entitled “Rolling Door” belonging to the plaintiff / appellant, SKB Shutters, and found that the defendant / respondent, Seng Kong, had infringed the same. The High Court’s decision was reversed by the Court of Appeal which held that the patent was invalid for lack of novelty and obviousness. The plaintiff / appellant obtained leave from the Federal Court to appeal against the Court of Appeal’s decision where one of the legal questions posed to the Federal Court was :-
“Where a patent comprises multiple claims, whether, in invalidating a patent for lacking novelty and/or inventive step, the Court must make a determination on each and every claim.”
In answering the question, the Federal Court held that once an independent claim is found to be invalid, any dependent claim(s) which depend(s) on the invalid independent claim is / are also invalid because the dependent claim(s) cannot remain as dependent claim(s) anymore and the dependent claim(s) cannot be re-drafted or amended.

In reaching the decision, the Federal Court appeared to have relied on the decision of the Federal Court of Australia in E I Du Pont De Nemours & Co. v. Imperial Chemical Industries Plc. & Anor. (2007) FCAFC 163, albeit the basis for the reliance was not explained at all.
The Federal Court (of Malaysia)’s reasoning appears to be based purely on a technicality of the drafting under Section 79A(3) of the Malaysian Patents Act 1983 which states that it is not permissible to amend a patent whose validity is being challenged in court.

This writer is of the view that the decision is wrong because dependent claim(s), if otherwise valid in substance, should be upheld. The court could possibly overcome the obstacle placed by Section 79A(3) with an order that the dependent claim(s) be amended accordingly by the patentee under Section 79A(1) after conclusion of the court proceedings. In such circumstances, the amendment(s) would not run foul of Section 79A(3) since the validity of the patent would no longer be under challenge in court.

Alternatively, this writer believes that there is room to argue that the court has the necessary power under Section 56(3) of the same Act and / or inherent jurisdiction to amend a claim and, thus, the court can re-draft the dependent claim(s) in question to be independent.

On the above alternative argument, it is unfortunate to note that the Federal Court appeared to have tied the hands of the lower courts in terms of the power conferred by Section 56(3) when it held that the said provision is not the equivalent of Section 63 of the UK Patents Act 1977 (which permits enforcement of a partially valid patent).  The Federal Court held that Section 56 “merely states that some claims or part of a claim may be declared invalid which in our view it can only refer to the independent claims of a patent.” There appears to be no justification from a statutory interpretation context for the Federal Court to add the word “independent” to Section 56(3).

The decision of the Federal Court on the above issues has serious implications on future proceedings involving invalidation of patents in Malaysia. The implications may also extend to how claims should be drafted for patent applications in Malaysia so as to avoid being invalidated by the “accident” of mere dependence."
Given the reliance on Australian and UK statutory provisions and case law, do readers from those jurisdictions think that the Malaysian Federal Court got it right?  To assist you in your analysis, the relevant provisions of the Malaysian statute - the Patents Act 1983 - can be found at this link here.

2 comments:

Mark Summerfield said...

Thanks for passing this on, Annsley, and to Kim Poh for the report. And a happy new year to you and the other Kats!

The decision of the Malaysian Federal Court is self-evidently foolish (I am always reluctant to use the word 'wrong' about rulings of final appellate courts). However, it is not uncommon across jurisdictions for a court to convince itself of the fallacy that a dependent claim is somehow fatally 'infected' by the invalidity of its associated independent claim. Fortunately, this usually happens before some judge at first instance who is relatively inexperienced in patent law, and either remains an irrelevant curiosity, or is corrected on appeal.

Pity, then, the poor Malaysians for whom this is now the law of the land! The 'fix', for applicants and patentees (not involved in ongoing court proceedings) is, of course, as trivial as it is pointless and disruptive to the proper functioning of the patent system: simply write all claims in independent form. That is, assuming MyIPO will let you, given my experience that they tend to take a somewhat 'European' approach to such formalities.

But I digress. As an Australian practitioner, I am most interested in the Malaysian court's citation of E I DuPont. This is a Full Court decision, the leading opinion in which was written by Justice Annabelle Bennett, whose grasp of patent law is beyond question. While I will need to re-read the case for the details, I am pretty sure that it has been misapplied here.

What was involved in E I DuPont was a question of issue estoppel, arising from an earlier opposition that had been appealed to a single judge of the Australian Federal Court. However, a divisional application had also been filed, and the question that had therefore arisen was whether or not the patent applicant (ICI) was estopped from (allegedly) reanimating certain issues that the Federal Court had (also allegedly) previously decided. Pardon my 'allegedly's, but the answer was 'no' or, at least, that ICI had not met its onus in establishing the existence of an issue estoppel with sufficient certainty.

I frankly cannot see what this has to do with the facts in the Malaysian example, and the court does not seem to have offered any explanation for its reliance on E I DuPont.

I may take a closer look. The misapplication of an Australian decision by Malaysia's top court could make an interesting topic for my own blog!

Mark

MaxDrei said...

At the recent EPO Caselaw Conference in Munich I was surprised how many of the audience were from locations outside Europe, and from courts and Patent Offices rather than patent attorneys in private and company practice.

In the USA, as we know, the post-issue inter-partes proceedings at the USPTO feature very limited scope to amend. At the EPO, the Boards of Appeal are increasingly strict about admitting claim amendments to the proceedings. Even when they do, the only claims given any attention are the independent claims. If one of those is bad, the whole patent goes down.

I suspect that judges in other jurisdictions are influenced by what is discussed at Conferences such as the one in Munich at the end of last year, without necessarily grasping that in a self-sufficient jurisdiction, every element of the procedure (like "Auxiliary Requests" at the EPO) interacts with every other element. You can't fairly "Pick and Mix" but these days I fear that there is far too much picking and mixing going on.

Jurisdictions try in good faith to keep on trend and reach international standards, but understanding well enough how the law is made in several foreign jurisdictions, both civil and English law, is beyond human capability.

But as of now, declining to look at dependent claims is "Flavour of the Month", isn't it?

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':