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.