tag:blogger.com,1999:blog-5574479.post4441520400029659335..comments2024-03-28T13:45:42.289+00:00Comments on The IPKat: Patent amendments not allowed during court proceedngs, rules Malaysia's highest courtVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-45382515937857182062019-09-06T13:07:01.355+01:002019-09-06T13:07:01.355+01:00Hi Mark. Just to update that the Malaysian Federal...Hi Mark. Just to update that the Malaysian Federal Court has finally "corrected" the decision in a recent (majority) decision last month. It's long overdue!For A Better Malaysiahttps://www.blogger.com/profile/14764746085830680689noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90479480312296251282016-01-03T11:32:22.114+00:002016-01-03T11:32:22.114+00:00At the recent EPO Caselaw Conference in Munich I w...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.<br /><br />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.<br /><br />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. <br /><br />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. <br /><br />But as of now, declining to look at dependent claims is "Flavour of the Month", isn't it?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-38641906267444123512016-01-03T01:01:51.326+00:002016-01-03T01:01:51.326+00:00Thanks for passing this on, Annsley, and to Kim Po...Thanks for passing this on, Annsley, and to Kim Poh for the report. And a happy new year to you and the other Kats!<br /><br />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.<br /><br />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.<br /><br />But I digress. As an Australian practitioner, I am most interested in the Malaysian court's citation of <i>E I DuPont</i>. 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. <br /><br />What was involved in <i>E I DuPont</i> 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.<br /><br />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 <i>E I DuPont</i>.<br /><br />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!<br /><br />MarkAnonymoushttps://www.blogger.com/profile/06157794228297387928noreply@blogger.com