Malaysia – Landmark IP Decision: Merck Sharp & Dohme Corp v Hovid Berhad.

 

23 August, 2019

 

 

Our team led by Indran Shanmuganathan together with Zaraihan Shaari, Michelle Loi Choi Yoke, Yap Khai Jian and Elisia Engku Kangon received a landmark judgment at the Federal Court of Malaysia on 21 August 2019 in the case of Merck Sharp & Dohme Corp v Hovid Berhad. 

 

In an upshot, the Federal Court reversed its earlier decision in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd¹ ("SKB Shutters”) when it held that a dependent claim is no longer invalid merely on the finding that the claim that it is dependent upon is held to be invalid.  

 

In this ruling, the majority of the panel felt that it is essential for the Courts to evidentially assess each and every claim in a patent (be it independent or dependent claim) disjunctively from one another. Otherwise, granted claims would not be accorded the due protection that they deserve under the Patents Act 1983. 

 

In allowing Merck's appeal, the Federal Court further directed that the case be remitted to the High Court for the substantive determination of the validity of Merck's remainder dependent claims of its MY-118194-A patent for "Pharmaceutical compositions for use in inhibiting bone resorption". 

 

The ruling is very much welcomed as SKB Shutters was previously perceived as having unnecessarily demoted the value and importance of dependent claims when the Patents Act 1983had not done so.  The ruling is also seen as removing the dilemma that a patentee and/or patent applicant was faced with following SKB Shutters vis-à-vis its patent/patent filing, over whether to "amend” and reword its dependent claim into an independent claim.  

 

The written grounds of the ruling are presently awaited and more details to follow.

 

For further information, please contact:

 

Indran Shanmuganathan, Partner, Shearn Delamore & Co​

indran@shearndelamore.com