13 September, 2019
“You must unlearn what you have learned” – Yoda, The Empire Strikes Back (Episode V)
Whilst we wait, in anticipation, for the release of the final episode of Star Wars in December this year, let us tell you about recent developments in patent laws in Malaysia which have gotten practitioners and the industry in Malaysia all excited.
The Return of Dependent Claims
The Federal Court of Malaysia’s decision in Merck Sharp & Dohme Group & Anor v Hovid Berhad (“Merck”) was worth the wait as it addresses the “aftershock” from the decision in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutters Industries Sdn Bhd & Anor [2015] 6 MLJ 293 (“SKB Shutters”).
The majority departed from the principle established in SKB Shutters wherein dependent claims would automatically be invalidated upon the independent claim being held invalid and the only way the dependent claims can survive is if the dependent claims are re-drafted to incorporate the features of the independent claim.
The majority in the Federal Court noted that the position taken by SKB Shutters is inconsistent with patent practice in other jurisdictions globally and was based on “incomplete consideration of the law relating to the invalidation of claims”. In the final conclusion, the majority in the Federal Court held that each dependent claim must be assessed separately and dependent claims will not automatically fall merely on the finding that the independent claim is invalid.
The full article can be found from Zicolaw's site here.
For more information, please contact:
Ong Boo Seng, Partner, ZICO IP
boo.seng.ong@zicolaw.com
