SKB Shutters' Case

The SKB Shutters case: Malaysian Federal Court holds that dependent claims subsequently fall if the independent claims on which they depend on are invalidated.

By: Wing Hang Foong, Patents Department, Advanz Fidelis IP Sdn Bhd

The Federal Court of Malaysia in the case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Tan Kooi Lim (Civil Appeal No. 02(f)-97-12/2014) has delivered a landmark ruling which in essence states that the falling of an independent claim in a patent would cause any dependent claims associated with said independent claim to consequently fall as well.

This case concerned an appeal by SKB Shutters Manufacturing (Appellant) against the Court of Appeal’s decision in favouring the arguments of Seng Kong Shutter Industries (First Respondent) & Tan Kooi Lim (Second Respondent) (together, “the Respondents”), and reversing the judgement of the High Court. It was the finding of the Court of Appeal that the Appellant’s patent no. MY-128431-A titled “Rolling Door” was invalid, following the finding of one invalid claim (independent claim 1).

In this appeal, the Appellant submitted that the Court of Appeal’s findings of invalidation are unsound in its entirety, as the invalidation of the Patent following a finding of only one invalid claim and/or invalid parts of a claim is not sustainable in law. As such, the Appellant contended that the Court of Appeal could at most only partially invalidate the Patent.

The Federal Court upheld the judgement of the Court of Appeal and ruled in favour of the Respondents. The Federal Court stated that having considered independent claims 1 and 11 to be invalid, the Court of Appeal was entitled to hold the Appellant’s Patent invalid as the rest of the claims, being dependent on claim 1, would also fall. Citing the case of E I Du Pont De Nemours & Co. v. Imperial Chemical Industries PIc. & Anor. (2007) FCAFC 163, the Federal Court further stated that the only way a dependent claim can survive and stand if at all is if the dependent claims are redrafted to incorporate the features of the claim upon which they are dependent on, and made into an independent claim.

However, it is important to note that there is no such provision in the Malaysian Patent Act 1983 that is similar to the provisions of sections 63 and 75 of the UK Patents Act 1977, which allow for amendments of patent claims pending litigation in respect of its validity.

Section 79 of the Malaysian Patents Act 1983 states that inter alia the Registry may amend an applicant’s patent when the request is made in accordance with regulations under the Act for the purpose of correcting a clerical error or an obvious mistake. However, Section 79A further states as follows: “The Registry shall not make an amendment under this section if there are pending before any Court proceedings in which the validity of the patent may be put in issue.”

Section 56 (3) of the Malaysian Patents Act 1983 states that: “where the provisions of subsection (1) apply on only some of the claims or some parts of the claims, such claims or parts of a claim may be declared invalid by the Court and the invalidity of part of a claim shall be declared in the form of a corresponding limitation of the claim in question.” For reference, Section 56 (1) of the Malaysian Patent Act 1983 states that “any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent.”

The Federal Court took the position that “some of the claims or some part of a claim” as laid out in Section 56 (3) can only refer to the independent claims of the Patent, and as such, invalidated the independent claims of the Patent.

In this present case, the Federal Court stated that redrafting of the dependent claims after invalidation of the independent claims of the Patent is clearly not possible, as there are no laws in the Patents Act that allow for amendments to be made to said dependent claims. As such, the Federal Court took the position that the dependent claims of the Patent must therefore also fall, leading to the invalidation of the entire Patent. This appears unavoidable given the present limitation of the law that does not allow for amendments to be made to a patent during the invalidation process.

The impact of the ruling of this present case on all existing patents and patent applications is immense, as it now appears that an entire patent may be invalidated by invalidating just the independent claims. Alternatives and a solution in light of the recent ruling are being discussed at length, and the next step that is necessary is perhaps a fast track amendment to the Patents Act in allowing amendments to a patent during the invalidation process. However, until such an amendment to the Patents Act is made, the interim position is one of pressing concern to all patent holders in Malaysia.

The Federal Court of Malaysia is the highest judicial authority in Malaysia. Its decisions are open to a review by the Federal Court itself, but such reviews are few and far between, and even fewer are successful.

If you require further clarification on the present matter and how it may affect your patent portfolio, please do not hesitate to contact us at info@advanz.com.my or +603-79571472.

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Update on the SKB Shutters Case – April 2016

Proposal to amend the law submitted to the Intellectual Property Corporation of Malaysia

The recent ruling of the Federal Court in the case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Tan Kooi Lim, where the Federal Court upheld the decision of the Court of Appeal to invalidate an entire patent following the fall of the independent claims, is referred .

A working group of Intellectual Property practitioners and lawyers coordinated by our Mr. Chuah Jern Ern has been working closely to address the issue, and a proposal has been submitted to the Intellectual Property Corporation of Malaysia (MyIPO) to amend the relevant sections of our Malaysian Patents Act. The proposal will be deliberated by MyIPO, prior to being put forward to the Attorney-General’s Chambers for approval.

We will continue to monitor the present situation, and we will update you on any developments on the present case. Alternatively, if you have any further queries, please do not hesitate to be in contact with us at info@advanz.com.my.