In a new development, the Federal Court in Malaysia has held that due to the nature of the local legislation, when an independent claim in a patent is held to invalid, the dependent claims will also fall.  

The case of SKB Shutters Manufacturing v Seng Kong Shutter Industries & Anor was a case of patent infringement with a counterclaim for invalidity. At the High Court, infringement was found and the invalidity counterclaim was dismissed. However, that decision was reversed in the Court of Appeal as it was found that the learned High Court judge had compared the prior art with the plaintiff’s product and not the patent claims (which should have been the case) in assessing novelty and inventive step.  

The Federal Court had a number of questions of law put to it and held that in finding an independent claim invalid in Malaysia, the dependent claims will also fall, as they can only survive if the patent is redrafted to incorporate the features that they are dependent upon. Critically, this redrafting was considered to be an amendment. However unlike the UK, there is no provision in the law to allow for the amendment of the patent during litigation (section 75 UK Patents Act) or to enforce a partially valid patent (section 63 UK Patents Act).  

It should be noted that section 56(3) of the Malaysian Patents Act (where subsection (1) relates to invalidation) states:

Where the provisions of subsection (1) apply on only some of the claims or some parts of a claim, 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.

However, the Federal Court held that the same was not the equivalent of section 63 of the UK Patents Act (which allows enforcement of a partially valid patent) as it merely stated that some claims or parts of a claim may be declared to be invalid, and it was their view that this could only refer to the independent claims of a patent.  

This decision may severely impact patent owners as it appears that they can no longer rely on “fall-back” positions in the dependent claims if the independent claim is held to be invalid.  

Amendments to the Patents Act are currently being processed, but it is understood from the Patent Office that no adjustment to Section 79A(3) has been suggested to give the Court the express power to amend a patent during litigation, and it will be several years before further changes may be submitted. Nevertheless, it is possible that the Regulations may be adjusted to clarify the Court’s powers.   In addition, with respect to patent prosecution, it seems unlikely that the Patent Office would allow the dependent claims to be written out in longhand as independent claims, as objections would probably be raised on the basis on non-unity or lack of conciseness.  

As such, the appropriate way forward for prospective litigants in the meantime may well be to request post-grant amendment of the dependent claims to expressly include all the features of the claim on which they depend, so that there is no substantive amendment to the dependent claim if the independent claim is held to be invalid, and the Court can use the power under section 56(3) to declare the limitation of removing the relevant dependency. However, this is not without issues as it may take a year or more for post-grant amendments to be accepted and gazetted, which would delay the initiation of court proceedings in such circumstances. In addition, it is not currently known whether the Court will allow such dependent claims to stand if the independent claim falls.  

Clearly it is now even more important to ensure that patents are professionally drafted and expert advice is sought before entering litigation.