In patent practice, it is common to have at least one independent claim followed by at least one or more claims depending on the independent claim. The dependent claim would be interpreted to mean to claim the features claimed in the independent claim and the features in the dependent claims, thus narrowing the scope of protection of the independent claim. Now, how are the dependent claims to be interpreted if the independent claim on which the dependent claim depends on is declared invalid for lack of novelty or invention step or for any other reason? Recently the Federal Court of Malaysia, which is the apex court in Malaysia, had an opportunity to pronounce judgment on this question.
The Federal Court in the case of SKB Shutter Manufacturing Sdn Bhd vs. Seng Kong Shutter Industries & Tan Kooi Lim decided that when an independent claim is found to be invalid due to lack of novelty or lack of inventive step, then all claims dependent on that independent claim are invalid. This decision has far reaching consequences on granted patents in Malaysia.
It appears – pending amendments to the Malaysian Patents Act 1983 – patent applicants may have to reconsider the inclusion of dependent claims, because if the independent claim is found to be invalid, all the dependent claims dependent on the invalid claim will also be invalid. One way to overcome this problem is to include more independent claims. That is, to incorporate the features of the dependent claim with the features of the independent claim. The Malaysian Patents Act and the Patent Regulations do not limit the number of independent claims in a patent and there are no additional filing fees payable in filing the patent application or for filing a request for substantive examination of the patent for additional independent claims.
However, with the inclusion of several independent claims comes the risk of the patent being attacked for lack of unity of invention.
Can the applicant amend the claims of a granted patent or a pending patent application in the light of the SKB Shutters decision of the Federal Court?
Section 79A of the Patents Act 1983, read together with Rule 46A of the Patent Regulations, provides that the Registrar of Patents may, upon a request made by the owner of a patent, amend the description, the claim or claims or the drawings of the patent… for the purpose of correcting a clerical error or an obvious mistake or for any other reason acceptable to the Registrar. The Registrar of Patents has to date not issued any change in practice or issued any guidelines or directions as to whether he would allow changes to the claims where the applicant voluntarily “converts” the dependent claims into independent claims.
Further, the Registrar is not empowered to 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.
Representations are proposed to be made to the Patent Office by patent agents in Malaysia to persuade the Registrar to recommend amendments to the Patents Act 1983 to state that if an independent claim is found to be invalid for lack of novelty or lack of inventive step, then all dependent claims are to be interpreted as including the features of the independent claim and the dependent claim. This exercise to amend the Patents Act and the Patent Regulations will take a few years. In the meantime, patentees and patent applicants should consider whether they should apply to the Registrar to “convert” their dependent claims into independent claims.