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 Shutters 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
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
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
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
A trade mark with the status of a "well-known" significantly improves the extent of protection as it provides the proprietor, the exclusive right to the trade mark against all unlawful users thereof, regardless of the differences in the field of business, goods or services.
As the patent infringement matters often involve complex technologies and huge amounts at stake, it not just requires exercise of sound judicial wisdom by the Courts but also unswerving standards to be followed by them . . .
The decision highlights lessons relating to contracting with large software vendors and the risks with under-licensing.
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