On 28 July 2000, the first Singapore Court of Appeal decision on patent infringement under the new Singapore Patents Act was delivered, dismissing an appeal by Merck & Co. Inc. ("Merck") to inter alia reinstate some of the product claims in its patent for a purer form of a known substance, (more specifically, Lovastatin containing less than 0.2% dimeric impurity).
Merck had sued a local company, Pharmaforte Singapore Pte Ltd ("Pharmaforte") in the High Court for infringing the product and process claims in their Singapore patent by importing and selling in Singapore a pharmaceutical product called Apo-Lovastatin which also had less than 0.2% dimeric impurity. Pharmaforte in turn challenged the validity of Merck's product claims and successfully invalidated the same for lack of novelty, utility and inventive step at trial.
While the Court of Appeal disagreed with the trial judge on the issue of novelty, it agreed with the trial judge that the purer claim to Lovastatin lacked inventive step, as numerous techniques of Lovastatin purification existed before the priority date and it would have been obvious to a person skilled in the art to purify Lovastatin. The Court of Appeal also concluded that even though purer Lovastatin had the same efficacy as one with a higher dimer impurity, that did not render the purer form of no utility.
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