This article will briefly discuss on the case of Merck Sharp & Dohme & Anor v. Hovid Berhad [2017] 1 LNS 53, how it overturned the previous Federal Court’s decision in SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ 293.
Merck Sharp and its local licensee has filed for a patent infringement suit against Hovid Berhad. Merck Sharp has claimed that Hovid Berhad has infringed their “194 Patent”. The action included independent claim 1 and other dependent claim.
At first, the Merck Sharp case was bound to follow SKB Shutter Manufacturing’s decision, as it was the decision from a Federal Court. In the lower courts, the decision sided Hovid Berhad’s counter-argument which claimed that “194 Patent” should be invalidated due to obviousness. Independent claim 1 was therefore declared invalid. Following the case of SKB Shutters Manufacturing, all other dependent claims were held invalid in the Merck Sharp case, as well.
However, Merck Sharp has appealed to the Federal Court and the case has taken an important step by overturning the landmark decision of SKB Shutters Manufacturing. The Court held that a dependent claim is not merely an extension of an independent claim. A dependent claim can either be two types.
- Type 1 – Independent claims which are subsets of their dependent claims. This type of independent claim may be invalidated, but depending on court’s analysis.
- Type 2 – Dependent claims which have additional features than the independent claims.
The court further held that a dependent claim is not meaningless if its independent claim is invalid. A dependent claim can still be amended even if the independent claim is invalid.
This is a significant case in Malaysian patent law and related to all patent holders. The law through the Merck Sharp case has now opened new ways to have a comprehensive patent protection, which can be done through dependent claims of a patent.
