Patent problems

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Patent-problem-in-Malaysia

Shearn Delamore & Co is recognized for its expertise in IP, and its clients in Malaysia include some of the biggest multinational pharmas in the world. The firm’s managing partner, Grace Yeoh, outlines here cases the firm has dealt with to highlight the operational IP problems their clients still face in the country.

In a development late last year, the previous government exercised its rights to compulsorily use Gilead [Sciences Inc, a research-based international pharmaceutical company] patents on drugs for the treatment of Hepatitis C in Malaysia. The government exercised its rights pursuant to the provisions of the Malaysian Patents Act and the Doha Declaration to provide affordable treatment of Hepatitis C in Malaysia.

Grace YeohManaging partnerShearn Delamore & Co
Grace Yeoh
Managing partner
Shearn Delamore & Co

This exercise of the government’s rights has caused grave concern in the pharmaceutical industry in relation to Malaysia’s commitment to the protection accorded to pharmaceutical patents in Malaysia.

There is ongoing discussion between Gilead and the new government for a review of the exercise of the government’s rights, and the parties are hopeful of an amicable solution to this issue.

Our firm also represents another pharmaceutical client which has been granted leave to apply to the Federal Court to overturn its earlier decision on the interpretation of the provisions of the Patents Act in respect Of the invalidation of patents.

The Federal Court in the SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anr had decided that if an independent claim of a patent was found to be invalid in the course of litigation, all claims dependent on that independent claim would also be invalid.

This decision, which is binding on all the lower courts of the High Court and Court of Appeal, in effect hinges the validity of an entire patent on the validity of its independent claim or claims. The outcome of a re-examination of the Federal Court’s decision in the SKB Shutters case will be of great interest to the Malaysia IP Office as well as the patent profession in Malaysia.