MALAYSIA
Sdn Bhd v E.I. du Pont de Nemours and Company. Ranbaxy had obtained marketing approval from the National Pharmaceutical Control Board for its generic drug Covance, that contained losartan potassium as its active ingredient. DuPont was the owner of Malaysian patent MY-110414-A that protected the original drug, Cozaar.
At fi rst instance, Ranbaxy had applied to invalidate two claims of the patent
that related to losartan potassium in crystalline form. DuPont
counterclaimed for infringement of those claims. In the High Court, the validity of the two claims at issue was upheld and infringement found. An injunction was granted as well as orders for delivery up and destruction of Ranbaxy’s existing stock and recall of its product from the market.
Ranbaxy appealed to the Court of Appeal, initially based on the whole of the lower court’s fi ndings but later confi ning its case to two grounds: a procedural issue that the respondent (DuPont) did not make any physical appearance in court before the trial judge to defend the action or prosecute the counterclaim, and the alleged invalidity of the claims in suit.
T e Court of Appeal dismissed the procedural point. T ere was no law to the eff ect that a party to a civil action must personally attend court and give evidence to support its claims. DuPont had called a total of seven witnesses and tendered numerous exhibits in support of its defence. T e fact that no representative of the respondent had attended court for the trial was not fatal in any way.
On the validity of insuffi ciency of disclosure, ie, that the specifi cation of
the claims, the appellant had argued there was the patent did
not disclose adequately how to obtain losartan potassium in crystalline form. However, at trial the respondent had called two technical experts as witnesses, each of whom had conducted experiments following the instructions in the patent for making the relevant described example. In each case, these experts had obtained crystalline losartan potassium that was the core ingredient of the claims.
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T is evidence had not been challenged or contradicted by Ranbaxy at trial, and the Court of Appeal determined that the trial judge had correctly accepted the fi ndings of these expert witnesses. A further attack on validity, on the basis that counterpart foreign patents did not contain the claims at issue, had been rejected by the trial judge, on the ground that a distinction had to be made between the requirements of normal and modifi ed examination. T e Court of Appeal fully endorsed the trial judge’s opinion on this aspect. Accordingly, the appeal was dismissed in its entirety and the lower court’s judgment affi rmed.
It is rare for a patent dispute in Malaysia to reach the Court of Appeal. T is decision is a welcome addition in the development of local case law and a strong signal of the growing importance attached to IP in the country.
Designs
2012 started with the introduction of certain rule changes that were announced at short notice in January and due to take almost immediate eff ect. Of particular interest, the Malaysian Intellectual Property Association wrote a letter to the Director-General of MyIPO requesting a delay of one month until February 15, 2012, to allow more time for its members to inform and advise aff ected stakeholders. T is request was granted.
T e rule changes were generally of a fairly minor, housekeeping nature with not much eff ect on daily practice. T e most signifi cant aspect was a substantial increase in offi cial fees for publication of designs in the Government Gazette and for extensions of time. T e fees for renewal of design registrations are also now set at a fl at rate, independent of the age of the design. Discounted offi cial fees for multiple registrations were abolished.
In the face of such fee increases, it is encouraging to note that fi ling activity was still up by 11 percent with a total of 2,082 applications in 2012. Applications from local applicants increased 15 percent while those from overseas grew by about 8.5 percent.
World Intellectual Property Review e-Digest 2013 87
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