30 March, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

In Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7, the Singapore High Court clarified the operation of s. 82 of the Patents Act (“the Act”), which provides for the circumstances in which the validity of a patent may be put in issue.

 

Astrazeneca, who owned a number of pharmaceutical patents, commenced action for, inter alia, a declaration that certain claims of its patent SG 49283 would be infringed by Ranbaxy’s intended acts in Singapore. In its Defence and Counterclaim, Ranbaxy put into issue the validity of a number of unasserted claims of SG 49283 and of 2 other Astrazeneca patents. Astrazeneca applied to strike out the relevant references and paragraphs of the Defence and Counterclaim on the basis that Ranbaxy was not entitled to challenged the validity of the unasserted claims/patents.

 

Estoppel?

 

As a preliminary point, Ranbaxy argued that it should be allowed to challenge validity of the unasserted claims of SG 49283 as there is a risk that it may be barred from raising the same grounds of invalidity should the plaintiff take out another infringement action in respect of these claims. The Court rejected this argument, holding that it was out of order for Ranbaxy to try to pre-empt Astrazeneca, potentially leading to wasted resources if Astrazeneca never attempts to litigate the other claims.

 

Section 82 of the Patents Act

 

Section 82(1) of the Act identifies a list of proceedings in which the validity of a patent may be put in issue including, inter alia, “by way of defence” in proceedings for infringement (s. 82(1)(a)), and proceedings in which a declaration of non-infringement is sought under s. 78 of the Act (s. 82(1)(c)). The Court held that the list in s. 82(1) is exhaustive.

 

Ranbaxy could not rely on s. 82(1)(a) to challenge the validity of unasserted claims in SG 49283 because each claim of a patent required a separate validity analysis such that it cannot be “by way of defence” to the alleged infringement of one claim to put the validity of another claim into issue. Section 82(1)(a) could much less be relied on to challenge the validity of unasserted patents.

 

Ranbaxy also could not rely on s. 82(1)(c) even though it also sought a declaration of non-infringement under s. 78 of the Act because it had not complied with the requirements of s. 78 to apply to the plaintiff in writing for a written acknowledgment to the effect of the desired declaration, furnishing the plaintiff with full particulars of the defendant’s intended acts.

 

In this regard, Ranbaxy had only furnished to Astrazeneca notices pursuant to compliance with s. 12A the Medicines Act for the purposes of obtaining licences for its pharmaceutical products. The Court found that the contents of the notices did not meet the threshold of “full particulars” set out in s. 78 of the Act.

 

The Court commented that the proper course of action should have been for Ranbaxy to start revocation proceedings before the Patent Office, and that there was nothing to stop them from doing so at present.

 

Take-away

 

This decision makes it clear that it would not be open to a defendant in a patent infringement suit to challenge the validity of unasserted claims in the patent in the same proceedings. If the defendant desires to challenge such claims, its only recourse is to bring revocation proceedings before the Patent Office.

 

 

For further information, please contact:

 

Oh Pin-Ping, ATMD Bird & Bird

pin-ping.oh@twobirds.com

 

 

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