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Challenging the Validity of Patents and Patent Claims not asserted in the Infringement Action.

2 March, 2012

 

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

 

The validity of patents is often challenged by Defendants in patent infringement actions. In Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7 the Plaintiff brought an action for a declaration that the Defendant’s intended importation of certain pharmaceutical products would infringe specific claims of the Plaintiff’s Singapore Patent No. 49283 (“SG49283”). The Defendant, in its Defence and Counterclaim and Particulars of Objection, challenged the validity of patent claims of SG49283 and also other patents belonging to the Plaintiff (“other patents”) which were not asserted as infringed.

 

The Plaintiff then applied to strike out the Defendant’s pleadings which refer to the claims which were not asserted and the other patents on the grounds that s. 82(2) of the Patents Act (the “PA”) provides a list of proceedings in which the validity of a patent may be challenged, and the present proceedings did not fall within that list.

 

The Defendant raised many arguments to justify its pleadings. It argued that s. 82(2) did not apply to proceedings where the Defendant seeks revocation in addition to the declaration of invalidity. It also argued that it should be allowed to raise unasserted claims and patents because the Plaintiff may commence another infringement action on those claims and patents. The court rejected those arguments.

 

The court held that the validity of unasserted claims cannot be raised as a defence as the successful invalidation of claims which were not asserted would not affect the validity of claims which were asserted. The validity of unasserted claims and patents also could not be challenged by way of a counterclaim for a declaration of non-infringement under the inherent jurisdiction of the court as this was not included in the list of proceedings provided in the PA.

 

The court appeared to accept that the validity of unasserted claims and patents could be challenged by way of a counterclaim for a declaration of non-infringement under s. 78 of the PA. However, as the Defendant had not satisfied the requirements under s. 78 which required the Defendant to, inter alia, provide the Plaintiff with full particulars in writing of the act which the Defendant wishes to be declared non-infringing, the Defendant could not rely on s. 78 in the present proceedings. Accordingly, the court granted the application to strike out.

 

Comment

 

It appears that a Defendant to a patent infringement action may challenge the validity of unasserted claims and patents within the same proceedings by way of a counterclaim for a declaration of non-infringement under s. 78 of the PA. However, it may be difficult for a Defendant to fully comply with the requirements in s. 78 while preparing its Defence and Counterclaim within the timelines prescribed by the Rules of Court. Nevertheless, it is still open for the Defendant to bring revocation proceedings before the Registrar.

 

 

For further information, please contact:

 

Tiong Hou Yuen, ATMD Bird & Bird

[email protected]

 

 

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