The Rise And Fall Of The SKB Shutters Case

In 2015, the Federal Court in the SKB Shutters case ruled that the validity of a dependent claim will automatically fall upon the substantive finding of invalidity of its independent claim (“the SKB Shutters Ruling”)

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Introduction – The Rise Of The SKB Shutters Case

The case of SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutters Industries Sdn Bhd & Anor1 (“the SKB Shutters case”) started off just like any other ordinary patent case in the High Court. It was a case that revolved around a roller shutter door. The Plaintiff had sued the Defendant over infringement of a few of its patent claims. There were counter-claims for invalidity. Somewhere along the line, as the case traveled up to the highest court of the land, a somewhat controversial pronouncement was made.

In 2015, the Federal Court in the SKB Shutters case ruled that the validity of a dependent claim will automatically fall upon the substantive finding of invalidity of its independent claim (“the SKB Shutters Ruling”). More specifically, the Federal Court held that unless the dependent claims were redrafted to incorporate the features of the independent claim that they were dependent upon and were made as independent claims, the dependent claims could not survive. This decision appeared to hinge on the inability of patentees to amend patent claims during the pendency of litigation as provided for under Section 79A (3) of the Patents Act 19832 (“the PA”). The SKB Shutters Ruling saw a departure from this known practice where all claims, albeit independent or dependent, were assessed substantively if challenged in Court. As a result, dependent claims seem to be redundant and their bane of existence was put to question with many questioning whether it was worthwhile to have all their claims drafted in an independent manner.

Malaysian patent practitioners had to live with the after effect of the