BRUNEI: RE-REGISTERED PATENT TERM DEFINED BY COURT

February 26th, 2015

 

A recent case of dispute in the High Court of Brunei relates to a declaration of non-infringement patent matter lead to an escalation of its appeal to the Court of Appeal of Brunei. This case involved Winthrop Pharmaceuticals (M) Sdn. Bhd. and Shionogi Seiyaku Kabushiki Kaisha.

Winthrop Pharmaceuticals (M) Sdn. Bhd. sought an application for a declaration of non-infringement of a Brunei patent derived from the UK Patent No. EP (UK) 0521471 entitled “Pyrimidine derivatives as HMG-CoA reductase inhibitors,” in which it was registered in Brunei on 15 September 2001. The patentee for the Brunei patent is Shionogi Seiyaku Kabushiki Kaisha.

When Winthrop Pharmaceuticals went ahead to apply for the declaration of non-infringement of the Brunei patent, they were under the impression that the patent had expired on 29 June 2012 when the UK patent, from which the Brunei patent derived from had expired.

However, the Brunei High Court rejected the application and ruled in favour of Shionogi Seiyaku Kabushiki Kaisha. Citing that the patent term was calculated from the date of registration of the Brunei patent, the judge found that the Brunei patent is still valid and did not expire until 19 October 2020.

Unsatisfied with the decision of the High Court, Winthrop Pharmaceuticals hereinafter referred to as “the Appellant”) then filed an appeal to the Court of Appeal in an attempt overturn the decision which favoured Shionogi Seiyaku Kabushiki Kaisha (hereinafter referred to as “the Respondent”).

Proceedings in the Court of Appeal centred around the question in contention which is whether or not the Brunei patent derived from the UK patent has expired on 29 June 2012. The Appellant argued that the patent which was registered in Brunei on 15 September 2001, pursuant to the provisions of the Inventions Act, had since expired, following the parent UK patent. According to Section 25 of the UK Patents Act, the term of a UK patent is calculated 20 years from the date of the patent application. This provision was also adopted in the Invention Acts of Brunei which provided for the granting of patents granted in the UK.

The Court of Appeal held in favour of the respondent. The decision of the Court of Appeal demonstrates that it was in line with renewal of patents under Section 115(4) (a) of the Patents Order. According to this section, a term of a patent re-registered in Brunei is calculated 20 years from the date of grant the patent in the United Kingdom, Malaysia or Singapore. This is an importantly massive distinction from its previous practice in which a term of a patent is usually calculated from the date of filing of the patent application in its home country.

Citing this provision, the judge also contends that the Brunei patent is valid until 19 October 2020, therefore maintaining the decision of the High Court.

The Court of Appeal also reasonably disregarded the discussion of patent term extension which was brought up by the responded as it is not relevant as long as the Brunei patent remains valid in-force.

With the Section 115(4)(a) in force, it somewhat places an indirect domino effect on the renewal expiry of the UK, Malaysia or Singapore re-registered patents in Brunei. The patent owners would now have a choice to renew their patent within three months before the expiry date based on the date of filing of the parent application, or, within three months before the expiry date based on the date of grant of the patent in Brunei.

Pursuant to this decision the Registrar of Patents has issued a new Practice Note. It has been posted on Brunei Intellectual Property Office (BruIPO) website http://www.bruipo.com.bn/index.php/references/practice-note. The new Practice Note confirms that all  UK, Malaysia or Singapore re-registered patents in Brunei are now valid for 20 years calculated from the date of grant of the parent patents in the home countries.