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12th March, 2012

Martek Biosciences Corporation had recently succeeded in getting the Singapore High Court in affirming that Martek’s Singapore Patent No. 42669 (hereinafter referred to as “the Singapore Patent”) to be valid.

By way of history, a Tribunal comprising the Deputy Registrar of Patents and the Principal Assistant Registrar of Patents had held that the Singapore Patent to be invalid and therefore revoked on 3 November 2009 based on a revocation action filed by Cargill International Trading Pte. Ltd.

The Singapore Patent entitled “Arachidonic Acid and Methods for the Production and Use Thereof” which was granted on 30 March 1999 claims an invention which relates to processes for the production of arachidonic acid (ARA) containing oils, which preferably are free of eicosapentaneoic acid (EPA). The Singapore Patent also claims compositions containing oils of very high amounts of ARA in triglyceride forms and to uses of such oils. In a preferred embodiment, Mortierella alpina is cultivated using conditions which yield triglyceride oil having particularly high levels of ARA residues, biomass is harvested and the oil is extracted, recovered and used as an additive for infant formula. The claims of the Singapore Patent were subjected to post-grant amendments in 2006 and the amended claims were accepted by the Intellectual Property Office of Singapore (IPOS) as the amendments did not extend the scope of the Singapore Patent.

Cargill had argued before the Tribunal that the Singapore Patent was invalid because the invention disclosed in the Singapore patent was not a patentable invention under Section 80(1)(a) of the Singapore Patents Act (Cap 221, 2005 Rev Ed) [hereinafter referred to as “the Act”]. It must be noted that Cargill although initially pleaded that the Singapore patent fails to disclose sufficient information for the invention to be performed by a person skilled in the art as required under Section 80(1)(c) of the Act, but decided not to pursue it.

The Tribunal held that the independent claims which were amended post grant i.e. claims 1, 2, 20 and 35 were not patentable under Section 80(1)(a) of the Act and that the independent claims as well as all the dependent claims which were amended post grant were novel as none of the prior art documents had disclosed all the features of the independent claims in a single piece of prior art. However, the Tribunal held that the independent claims lacks an inventive step as the prior art documents (as a combination) had disclosed all the features of the independent claims and therefore would be obvious for a skilled person in the art to combine the prior art documents to arrive to the inventions as claimed in the independent claims (“mosaicing” the prior art).

Martek filed an appeal at the High Court against the decision of the Tribunal to revoke the Singapore Patent under Section 80(1)(a) of the Act. Cargill responded by filing a cross-appeal for the High Court to reconsider the grounds under Section 80(1)(c) of the Act by arguing that the Tribunal was wrong in not deciding on the insufficiency disclosure of the Singapore Patent by pointing out that it made detailed written submissions to the Tribunal both in its Closing Submissions and Reply Submissions. In response, Martek had argued that Cargill’s Opening Statement was completely silent on the insufficiency issue and only belatedly attempting to revive its challenge by way of Closing Submissions and Reply Submissions and therefore Martek will be irremediably prejudiced if the High Court had allowed its request. The High Court held that Cargill is not entitled to challenge the Singapore Patent under Section 80(1)(c) of the Act and therefore the only issue to be resolved before the High Court is the issue of patentability under Section 80(1)(a) of the Act.

The Court therefore looked at the independent claims of the Singapore Patent as amended post grant i.e. claims 1, 2, 20 and 35 on novelty and inventive step issues. With regards to the novelty issue, the Court held that Cargill had failed to adduce evidence to refute the novelty of the amended claims, especially because Cargill’s expert witnesses fail to convince the Court on this issue. In fact the Court had indicated that Martek’s expert witnesses were convincing in their arguments to elaborating the novelty issues. The Court held that all the independent claims were novel and by extension all the dependent claims were novel too.

With regards to the inventive step issues, the High Court held that all the independent claims of the Singapore Patent as amended post grant i.e. claims 1, 2, 20 and 35 were inventive (and by extension all the dependent claims were inventive too) and the Tribunal was erred in finding the independent claims to be lacking an inventive step. The Court noted an article written by Ng-Loy Wee Loon as published in Law of Intellectual Property of Singapore (Sweet & Maxwell Asia, Rev Ed, 2009) that “mosaicing” of prior art is not permitted in the obviousness inquiry if it would not be obvious to the skilled addressee to “mosaic” the different pieces of prior art documents. The Court had indicated that the expert witnesses of Martek, once again, were very convincing in guiding the Court on the inventive step issue.

The High Court had therefore allowed Martek’s appeal against the Tribunal’s decision and dismiss Cargill’s cross-appeal and ordered Cargill to pay Martek its cost of the appeal proceedings and before the Tribunal, with such costs to be taxed if not agreed. It is not clear at the time of writing of this article on whether Cargill will appeal the decision of the High Court.

This case clearly explained the importance of selecting appropriate expert witnesses especially for cases with a high degree of specificity. As this case indicates, courts normally are persuaded by the expert witnesses who are convincing.

ADIPVEN can assist in strategizing litigation actions to ensure higher chances of success in courts. ADIPVEN can also assist in conducting prior art search and giving opinion on validity of patents and to help to identify suitable and experienced expert witnesses in the event that you or your clients are considering patent revocation actions in Singapore, Malaysia, India, Thailand, Vietnam, Indonesia, Philippines and Brunei. Please do not hesitate to write to us at if you need any further clarifications on this matter.