Martek v Cargill: Arachidonic Acid Patent Validity - Novelty & Inventive Step
Martek Biosciences Corporation appealed against the decision of the Deputy Registrar of Patents and the Principal Assistant Registrar of Patents to revoke its Singapore Patent No. 42669, concerning "Arachidonic Acid and Methods for the Production and Use Thereof." The High Court of Singapore, presided over by Justice Tay Yong Kwang, allowed Martek's appeal, finding the patent valid. The court held that the patent met the requirements of novelty and inventive step, overturning the tribunal's decision that it lacked inventive step.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Written Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding the revocation of Martek's patent for arachidonic acid production. The court allowed the appeal, finding the patent valid.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Martek Biosciences Corporation | Applicant | Corporation | Appeal Allowed | Won | |
| Cargill International Trading Pte Ltd | Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge | Yes |
4. Counsels
4. Facts
- Martek is the proprietor of Singapore Patent No. 42669, entitled "Arachidonic Acid and Methods for the Production and Use Thereof."
- Cargill filed an application to revoke the patent on the grounds that the invention was not patentable and lacked sufficiency.
- The patent relates to processes for producing arachidonic acid (ARA)-containing oils, preferably free of eicosapentaenoic acid (EPA).
- The invention aims to provide an economical method of producing ARA for use in infant formula.
- The Tribunal initially found the patent lacking in inventive step due to the obviousness of combining teachings from prior art.
- The High Court reversed the Tribunal's decision, finding the patent both novel and involving an inventive step.
- The court emphasized the importance of expert evidence in determining inventive step from the perspective of a skilled person.
5. Formal Citations
- Martek Biosciences Corporation v Cargill International Trading Pte Ltd, Originating Summons No 1418 of 2009, [2012] SGHC 35
6. Timeline
| Date | Event |
|---|---|
| Patent granted by IPOS | |
| Cargill filed an application to revoke the Patent | |
| Martek filed an application to amend the claims of the Patent | |
| Amendments were advertised in the Patents Journal | |
| IPOS Hearing Officers informed the parties of their intention to cause the Patent to be re-examined under s 80(2) of the Act | |
| Re-examination Report was produced by an examiner from the Australian Patent Office of IP Australia | |
| The Re-examination Report was made available to parties | |
| Hearing before the Tribunal began | |
| Tribunal held that the Respondent succeeded in its application to revoke the Applicant’s Singapore Patent No. 42669 | |
| Judgment reserved |
7. Legal Issues
- Patentability
- Outcome: The court found the patent to be patentable, meeting the requirements of novelty and inventive step.
- Category: Substantive
- Sub-Issues:
- Novelty
- Inventive Step
- Sufficiency of Disclosure
- Inventive Step
- Outcome: The court held that the Tribunal erred in finding that the claims lacked inventive step, as there was no evidential basis for such a finding.
- Category: Substantive
- Sub-Issues:
- Obviousness to a person skilled in the art
- Mosaicing of prior art
- Novelty
- Outcome: The court found that the claims were novel over the prior art.
- Category: Substantive
- Sub-Issues:
- Anticipation by prior art
- Suitability for intended use
8. Remedies Sought
- Revocation of Patent
- Upholding Patent Validity
9. Cause of Actions
- Patent Revocation
10. Practice Areas
- Patent Litigation
- Intellectual Property
- Commercial Litigation
11. Industries
- Biotechnology
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Martek Biosciences Corporation v Cargill International Trading | High Court | Yes | [2011] 4 SLR 429 | Singapore | Prior case between the same parties involving a similar patent revocation application. The court references its prior judgment in this case. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | N/A | Yes | [1985] RPC 59 | England and Wales | Cited for the test of inventive step, specifically the four-step Windsurfing test. |
| Muhlbauer AG v Manufacturing Integration Technology Ltd | Court of Appeal | Yes | [2010] 2 SLR 724 | Singapore | Cited for the principle that it is permissible to construct a 'mosaic' out of various pieces of prior art when assessing inventiveness. |
| Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd | N/A | Yes | [2005] 3 SLR(R) 389 | Singapore | Cited for the principle that mosaicing of prior art is not allowed in the inquiry for novelty. |
| Genelabs Diagnoistics Pte Ltd v Institut Pasteur and another | N/A | Yes | [2000] 3 SLR(R) 530 | Singapore | Cited regarding the test of sufficiency from the point of view of a person skilled in the art. |
| Kirin-Amgen v Hoechst Marion Roussel | N/A | Yes | [2005] 1 All ER 667 | England and Wales | Cited regarding the test of sufficiency from the point of view of a person skilled in the art. |
| Mölnlycke AB v Procter & Gamble | English Court of Appeal | Yes | [1994] RPC 49 | England and Wales | Cited for the principle that the court will almost invariably require the assistance of expert evidence in applying the statutory criterion and making findings on inventive step. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R5, 2006 Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Evidence Act (Cap 97, 1997 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Arachidonic Acid (ARA)
- Eicosapentaenoic Acid (EPA)
- Mortierella alpina
- Triglyceride Oil
- Infant Formula
- Patentability
- Novelty
- Inventive Step
- Prior Art
- Skilled Person
- pH Profiling
15.2 Keywords
- patent
- arachidonic acid
- ARA
- EPA
- Mortierella alpina
- infant formula
- novelty
- inventive step
- patentability
- Singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Intellectual Property Law | 70 |
16. Subjects
- Patent Law
- Intellectual Property
- Biotechnology
- Fermentation
- Food Science