Zaraihan Shaari

Partner
Intellectual Property Healthcare and Life Science

Qualifications

  • LL.B (Hons), University of London
  • B.Sc (Hons) in Biochemistry, University of London
  • M.Sc in Medical Science (Biochemistry), National University of Malaysia (UKM)
  • Barrister-at-Law, Lincoln’s Inn
  • Advocate & Solicitor, High Court of Malaya
  • Registered Patent Agent and Registered Industrial Design Agent
  • A practicing biochemist before entering the legal profession

Zaraihan’s practice covers a range of Intellectual Property (IP) related matters, with patents constituting one of the major parts of her practice. She drafts patent specifications; advises on patent searches; handles patent prosecution & registration; advises on patent validity and infringement; and also represents clients in patent litigation.

She has worked extensively with the following industries: Pharmaceuticals; Life Sciences and Biotechnology; Chemicals, Pesticides, Herbicides; Cosmetics; Food Supplements; and Medical Devices. She also assists clients from the above industries in regulatory matters.

She further advises on legislations governing the life sciences & biotechnology, and on obtaining non-patent IP protection such as that under the Protection of New Plant Varieties Act. She also advises on and drafts agreements relating to Research and Development, and Licensing and Technology Transfers.

Zaraihan also has had a number of years of experience in advising on Industrial Designs protection.

  • Successfully represented I Du Pont Nemours And Company (“Du Pont”) in the Malaysian High Court and in the Court of Appeal in a patent invalidation suit commenced by Ranbaxy (Malaysia) Sdn Bhd (“Ranbaxy”) against Du Pont’s Malaysian patent relating to an active pharmaceutical ingredient for treating hypertension and congestive heart failure. Du Pont counter claimed for infringement of its patent by Ranbaxy. The validity of Du Pont’s patent was successfully defended, and infringement of the patent was established.
    • [2011] 1 LNS16; [2012] 9 CLJ 79
    • Counsels from Shearn Delamore : SF Wong, Zaraihan Shaari & Michelle Loi 
  • Successfully represented Novartis AG (“Novartis”) in the Malaysian High Court in a patent invalidation suit commenced by Ranbaxy (Malaysia) Sdn Bhd (“Ranbaxy”) against Novartis’s Malaysian patent relating to a solid oral dosage form of an active pharmaceutical ingredient for treating hypertension. The validity of Novartis’s patent was successfully defended.
    • [2012] 1 LNS 1083
    • Counsels from Shearn Delamore : SF Wong, Zaraihab Shaari & Michelle Loi
  • Successfully represented Merck Sharp & Dohme Group (“Merck”) in the Malaysian Federal Court in a patent infringement suit commenced by Merck against Hovid Bhd (“Hovid”) and in which Hovid counterclaimed for a declaration that Merck’s patent is invalid. The patent relates to a dosage regime for a drug in the treatment of osteoporosis. At the High Court, the patent’s only independent claim was held to be invalid. The High Court, in being bound by a previous decision of the Federal Court, also held that all the claims dependent on said independent claim are consequentially invalid, without the need for the Court to consider separately the validity of each dependent claim. An appeal was made to the Court of Appeal and finally to the Federal Court. The Federal Court, in Merck’s favour, departed from its previous decision and held that when an independent claim is held invalid, the claims dependent on said independent claim are not to be automatically held invalid. The case was thus remitted to the High Court to determine whether each of the said dependent claims possessed independent validity. This is a landmark decision as patentees can now file patents in Malaysia without the fear that the dependent claims will be automatically invalidated merely upon the invalidation of the independent cl
    • [2019] 9 CLJ 1
    • Counsels from Shearn Delamore : Indran Shanmuganathan, Zaraihan Shaari, Michelle Loi, Yap Khai Jian & Elisia Engku Kangon
  • Advising on patentability, drafting of patent specifications, and handling prosecution of patent applications of pharmaceutical inventions for Institute for Medical Research, Ministry of Health Malaysia.
  • Advising on patentability, drafting of patent specifications, and handling prosecution of biotech inventions for Malaysian Palm Oil Board.

The Legal 500 Asia-Pacific

Intellectual Property 2020 - Recommended Lawyer for 2 years in 2014 and 2020

  • 'skilled patent attorney' Zaraihan Shaari, who attracts praise for her 'well-developed technical skills and knowledge' - The Legal 500 Asia-Pacific 2020

IAM Patent 1000

Prosecutions 2019 - Ranked Individual

  • Member, Malaysian Bar
  • Member of Healthcare and Life Sciences Law Committee, International Bar Association (IBA)
  • Member (International), International Association for the Protection of Intellectual Property (AIPPI) (Malaysian Chapter)
  • Representative of Shearn Delamore (Member), Asian Patent Attorneys Association (APAA)
  • Member, Malaysian Intellectual Property Association (MIPA)
  • Associate Member, Malaysian Association of Clinical Biochemists
  • Member of Editorial Board, “The Life Sciences Lawyer” magazine (CTC Legal Media)

 

  • “Malaysia: Analysing the relationship between plants and intellectual property issues”, Managing Intellectual Property Asia-Pacific September 2019 (Co-Author)
  • International Patent Litigation: A Country-By-Country Analysis, 2016 & 2017, Malaysia Chapter, Bloomberg BBNA (Co-Author)
  • “How to secure new plant variety protection”, Managing Intellectual Property, IP Focus 2009 Asia-Pacific & Middle East 7th Edition
  • “Boosting biotechnology in Malaysia”, Managing Intellectual Property, June 2004 Issue 140
  • “Patentability in Malaysia of inventions involving embryonic stem cells”, Asian Counsel, 2 Issue 4 May 2004
  • Medical Journal of Malaysia, 1994 Dec; 49(4): 355-63
  • Proceedings of 9th ASEAN Congress of Cardiology 1992, Kuala Lumpur, 3 to 7 July 1992
  • UKM Medical Journal July 1992, 14(2): 135-141. (Co-Author)