Criteria for Patent Amendments – In the case of Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd [2015] SGHC

Shipment

By Chiong Song Ning (Ella Cheong LLC)

 

 

Introduction

In most (if not all) countries, patents can only be granted over inventions which are new, non-obvious (i.e. possess an inventive step), and capable of industrial application.

 

If doubts are raised over the patentability of the invention, either before grant (e.g during examination by the patent office) or after grant (e.g during revocation or infringement proceedings), the patent specification would have to be amended to prevent the patent application or granted patent from being rejected/refused (in a pre-grant scenario), or revoked/invalidated (in a post-grant scenario).

 

In this article, we examine the case of Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd [2015] SGHC 159 (Ship’s Equipment), where the Singapore High Court (“the Court”) discussed the criteria for allowing patent amendments.

 

Brief Summary of the Facts

The Plaintiff was the proprietor of two Singapore patents over a coupling device (commonly known as a twistlock) used to secure shipping containers.  One of the Singapore patents (“the 370 Patent”) and its corresponding European patent were based on the same PCT application.  The 370 Patent was granted in Singapore on 31 March 2008.

 

The Plaintiff commenced infringement proceedings against the Defendants (a twistlock manufacturer and its distributors) on 5 May 2010.  The Defendants denied infringing the Plaintiff’s patents and filed counter-claims to invalidate the patents for lack of novelty.

 

Sometime in December 2012, the Plaintiff applied for leave to amend the 370 Patent.  The proposed amendments to the 370 Patent were identical to earlier amendments filed in respect of the corresponding European patent (these earlier amendments to the European patent were filed in 2010 in the course of opposition proceedings before the Opposition Division of the EPO).

 

The High Court’s Decision

The issue before the Court was whether the 9 proposed amendments to the 370 Patent should be allowed.

 

Under the Singapore Patents Act (“the Act”), an amendment to the specification of a patent would be disallowed if the proposed amendment disclosed additional matter, extended the protection of the patent, or lacked clarity and conciseness.

 

The Court rejected 6 of the 9 proposed amendments on the basis that they did not comply with the requirements under the Act.

 

More interestingly, the Court exercised its discretion to reject the remaining 3 proposed amendments (even though they satisfied the formal requirements under the Act) on the following grounds:

 

  • There was an undue delay on the part of the Plaintiff in seeking the amendment of the 370 Patent, without any reasonable explanation for the delay; and

 

  • The Plaintiff had sought to obtain an unfair advantage by litigating on the basis of an unamended 370 Patent, despite recognizing that there was a potential risk for the 370 Patent to be invalidated in light of the prior art.

 

The Court commented that the Plaintiff’s actions in the present circumstances constituted “covetous conduct”, and added that it would exercise its discretion to punish patentees for their unreasonable conduct, even when no advantage had been gained.

 

For the reasons above, the Court dismissed all of the Plaintiff’s proposed amendments.

 

 

Concluding Remarks

The above decision provides useful guidance on the factors considered by the Court when assessing patent amendment applications.  Crucially, patent amendment applications should be filed expeditiously and in good faith, to avoid possible rejection by the Court even if all requirements under the Act have been fulfilled.

 

Ella Cheong LLC