Singapore: Singapore Patent Office denial of post grant amendments in revocation hearing founded on undue delay and unfair advantage

Last month, the Intellectual Property Office of Singapore (IPOS) Patent Registrar invoked its discretionary powers to deny a patentee’s request to enter post grant amendments as a defense in a revocation hearing based on findings of undue delay in presenting the post grant amendments and unfair advantage in pursuing monetization efforts in Singapore centered on the broader unamended Singapore claims when narrowing amendments had been required to obtain or retain grant of corresponding patents in other countries.

The case of Singapore Shipping Association and Association of Singapore Marine Industries v Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. [2019] SGIPOS 5 arose on opposition to Hitachi and Mitsubishi (the “Patentees”) proposal of narrowing claim amendments as a defense in a revocation proceeding at IPOS by the Singapore Shipping Association and Association of Singapore Marine Industries (the “Opponents”). The opponents had filed for revocation of three patents owned by the patentee and related to ballast water treatment. The other two patent revocation actions were uncontested by the patentees, resulting in their revocation.

Singapore Patent No. 159788 (the “788 Patent”) entitled “Vessel Structure” was filed in Singapore as a national phase entry (NPE) application PCT/JP2008/066536 claiming priority from a Japanese application. Corresponding NPE applications were filed in Japan, China, Korea and India. The 788 Patent was granted in 2010 under the Singapore “self-assessment” system and, accordingly, was not examined in Singapore but, instead, relied upon granted claims of the corresponding Japanese priority application. However, the granted Japanese patent relied upon went through three invalidation trials resulting in a Japanese patent having claims significantly narrower than the 788 Patent claims. The China and Korea patents were also granted with narrower claims than the Singapore patent due to narrowing amendments during prosecution. The India patent is still in prosecution.

The Registrar’s discretion to allow or refuse amendments to the patent during the revocation proceedings arises from Singapore Patents Act (SPA) section 83(1). The discretion is also provided under the rationale of the Singapore Court of Appeals case of Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] 2 SLR 707 (“Warner Lambert CA”) which states that the underlying rationale to refuse an application to amend is a “desire to protect the public against abuse of monopoly”, “a desire to ensure that patentees do not obtain an advantage which is unfair from their failure to amend” and a desire “to punish patentees for the unreasonableness of their conduct even when no advantage has in fact been gained” citing the UK case of Kimberly-Clark Worldwide Inc v Procter & Gamble Limited [2000] FSR 235.

The factors to be considered in the exercise of discretion to amend a patent post-grant as stated in Warner Lambert CA are:

  1. whether the patentee has disclosed all the relevant information with regard to the amendments;
  2. whether the amendments are permitted in accordance with the statutory requirements;
  3. whether the patentee delayed in seeking the amendments (and, if so, whether there were reasonable grounds for such delay);
  4. whether the patentee had sought to obtain an unfair advantage from the patent; and
  5. whether the conduct of the patentee discourages the amendment of the patent.

The Registrar found that the Patentees had disclosed all relevant information and that the amendments met the statutory requirements.

In regards to “undue delay”, the Registrar found that there was almost one year between the dismissal of the appeal from the third Japanese invalidation proceeding and the request to amend the 788 Patent and almost six months from the start of the Singapore revocation proceeding. The UK Patents Court in Instance v CCL Label Inc. [2002] FSR 27 (“Instance”) found that a delay of one year amounted to an undue delay, as a period of two months would be sufficient to formulate an amendment. The Registrar not only looked to the time between the end of the third Japanese invalidation proceeding, but also looked to the monetization efforts of the Patentees in approaching Keppel Shipyard Ltd (“Keppel”) and Sembcorp Marine Ltd (“Sembcorp”) for licensing or sale of the 788 Patent. In finding undue delay by the Patentees to amend the 788 patent based upon the Patentee’s monetization efforts, the Registrar stated:

It is clear from [the Patentee’s] behaviour in discussing the sale or licence of the 788 Patent with Keppel and Sembcorp, that the former were aware of the monopoly rights that were given by the patent grant, and as the evidence shows, they were also aware of the restrictions to those rights following the proceedings in Japan. However, they continued to attempt negotiations based upon the unamended patent, and did not attempt to make any amendments until after the validity of the 788 Patent was challenged. The Patentees were] able to expend time and effort in pursuing commercial leads based on the unamended patent, but, at the same time, could not (or rather, did not) channel resources to amend the 788 [Patent] without undue delay after the close of the third invalidation proceedings in Japan.

In regards to “unfair advantage”, the Registrar found “that the unreasonable delay in applying for an amendment was compounded by the behaviour of Hitachi in their discussions with Keppel and Sembcorp”. The Patentees had monetization discussions for licensing or sale of the 788 Patent with Keppel and Sembcorp based upon the unamended 788 Patent claims in which they provided a brochure depicting the unamended claims and pointing out that the proceedings in Japan all concluded in the Patentees favour. However, there was no mention in the brochure or the discussions that amendments to the 788 Patent were likely to be necessary following the conclusion of the proceedings in Japan because the Japanese proceedings only succeeded because the scope of the claims was significantly narrowed. The Registrar found that “the unreasonable delay in applying for an amendment was compounded by the behaviour of [the Patentees] in their discussions with Keppel and Sembcorp”. More particularly, the Registrar found the statement claiming that the final ruling in the third Japanese invalidation proceedings was in favour of the Patentees making it “3 consecutive win (sic) for [the Patentees] without loss” was “misleading in the entire context”.

These factors led the Registrar to conclude that the Patentees had not acted reasonably in their dealings with Keppel and Sembcorp and that the conduct of the Patentees along with the undue delay in amending the claims of the 788 Patent was found to be sufficient reason to refuse to allow the amendments.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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