In a recent case, Ship’s Equipment Centre Bremen v
Fuji Trading (Singapore) and others [2015] SGHC 159, the
Singapore High Court departed from its “lenient
approach” advocated by earlier decisions and rejected an
application by the patentee for leave to amend a patent
post-grant.
Ship’s Equipment Centre Bremen (SEC) is the owner of two
Singapore patents relating to a coupling device used to secure
shipping containers, commonly known as a twistlock. In 2010 and
2011, SEC initiated proceedings to sue a number of Singapore and
Japanese companies (Defendants) for alleged infringement. The
Defendants denied infringement and challenged the validity of the
Singapore patents.
While the infringement proceedings were still ongoing, in late
2012, SEC applied to the Singapore High Court to request leave to
amend the claims of one of the patents.
The Singapore High Court rejected the application on the grounds
of undue delay and unfair advantage. It would be useful to consider
the chronological events to appreciate the Court’s
decision:
- On 5 May 2010, SEC commenced infringement proceedings based on the patent;
- SEC has a corresponding European patent which was opposed based on prior art and SEC had filed amendments for the European patent on 10 Nov 2010;
- On 25 November 2010, the Opposition Division of the EPO found the European patent to be invalid;
- On 21 January 2011, SEC filed an appeal against the invalidity decision with the EPO;
- While the EPO appeal was still pending, SEC applied to the Singapore Patent Office to amend the patent around December 2012.
SEC knew of the prior art cited in the EP opposition in November
2010, but only applied to amend the Singapore patent around
December 2012 – about two years later.
Despite arguing that it did not think that the EP cited prior art
was relevant to the Singapore patent, SEC applied to amend the
Singapore patent before the EPO rendered its decision on
SEC’s appeal.
This apparent volte-face by the patentee cast serious
doubts on the patentee’s honesty, leading the Singapore High
Court judge to doubt it genuinely believed the Singapore patent was
valid. The judge distinguished this case from the “lenient
approach” advocated in an earlier Singapore Court of Appeal
decision and instead found that there was undue delay on the part
of the patentee in applying to amend the patent.
The judge also adopted the legal principle that there is unfair
advantage “where a patentee threatens an infringer with his
unamended patent after he knows or should have known of the need to
amend”. Further, the judge took the view that the undue delay
was aggravated by the patentee who obtained an unfair advantage
from the patent by commencing litigation proceedings based on the
unamended patent even though it knew the patent should have been
amended to avoid prior art. The judge consequently refused the
patentee’s application to amend the patent claims.
Since the post-grant amendments were refused, SEC may be left with
a partially valid patent (assuming that the amendments sought by
SEC would have cured the invalidity). Section 70(1) of the
Singapore Patents Act provides the Court has discretion to grant
relief in respect of that part of the patent which is found to be
valid and infringed. However, Section 70(2) of the Singapore
Patents Act clarifies that the Court shall not grant any monetary
relief in respect of that part found to be valid and infringed
unless the patentee proves that the specification for the patent
was framed in good faith and with reasonable skill and
knowledge.
As the Singapore High Court found that there was undue delay in
amending the patent and SEC had obtained an unfair advantage, it
would seem highly unlikely that SEC could successfully argue its
patent was “framed in good faith and with reasonable skill
and knowledge”, making it difficult to obtain relief based on
this patent. Of course, SEC still has its other patent to rely
on.
This case highlights the importance of amending a Singapore patent
expeditiously when new prior art affecting the patent’s
validity is known. This can be onerous especially if the patentee
has filed patent applications in many jurisdictions. The
prosecution of patent applications in different countries
progresses at different speeds, so new prior art could surface
sporadically. Nevertheless, the patentee should strive to consider
the impact of any new prior art found on its Singapore patent and
consult with a qualified Singapore patent attorney on the need to
amend (particularly since prior art citable in a foreign
jurisdiction might not be citable in Singapore) as soon as
possible. If this is not practical, a thorough review should be
carried out prior to any enforcement action to ascertain that the
Singapore patent is valid to the best of the patentee’s
knowledge. This should assist the patentee in proving that it had
not obtained any unfair advantage by initiating proceedings based
on an unamended patent and had not abused its monopoly.
For third parties, a patentee’s failure to obtain post-grant
amendments may be beneficial since relief may be restricted in the
event a third party is found to have infringed on the patent. This
case serves as a timely reminder for third parties to seek
professional legal advice when they are served cease and desist
letters by a patentee so that the merits of the allegations may be
assessed. This is particularly important in the Singapore context
since prior to 14 February 2014, Singapore patents were granted on
“self-assessment” which meant that a patentee could
obtain grant of a Singapore patent without a local adjudication of
whether or not the claims were patentable. With this latest
decision, it may be more difficult for patentees to enforce their
rights or apply to amend their patent post-grant unless they can
show that at time of grant, they genuinely believed that the
Singapore patent to be valid.
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.