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:

  1. On 5 May 2010, SEC commenced infringement proceedings based on the patent;
  2. 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;
  3. On 25 November 2010, the Opposition Division of the EPO found the European patent to be invalid;
  4. On 21 January 2011, SEC filed an appeal against the invalidity decision with the EPO;
  5. 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.