Introduction

The patent regime seeks to promote disclosure of inventions by granting a period of protection over the specific invention to the patent holder. However, in the course of the lifespan of the patent, it is possible for the patent holder to amend the patent. In Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd [2015] SGHC 159, the High Court examined the criteria to be fulfilled before such amendments would be allowed.

The Plaintiff in this case applied to Court for leave to amend a patent which it held. The Court first considered the requirements for amendment under the Patent Act, and how these requirements should be applied. Against these criteria, five of the nine proposed amendments were rejected.

The Court then considered its discretion to reject proposed amendments even if the Patent Act requirements are fulfilled, and when such discretion should be exercised. On the facts, the remaining proposed amendments were rejected on the basis of undue delay and unfair advantage on the part of the Plaintiff.

The Defendants, which successfully resisted the application for amendment, were represented by Lau Kok Keng and Wendy Low of Rajah & Tann Singapore LLP.

Brief Facts

The Plaintiff was the proprietor of two Singapore patents over a device used to secure shipping containers commonly known as a twistlock. One of the patents (the “370 Patent”) was granted in Singapore and corresponded with a European patent (the “European Patent”) filed by the same proprietor.

The Plaintiff commenced patent infringement proceedings against the twistlock manufacturer and its global distributor in one suit. Shortly after it obtained discovery of photographs, video and documents related to the alleged infringing twistlock in the first suit, it filed a second suit against the local distributors. The Plaintiff also obtained an anton pillar order (“APO”), allegedly on the basis that there was risk of destruction or dissipation of evidence of infringement. The APO has since been successfully discharged by the Defendants in the second suit. Both sets of Defendants have also denied infringement and validity of the Plaintiff’s patents, and counterclaims have been filed for groundless threat of patent infringement.

Sometime in December 2012, the Plaintiff then sought to amend the 370 Patent to correspond its claims with the amendments made to the European Patent to overcome various prior art. In response, the Defendants issued statements of opposition to the proposed amendments. The matter thus went before the Singapore High Court.

Holding of the High Court

In considering whether to allow or reject the Plaintiff’s nine proposed amendments, the Court had to determine:

  1. Whether the proposed amendments met the requirements under the Patent Act; and
  2. If the Patent Act requirements were fulfilled, whether the Court should nonetheless exercise its discretion to reject the amendments.

Patent Act requirements

Under the Patent Act, proposed amendments are only allowed if they comply with certain criteria:

  1. The amendment of the specification of a patent must not result in the disclosure of any additional matter;
  2. The amendment cannot extend the protection conferred by the patent; and
  3. The claims must be clear and concise, and must be supported by the description.

The Court assessed the nine proposed amendments against these requirements. Amendment to three claims were allowed, but the Court found that the remaining six of the amendments did not meet at least one of the three criteria. Accordingly, those six amendments were rejected.

Discretion to reject

Even if the requirements for amendment under the Patent Act are fulfilled, the Court still retains a discretion to reject any proposed amendment. This discretion is aimed at protecting the public against an abuse of monopoly, as well as preventing any unfair advantage from a failure to amend. The following factors were submitted for the High Court’s consideration, these being:

  1. Whether or not the patent holder has made full disclosure of all relevant matters;
  2. Whether there has been  unreasonable delay  in  seeking  amendment  of  the patent,  and whether there are reasonable grounds for the delay; and
  3. Whether the patent holder seeks to obtain an unfair advantage from a patent which he knows should be amended.

On the facts, the Court found that there had been an unreasonable delay in the Plaintiff’s application to amend the 370 Patent, and that the Plaintiff had no reasonable explanation for the delay. The Plaintiff knew early on that the 370 Patent might be invalid because the European Patent, which corresponds to the 370 Patent, had already been found to be invalid by the Opposition Department of the European Patent Office since 25 November 2010 and that amendments would be required to overcome its invalidity. However, the Plaintiff sought to amend the 370 Patent only about 2 years later in December 2012.

The Court also found that the Plaintiff had sought to obtain an unfair advantage from the 370 Patent when it knew it should be amended to avoid prior art. The Plaintiff had commenced infringement proceedings and obtained the APO based on the wider claims of the unamended 370 Patent despite knowing that its corresponding European Patent had already been found to be invalid. The Plaintiff’s conduct was found to be “covetous”, and the Court held that the amendment application should be dismissed “even where no advantage has in fact been gained.”

All matters considered, the Singapore High Court, under the exceptional circumstances, exercised its discretion to reject all of the Plaintiff’s proposed amendments, notwithstanding that some of the proposed amendments had satisfied the grounds for amendment under the Patent Act.

Concluding Words

This decision provides a helpful guide as to the factors and criteria which the Court will consider when assessing patent amendment applications. It examines the technical requirements of such an application, as well as the conduct and motives behind the amendments and how this might affect the application.

Parties seeking to amend their patents should thus ensure that the amendments, are clear and do not result in disclosure of additional matter or extend the scope of protection of the filed patents. Such applications should also be filed promptly and in good faith. This is especially so when there is a final determination made on the invalidity of a foreign patent which corresponds with a Singapore granted patent, and amendments were made in foreign proceedings to overcome the said invalidity. The latest High Court decision encourages a proprietor to consider filing corresponding amendments to its Singapore patent at the earliest opportunity.