Post-grant Amendments Refused by Registrar on discretionary grounds

Singapore Shipping Association and Association of Singapore Marine Industries v Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. [2019] SGIPOS 5

Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. (the Patentees) requested post grant amendments of Singapore Patent No. 159788 (the Patent) before the Registrar (the Registrar) during revocation proceedings. The proposed amendments were opposed by Singapore Shipping Association and Association of Singapore Marine Industries (the Opponents).

This is the first time the Registrar has assessed post-grant amendments based on the discretionary factors set out in the 2016 updates to the post-grant amendment guidelines (see Circular No. 1/2016).

Background

The Patentees had approached SembCorp Marine Ltd. and Keppel Shipyard Ltd. in seeking to monetise three of their Singapore patents. All three patents were contested by the Opponents in revocation proceedings before the Registrar. Two of the patents were revoked. Proceedings to revoke the third patent (the Patent) were contested and involved a request to amend the claims of the Patent.

The Patent was granted in Singapore under the ‘self-assessment’ system by relying on a granted Japanese patent and was not subject to local examination in Singapore. The post-grant amendments requested by the Patentees were to bring the claims in line with those of the corresponding Japanese patent, which had been narrowed following a series of invalidation trials.

The allowability of the post-grant amendments was contested by the Opponents.

The Opponents Contested the Post-Grant Amendments Based on Discretionary Factors

S 84(3) of the Singapore Patent Act states that post-grant amendments cannot disclose additional matter, nor extend the protection of the patent. In addition, as reported in our previous article, the Registrar now has discretion to allow or refuse post-grant amendments on the following grounds:

a) Whether relevant matters are sufficiently disclosed;

b) Whether there was any unreasonable delay in seeking amendments; and

c) Whether the patentee has gained an unfair advantage by delaying amendments which are known to be needed.

The Opponents opposed allowance of the proposed amendments on each of these grounds.

There was sufficient disclosure by the patentees

In the absence of relevant precedent in Singapore, the Courts and Registrar often look towards the UK Courts for guidance. In this case, the Registrar referred to Oxford Gene Technology Ltd v Affymetrix Inc. (No. 2) [2001] RPC 18, in which the UK Court of Appeal opined:

The obligation of good faith requires the patentee to put forward correct reasons for the amendment. If there be facts relevant to the exercise of the discretion for those reasons then those facts need to be put before the court. (emphasis added)

The Opponents argued that the Patentees had not disclosed certain information, such as prior art cited against the Korean and Chinese applications, and advice from the Patentees’ attorneys. However, the Patentees had provided full details of the patent family and information regarding amendments that had been made to the Japanese patent, and the reasons for those amendments. Since knowledge of the patent family was enough to enable any person to access relevant file histories, and a detailed history of the Japanese amendments had been provided, the Registrar was persuaded that there had been sufficient disclosure of relevant matters.

A 10 month delay in making the amendments was unreasonable

In considering if there was a delay in seeking the amendments to the Patent, the Registrar was of the opinion that the Patentees would have been aware that amendments to the Singapore patent may be required as early as 26 March 2012, when amendments were first made to the Japanese claims during invalidation proceedings. Further, pre-grant prosecution in Korea, China and India would also have further alerted the Patentees to the need to amend. In this regard, the Registrar opined that there was a delay in seeking amendments to the patent.

In determining if the delay was unreasonable, the Registrar considered the underlying principle that the public interest is to be upheld and the timeliness of amendments prevents unworthy inventions and products from monopolising the market. Separate considerations were given to:

1) the period after grant of the patent to the end of the Japanese invalidation proceedings (from 29 October 2010 to 26 December 2016; First period); and

2) the period after the end of the Japanese invalidation proceedings to the moment the amendments were proposed (from 26 December 2016 to 2 November 2017; Second period).

In the first period, three invalidation proceedings were brought against the Japanese patent and there was no clear break between them. The Registrar reasoned that the Patentees could not have definitively known the allowable scope of the claims, and the Patentees were justified in awaiting the outcome of the invalidation proceedings in Japan before considering amending the Singapore patent.

In the second period, the Registrar was of the opinion that the patentees had conceded to the narrower scope of claims after Japanese invalidation proceedings had concluded and that the Patentees knew of the need to amend. However, instead of amending the Patent, the Patentees attempted to commercialise the unamended Patent and only proposedamendments when challenged. In light of this, the Registrar found that there was an undue delay in applying to amend the Patent.

Seeking to exploit the patent in unamended form constituted an unfair advantage

The Registrar noted that ‘unfair advantage’ cited in previous cases only relates to the use of an unamended patent as an attacking tool; i.e. by the Patentee in infringement proceedings or in threats to bring infringement proceedings. In contrast, the present case is not related to an infringement proceeding but to the Patentees having the intention to monetise the Patent and hence gain an advantage from the unamended Patent.

In Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd [2015] 4 SLR 781, it was noted that:

Underlying the principles affecting the exercise of this discretion is a desire to ensure that patentees do not obtain an advantage which is unfair from their failure to amend, and perhaps, in some cases at least, to punish patentees for the unreasonableness of their conduct even when no advantage has in fact been gained. (emphasis added)

The Registrar found that the Patentees had not acted reasonably in their dealings as they had not been upfront about the validity of the Patent. Accordingly, the proposed amendments were not allowable.

Take-home messages

This case sheds some light on how the Registrar interprets the 2016 post-grant amendment guidelines. It appears that failure to meet any one of the criteria is basis for the Registrar refusing the post-grant amendments. Further, patentees should note that the interest of the public and the conduct of the patentee are two recurring themes that have surfaced time and again in recent cases (for example, see here and here), and that the burden is placed on the patentee to conduct themselves in a proper and timely manner. As such, a high degree of diligence is required in managing patent portfolios, especially when litigation, licensing or sale is contemplated.