MacDermid Incorporated (“MacDermid”) filed an application with the Intellectual Property Office of Singapore (IPOS) to revoke Singapore Patent No. 45087 entitled “Copper Coating” – owned by Alpha Fry Limited (“Alpha Fry”) – on 14th August 2001.
Alpha Fry received a copy of the application along with the statement of the grounds of revocation from IPOS and subsequently filed their counter-statement, a copy of which was served to MacDermid, accompanied by a copy of the proposed amendments to all the claims. MacDermid then filed evidence in support of their case, with Alpha Fry following suit.
During a Pre-Hearing Review attended by the IPOS Patent Registrar and the representatives of MacDermid and Alpha Fry, both parties involved agreed to stay the Singapore proceedings until the European proceedings relating to the corresponding European patent was resolved, and worked on settlement terms in the meantime.
IPOS thereafter corresponded with MacDermid and Alpha Fry on the progress of the European proceedings as well as on the settlement negotiations. During this time, the Registrar received a letter from Alpha Fry stating that they did not wish to take part in further proceedings relating to the revocation matter. MacDermid, on the other hand, informed IPOS that they still intended to pursue the revocation action.
IPOS then sent a letter to MacDermid and Alpha Fry to query if either party wanted to provide written submissions or be heard in the revocation matter. Once again, Alpha Fry declined to take part in subsequent proceedings relating to the revocation matter.
In an unexpected turn of events, MacDermid replied that they too did not wish to provide written submissions or be heard in the matter.
As MacDermid and Alpha Fry failed to reach a settlement, the Registrar instructed for the patent, particularly the proposed amendments to the claims by Alpha Fry, to be re-examined by an Examiner. In the re-examination report, the Examiner concluded that the claims were not novel and did not involve an inventive step. He also took the view that although the amendments proposed by Alpha Fry were allowable, they would not overcome the issues. Based on this, he recommended that the Singapore Patent be revoked. The re-examination report was issued on 22 August 2007 and a copy of the report was sent to both MacDermid and Alpha Fry.
On 23 June 2009, the Registrar issued a letter informing both MacDermid and Alpha Fry that a decision would be made on the revocation unless the Registrar heard from either party by 6 July 2009 on whether they intended to make any further application or submission on the matter. Neither MacDermid nor Alpha Fry responded.
The decision on this case was delivered on 29 July 2009. The Registrar agreed with the Examiner’s findings and ordered the unconditional revocation of the Singapore Patent.
This case has proven to be interesting as the Registrar was forced to make a decision, when either MacDermid or Alpha Fry neglected to respond to his requests at one point or another.
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