Post-Grant Amendments In Singapore

By Joel Cheong

Eddy Sun is the owner of a Singapore patent for a lightbulb which simulates the morning sun by emitting controlled UV radiation to provide purported health benefits for people who are averse to going outdoors. The patent discloses two ways to achieve this; firstly, using mercury vapour and secondly, through use of wavelength filters. The claims of his patent, granted in 2011, only cover the mercury vapour embodiment. He also has a corresponding European patent granted in the following year which claims cover both embodiments.

Five years later, Tetsu Lau, a competitor, releases a range of more efficient lightbulbs with wavelength filters in Singapore which are essentially the same as Eddy Sun’s second lightbulb embodiment but not covered by the Singaporean patent claims. In response, Eddy Sun initiates infringement proceedings against Tetsu Lau and files an application to amend the patent to be the same as the European patent.

Did Eddy Sun succeed in both – the infringement and the application to amend his patent?

The Intellectual Property Office of Singapore (IPOS) has recently updated the practice on post-grant amendments under Section 38 of the Singapore Patents Act which came into effect on 30 June 2016.

Following the Singapore High Court’s decision on two cases–Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pty Ltd & Ors [2015] SGHC 159 (Ship’s Equipment), and more recently in Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106 (Warner-Lambert)–applications to amend patents after grant will now be assessed based on additional grounds.

Section 38 of the Singapore Patents Act provides for amendments of patents after they have been granted. No amendments may be made if proceedings have been initiated to challenge the validity of the patent, and any amendments to the specification would be deemed to have been in effect from date of patent grant. Also, any person may oppose an application to amend a patent and such opposition shall be considered in the decision to approve any amendments.

In addition to Section 84 of the Singapore Patents Act which does not allow amendments which add subject matter that goes beyond the scope of the initial disclosure or extend the scope of protection granted by the patent, the new guidelines, identified in Smith Kline and French Laboratories Limited v Evans Medical Limited [1989] FSR 561, shall also be considered:

Whether relevant matters are sufficiently disclosed;
Whether there was any unreasonable delay in seeking amendments; and
Whether the patentee has gained an unfair advantage obtained by delaying amendments which are known to be needed.

In both the Ship’s Equipment and Warner-Lambert cases, the amendments sought by the respective plaintiffs were not allowed by the High Court as they failed to meet all three requirements.

In the case of Ship’s Equipment, it was found that the plaintiff had joined parties to their infringement suit even when they were aware that the validity of their patent was in question and that the plaintiff sought to gain unfair advantage by delaying amendments. In the Warner-Lambert case on the other hand, the amendments sought, if approved, would have extended the protection of the patent as it meant converting unenforceable claims to enforceable ones. Also, both plaintiffs did not apply to amend their patents for an unreasonably long time and only did so when taking legal actions against the defendants.

Applying the new guidelines to our fictitious case, it would be clear that Eddy Sun’s application to amend his patent will not be successful.

This would be of particular concern to owners of Singapore granted patents which were granted under the earlier self-assessment system where an application could proceed to grant even if claims of the invention were not valid, since these claims require amendment if they are to be enforceable. Owners who have reason to amend their patents, e.g. in view of new prior art found in corresponding applications should do so as soon as possible while keeping the above guidelines in mind.

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