Due to the amendments in the Singapore Patents Act effective on or after July 1 2004, the issue of double patenting provides one possible ground for revocation of all Singapore patent applications.
Under section 80(1)(g) of the Singapore Patents Act, a patent may be revoked if "the patent is one of two or more patents for the same invention having the same priority date and filed by the same party or his successor in title". It should be noted that the term "priority date" is used in section 80(1)(g) of the Patents Act. This means that even if the priority claims of the subject patents relate to different priority documents, the double patenting issue may still arise if they have the same priority date. It should also be noted that in Singapore, anyone may apply to the registrar to have a patent revoked.
There is no precedential case law on the issue of double patenting in Singapore. In such instances, where no local guidance is available, Singapore Courts have followed judicial precedents established by the Courts in the UK. The general approach in the UK is to find that double patenting does not exist if embodiments covered by the claims of one patent would not be an infringement of the claims of the other patent and vice versa. However, in the UK, only the Comptroller has the power to revoke patents for double patenting.
The case often arises in which an applicant for a patent files a divisional application in Singapore, while simultaneously proceeding to grant in the parent application. Applicants must be very careful to consider the scope of the claims in the divisional application, to ensure, in so far as possible, that the claims in the divisional application would not infringe the claims of the granted parent patent, and vice versa. Note that under the provisions, both granted patents may be revoked!
Section 31 of the Patents (Amendment) Act 2004 provides the transitional provisions for the amendments in the Patents Act that come into force on and after July 1 2004, but it does not relate to the amendment of section 80 in the Patents Act. Accordingly, there is no clear indication from the Patents (Amendment) Act 2004 as to whether the amended section 80(1)(g) is applicable to all patent applications or only to patent applications having a filing date on or after July 1 2004. In order to be safe, one should assume that the provision applies retroactively, and prosecute applications in Singapore accordingly.
Therefore, for any case in which two or more Singapore patent applications are filed by the same applicant, relate to the same invention and have the same priority date, we would advise considering the double patenting issue as discussed above, before allowing a second patent to issue.
|Joseph Krupa and Lee Chai Lian |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
152 Beach Road, #30-00 Gateway East
Tel: +65 6333 7200
Fax: +65 6333 7222