Singapore: Undue delay and unfair advantage lead to denial of amendments

Last month, the Intellectual Property Office of Singapore (IPOS) delivered its opinion denying a patentee's request to enter post-grant amendments as a defence in a revocation hearing. Its opinion was based on findings of undue delay in presenting the post-grant amendments and unfair advantage in pursuing monetisation efforts in Singapore centred on the broader unamended Singapore claims, when narrowing amendments had been required to obtain or retain grant of corresponding patents in other countries.

The case of Singapore Shipping Association and Association of Singapore Marine Industries v Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. [2019] SGIPOS 5 arose in opposition to Hitachi and Mitsubishi's (the patentees) proposal of narrowing claim amendments as a defence in a revocation proceeding at IPOS by the Singapore Shipping Association and Association of Singapore Marine Industries (the opponents).

Singapore Patent No. 159788 (the 788 Patent) entitled Vessel Structure was filed in Singapore claiming priority from a Japanese application with additional corresponding applications in China, Korea and India. The 788 Patent was granted in 2010 under the Singapore self-assessment system by relying upon granted claims of the Japanese priority application. However, the granted Japanese patent went through three post-grant invalidation trials resulting in a Japanese patent having claims significantly narrower than the 788 Patent claims. The China and Korea patents were also granted with narrower claims than the 788 Patent.

The registrar's discretion to allow or refuse amendments to the patent during the revocation proceedings arises from the Singapore Patents Act (SPA), Section 83(1). The discretion is also provided under the rationale of the Singapore Court of Appeals case of Warner-Lambert Company LLC v Novartis (Singapore) (Pte Ltd [2017] 2 SLR 707) (Warner Lambert CA). The factors to be considered in the exercise of discretion to amend a patent post grant as stated in Warner Lambert CA are:

a) whether the patentee has disclosed all the relevant information with regard to the amendments;

b) whether the amendments are permitted in accordance with the statutory requirements;

c) whether the patentee delayed in seeking the amendments (and, if so, whether there were reasonable grounds for such delay);

d) whether the patentee had sought to obtain an unfair advantage from the patent; and

e) whether the conduct of the patentee discourages the amendment of the patent.

With regard to "undue delay", the registrar found that there was almost one year between the dismissal of the appeal from the third Japanese invalidation proceeding and the request to amend the 788 Patent and almost six months from the start of the Singapore revocation proceeding. The UK Patents Court in Instance v CCL Label Inc. ([2002] FSR 27) (Instance) found that a delay of one year amounted to an undue delay, as a period of two months would be sufficient to formulate an amendment. The registrar not only looked to the time between the end of the third Japanese invalidation proceeding, but also looked to the monetisation efforts of the patentees in approaching Keppel Shipyard Ltd (Keppel) and Sembcorp Marine Ltd (Sembcorp) for licensing or sale of the 788 Patent. In finding undue delay by the patentees to amend the 788 Patent based upon the patentee's monetisation efforts, the registrar stated "the Patentees were able to expend time and effort in pursuing commercial leads based on the unamended patent, but, at the same time, could not (or rather, did not) channel resources to amend the 788 [Patent] without undue delay after the close of the third invalidation proceedings in Japan."

With regard to "unfair advantage", the registrar found "that the unreasonable delay in applying for an amendment was compounded by the behaviour of Hitachi in their discussions with Keppel and Sembcorp". The patentees had monetisation discussions for licensing or sale of the 788 Patent with Keppel and Sembcorp based upon the unamended 788 Patent claims in which they provided a brochure depicting the unamended claims and pointing out that the proceedings in Japan all concluded in the patentees favour. However, there was no mention in the brochure or discussions that amendments to the 788 Patent were likely to be necessary following the conclusion of the proceedings in Japan as the Japanese proceedings only succeeded because the scope of the claims was significantly narrowed. The registrar found that "the unreasonable delay in applying for an amendment was compounded by the behaviour of [the patentees] in their discussions with Keppel and Sembcorp".

These factors led the registrar to conclude that the patentees had not acted reasonably in their dealings with Keppel and Sembcorp and that the conduct of the patentees along with the undue delay in amending the claims of the 788 Patent was sufficient reason to refuse to allow the amendments.

Daniel Collopy

Spruson & Ferguson (Asia) Pte Ltd152 Beach Road#37-05/06 Gateway EastSingapore 189721Tel: +65 6333 7200Fax: +65 6333 7222mail.asia@spruson.comwww.spruson.com