Following last year's decision in Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co ([2017] SGHC 322), the Intellectual Property Office of Singapore (IPOS) has recently provided clarification on the provisions of the Singapore Patents Act and the Singapore Patents Rules regarding the correction of errors in filed patent applications. The Novartis v Bristol-Myers case primarily concerned a family of four Singapore patents (one parent and three divisional patents) all claiming priority from a United States provisional patent application.
When Bristol-Myers filed a PCT application from US provisional patent application US 60/088,981 having a priority date of June 11 1998, a typographical error was made and priority was erroneously made to US provisional patent application US 60/089,981 which is directed to a completely different invention. The PCT application was subsequently published with the incorrect priority application. This error was not detected at the time of the national phase entry of the PCT application in Singapore. Thus, the incorrect priority claim was subsequently entered in the Register for the parent and the divisional applications.
Novartis argued that Bristol-Myers was not entitled to the priority claim as the priority document referenced related to an entirely different invention. Bristol-Myers applied to IPOS to rectify the errors (including an application for corrections of the priority claims in the divisional applications) using Patents Form 1 via the IPOS online portal as Bristol-Myers concluded that the error in the priority claim referencing the incorrect US priority application number was made during the application process. The application for corrections using Patents Form 1 was unsuccessful. Thereafter, Bristol-Myers wrote a letter to the IPOS registrar of patents asserting that an obvious error had been made in the priority application number, upon which the priority claim relied. In addition, Bristol-Myers indicated in the letter that the interests of third parties would not be affected by the erroneous priority claim since the error was obvious in the documents. IPOS granted the application for corrections under Patents Rule 58. Patents Rule 58 relates to a request for the correction of an error in the Register or in any document filed at the registry in connection with registration.
The Singapore High Court decided that the request for correction of the errors should not have been granted as the Patent Register accurately recorded the priority claim patent application number as indicated in the published applications and the forms filed.
Based on the Singapore High Court's holding in the Novartis v Bristol-Myers case, IPOS has clarified that reference to "documents filed in connection with registration" recited in Rule 58 relates to documents filed in relation to an application for registration of transactions such as a mortgage or transmission upon death. IPOS has also clarified that Patents Form 1 is a document that is required for an application for grant of a patent and is not a document filed at the Registry in connection with registration. Therefore, Rule 91 would be the applicable rule for the correction of an error in Patents Form 1. Patents Rule 91 relates to a request for the correction of an error of translation or transcription, or of a clerical error or mistake, in a specification of a patent, an application for a patent, or any document filed in connection with a patent or such application.
IPOS has further clarified that the request to correct the declared priority information under Rule 91 would only be allowed in exceptional circumstances. The factors likely to be considered when determining exceptional grounds as stated by the Singapore High Court include the impact of the error on the rights and interest of third parties, the nature of the error, whether the error is readily obvious on the face of the published application or if it is by reference to other documents in the patent file, the time between the publication and the date of the request for correction, and the reasons provided for the delay.
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Daniel Collopy |
Edy Rusbandi |
Spruson & Ferguson (Asia) Pte Ltd152 Beach Road#37-05/06 Gateway EastSingapore 189721Tel: +65 6333 7200Fax: +65 6333 7222mail.asia@spruson.comwww.spruson.com
