Singapore High Court Disallows Post-grant Patent Amendments for the First Time

Singapore High Court Disallows Post-grant Patent Amendments for the First Time

An aerial view of a container ship.

Singapore has the world’s busiest transhipment hub. It therefore comes as no surprise that coupling pieces for ship cargo securing, called twistlocks, are highly valued in Singapore. This was the invention that lay at the center of the dispute in the recent High Court case of Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd & Ors [2015] SGHC 159.

Background
Facts
Ship’s Equipment Centre Bremen (“SEC”), a manufacturer of container lashing equipment based in Germany, had been granted a Singapore patent for the invention (“the Singapore Patent”) based on a Patent Cooperation Treaty Application and a European patent application (“the European Patent”).

SEC subsequently sued 5 Singaporean and Japanese companies (“the Defendants”), including a reputed Japanese cargo securing company which claimed to have developed the world’s first twistlocks, for alleged infringement of the Singapore Patent. SEC had also obtained a search order on the basis of the alleged infringement but the Defendants had succeeded in setting this aside.

All the Defendants denied infringement and challenged the validity of the Singapore Patent. SEC subsequently applied to Court to amend all the claims of the Singapore Patent.

Issue
The issue before the Court was whether SEC should be allowed to amend the Singapore Patent.

SEC’s proposed claim amendments in the Singapore Patent were identical to claim amendments for the European Patent filed by SEC at the European Patent Office (“EPO”). However, SEC’s European Patent had subsequently been found to be invalid during Opposition proceedings at the EPO.

Despite recognising “a potential risk” that the Singapore court might come to the same view as the EPO, and despite their inaction for more than 2 years after the EPO decision, SEC proceeded to publish their intention to amend the Singapore Patent in Singapore. SEC argued that there was no undue delay as they were entitled to wait for the decision of the EPO Appeal Board before deciding whether to amend in Singapore.

However, contrary to their earlier position, SEC subsequently decided to amend the Singapore Patent before the decision of the EPO Appeal Board was released. SEC’s volte-face led the Court to infer that SEC’s explanation was purely an afterthought and that their motivation to amend arose from their doubts on the validity of the Singapore Patent.

The Decision
While the Court found that three of the proposed amendments complied with the legal requirements for amendments of claims under Singapore Patent law, it exercised its discretion to disallow the proposed amendments on the basis of unreasonable undue delay and unfair advantage sought from the Singapore Patent which SEC knew should be amended to avoid prior art.
The Court added that it can exercise its discretion to punish patentees for unreasonable conduct even when no advantage has in fact been obtained by the patentees.

Commentary
1. This case sends a strong signal to patentees to assess the strength of their Patents before enforcing them. Strategic Intellectual Property management, such as tracking timelines and documenting office actions from various national patent offices, is equally important as knowing Intellectual Property laws.
2. This case, being the first High Court case to disallow post-grant amendments, is welcomed as it adds to the development of Singapore patent law jurisprudence.
3. This case is also interesting because considerable weight appears to have been placed on the volte-face conduct of the patentee rather than on the merit of the invention.
4. Further, this case serves as a reminder for those who receive legal letters alleging patent infringement to seek legal advice immediately as the patent’s validity may be in issue. One may choose to seek legal advice at the Intellectual Property Office of Singapore’s (“IPOS”) IP Legal Clinics, where the first consultation is free / can be reimbursed.

 


Constance LeongContributed by:

Constance Leong
Senior Associate
Goh Phai Cheng LLC
IP Academy External Tutor


Constance has 14+ years of post-qualification experience (PQE). She has an active practice in Intellectual Property (IP) law, with particular expertise in the fields of Patent, Copyright, Trademark, Design, Trade Secrets, Confidential Information, Franchise law, Internet law (Social Media), E-commerce and IP transactions. Her work includes IP prosectuion, IP management and IP strategies and intelligence for almost every type of IP right across various industries, ranging from water to e-commerce, in Singapore and globally.

Constance worked at Lloyd Wise, Singapore (which merged into Marks & Clerks) as a patent attorney trainee. In 1999, she left for Queen Mary University of London where she received an LL.M in International and Compartative Copyright Law, Information Technology Law and Internet Law. In 2000, she was admitted as a Solicitor of England & Wales. Constance returned to Singapore and worked at IPOS as a Legal Counsel and Assistant Registrar at the Patents Registry and represented Singapore at World Intellectual Property Organisation (WIPO) conferences until 2010 when she joined Goh Phai Cheng LLC as an associate.