Singapore High Court Rejects Post-Grant Patent Amendments

Singapore High Court Rejects Post-Grant Patent Amendments

Singapore High Court Rejects Post-Grant Patent Amendments

Ship’s Equipment Centre v Fuji Trading: ‘twistlock’ devices

This case concerned an initial court consideration (during infringement/revocation proceedings) of post-grant amendments filed by the patentee, Ship’s Equipment Centre Bremen GmbH (“SEC”), in respect of Singapore Patent No. SG 110370 (“the SG Patent”).  The SG patent derives from PCT application PCT/EP2003/004162 having a European counterpart  (“the EP Patent”) which was under opposition.  SEC requested leave to amend the claims of the SG Patent to bring them into conformity with the claims of the EP Patent.

The technology which was the subject of the SG and EP Patent concerns a coupling device used to secure shipping containers (commonly known as a “twistlock”).
The relevant events are as follows:

May 2010 – SEC commences infringement proceedings.

Nov 2010 – SEC files amendments at EPO to amend EP Patent during opposition (amendments deemed allowable by EPO).

Nov 2011 – EPO Opposition finds that amended claims lack inventive step – Notice of Appeal filed.

Dec-Jan 2012/13 – SEC files amendment requests with the Register of Patents. By virtue of s83 of the Patents Act as proceedings had been initiated SEC had to seek leave from the Court to make the amendments.

Issues before the Court

  1. Whether the amendments to the claims should be allowed if the SG Patent would nevertheless be invalid;
  2. Whether the amendments meet the requirements under the SG Patents Act; and
  3. Whether the Court should exercise its discretion to reject the amendments even though the requirements under the SG Patents Act were satisfied.

SG Patent Amendment Decision

Whether amendments to claims of a SG Patent should be allowed if equivalent claims are deemed to be invalid in a foreign jurisdiction 

The defendants unsuccessfully argued that, as the claims (as amended) were deemed by the EPO to be invalid, the amendments should not be allowed.  The Court rejected this proposition stating that while EPO decisions may have some “persuasive value”, SG Courts are not bound by them, even if they pertain to the same issue.

Whether the amendments meet the requirements under the SG Patents Act

The requirements are as follows:

  1. The proposed amendments are clear, concise, and supported by the description.
  2. The proposed amendments do not introduce additional matter.
  3. The proposed amendments do not extend the protection of the patent.

As a result of the amendment, the claim set comprised an independent claim (claim 1) and eight dependent claims. The Court considered the amendments made to claims 1 to 3 to be allowable.

Claim 4 was rejected for disclosing additional matter and for not being supported by the description. The claim amendment at issue here was the replacement of the phrase: “wherein the said lead-in chamfer (30) is first provided with a …” to “wherein the said lead-in chamfer (30) is formed with a…”.   In its consideration of extended protection, the Court stated at 84: “The term “provided” has been used in the 370 Patent to describe features that may or may not be integral with the coupling…..”. The Court concluded that the skilled person would understand that the term “provided” did not exclusively refer to features that were not integral to the coupling piece and as such the claim did not seek to extend the scope of protection. However, curiously, the Court also concluded that this amendment amounted to disclosed additional matter and created a lack of clarity.

Amendments to the remaining claims, for the most part, were not allowed based upon their dependency on a non-allowed claim.  Claim 7 was additionally rejected for including the phrase “according to any one of claims 1 to 6, in particular according to any one of claims 1 to 5”.  The Court deemed this reference to claims 1 to 5 be “meaningless” and only served to introduce an uncertainty of claim scope. 

Claim 9 introduced language regarding the movement of the upper container during the coupling and/or the uncoupling with the lower container. As the Court considered that the invention as described taught that there was no movement when using the coupling device of the invention, any introduction of language to cover some movement would extend protection of the patent,  amounted to the addition of matter and failed the support requirement.

Whether the Court should exercise its discretion to reject the amendments even though the requirements under the SG Patents Act were satisfied.

On this point the Court followed guidelines set down in the English case of Smith Kline and French Laboratories limited v Evans Medical Limited [1989] FSR 561. The Courts of other UK derived patent jurisdictions, such as Australia and New Zealand, also seek guidance from this case when deciding whether or not to exercise their discretion to allow post-grant amendments.

The guidelines are summarised as follows:

  1. The onus is on patentee to establish amendment should be allowed and patentee should disclose all relevant matters;
  2. Amendments should be allowed if requirements of the Act are met;
  3. It’s in the public interest for the amendments to be sought promptly (no unreasonable delay);
  4. The patentee should not seek to obtain unfair advantage by delaying amendments, which they should have known they needed to make;
  5. The Court is only concerned with the conduct of the patentee and not the merit of the invention.

Court rejects request to amend the patent

Based on these considerations and the time line of the events leading up to the hearing, the Court rejected the request to amend the patent.  While the Court found that SEC had at all times made full and frank disclosures it considered that there was an undue delay between when they realised they needed to make the amendments and when they actually did.  While SEC argued that they were awaiting the outcome of the opposition appeal for the EP patent and that they did not believe that the opposition decision would warrant amendment of the SG Patent they also provided conflicting evidence that they had also planned to file the amendment request in SG before the issuance of the decision of the Appeal Board of the EPO.  It appears that it was this inconsistency in explaining the delay in making the amendment request (in the face of the European proceeding) which prompted the Court not to exercise its discretion in favour of SCE.

Take away points and potential strategies for patentees and/or third parties

For SG Patentees:

Many patents granted under the old “self assessment” patent regime may contain claims which have been deemed unallowable in other jurisdictions.  For such patents, it is advisable to request post-grant amendments at IPOS prior to commencing any proceedings for infringement.  This will avoid the uncertainty of the discretionary criteria that a Court is bound to consider.

For Third Parties:

It may be a strategy to initiate revocation proceedings once you are aware that the validity of an SG patent is questionable based upon, for instance, prosecution or litigation of corresponding patents in a foreign jurisdiction. This takes away the option for the patentee to amend before the patent office (which does not have the ability to reject amendments that otherwise satisfy the legislative requirements).

It would also be advisable to place any potentially problematic SG Patent on a surveillance watch to ensure that any amendment request by the patentee is identified so that revocation proceedings can be initiated before the amendments are finalised before the Patent Office.