IPOS updates guidelines on post-grant patent amendments

IPOS updates guidelines on post-grant patent amendments

IPOS updates guidelines on post-grant patent amendments

Under the current Singapore (SG) Patent Act, post-grant amendments are permitted if: 

a)    no additional matter is disclosed; and 
b)    the protection of the patent is not extended.

With effect from 30 June 2016, IPOS will assess post-grant amendment based on the following additional criteria:

c)    Whether relevant matters are sufficiently disclosed;
d)    Whether there was any unreasonable delay in seeking amendments; and 
e)    Whether the patentee has gained an unfair advantage by delaying amendments which are known to be needed. 

In line with these changes, an application for post-grant amendments should list fully the reason(s) for amendments, the circumstances leading to amendments and any available evidence in support thereof.

Why the Change of the guidelines? – Recent Case Law 

The introduction of these guidelines is in light of the recent decisions of Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pty Ltd & Ors [2015] SGHC 159 (“Ship’s Equipment“; Case Study) and Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106 (“WLC“; Case Study). In both cases, the plaintiff requested leave from a Court to amend the patents, which was subsequently refused. 

In both cases, the courts have considered exercising their discretion to allow amendments based on the doctrine of Aldous J, in the English case of Smith Kline and French Laboratories limited v Evans Medical Limited [1989] FSR 561 (“SKF“), which includes the following five points:

  1. full disclosure must be made on all relevant matters;
  2. amendments will be allowed provided the amendments are permitted under the Act;
  3. amendment is sought promptly unless patentee shows reasonable grounds for delay;
  4. patentee who seeks to obtain an unfair advantage from a patent will be refused amendment;
  5. the Court is concerned with the conduct of the patentee, not the merit of the invention.

The reader should be aware that these judgements were made in the context of the Court having to consider the allowability of post-grant amendments during infringement/revocation proceedings. The new assessment of post-grant amendments by IPOS is applicable to all amendments regardless of whether such proceedings have been initiated.

Amendment of Patent Post-Grant with no Court Proceedings

Under the current SG Patent Act, s 84(3) outlines the minimum requirements for patent post-grant amendments:

No amendment of the specification of a patent shall be allowed under section 38(1), 81 or 83 if it 

a)    results in the specification disclosing any additional matter; or 
b)    extends the protection conferred by the patent. 

S 38(1) and (2) relates to the general power to amend specification after grant:

  1. Subject to this section and section 84, the Registrar may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as he thinks fit. 
  2. No such amendments shall be allowed under this section where there are pending before the court or the Registrar proceedings in which the validity of the patent may be put in issue.

    [emphasis added]

Amendment of Patent Post-Grant during Court Proceedings

To amend a patent post-grant during court proceedings, the requirements of s 84(3) still have to be met. In addition, leave from the Court needs to be granted to amend.

In the event amendments were sought in infringement/revocation proceedings, s 83(1) mandates that the power of the Court (or Registrar) to allow/refuse the amendments is entirely discretionary: 

  1. In any proceedings before the court or the Registrar in which the validity of a patent is put in issue, the court or, as the case may be, the Registrar may, subject to section 84, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to the publication and advertisement of the proposed amendment and as to costs, expenses or otherwise, as the court or Registrar thinks fit.

Potential Motivation for Change: Sensible Behaviour of Patentee

It would seem that in establishing these guidelines, IPOS  is utilizing its discretionary power pursuant to s 38 to shift the onus to amend more strongly on the patentee, and hence to encourage patentees to take the initiative and act expeditiously to amend when needed, to the benefit of third parties. The purpose here, we believe, is to place the onus on the patentee to remove questionable claims, e.g. method of treatment claims or claims anticipated by prior art raised in other jurisdictions, thus avoiding misrepresentation to the public. 

How do the updated guidelines affect patentees? 

What does this mean for patentees? How do these guidelines affect post-grant patent amendments in Singapore?

  1. Relevant matters are sufficiently disclosed.
    In Ship’s Equipment, it was found that foreign jurisdiction’s rulings would not have a bearing on whether the discretion ought to be exercised by a local Court. However, to err on the side of caution, findings (or ongoing proceedings) from foreign jurisdictions should be made known to IPOS. This can be done at the time of filing your request to amend.
  2. Unreasonable delay in seeking amendments.
    George Wei J in WLC lists three points for any delay to be considered unreasonable.
    a)    The period of the delay need not be long provided that there is no plausible explanation for the delay. Pumfrey J in Instance v CCL Label Inc [2002] FSR 27 opined that 2 months is more than sufficient to act on the amendment after advice was received, and thus amendments were disallowed when the applicants did so more than a year later. In Ship’s Equipment, the applicant filed an amendment request more than two years after knowing that the corresponding claim in their European patent might be invalid. In WLC, the amendment request was filed 14 years after a similar request was filed in their European application. While there is no concrete timeframe as to what constitutes “unreasonable delay”, we recommend making the amendment request as soon as possible after the need to amend has been realised.
    b)    Delay may not be held against the applicant if it is able to provide a reasonable explanation for the delay. In Novartis AG and another v Ranbaxy (Malaysia) Sdn Bhd [2013] 2 SLR 117, the delay was deemed justified as the applicant genuinely believed that their patent was valid before the EPO and thus did not apply to amend the SG patent. In Ship’s Equipment and WLC, the applicants had doubts to the validity of their claims but did not act on it until much later. This conduct was deemed to be unjustified. 
    c)    Time when first made aware of need to amend. This brings into question the extent and quality of knowledge required when filing amendments. The Court in WLC cited with approval a foreign jurisdiction case where it was ruled that knowing the need to amend but not acting on it is sufficient for a court not exercising its discretion to allow the amendment. 
  3. Unfair advantage obtained by delaying.
    It seems less clear how IPOS will rule on this point. This is because “advantage” is a relative term; with the guidelines aimed at post-grant amendments in the absence of court proceedings, i.e. ex parte, there is no third party to derive this “advantage” over. In Ship’s Equipment, the Plaintiff, despite knowing that their patent might be invalid, commenced proceedings and obtained a search order against third parties using the patent as leverage. This was judged to be an unfair advantage. Based on this case, all we can go on for now is that any action (e.g. search order, letter of demand, etc.) taken against another party using the as-granted  patent could constitute an unfair advantage.

Five take away messages for patentees 

  1. Patentees should be aware of these additional criteria when filing post-grant patent amendments.
  2. To avoid uncertainty, applicants may consider filing amendments during the examination stage, before grant. 
  3.  It may be worth delaying grant if the applicant is aware of ongoing prosecution in other jurisdictions. 
  4. Alternatively, a divisional application may be filed such that options are reserved for the applicants’ best interests.
  5. “Unreasonable delay” with regard to seeking post-grant amendments should be avoided, meaning that the patentee will have to be in regular communication with their patent attorney(s) to ensure that the requisite tasks are promptly carried out.

For more information, please refer to Circular No. 1/2016 (Registry of Patent, SG) or contact Desmond Tan to discuss.