WHEN AND HOW CAN A SINGAPORE PATENT APPLICATION BE CORRECTED?

The above question arose in the case of Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322. This is the first time the correction provisions in the Singapore Patents Act and Rules have been considered by the High Court.

It was held that while there is no time-bar for making a request for correction of an error in a form, if the request is in relation to correction of a priority claim and is made after publication of the application, it will need to be supported by exceptional grounds. This is due to the potential impact of the correction on the interests of third parties.

The decision in this case creates a very high bar to any correction to a priority claim that is desired after publication of the application. Clearly, this presents difficulties for Singapore applications that are filed via the PCT route. Any such corrections should therefore be addressed as soon as the error is detected, and preferably during the international phase, to have a chance of being effective in Singapore.

Background: the Patents, the Errors and the Correction

Bristol-Myers Squibb (BMS) is the owner of a number of patents relating to Efavirenz. The prosecution history of the patents is summarised in the graphic below.

During the course of court proceedings against Novartis in relation to these patents, some 17 years after the priority application was filed, and 9 years after the last of the patents was granted, a clerical error was discovered in the priority application number. The error arose at the point of filing a PCT application, and was apparently never detected during prosecution of the Singapore national phase entry or its divisional applications, being propagated such that each resultant patent had an incorrect priority claim recorded on the Register of Patents.

BMS applied to the IP office of Singapore (IPOS) to correct the error in the Register and was successful in its application to amend the Register to show the correct priority application details. Thereafter, Novartis applied to the High Court to have this correction rescinded for a procedural irregularity.

The priority issue was important in this case due to the existence of relevant prior art published during the priority year.

Making Corrections to Forms, Documents and the Register

The Singapore Patents Act provides the statutory framework for requesting corrections and the Patent Rules provide the corresponding procedures. In particular, S42(2)(d) and R58 lay out the groundwork for making correction of errors in the register and errors in any document filed at the Registry in connection with the registration. On the other hand, S107(1) and R91 cover correction of errors in a patent specification, errors in an application for a patent, and errors in any document filed in connection with the patent or the application.

Given the above distinction between a correction of errors in the Register and in application documents, it was held that entry of particulars in the Register is distinct and separate from the actual grant of the patent; a patent application form is not a document filed at the Registry in connection with registration.

In this regard, it was held by the Court that under S42(2)(d) and R58, there was no error in the entries in the Register for BMS to correct. The entries in the Register accurately set out the (wrong) priority document number as declared in the published applications and forms.

Considerations when Making Corrections to Forms

The Court next considered whether BMS was entitled to seek correction in the forms. It is important to note that in the absence of precedent in Singapore, the Court will usually look to available precedent under UK and EPO practice to formulate appropriate tests. The Court highlighted the following:

1. While there is no time-bar for making a request for correction, the request, if made after publication of the application, will need to be supported by exceptional grounds.

2. The publication of an application is significant in that patent rights effectively take effect from the date of publication, if only on a provisional basis. The impact or effect of the error on the rights and interests of third parties needs to be considered; third parties need a reliable legal basis for the economic decisions they have to take.

3. The Applicant of a patent application bears the burden of making the declaration of priority.

On this note, the Court concluded that even if BMS had used the correct procedure to correct the error, the request for correction was made far too late (i.e., significantly after the 16 month period from the priority date, when amendments to the priority claim are routinely allowed) and was not supported by exceptional grounds. While the mistake was of a clerical nature, the error would not have been immediately apparent to a third party and time and effort would have been required to uncover the error.

Take Away Points

1. In view of the decision in this case, it is recommended that any corrections to filing documents be made as soon as the error is detected.

2. If the correction is made after publication (which will almost always be the case for Singapore national phase applications), the request for correction must be supported by exceptional grounds.

3. If the error is in the priority declaration, and the usual 16-month time limit for correcting the priority claim has passed, consideration should be given to the mechanism under PCT Rule 26bis.2(e) for requesting the IB to publish information regarding the late correction of the priority claim. Although this does not itself give effect to the correction, it may be persuasive after national phase entry when IPOS (or the High Court) is deciding whether to exercise its discretion to allow the correction.

4. Following this decision, IPOS issued Circular No. 4/2018 to clarify the corrections procedure generally, and that the following non-exhaustive factors will be taken into account if the applicant requests a late correction to the priority claim:

a. the impact or effect of the error on the rights and interests of third parties;

b. the nature of the error, e.g. a clerical error;

c. whether the error is obvious or readily apparent on the face of the published application or by reference to other documents in the patent file; and

d. the time lapse between publication and the date of the request for correction and the reasons given for such delay.