Singapore Singapour Singapur. Report Q189. in the name of the Singaporean Group

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1 Singapore Singapour Singapur Report Q189 in the name of the Singaporean Group Amendment of patent claims after grant (in court and administrative proceedings, including re examination proceedings requested by third parties) Questions 1) Does your national law permit post grant amendment of patent claims? Are utility models if available treated the same way as patents or differently? If so, what are the differences? Under Singapore law, post grant amendments to patent specifications are allowed. Section 38 Patents Act confers on the Registrar of Patents the power to allow a proprietor to amend specifications after patent grant. There are also specific situations in which amendments may occur: arising from re examination of the patent (section 38A Patents Act); Registrar s power to revoke a patent (section 81 Patents Act); amendment arising from infringement or revocation proceedings (section 83 Patents Act); Parties seeking amendment under sections 38, 81 or 83 must not, in amending, cause disclosure of additional matter or extend the protection that was originally conferred by the patent (section 84(3) Patents Act). It is also possible to amend errors in translation, transcription or clerical mistakes (section 107 Patents Act). However, we consider this a correction rather than an amendment, and this is further discussed in 4E below. Utility models are not available in Singapore. 2) Who is entitled to request post grant amendment of patent claims under your national law? The actual application to amend the specifications may only be made by the proprietor of the patent except in the case of a clerical error where any party may request for an amendment. 3) What is the procedural framework for requesting post grant amendment of patent claims under your national law, in particular: What procedures (judicial, administrative or other) are available for dealing with requests for post grant amendment of patent claims under your national law? There are three procedures that may lead to amendment: a) By an application to the Registrar by the proprietor (section 38); b) In the course of infringement or revocation proceedings (section 83) or revocation by the Registrar s initiative (section 81); and c) Indirectly through post grant search and examination in response to the written opinion (section 38A Patents Act and rule 52A Patents Rules, the procedure is otherwise known as the re examination procedure). 1

2 The re examination procedure is a unique aspect of Singapore patent law that was introduced on 1 July The purpose of re examination is to allow for a re assessment of the patentability of an invention as the Singapore system encourages self assessment. Any person can request a post grant search and examination of a granted patent where one of the following conditions is met: i) at least one claim in the application for a patent did not relate to an examined claim or a claim referred to in the report (section 38A (1)(a)(i)); or ii) the examiner of the application did not consider all of the relevant prior art before preparing the report (section 38A(1)(a)(ii)). A claim is defined under the Patents Act as being related to another claim if: the 2 claims are identical; or each limitation in the second claim is: identical to a limitation in the first claim; or differs from the limitation in the first claim only in expression but not in content Amendment of the specification is possible during the re examination procedure in response to the Examiner s written opinion. Noteworthy Aspects of the Re Examination Procedure To explain the context, the re examination procedure is mainly beneficial to the patentee who is facing litigation and requests re examination of his patent to strengthen his patent. Re examination may also be a necessity for the patentee to avoid losing his right to relief in the event that his patent is infringed. The Patents Act provides that no relief for infringement is available to the patentee where at least one claim in his application for a patent did not relate to an examined claim or a claim referred to in the report (section 69 Patents Act). Patentees, should take note of this limitation as the Registrar has no power to grant a re examination of a patent where there are, pending before the court, proceedings in which the validity of the patent may be put in issue, including instances under section 82 Patents Act (38A (6) see discussion below 3B). Limitations of Re examination Procedure While the Registrar retains the general discretion to allow re examination, applicants seeking re examination should be mindful of the following limitations that the Registrar operates under when considering whether re examination should be granted: Where the request is frivolous, vexatious or an abuse of the process the Registrar shall not grant a request for re examination (section 38A(5)); A request for re examination shall not be granted where there is any pending proceedings where the validity of the patent is put into issue (section 38A(6)) Are all of these procedures freely available under your national law to those wishing to request post grant amendment of patent claims, or does the law give priority to certain procedural measures in certain situations? No amendments pursuant to section 38 are allowed where there are already proceedings pending (at the court or registry level) in which the validity of the patent is put in issue. In other words priority is effectively given to amendments sought in the course of infringement or revocation proceedings. In addition, no re examination of a patent shall be allowed where proceedings are pending before the Court or Registrar in which the validity may be put in issue (Section 38A(6)). 2

3 Is it possible under your national law for patentees to make multiple subsequent amendments of patent claims directed towards individual alleged infringers? No. Who is entitled to amend claims? Is this limited to courts or do also the patent offices have the competence to amend claims? Please limit the answer to a general description of the proceedings avoiding discussion of procedural details and peculiarities. Where the validity of the patent is put in issue, the Court and the Registrar have the power to allow the proprietor to amend the patent under section 83. Otherwise, in any other case, it is only the Registrar that is given a general power to allow amendments (sections 38, 38A, 81, and 107). 4) What are the substantive conditions for allowing post grant amendment of patent claims under your national law, in particular: Is there a distinction in your national law between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? Remedies Available to Third Parties to Oppose Amendments Third parties may give notice that they wish to oppose amendments under sections 38, 83, and 107 by filing the prescribed forms. Such notices to oppose shall be taken into account by the Registrar when deciding whether an amendment should be allowed. Conditions Applicable to patentees/third parties for allowing post grant amendment Generally, whether an amendment is allowed is a question of discretion that depends on several factors that were discussed in the case of FE Global Electronics Pte Ltd et al vs Trek Technology (Singapore) Pte Ltd [2006] 1 SLR 874. The factors are as follows: 1) whether the amendments are permitted in accordance with statutory requirements, namely, that the amendments do not disclose additional or added matter, or otherwise extend the protection conferred by the patent; 2) whether the proposed amendments are sufficiently clear and concise; 3) whether the patentee has disclosed all the relevant information regarding the amendments; 4) whether the patentee delayed in seeking amendments (if so whether the delay was reasonable); 5) whether the patentee had sought to obtain an unfair advantage from the patent; and 6) whether the conduct of the patentee discouraged the amendment of the patent. The court found that since the general transparency of the patent system means that there is little scope for abuse, the amendments should be allowed unless there are compelling reasons against the amendments. In what ways may patent claims be amended post grant under your national law? Where the proprietor applies for a substantive amendment of his specifications after grant this amendment must not disclose additional or added matter or otherwise extend the protection conferred by the patent (section 84(3)Patents Act). For obvious errors, the allowable corrections are limited to those expressly allowed under rule 91(2) Patents Rules (see below). 3

4 Is it a requirement (or a possibility) under your national law that the description/ specification be amended to correspond with amendments of the claims? No. Is it possible to make amendments for the purposes of clarification and/or correction of errors? Under section 107, the Registrar may correct any error of translation, transcription, and clerical error or mistake in a patent specification or application for a patent or document filed in connection with a patent. There appears to be no restriction on who may request and apply for correction but it is unlikely that any person other than the proprietor or his agent would do so. Where the amendment is to be made in relation to the specifications, there are restrictions as to the nature of the amendments under rule 91(2) of the Patents Rules. Amendments are limited to corrections that are obvious in the sense that it is immediately evident that nothing else would have been intended by the patentee. 5) What are the consequences for third parties of post grant amendments of patent clams under your national law, in particular: What are the consequences for third parties liability for patent infringement where patent claims are amended post grant? Where an amendment of the specification of a patent is allowed, no damages or an order for an account of profits shall be made against an infringer in respect of acts committed prior to the decision to allow the amendments, unless the Registrar is satisfied that the specification of the patent as published was framed in good faith with reasonable skill and knowledge (section 69(4) of the Patents Act). Are amendments effective only inter partes or, conversely, erga omnes, including in relation to previously decided cases? Amendments are effective erga omnes. Are amendments effective only ex nunc or also ex tunc? Does that depend on the context in which the amendment is made? The position when amendments take effect is not entirely clear. Amendments are effective from the date of grant (Section 38(3), 83(3)). The Patents Act is silent on the effective date of amendments under sections 38A, 81 and 107 of the Patents Act. In conclusion, the position in Singapore with regard to post grant amendments is relatively consistent across the board. Certainly, post grant amendments should be and are available, but with the requirement that such amendments should not extend the protection conferred by the patent nor should it disclose any additional or added matter. There is a further element of control over the remedies a patentee can recover if the amendments are such that the specification of the patent as published was not considered to be framed in good faith with reasonable skill and knowledge. The competence to amend lies with the patentee or the Court/Registrar. This appears to be logical as the third party s position can always be put forward to the Court/Registrar. 4

5 II) Proposals for substantive harmonisation The Groups are invited to put forward their proposals for adoption of uniform rules, and in particular to consider the following questions: 6) Should post grant amendment of patent claims be permitted? 7) Who should be entitled to request post grant amendment of patent claims and who should have the competence to amend? 8) What should be the substantial conditions for allowing post grant amendment of patent claims? 9) Should there be a distinction between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? 10) What should be the consequences for third parties liability for patent infringement where patent claims are amended post grant? 11) Does your Group have any other views or proposals for harmonisation in this area? 5