On 30 June 2016, the Intellectual Property Office of Singapore (IPOS) issued a Circular with updated guidelines for the assessment of post-grant patent amendments.
Specifically, under the updated guidelines, post-grant amendments may not be allowed if:
- the patentee failed to make full disclosure of all relevant matters in relation to the proposed amendments;
- there was an unreasonable delay on the part of the patentee in seeking the amendments; or
- the patentee obtained an unfair advantage by delaying the amendments which the patentee knew to be needed.
These assessment criteria are in addition to the requirements under Section 84(3) of the Singapore Patents Act, which stipulates that post-grant amendments to a patent specification are not permitted if the amendments (a) introduce additional matter or (b) extend the scope of protection of the patent.
These guidelines will be adopted by the Registrar when assessing the allowance of all pending and new requests for post-grant amendments.
It is important to note that the allowance of post-grant patent amendments is at the discretion of the court or Registrar of Patents, depending on where the relevant proceedings take place. Moreover, if the court or Registrar allows an amendment, the amendment and reasons for the amendment will be published and any person may oppose the amendment within two months from publication.
The IPOS explained that the Circular was based on the decision of the Singapore High Court in two recent cases (Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pty Ltd & Ors [2015] SGHC 159 and Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106).
In both cases, the Singapore High Court considered the factors that would influence the court’s exercise of discretion, and affirmed the guidelines set down by the UK Court in Smith Kline and French Laboratories limited v Evans Medical Limited [1989] FSR 561.
What the updated guidelines mean for patentees
In view of these new guidelines, if a patentee of a Singapore patent is aware of newly uncovered prior art that is likely to affect the patent’s validity, an application for leave to amend the patent specification should be lodged as soon as possible. To facilitate the Registrar’s assessment, the application for post-grant amendments should set out fully the reason(s) for amendments, including the circumstances leading to the amendments and any evidence in support thereof.
Also, for a pending Singapore application, if the applicant becomes aware of prior art raised in one jurisdiction which would impact the scope of the pending Singapore claims and which has not been cited in Singapore, the prior art should be addressed prior to the grant stage, for example, by way of a voluntary amendment of the Singapore application if applicable.
Applicants should seek the advice of their Singapore patent attorney in relation to such amendments.