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Singapore IP Policy Cases: IPOS Strengthens the Criteria on Assessment of Post-grant Amendments

In Singapore, post-grant amendments are allowed at the discretion of the court or the Registrar.  The amendments are assessed under Section 84(3) of the Patents Act.

The court or the Registrar may allow the amendments to the specification of the patent if:

(a)    The amendment does not result in disclosing additional matter; or
(b)    The amendment does not extend the protection conferred by the patent.

The Intellectual Property Office of Singapore (“IPOS”) recently issued a circular on updated guidelines on the assessment of post-grant amendments.  The circular clarified the basis of such amendments follows the recent Singapore High Court decisions in Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pty Ltd & Ors [2015] SGHC 159 (“The Ship’s Case”) and more recently in Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106.  Both cases considered and affirmed the guidelines for patent post-grant amendments set down in Smith Kline and French Laboratories Limited v Evans Medical Limited [1989] FSR 561.

In Warner-Lambert Company LLC v Novartis Pte Ltd, apart from the requirement of Section 84(3) i.e. extension of scope of protection conferred by the patent, the court exercised its discretion to reject the proposed amendment due to an undue and inexplicable delay on the part of the plaintiff in requesting for the amendments.  It was held that the plaintiff had had many opportunities to amend its patent both pre-grant and post-grant, and the plaintiff did not adequately explain the delay.

In light of the above decision and the earlier decision in The Ship’s Case, IPOS has reviewed and updated its practice on the assessment of post-grant amendments including the additional criteria.  It requires the patentee to make full disclosure of all relevant matters in relation to the proposed amendments as to whether they were made in a timely manner – i.e. whether there was any unreasonable delay in seeking amendments and whether the patentee has gained an unfair advantage by delaying the amendments.

These procedural changes impact the pending post-grant amendments.  Patentees should be prompt in filing post-grant amendments if any are necessary. The patent applications that are pending should consider filing a pre-grant amendment if the applicant comes across a prior art in another jurisdiction that may affect the validity of the patent.