12 August 2015, Singapore. Singapore has the world’s busiest transhipment hub. It therefore comes as no surprise that coupling pieces for ship cargo securing, called twistlocks, are highly valued in Singapore. This was the invention that lay at the center of the dispute in a High Court case of Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd & Ors  SGHC 159.
Ship’s Equipment Centre Bremen (“SEC”), a manufacturer of container lashing equipment based in Germany, had been granted a Singapore patent 2005007414 for the invention (“the Singapore Patent”) based on a Patent Cooperation Treaty Application PCT/EP2003/004162 and a European patent application EP1534612 (“the European Patent”).
SEC subsequently sued 5 Singaporean and Japanese companies (“the Defendants”), including a reputed Japanese cargo securing company which claimed to have developed the world’s first twistlocks, for alleged infringement of the Singapore Patent. SEC had also obtained a search order on the basis of the alleged infringement but the Defendants had succeeded in setting this aside.
All the Defendants denied infringement and challenged the validity of the Singapore Patent. SEC subsequently applied to Court to amend all the claims of the Singapore Patent.
The issue before the Court was whether SEC should be allowed to amend the Singapore Patent.
SEC’s proposed claim amendments in the Singapore Patent were identical to claim amendments for the European Patent filed by SEC at the European Patent Office (“EPO”). However, SEC’s European Patent had subsequently been found to be invalid during Opposition proceedings at the EPO.
Despite recognising “a potential risk” that the Singapore court might come to the same view as the EPO, and despite their inaction for more than 2 years after the EPO decision, SEC proceeded to publish their intention to amend the Singapore Patent in Singapore. SEC argued that there was no undue delay as they were entitled to wait for the decision of the EPO Appeal Board before deciding whether to amend in Singapore.
However, contrary to their earlier position, SEC subsequently decided to amend the Singapore Patent before the decision of the EPO Appeal Board was released. SEC’s volte-face led the Court to infer that SEC’s explanation was purely an afterthought and that their motivation to amend arose from their doubts on the validity of the Singapore Patent.
While the Court found that three of the proposed amendments complied with the legal requirements for amendments of claims under Singapore Patent law, it exercised its discretion to disallow the proposed amendments on the basis of unreasonable undue delay and unfair advantage sought from the Singapore Patent which SEC knew should be amended to avoid prior art.
The Court added that it can exercise its discretion to punish patentees for unreasonable conduct even when no advantage has in fact been obtained by the patentees.
- This case sends a strong signal to patentees to assess the strength of their Patents before enforcing them. Strategic Intellectual Property management, such as tracking timelines and documenting office actions from various national patent offices, is equally important as knowing Intellectual Property laws.
- This case is welcomed as it adds to the development of Singapore patent law jurisprudence. Under the current practice at the Intellectual Property Office of Singapore (“IPOS“), post-grant amendments are allowed if the following requirements are met:
(a) do not introduce additional matter; and
(b) do not extend the scope of protection.
However, in this case, the Court affirmed the UK guidelines for allowance of post-grant amendments which are of a higher bar than Singapore’s current practice. The UK guidelines impose the following additional requirements:
(a) Disclosure of all relevant matters;
(b) No unreasonable delay in seeking amendments; and
(c) No unfair advantage obtained by delaying amendments which are known to be needed.
- This case is also interesting because considerable weight appears to have been placed on the volte-face conduct of the patentee rather than on the merit of the invention.
- Further, this case serves as a reminder for those who receive legal letters alleging patent infringement to seek legal advice immediately as the patent’s validity may be in issue. One may choose to seek legal advice at IPOS’s IP Legal Clinics, where the first consultation is free / can be reimbursed.
A shorter version of this article was published in the July 2015 issue of the IPA Beacon, the official publication of the IP Academy, Singapore. All the links are last accessed on 12 August 2015 and 30 June 2016. This case update is intended merely to highlight matters of interest in the field of Intellectual Property. This publication should not be interpreted as a legal/technical opinion for a specific case. Should you require advice or information, please email the author [email protected] or call (65) 6610 3967.
“See a subsequent case of Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd  SGHC 106 where the Singapore High Court also applied the UK guidelines and disallowed post-grant patent amendments. This prompted IPOS to revise its current practice. With effect from today, 30 June 2016, the updated practice will apply to all pending and new requests for post-grant amendments. IPOS will soon release to the public an updated version of its Examination Guidelines.“
Updated: 30 June 2016