Singapore High Court Refuses Post-grant Patent Amendments

In a recent case, Ship's Equipment Centre Bremen v Fuji Trading (Singapore) and others [2015] SGHC 159, the Singapore High Court departed from its “lenient approach” advocated by earlier decisions and rejected an application by the patentee for leave to amend a patent post-grant. Ship's Equipment Centre Bremen (SEC) is the owner of two Singapore patents relating to a coupling device used to secure shipping containers, commonly known as a twistlock. In 2010 and 2011, SEC initiated proceedings to sue a number of Singapore and Japanese companies (Defendants) for alleged infringement. The Defendants denied infringement and challenged the validity of the Singapore patents. While the infringement proceedings were still ongoing, in late 2012, SEC applied to the Singapore High Court to request leave to amend the claims of one of the patents. The Singapore High Court rejected the application on the grounds of undue delay and unfair advantage. It would be useful to consider the chronological events to appreciate the Court's decision:

On 5 May 2010, SEC commenced infringement proceedings based on the patent; SEC has a corresponding European patent which was opposed based on prior art and SEC had filed amendments for the European patent on 10 Nov 2010; On 25 November 2010, the Opposition Division of the EPO found the European patent to be invalid; On 21 January 2011, SEC filed an appeal against the invalidity decision with the EPO; While the EPO appeal was still pending, SEC applied to the Singapore Patent Office to amend the patent around December 2012. SEC knew of the prior art cited in the EP opposition in November 2010, but only applied to amend the Singapore patent around December 2012 - about two years later. Despite arguing that it did not think that the EP cited prior art was relevant to the Singapore patent, SEC applied to amend the Singapore patent before the EPO rendered its decision on SEC's appeal. This apparent volte-face by the patentee cast serious doubts on the patentee's honesty, leading the Singapore High Court judge to doubt it genuinely believed the Singapore patent was valid. The judge distinguished this case from thelenient approach advocated in an earlier Singapore Court of Appeal decision and instead found that there was undue delay on the part of the patentee in applying to amend the patent. The judge also adopted the legal principle that there is unfair advantagewhere a patentee threatens an infringer with his unamended...