Singapore – Avoid undue delays when requesting post-grant amendments

Date: 2017-08-25
Authors: Rory Anderson & Brett Connor

The legal system of Singapore is based on the English common law system, and therefore it has both a shared heritage and enduring commonality with other English common law jurisdictions. There is not a large body of patent related case law in Singapore. Given this, Singaporean Courts will often consider the approach adopted in other English common law jurisdictions, especially Australia.

A recent judgement by the Singaporean Court of Appeal, in relation to request for post-grant claim amendments of a patent, affirms the trend for Singaporean Courts to consider Australian case law.

In this recent Judgement, Warner-Lambert sought the postgrant amendment of claims to address an issue of invalidity. By way of background, the Singaporean Patents Act provides the Courts a discretionary power to allow post-grant claim amendments. In this case, the request to amend was originally denied by the High Court. Warner-Lambert appealed this decision to the Court of Appeal.

A key issue considered by the Court of Appeal was whether Warner-Lambert had acted without undue delay in requesting the post-grant claim amendments. In considering this issue, the Court of Appeal leaned heavily on Australian jurisprudence, ultimately adopting the approach outlined by the Federal Court of Australia in CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 125. Consistent with the Australian approach, the Court found that an applicant’s actual or constructive knowledge of the need to amend should, in appropriate circumstances, suffice to disentitle the applicant to the favourable exercise of the court’s discretion. On applying this test, the Singaporean Court of Appeal dismissed the appeal and affirmed the decision of the High Court to deny the request for post-grant amendment of the claims. Ultimately, all of the claims in Warner-Lambert’s patent were found to be invalid.

This case highlights both the fatal consequences that can arise in untested areas of Singaporean law and the significant weight that Singaporean Courts apply to Australian jurisprudence.

Whilst this case demonstrates the tendency of Singaporean Courts to consider Australian law, this approach is not limited to Singapore. Other SE Asian countries (including Indonesia, Malaysia, Thailand, Vietnam, and The Philippines) also place weight on the outcome of prosecution in Australia.

Given this, there is a real benefit in consolidating your SE Asian patent portfolio with a regional attorney service provider with a deep knowledge of Australian law and experience throughout SE Asia.

FPA patent attorneys is an Australian based patent firm with a proven track record of managing patent portfolios across the SE Asian region. We have a regional understanding of patent law and practice across the SE Asian region and are well placed to provide strategic advice about your portfolio and to help you navigate the fatal pitfalls inherent across the SE Asia region.

At FPA Patent Attorneys, we manage and provide strategic advice on large patent families across SE Asia for a range of clients including multi-national corporates. We find that this approach can reduce risks and cost to the patentee.