SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
Regardless of whether the amendment is sought before the court or the Registrar, a patent proprie ‑ tor intending to do so must give notice of their inten ‑ tion to the Registrar and a copy of an advertisement containing relevant details of the patent sought to be amended must be published in the patent jour ‑ nal by the patent Registry. Such details include the full particulars of the amendment sought, whether the amendment is by way of deletion or rewriting of claims and the patent proprietor’s address for ser ‑ vice within Singapore. Any person may oppose the amendment and that person must give written notice of their intention to oppose to the patent proprietor within 28 days after the publication of the advertise ‑ ment. This notice is to be accompanied by a state ‑ ment of opposition, which is to contain full particulars of all grounds of opposition to the patent proprietor’s application to amend. After the expiration of 42 days from the appearance of the advertisement, the patent proprietor must make their application to amend by way of summons in the proceedings pending before the court. A copy of the summons and a copy of the specification with amendments marked up in coloured ink must be served on the Registrar, the parties to the proceedings and any person who has given notice of their intention to oppose the amendment. All applications for post-grant amendments will be assessed according to the following criteria: • whether the patent proprietor had disclosed all relevant information with regard to the proposed amendments; • whether the amendments comply with the statu ‑ tory requirements; • whether the amendments introduce additional mat ‑ ter; • whether the amendments extend the scope of protection of the patent (ie, the amended patent is broader than the patent in its current form); • whether there had been undue and inexplicable delay on the patent proprietor’s part in taking out the amendment application; • whether the patent proprietor had sought to obtain an unfair advantage from the patent by delaying the amendments which it knew were needed; and • whether the patent proprietor’s conduct discour ‑ ages the amendment of the patent.
Following a successful application to amend the pat ‑ ent specifications, the patent proprietor (ie, the claim ‑ ant) may be in a better position to resist any claims from the defendant that the patent in the suit is invalid on the ground of anticipation by the prior art. This is generally why a patent proprietor seeks to amend its patent. However, the adverse implication to an appli ‑ cation to amend a patent specification is that it indi ‑ cates to the adverse party and to the court that the unamended patent as granted may not be valid. In cases where the amendment is sought in proceed ‑ ings before the court, the court has the discretion to direct whether the hearing of the patent amend ‑ ment application should be at the trial of the patent infringement suit or separately before the trial of the patent infringement suit. While the patent amendment application is considered an interlocutory application where cross-examination of deponents is typically not allowed, given the complexity and the finding of facts involved in a patent amendment application, expert witnesses are usually cross-examined at the hearing of a patent amendment application that is separate from the trial of the suit. The concept of conditional amendments has not been
tested in Singapore. 1.18 Court Arbiter
All patent matters will be heard by judges sitting in the General Division of the High Court of Singapore. Judges chosen to hear patent matters will typically be selected from the list of Intellectual Property Judges.
2. Generic Market Entry 2.1 Infringing Acts
As mentioned in 1.2 Defendants/Other Parties to an Action , generics are required to obtain marketing approval from HSA before they are allowed to launch the product in Singapore. Regulation 23 of the Regula ‑ tions provides the patent proprietor a statutory right to commence an action for patent infringement once the patent proprietor is notified of the generic’s applica ‑ tion for marketing approval. In relation to second medical use patents (also known as Swiss-type claims), the patent proprietor must be
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