SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
ceedings since the patent will be different, and the acts are also different (based on territory). The Singapore Court may take into account the decisions of the Court in other jurisdictions, but the Singapore Court is never bound. Further, the weight that the Court accords to the Court decisions in these other jurisdictions depends on whether the patent language in these other jurisdictions are substantially similar to the pat - ent granted in Singapore and whether the basis of the Court’s finding is based on laws that are substantially similar in Singapore. For example, a finding of infringement for a US-equivalent of the patent on the basis of the doctrine of equivalents will not be relevant at all for the issue of infringe - A patent that is the subject of a patent litigation may be amended in the midst of patent litigation. The patent proprietor may only apply to do so if the validity of the patent has been put in issue before the court or the Registrar. This would usu - ally be in a case where there is a counterclaim filed by the defendant in a patent infringement action to invalidate and revoke the patent. ment of the Singapore patent. 1.17 Patent Amendment Regardless of whether the amendment is sought before the court or the Registrar, a patent propri - etor intending to do so must give notice of his/ her intention 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 journal by the patent Registry. Such details include the full particulars of the amend - ment sought, whether the amendment is by way of deletion or rewriting of claims and the patent proprietor’s address for service within Singa - pore. Any person may oppose the amendment and that person must give written notice of his/ her intention to oppose to the patent proprietor
within 28 days after the publication of the adver - tisement. This notice is to be accompanied by a statement 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 his/her 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 Regis - trar, the parties to the proceedings and any per - son who has given notice of his/her 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 statutory requirements; • whether the amendments introduce additional matter; • 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 inexpli - cable 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 dis - courages the amendment of the patent. Following a successful application to amend the patent specifications, the patent proprietor (ie,
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