Case Details
- Citation: [2022] SGHC 164
- Title: Nippon Shinyaku Co, Ltd v Registrar of Patents
- Court: High Court of the Republic of Singapore (General Division)
- Tribunal Appeal No: Tribunal Appeal No 24 of 2021
- Date of Decision: 14 July 2022
- Judge: Lee Seiu Kin J
- Plaintiff/Applicant: Nippon Shinyaku Co, Ltd
- Defendant/Respondent: Registrar of Patents
- Legal Area: Intellectual Property — Patents and Inventions
- Subject Matter: Refusal of a proposed correction to a patent application specification; procedural question on the proper respondent in a tribunal appeal
- Key Statutory Provisions Referenced: Patents Act (including s 107); Patents Rules (including r 91(1) and r 91(2)); Government Proceedings Act (as discussed in relation to Axis); Geographical Indications Act (mentioned in metadata)
- Other Statutes Mentioned in Metadata: Intellectual Property Office of Singapore Act; Intellectual Property Office of Singapore Act 2001; Legal Profession Act (as mentioned in metadata); Patents Act 1994 (Rev Ed 2020)
- Cases Cited: Dukhovskoi’s Applications [1985] RPC 8; Axis Law Corp v Intellectual Property Office of Singapore [2016] 4 SLR 554; [2014] SGIPOS 9; [2022] SGHC 164 (this case)
- Judgment Length: 25 pages, 7,039 words
Summary
Nippon Shinyaku Co, Ltd v Registrar of Patents [2022] SGHC 164 concerned an appeal from the Intellectual Property Office of Singapore (IPOS), acting through the Registrar of Patents, which refused to allow a proposed correction to the specification of a Singapore patent application. The correction related to an error in Table 7 of the verified English translation of the PCT application documents that were used in the Singapore national phase. The High Court had to decide (i) who the proper respondent should be in the tribunal appeal, and (ii) whether the correction should be permitted under the Patents Act and Patents Rules.
On the procedural issue, the court held that the Registrar of Patents—not IPOS as a corporate entity—was the proper party to be named as the respondent. On the substantive issue, the court applied the well-known two-step approach for patent corrections derived from Dukhovskoi’s Applications. While the Registrar accepted that an error existed, the Registrar refused the correction on the basis that it was not immediately evident that the proposed correction reflected the original intended content. The High Court disagreed and allowed the correction, concluding that the evidential material and the context of priority from the Japanese application made it sufficiently clear what was originally intended.
What Were the Facts of This Case?
The applicant, Nippon Shinyaku Co, Ltd, is a company incorporated in Japan. It filed a Japanese patent application (numbered 2018-089867). The applicant then filed a Patent Cooperation Treaty (PCT) application (PCT/JP2019/018201) on 7 May 2019. Subsequently, on 5 November 2020, the PCT application entered the national phase in Singapore as Singapore Patent Application No 11202011003T (the “Subject Application”). Both the PCT application and the Subject Application claimed priority from the Japanese patent application.
During the course of the Singapore prosecution, the applicant discovered an error in Table 7 of the verified English translation of the PCT application that had been filed with IPOS. The applicant’s patent agent, Marks & Clerk Singapore LLP (“M&C”), prepared a request to correct the error. On 1 April 2021, M&C filed Form CM4 with the Registry of Patents under the relevant provisions in the Patents Rules (as referenced in the judgment, including r 91(1)). The request was supported by multiple documents, including a cover letter explaining the reasons for the correction, marked-up pages showing the proposed changes, a clean replacement page, and a copy of the full Japanese patent application.
Critically, the applicant also provided a verified English translation of the relevant portions of the Japanese patent application (showing the correct Tables 6 and 7). The correction request thus did not rely solely on the applicant’s assertion that an error had occurred; it was accompanied by documentary evidence intended to demonstrate what the correct content should have been. The underlying premise was that the Singapore specification should reflect the same technical disclosure as the priority Japanese application, subject to the normal translation and drafting processes.
After a reminder from M&C, IPOS, acting in its capacity as the Registrar, issued a final decision on 5 October 2021 rejecting the request. The Registrar accepted that there were clearly errors in Table 7 (satisfying the first step of the correction test). However, the Registrar held that the second step was not satisfied: it was not immediately evident to the skilled addressee that the proposed correction represented what was originally intended. The Registrar emphasised that priority applications do not always have to be identical to the national-phase documents, and that “more likely than not” was insufficient to meet the correction standard under the Patents Rules.
What Were the Key Legal Issues?
The High Court identified two issues. First, it asked whether IPOS, acting in its official capacity as the Registrar, was the proper party to be named as the respondent in Tribunal Appeal No 24 of 2021. This was a procedural question about the correct respondent in tribunal appeal proceedings, and it required the court to interpret how the statutory framework allocates decision-making authority and how that authority should be reflected in litigation.
Second, the court considered whether the proposed correction should be allowed. This required the court to apply the legal test for corrections to patent specifications and to determine whether the evidential threshold for allowing a correction was met. The correction regime is designed to permit rectification of clerical or transcription errors, but it also protects the integrity of patent documents and the certainty of the scope of protection. Accordingly, the court had to assess whether the proposed correction was consistent with the original intended disclosure, rather than amounting to a substantive amendment.
How Did the Court Analyse the Issues?
On the proper party issue, the applicant argued that IPOS, being a body corporate, could be sued in its own name and that any relief sought could only be granted by IPOS acting as the Registrar. The applicant relied on Axis Law Corp v Intellectual Property Office of Singapore [2016] 4 SLR 554. The Registrar, by contrast, argued that the proper respondent should be the Registrar of Patents, as the officer conferred with the power to correct patent applications and the decision-maker whose decision was being appealed.
The court’s analysis turned on the reasoning in Axis and the distinction between different procedural contexts. In Axis, the dispute involved judicial review and the question of whether the Attorney-General or IPOS was the proper party, with the court considering the Government Proceedings Act framework for proceedings against the Government. The High Court in Nippon Shinyaku treated Axis as not directly establishing that IPOS must always be the respondent in every IPOS-related dispute. Instead, the court focused on the specific question before it: whether the decision under appeal was made by the Registrar (an officer exercising statutory power) or by IPOS as a corporate entity.
Having considered the submissions, the court held that the Registrar, and not IPOS, was the proper party. The practical effect of this holding is that the tribunal appeal should be directed at the decision-maker whose statutory authority was exercised. This approach aligns with the general principle that litigation should name the person or entity that actually made the impugned decision, particularly where statutory powers are vested in an officer rather than in the corporate body as such.
On the substantive correction issue, the court applied the two-step test derived from Dukhovskoi’s Applications [1985] RPC 8. The first step asks whether it is clear that there was an error in the specification. The Registrar had accepted this step, and the High Court proceeded on that basis. The second step asks whether it is clear that what is now offered is what was originally intended. This second step is the critical one: it is meant to ensure that corrections do not become a backdoor for changing the technical content of the application beyond what was originally disclosed.
The Registrar had refused the correction because it was not immediately evident to the skilled addressee that the proposed correction reflected the original intended content. The Registrar also reasoned that priority from a foreign application does not guarantee identity between the priority document and the national-phase specification. The High Court, however, found that the evidential context in this case overcame the Registrar’s concerns. The court considered the documentary materials submitted with the correction request, including the Japanese patent application and the verified English translation of the correct Tables 6 and 7. The court treated these materials as demonstrating the intended content with sufficient clarity.
In other words, the court did not accept that the “more likely than not” standard was the only relevant benchmark. Rather, it concluded that the correction was supported by objective evidence showing what the original intended disclosure was. The court’s reasoning reflects the purpose of the correction provisions: where the error is clerical or transcriptional and the corrected text can be shown to match the originally intended technical disclosure, the patent system should permit rectification to avoid penalising applicants for technical mistakes that do not reflect the true invention.
Although the judgment extract provided is truncated, the structure and the court’s stated conclusion indicate that the High Court found the second Dukhovskoi step satisfied on the facts. The court therefore allowed the proposed correction to Table 7 of the Subject Application.
What Was the Outcome?
The High Court allowed the applicant’s appeal. It held that the Registrar of Patents was the proper respondent in the tribunal appeal proceedings. It further allowed the proposed correction to Table 7 of the patent application specification, reversing the Registrar’s refusal.
Practically, this means that the corrected specification could proceed as part of the Singapore patent application record, subject to the procedural consequences of the correction being granted. The decision also clarifies that, where the applicant provides sufficiently clear documentary evidence of the original intended disclosure, the correction regime can be applied to rectify translation or transcription errors without undermining the integrity of the patent specification.
Why Does This Case Matter?
This case is significant for two reasons. First, it provides guidance on the proper party in tribunal appeals involving IPOS decisions. Practitioners should not assume that IPOS as a corporate entity is automatically the correct respondent. Instead, the focus should be on the statutory decision-maker and the officer who exercised the relevant power. This can affect the validity of proceedings and the efficiency of litigation, particularly in time-sensitive patent prosecution contexts.
Second, the decision is a useful application of the Dukhovskoi two-step test for patent corrections. The court’s approach demonstrates that the second step—whether the corrected text is clearly what was originally intended—can be satisfied where the applicant supplies objective evidence, such as the original foreign application and verified translations, that makes the intended content clear to the skilled addressee. This is particularly relevant in PCT national-phase entries, where translation errors can arise and where priority documents provide a strong evidential anchor.
For patent agents and litigators, Nippon Shinyaku underscores the importance of assembling a robust correction package. The applicant’s submission included marked-up and clean replacement pages, a cover letter, the full Japanese application, and verified translations of the relevant tables. The case therefore supports a practical lesson: correction requests should be documented in a way that enables the Registrar and the court to see, with clarity, what the original intended disclosure was, rather than relying on probabilities.
Legislation Referenced
- Patents Act 1994 (Rev Ed 2020), including s 107 (correction of errors in specifications and related documents)
- Patents Rules (Cap 221, R 1, 2007 Rev Ed), including r 91(1) and r 91(2) (procedure and substantive test for corrections)
- Government Proceedings Act (Cap 121, 1985 Rev Ed) (discussed in relation to proper party principles, as referenced through Axis)
- Intellectual Property Office of Singapore Act (as referenced in metadata)
- Intellectual Property Office of Singapore Act 2001 (as referenced in metadata)
- Geographical Indications Act (as referenced in metadata)
- Legal Profession Act (as referenced in metadata)
Cases Cited
- Dukhovskoi’s Applications [1985] RPC 8
- Axis Law Corp v Intellectual Property Office of Singapore [2016] 4 SLR 554
- [2014] SGIPOS 9
- [2022] SGHC 164
Source Documents
This article analyses [2022] SGHC 164 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.