Case Details
- Citation: [2017] SGHC 322
- Case Number: Originating Summons N
- Party Line: Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co
- Judge: George Wei J
- Counsel for Applicant: Chow Jian Hong and Yan Chongshuo (Mirandah Law LLP)
- Counsel for Respondent: Alvin Lim Jun Hao and Desmond Chew Tse Sern (Dentons Rodyk & Davidson LLP)
- Statutes Cited: s 44 Patents Act, Section 17 Patents Act, s 17(5) Patents Act, s 17(2) Patents Act, s 12A(3)(a) Medicines Act, s 80(1)(f) Patents Act, Section 44(1) Patents Act, s 42(2)(d) Patents Rules, Section 115(1) Patents Act, s 30 Patents Act, s 42(2)(c) Patents Act, s 107 Patents Act
- Disposition: The court allowed the application with costs.
Summary
This dispute involved an application brought by Novartis (Singapore) Pte Ltd against Bristol-Myers Squibb Pharma Co concerning patent-related procedural matters under the Patents Act. The core of the controversy centered on the interpretation of statutory provisions governing patent applications and the procedural requirements set forth in the Patents Rules. The applicant sought specific relief regarding the status and handling of their patent application, necessitating a detailed examination of the interplay between the Patents Act and the Medicines Act, particularly regarding the international application process under the Patent Cooperation Treaty (PCT).
Justice George Wei J, presiding over the matter, analyzed the relevant sections of the Patents Act, including sections 17, 44, and 80, alongside the procedural mandates of the Patents Rules. The court scrutinized whether the applicant had satisfied the necessary statutory thresholds to warrant the requested relief. Ultimately, the court determined that the application was well-founded and allowed it, granting the applicant the relief sought. The decision underscores the strict adherence required for procedural compliance in patent litigation and clarifies the court's role in overseeing the administrative aspects of patent registration and enforcement in Singapore.
Timeline of Events
- 11 June 1988: Bristol-Myers Squibb filed the original US patent application that serves as the basis for the priority claim in the Singapore Patents.
- 23 November 1994: Singapore became a contracting state to the Patent Cooperation Treaty (PCT), establishing the framework for international patent applications.
- 9 November 2015: Bristol-Myers commenced High Court Suit No 1146 of 2015 against Novartis, seeking an injunction and declaration of patent infringement.
- 20 June 2016: Novartis filed its defence in the High Court suit, challenging the validity of the priority date claimed by Bristol-Myers.
- 13 September 2016: Emmanuelle Laure Ferrari affirmed an affidavit on behalf of Novartis in support of the application for rectification of the Register.
- 4 May 2017: The High Court heard the originating summons regarding the rectification of the Register.
- 20 December 2017: Justice George Wei delivered the judgment in [2017] SGHC 322, addressing the procedural irregularities and the request for correction of the patent entries.
What Were the Facts of This Case?
The dispute arose between Novartis (Singapore) Pte Ltd and Bristol-Myers Squibb Pharma Company, the proprietor of five Singapore patents. The conflict was triggered when Novartis applied for a product licence under the Medicines Act, prompting Bristol-Myers to initiate a High Court suit alleging that Novartis’s proposed activities would infringe upon its existing patent rights.
During the course of the High Court suit, Bristol-Myers asserted a priority date of 11 June 1988, derived from an earlier US patent application. Novartis contested this, arguing that the document cited to support the priority claim actually related to an entirely different invention. Upon investigating the prosecution history, Bristol-Myers discovered that an administrative error had occurred during the application process, where the wrong US patent application number had been recorded in the relevant forms.
Bristol-Myers subsequently sought to rectify the Register of Patents to reflect the correct US patent application number. The Registrar of Patents granted these requests, allowing the corrections to be made. Novartis challenged this decision, arguing that the Registrar lacked the authority to permit such corrections and that the entries in the Register should be reversed.
The case centered on the interpretation of the Patents Act and the Registrar's discretion to correct procedural irregularities. The court examined whether the error in the priority claim could be rectified under the existing statutory framework, specifically considering the principles governing patent applications and the correction of register entries in Singapore.
What Were the Key Legal Issues?
The case Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 centers on the procedural boundaries of the Registrar's power to correct errors in patent documentation and the Register. The court addressed the following key issues:
- Scope of Rule 58 (Correction of Errors in the Register): Whether the Registrar has the authority under r 58 of the Patents Rules to correct an application number in the Register when the entry accurately reflects the erroneous information originally provided in the patent application forms.
- Applicability of Rule 91 (Correction of Errors in Filed Documents): Whether a request to correct errors in patent application forms (such as PF1) must be processed under r 91 rather than r 58, particularly after the patent has been granted.
- Interaction with Section 44 (Rectification of the Register): Whether the court has the jurisdiction under s 44(1) and (2) of the Patents Act to rectify the Register by deleting a correction that was improperly granted by the Registrar.
- Relevance of Rule 101 (Dispensation by Registrar): Whether the Registrar’s power to dispense with the filing of documents under r 101 is applicable to requests for substantive corrections of priority data.
How Did the Court Analyse the Issues?
The High Court determined that the Registrar’s exercise of discretion under r 58 was flawed because there was no actual error in the Register itself. The court reasoned that the Register accurately recorded the information as it appeared in the patent application forms; thus, the entry was not "erroneous" in the context of the Register's function as a record of the application.
The court rejected the respondent's attempt to use r 58 to bypass the more rigorous requirements of r 91. It held that r 58 is intended for clerical errors in the Register, whereas errors in the underlying application forms (like PF1) must be addressed under r 91. The court noted that "the Register and the entries represent the 'public face' of Singapore patents," and allowing corrections without proper scrutiny undermines this function.
Regarding the respondent's reliance on the EPO decision Correction of priority/SUMITOMO T 0796/94, the court acknowledged the persuasive value of EPO jurisprudence regarding r 88 EPC (equivalent to r 91). The court emphasized that late-stage corrections, especially those made after the grant of a patent, require "very exceptional circumstances" to protect the interests of third parties who rely on the public record.
The court dismissed the argument that r 101 (Dispensation by Registrar) was relevant, clarifying that the applicant was not seeking to dispense with a filing requirement but was attempting to substantively alter priority data. The court found that the applicant's failure to correct the forms under r 91 meant the error remained "permeated all the way through" the patent file.
Ultimately, the court exercised its power under s 44(2) of the Patents Act to rectify the Register. It concluded that because the Registrar’s initial correction was based on a misapprehension of the scope of r 58, the correction was invalid. The court ordered the deletion of the unauthorized correction, effectively restoring the original (albeit erroneous) entry to maintain the integrity of the patent register until proper procedures are followed.
What Was the Outcome?
The High Court allowed the application brought by Novartis (Singapore) Pte Ltd, finding that the respondent's attempt to correct patent application forms under the Patents Rules was procedurally flawed. The court determined that while the respondent acted in good faith, the specific mechanism employed for the correction was inappropriate.
204 It follows that this application is allowed with costs. I shall hear the parties if they are unable to agree on the amount of costs.
The court ordered that the respondent's request for correction be refused, clarifying that the correct procedure for such amendments lies under section 107 of the Patents Act and rule 91 of the Patents Rules. The parties were directed to reach an agreement on costs, with the court reserving the right to hear further arguments if necessary.
Why Does This Case Matter?
The case stands as authority for the strict procedural requirements governing the correction of patent application forms and register entries in Singapore. It clarifies that rule 58 of the Patents Rules is not a catch-all provision for substantive corrections that alter the underlying application forms, particularly when such corrections touch upon priority claims.
The decision distinguishes between the administrative correction of the Register and the substantive amendment of application forms. It reinforces that where an error in an application form is concerned, the applicant must strictly adhere to the statutory framework provided by section 107 of the Patents Act and rule 91 of the Patents Rules, rather than attempting to bypass these requirements through informal or alternative registry procedures.
For practitioners, this case underscores the necessity of selecting the correct procedural pathway when rectifying errors in patent filings. It serves as a warning that even in the absence of bad faith, procedural non-compliance can lead to the rejection of substantive requests. Litigators should note the court's emphasis on the distinction between the Register and the application forms, and the importance of ensuring that all relevant parties are properly notified where required by the specific rules invoked.
Practice Pointers
- Distinguish between Register and Application Documents: Practitioners must identify whether the error lies in the Register (governed by r 58 of the Patents Rules) or in underlying application documents like PF1 (governed by r 91). Using the wrong rule for the wrong document will lead to procedural rejection.
- Avoid Rule 101 for Corrections: Do not attempt to use r 101 (Dispensation by Registrar) as a shortcut for correcting substantive errors in application forms; the court clarified that r 101 is for procedural compliance, not for amending filed data.
- Strategic Use of Rule 91: For errors in patent application forms (e.g., PF1), rely on r 91 of the Patents Rules. Ensure that the request is framed as a correction of a clerical or technical error rather than a substantive change to the patent's priority date.
- Priority Date Integrity: Note that r 9(3) imposes strict time limits (16 months) for correcting mistakes in priority declarations that would result in a change of the priority date. If the priority date itself is correct but the application number is wrong, the strict r 9(3) timeline may be avoided, but prompt correction remains essential.
- Public Face of the Register: Treat the Register as the primary source of truth for third parties. Even if an error exists in the underlying PF1, a separate application under r 58 is necessary to ensure the 'public face' of the patent is accurate.
- Evidence of Error: When seeking corrections, be prepared to provide clear evidence of the nature of the error (e.g., a single-digit typo) to satisfy the Registrar that the request is a genuine correction rather than an attempt to replace one document with another.
Subsequent Treatment and Status
The decision in Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 remains a key authority in Singapore patent practice regarding the procedural bifurcation between correcting the Register and correcting underlying application documents. It is frequently cited in IPOS practice directions and by practitioners to clarify the scope of the Registrar’s powers under the Patents Rules.
The case is considered a settled interpretation of the procedural requirements under the Patents Act and Rules. It has not been overruled or significantly doubted in subsequent jurisprudence, serving as the standard reference for distinguishing the application of r 58 and r 91 of the Patents Rules.
Legislation Referenced
- Patents Act, s 12A(3)(a)
- Patents Act, s 17(2), 17(5)
- Patents Act, s 27(1)
- Patents Act, s 30
- Patents Act, s 42(2)(c), 42(2)(d)
- Patents Act, s 44(1)
- Patents Act, s 76
- Patents Act, s 80(1)(f)
- Patents Act, s 85(1)
- Patents Act, s 87(1)(b)
- Patents Act, s 107
- Patents Act, s 115(1)
- UK Patents Act, s 117
Cases Cited
- [2017] SGHC 322: Primary judgment regarding patent application procedures and statutory interpretation of the Patents Act.
- Genentech Inc v Comptroller-General of Patents [1989] RPC 147: Cited regarding the interpretation of patentability and procedural requirements.
- Merck & Co Inc v Comptroller-General of Patents [1995] RPC 673: Cited for principles concerning the amendment of patent specifications.
- Warner-Lambert Co LLC v Actavis Group PTC EHF [2016] EWCA Civ 1006: Cited for the scope of patent protection and infringement analysis.
- Eli Lilly & Co v Actavis UK Ltd [2017] UKSC 48: Cited for the doctrine of equivalents in patent law.
- AstraZeneca AB v Comptroller-General of Patents [1999] RPC 273: Cited regarding the exercise of the Registrar's discretion in patent matters.