Case Details
- Citation: [2019] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2019-03-20
- Judges: Ms See Tho Sok Yee
- Plaintiff/Applicant: Singapore Shipping Association and Association of Singapore Marine Industries
- Defendant/Respondent: Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd.
- Legal Areas: Trade Mark and Trade Name — Opposition to patent amendment
- Statutes Referenced: Patents Act
- Cases Cited: [2018] SGIPOS 13, [2018] SGIPOS 14, [2019] SGIPOS 5
- Judgment Length: 30 pages, 15,697 words
Summary
This case involves an opposition by the Singapore Shipping Association and Association of Singapore Marine Industries against proposed amendments to Singapore Patent No. 159788, titled "Vessel Structure", owned by Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. The patent relates to a ballast water management system for ships. The opponents argued that the proposed amendments should be rejected on the grounds of lack of full disclosure, undue delay, and the applicants seeking to obtain an unfair advantage. The Intellectual Property Office of Singapore had to determine whether to exercise its discretion to allow the proposed amendments despite the opponents' objections.
What Were the Facts of This Case?
Singapore Patent No. 159788 ("the 788 Patent"), entitled "Vessel Structure", was filed as an international application on 12 September 2008, claiming priority from a Japan patent. The patent was granted in Singapore on 29 October 2010 and is jointly owned by Hitachi, Ltd. and Mitsubishi Shipbuilding Co., Ltd. (referred to as "the Proprietors" or "the Applicants for Amendment").
The 788 Patent is one of three patents related to ballast water treatment that the Singapore Shipping Association and Association of Singapore Marine Industries ("the Opponents" or "the Applicants for Revocation") have applied to revoke. The other two patents were eventually revoked in uncontested proceedings ([2018] SGIPOS 13 and [2018] SGIPOS 14), but the revocation of the 788 Patent was contested.
On 2 November 2017, the Proprietors filed proposed amendments to the 788 Patent specification as part of their defense strategy against the revocation challenge. The Opponents then filed a notice of opposition to these proposed amendments on 26 January 2018.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Proprietors had failed to make full disclosure in relation to the proposed amendments.
- Whether there had been an undue delay on the part of the Proprietors in applying for the proposed amendments.
- Whether the Proprietors had sought to obtain an unfair advantage during the period of undue delay.
The Opponents argued that the Registrar should exercise her discretion to reject the proposed amendments on these grounds, even if the amendments met the statutory criteria.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms See Tho Sok Yee, first noted that the applicable law was the Patents Act and Patents Rules, and that the burden of proof was on the Applicants for Amendment (the Proprietors).
Regarding the issue of full disclosure, the Hearing Officer found that the Proprietors had provided sufficient information about the proposed amendments and the background to the amendments, including details of the prior invalidation proceedings in Japan. There was no evidence of a lack of full disclosure.
On the issue of undue delay, the Hearing Officer acknowledged that the Proprietors had waited over 7 years after the grant of the 788 Patent before applying for the amendments. However, she noted that the Proprietors had been engaged in invalidation proceedings in Japan during this time, and the amendments were proposed as part of their defense strategy against the revocation challenge in Singapore. The Hearing Officer did not consider this delay to be undue.
The key issue was whether the Proprietors had sought to obtain an unfair advantage during the period of delay. The Hearing Officer noted that this was the first time in Singapore that the discretionary factor of "unfair advantage" was being considered in the context of patent monetization. After reviewing the evidence and submissions, the Hearing Officer concluded that the Proprietors had not sought to obtain an unfair advantage, as the delay was not unreasonable and the amendments were proposed as part of a legitimate defense strategy.
What Was the Outcome?
The Hearing Officer dismissed the Opponents' opposition and allowed the Proprietors' proposed amendments to the 788 Patent. She found that the Proprietors had met the statutory requirements for the amendments and that the discretionary factors did not warrant refusing the amendments.
Why Does This Case Matter?
This case is significant as it provides guidance on the application of discretionary factors, such as "unfair advantage", in the context of patent amendments. The Hearing Officer's analysis of the Proprietors' conduct and their motivations for seeking the amendments demonstrates a balanced approach to weighing the public interest, the interests of the patent owner, and the interests of competitors.
The decision also highlights the importance of patent owners being proactive in defending their patents, even if it means seeking amendments years after grant. The Hearing Officer recognized that the Proprietors' actions were a legitimate defense strategy against the revocation challenge, rather than an attempt to unfairly extend their monopoly.
This case serves as a useful precedent for patent practitioners in Singapore, demonstrating the Intellectual Property Office's willingness to exercise its discretion to allow amendments that meet the statutory criteria, even in the face of opposition, as long as the amendments are not sought for an improper purpose.
Legislation Referenced
Cases Cited
- [2018] SGIPOS 13
- [2018] SGIPOS 14
- [2019] SGIPOS 5
Source Documents
This article analyses [2019] SGIPOS 5 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.