11 March, 2018
This decision stems from an application by way of Originating Summons before the Singapore High Court, to rectify the register of patents. It is the first case that the issue of corrections to forms and priority data has arisen in the Singapore courts.
Facts
The parties are pharmaceutical companies. The Applicant, Novartis (Singapore) Pte Ltd ("Novartis"), applied for a product licence under the Medicines Act to market and sell a certain pharmaceutical product. The Respondent, Bristol-Myers Squibb Pharma Co ("BMS"), the proprietor of five patents in Singapore, then commenced a High Court suit against Novartis, seeking a declaration that the acts for which Novartis' product licence was sought would infringe BMS' patents, and an injunction to prevent the same.
In the High Court suit seeking the declaration and injunction, BMS claimed the priority date of 11 June 1988, which derives from an earlier US patent application for a similar invention. In its defence, Novartis argued that BMS is not entitled to rely on the claimed priority date, because the document cited in support of the claimed priority date relates to a completely different invention from the inventions set out in the asserted Singapore patents.
After the defence was filed, BMS invested the prosecution history and discovered that in the international application under the PCT, the wrong US patent application number was entered in the relevant forms when claiming priority. Instead of "US 60/088,981", what was entered was "US 60/089,981".
BMS thus filed requests to the Registrar of Patents to correct the entries in the patents register so as to reflect the correct US patent application number in support of the claimed priority date.
The Registrar of Patents granted the requests and made the corrections.
Novartis took the position that the Registrar of Patents should not have allowed the corrections, and commenced an Originating Summons in the High Court for rectification of the register pursuant to Section 44 of the Patents Act.
Section 44(1) of the Patents Act states that "the court may on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it".
Section 44(2) further provides that "the court may determine any question which may be necessary or expedient to decide in connection with the rectification of the register".
Decision
The High Court found in Novartis' favour, and allowed a rectification of the Register by deletion of the correction that was granted by the Registrar.
In other words, the priority application number of BMS' patents reverted to the incorrect one as filed.
Proper Procedure to file Request for Rectification
The parties' first contention was as regards the proper procedure by which BMS should have filed the request for rectification to the Registrar of Patents.
BMS made its requests pursuant to Rule 58 of the Patents Rules. Rule 58(1) provides that "a request for the correction of each error in the register or in any document filed at the Registry in connection with registration shall be made on Form CM4".
Novartis argued that the filing of the requests was procedurally irregular as they should have been made under Rule 91, not Rule 58 of the Patents Rules.
Rule 91 provides for requests for correction of translation and transcription errors, and clerical errors or mistakes in a patent specification, a patent application, and any document filed in connection with a patent or such an application.
Just like Rule 58, a request pursuant to Rule 91 is also to be made on Form CM4. However, a key difference between Rule 58 and Rule 91 is that Rule 91 provides for an opposition procedure. Rule 91(3) provides that the Registrar may advertise the proposed correction made under Rule 91, and third parties can then give notice of opposition within the time frame allowed.
Novartis asserted that it should have been made aware of BMS' application for correction, and the Registrar should have been informed of the existing High Court proceedings in which the priority date of the claims was highly significant. However, since BMS' request was made under Rule 91, it was only after the correction was made by the Registrar of Patents that BMS informed Novartis that the application had been made and granted.
The High Court found that BMS' request for correction was properly made under Rule 58. The Court noted that BMS was not making a request for correction of a form lodged in connection with the patent application, such as the form on which the priority data is stated. BMS simply requested correction of the entries in the Register, leaving the errors uncorrected in the forms and the file.
The Court traced the genesis of Rule 58, to implement or flow from Section 42(2)(d) of the Patents Act, which provides that the Patents Rules may make provision for the correction of errors in the register and in any document filed at the Registry in connection with registration. Accordingly, the Court found that "it is clear on the basis of s42(2)(d) of the Patents Act that [BMS] was entitled to use r 58 to make this request": [108].
Proper Exercise of Discretion under Rule 58
However, the Court found that the Registrar's direction was wrongly exercised under Rule 58.
The Court was satisfied that there was no error in the entries in the Register. The entries accurately set out the earlier priority application number as contained in the published applications and forms. The error or mistake was in the application number as set out in the forms, but BMS had not made a request to correct such error.
The Court accepted Novartis' observation that correcting the entry in the Register without correcting the priority document application number in the relevant forms and documents in the patent file, would result in a confusing state of affairs. In fact, such a limited correction might be seen as meaningless.
Proper Exercise of Discretion under Rule 91
An alternative argument raised by BMS is that the requirements of Rule 91 would have been fulfilled, if an application should have properly been made under Rule 91.
The Court found that even if a request had been made to correct the entries in the patent forms under Rule 91, the request should be refused, as it was made far too late, and was not supported by exceptional grounds.
The Court observed that even though the original error was clerical in nature, it dated all the way back to the filing of the international patent application under the PCT on 10 June 1999. The Court considered the impact of the error (and the late request for correction) on the rights and interests of third parties.
The Court referred to decisions by the European Patent Office, which held that it is important for priority details as set out in published patent applications to be reliable, as such information may have an impact on a third party's decision as to whether pre-grant opposition proceedings should be commenced.
Although there is no pre-grant opposition procedure in Singapore, the Court found that third parties will be put on notice by the publication of the application that their interests are already provisionally affected by the pending patent. This is "undoubtedly a serious matter that affects the public as a whole". It would not have been apparent even on an inspection of the files as to what was the correct earlier US application intended to have been relied upon.
Comments
This case demonstrates the potentially far reaching impact that a clerical error can have on future proceedings and in various jurisdictions, particularly if the error is made in an international application that forms the parent of other divisional or national applications. Care should therefore be taken in ensuring that details are properly entered in patent applications.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
