6 September, 2015
In Ship's Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd [2015] SGHC 159, the Plaintiff applied to the High Court to amend certain patents that it held. However, the Defendants successfully resisted the application, and the Court rejected all the proposed amendments. The Defendants were represented by Lau Kok Keng and Wendy Low from the Intellectual Property Practice.
The Plaintiff was the proprietor of two Singapore patents over certain shipping equipment. The Plaintiff commenced proceedings against two sets of Defendants for alleged infringement of the patents. However, the Defendants denied any infringement and counterclaimed to invalidate the patents for lack of novelty. The Plaintiff then sought for leave to amend the patents. Here, the Plaintiff's application for amendment was rejected by the High Court.
The Court first considered whether the proposed amendments met the requirements of the Patent Act, which includes the requirement that (i) the amendment not result in the specification disclosing any additional matter; (ii) the amendment does not extend the protection conferred by the patent; and (iii) the amendment must be clear and concise, and supported by the description. Using these criteria, and upon an examination of the evidence, the Court rejected five of the nine proposed amendments.
The Court then considered whether it should exercise its discretion to reject the proposed amendments even if the Patent Act requirements were met. Here, the Court found that there was an undue delay on the part of the Plaintiff in applying to amend the patents, and that the Plaintiff had sought to obtain an unfair advantage from the patents. On this basis, the Court held that it would exercise its discretion to refuse the amendments.
For further information, please contact:
Kok Keng Lau, Partner, Rajah & Tann
kok.keng.lau@rajahtann.com
