SINGAPORE: POST-GRANT AMENDMENTS

October 24th, 2014

 

In the case of Genpharm International Inc v Lonza Biologics Tuas Pte Ltd, the Intellectual Property Office of Singapore (IPOS) awarded costs of S$475.00 against the Applicant with S$300 for interlocutory proceedings and S$175 for attendance at the proceedings. The correction made in Table 17 in the patent specification was accepted and other proposed correction by Genpharm International Inc. was refused by the IPOS.

Genpharm International Inc. (“herein referred as the Applicant”) entered the national phase in Singapore on 26 March 1998 based on international application no. PCT/US1996/016433. The specification describes methods generating antibodies using transgenic animals. On 23 June 1999, the Applicant had requested for the grant of a patent based on the finding of the PCT Examiner and Singapore Patent SG51905 was granted on 16 November 1999 (hereinafter referred to as “the Singapore Patent”).

Lonza Biologics Tuas Pte Ltd (“hereinafter referred as the Opponent”) had filed revocation proceedings against the Singapore Patent on 19 February 2010 alleged that the claims of the Singapore Patent are not patentable.

The Applicant had then filed a request to file amendments to the granted claims. The amendments were made to the claims and to the description of the Singapore Patent.

Further, the Applicant had claimed that the amendments made were to correct errors in the Singapore Patent and it is not meant to extend the scope of the Singapore Patent. Meanwhile, the Opponent had argued that the corrections were major and have a fundamental and technical effect to the scope of the Singapore Patent.

The Applicant had argued that the corresponding amendments were allowed by the European Patent Office (EPO) with regards to corresponding European Patent EP0854917.

The Opponent had submitted that the consideration must be made relying upon the eyes of a skilled person under Singapore Patents Rule 91(2). Based on this Rule, an error must be “an obvious error” to enable it to be rectified. It is alleged by the Opponent that the Applicant did not provide any evidence from a skilled person to establish an error or immediate correction.

IPOS considered the admissibility of the amendments, as to how a skilled person would consider on the balance of probability. Besides, the amendments made Table 17 to amend the word “affinity” to “avidity” were acceptable but the amendments made to the amend the words “affinity constant” to “avidity constant” were not justified.

The IPOS had rejected all the proposed amendments to claims made other than Table 17 and the amendments to Table 17 do not fall under the requirements of Patents Rule 91(2). All other amendments made the Singapore Patent were refused.

The burden of proof lies on the IPOS to prove that the amendments are justified. Based on Patents Rule 91(2), an amendment to a Singapore Patent can only considered if it is obvious. The IPOS had also agreed with the Opponent’s submissions that evidence from a skilled person is required under the Rule 91(2).