Novartis v Bristol-Myers Squibb: Patent Register Rectification

In 2017, Novartis (Singapore) Pte Ltd sought rectification of the patent register against Bristol-Myers Squibb Pharma Company in the High Court of Singapore, regarding corrections to the priority date of five patents. Bristol-Myers had corrected a US patent application number cited for priority. Justice George Wei allowed Novartis's application, finding the Registrar's discretion improperly exercised and the correction should not have been granted. The court held that the Registrar should not have allowed the corrections, and reversed the decision.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Application allowed with costs.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Novartis challenged Bristol-Myers' patent register correction. The court allowed Novartis' application, reversing the correction.

1.7 Decision Date

19 December 2017

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Novartis (Singapore) Pte Ltd	Applicant	Corporation	Application Allowed	Won	Suhaimi Bin Lazim of Mirandah Law LLP Yan Chongshuo of Mirandah Law LLP Chow Jian Hong of Mirandah Law LLP
Bristol-Myers Squibb Pharma Company	Respondent	Corporation	Corrections Reversed	Lost	Alvin Lim Jun Hao of Dentons Rodyk & Davidson LLP Desmond Chew Tse Sern of Dentons Rodyk & Davidson LLP

3. Judges

Judge Name	Title	Delivered Judgment
George Wei	Judge	Yes

4. Counsels

Counsel Name	Organization
Suhaimi Bin Lazim	Mirandah Law LLP
Yan Chongshuo	Mirandah Law LLP
Chow Jian Hong	Mirandah Law LLP
Alvin Lim Jun Hao	Dentons Rodyk & Davidson LLP
Desmond Chew Tse Sern	Dentons Rodyk & Davidson LLP

4. Facts

Bristol-Myers owns five Singapore patents related to pharmaceutical inventions.
Novartis applied for a product license for a product that Bristol-Myers claimed would infringe its patents.
Bristol-Myers commenced a High Court suit against Novartis seeking a declaration of infringement and an injunction.
Novartis challenged the validity of Bristol-Myers' patents, disputing the claimed priority date.
Bristol-Myers discovered an error in the US patent application number cited for priority and sought to correct it.
The Registrar of Patents granted Bristol-Myers' request to correct the register.
Novartis commenced an originating summons seeking rectification of the register, arguing the corrections were improper.

5. Formal Citations

Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co, Originating Summons No 1002 of 2016, [2017] SGHC 322

6. Timeline

Date	Event
1883-03-20	Paris Convention for the Protection of Industrial Property signed
1970-06-19	Patent Cooperation Treaty signed
1973-10-05	Convention on the Grant of European Patents signed
1975-11-26	US became a contracting state to the Patent Cooperation Treaty
1977-01-01	UK Patents Act 1977 enacted
1978-01-24	Patent Cooperation Treaty came into force in the US
1994-04-15	Agreement on Trade-Related Aspects of Intellectual Property Rights signed
1994-01-01	Singapore enacted the Patents Act
1994-11-23	Singapore became a contracting state to the Patent Cooperation Treaty
1995-02-23	Patent Cooperation Treaty came into force in Singapore
1998-06-11	DuPont Pharmaceutical Company filed US patent application number 60/088,981
1998-06-19	US patent application for PAPER CARTON and BLANK THEREFOR filed
1999-04-01	Application number 2000054064 filed
1999-06-10	International patent application PCT/99/13199 filed
1999-12-16	International publication published under the PCT
2000-11-28	Application made in Singapore for grant of the SG 77853 patent
2001-01-01	DuPont Pharmaceutical Company acquired by Bristol-Myers
2001-02-20	SG 77853 application published in Singapore
2002-02-15	Application made to correct typographical errors in the address, name and assignment of the Singapore patent applications
2002-12-02	Three divisional patent applications filed based on SG 77853
2002-12-09	Request made for the issuance of grant of the parent patent
2003-05-06	US-Singapore Free Trade Agreement
2003-05-30	SG 77853 patent granted
2004-03-01	Ella Cheong Mirandah and Sprusons Pte Ltd became Ella Cheong Spruson and Ferguson (Singapore) Ltd
2005-03-24	ECSF filed requests using Patents Form 11B to rely on the corresponding US patent 6,673,372 to obtain grant of the three divisional Singapore patents
2005-04-01	ECSF filed requests using Patents Form 11B to rely on the corresponding US patent 6,673,372 to obtain grant of the three divisional Singapore patents
2007-06-29	IPOS issued the certificate for grant for SG 111980
2007-07-31	IPOS issued the certificate for grant for SG 111981
2007-11-30	IPOS issued the certificate for grant for SG 134977
2013-10-30	Novartis applied to the Health Sciences Authority for the Product Licence
2015-09-24	Novartis served on Bristol-Myers notices of the Product Licence Application
2015-11-09	Bristol-Myers commenced the High Court suit against Novartis
2015-12-23	Novartis filed its defence and counterclaim
2016-06-16	Bristol-Myers first attempted to file a request for corrections by means of the IPOS online portal
2016-06-16	Bristol-Myers sought clarification from the Duty Registrar by telephone
2016-06-16	Bristol-Myers sent a letter to the Registrar through its lawyers
2016-06-17	Lawyers for Bristol-Myers stated an obvious error had been made in each PF1 in setting out the US application number for the priority document relied on
2016-06-20	Registrar informed Bristol-Myers that the records for the patent applications in respect of SG 111980 and SG 111981 had been updated
2016-06-21	Registrar informed Bristol-Myers that the records for the patent applications in respect of SG 134977 and SG 77853 had been updated
2016-07-15	Registrar informed Novartis that the request for correction to the Register was made and granted under r 58 of the Patents Rules
2016-09-13	Novartis filed an affidavit affirmed by Emmanuelle Laure Ferrari
2016-10-04	Application for rectification by Novartis was brought
2017-05-04	Hearing date
2017-07-01	Regulations under the PCT entered into force
2017-12-20	Judgment reserved

7. Legal Issues

Rectification of Patent Register
- Outcome: The court allowed the application for rectification, reversing the Registrar's decision.
- Category: Procedural
Priority Date of Patent
- Outcome: The court did not make a final determination on the validity of the priority date, leaving it for the High Court suit.
- Category: Substantive
Correction of Errors in Patent Applications
- Outcome: The court determined the correct procedure for correcting errors in application forms is under s 107 of the Patents Act and r 91 of the Patents Rules, but the request should be refused.
- Category: Procedural

8. Remedies Sought

Reversal of Corrections to Patent Register
Deletion of Corrections to Patent Register

9. Cause of Actions

Rectification of Register
Patent Infringement (alleged)

10. Practice Areas

Patent Litigation
Commercial Litigation

11. Industries

Pharmaceuticals

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Correction of priority/SUMITOMO	Technical Board of Appeal of the EPO	Yes	Correction of priority/SUMITOMO T 0796/94	Europe	Cited for principles on correcting priority declarations, but distinguished on facts.
FONTECH/Priority declaration (correction)	Technical Board of Appeal of the EPO	Yes	FONTECH/Priority declaration (correction) J0007/94	Europe	Cited regarding the importance of compliance with formalities for claiming priority.
Uni-Charm Corporation Priority declaration (correction)	EPO Legal Board of Appeal	Yes	Uni-Charm Corporation Priority declaration (correction) J 0003/91	Europe	Cited for the principle that corrections can be made even after publication if third-party interests are not adversely affected.
United States of America (Priority declaration (correction))	EPO Board of Appeal	Yes	United States of America (Priority declaration (correction)) J 0002/92	Europe	Cited for the principle that corrections can be made if the error is apparent on the face of the document.
David E Berg et al	UK Patent Office	Yes	David E Berg et al BL/O/235/05	United Kingdom	Cited to show that corrections do not extend to procedural errors in filing.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2005 Rev Ed)	Singapore
Medicines Act (Cap 176, 1985 Rev Ed)	Singapore
s 44 of the Patents Act	Singapore
s 17 of the Patents Act	Singapore
s 17(1) of the Patents Act	Singapore
s 17(2) of the Patents Act	Singapore
s 17(5) of the Patents Act	Singapore
s 17(6)(a)) of the Patents Act	Singapore
s 17(6)(b)) of the Patents Act	Singapore
s 85(1) of the Patents Act	Singapore
s 86 of the Patents Act	Singapore
s 87(1)(a) of the Patents Act	Singapore
s 87(1)(b) of the Patents Act	Singapore
s 107 of the Patents Act	Singapore
s 42 of the Patents Act	Singapore
s 42(2)(d) of the Patents Act	Singapore
s 42(2)(c) of the Patents Act	Singapore
s 43(3) of the Patents Act	Singapore
s 110 of the Patents Act	Singapore
s 115(1) of the Patents Act	Singapore
s 76 of the Patents Act	Singapore
s 76(3) of the Patents Act	Singapore
UK Patents Act 1977 (c 37) (UK)	United Kingdom
s 117 of the UK Patents Act	United Kingdom

15. Key Terms and Keywords

15.1 Key Terms

Patent
Priority Date
Patent Register
Rectification
Singapore Patents Act
US Patent Application
Divisional Patent
IPOS
PCT
CEFA

15.2 Keywords

Patent
Priority Date
Rectification
Patent Register
Singapore
Pharmaceutical
Intellectual Property

17. Areas of Law

Area Name	Relevance Score
Patents	90
Patent Priority	80
Pharmaceutical Patents	70
Patent Litigation	60
Administrative Law	30
Civil Procedure	20
Contract Law	10

16. Subjects

Patent Law
Intellectual Property
Civil Procedure