Nippon Shinyaku Co v Registrar of Patents: Patent Specification Correction Dispute

Nippon Shinyaku Co, Ltd appealed to the General Division of the High Court of Singapore against the Registrar of Patents' decision to refuse a proposed correction to the specification of a patent application. The court, presided over by Lee Seiu Kin J, heard the appeal on 7 March 2022 and delivered its decision on 14 July 2022, allowing the appeal and permitting the proposed correction. The primary legal issue was whether the Applicant’s proposed correction to Table 7 of the Subject Application should be allowed. The court found that the Registrar, and not IPOS, was the proper party to the present appeal.

1. Case Overview

1.1 Court

General Division of the High Court of the Republic of Singapore

1.2 Outcome

Appeal Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding the Registrar's refusal to correct a patent specification. The court allowed the correction, emphasizing precision in patent registration.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Nippon Shinyaku Co, LtdApplicantCorporationAppeal AllowedWon
Registrar of PatentsRespondentGovernment AgencyAppeal DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Lee Seiu KinJudge of the High CourtYes

4. Counsels

Counsel NameOrganization
Jevon LouisShook Lin & Bok LLP
Tan Jing Han, AlvinShook Lin & Bok LLP
Kang Choon Hwee AlbanBird & Bird ATMD LLP
Oh Pin-PingBird & Bird ATMD LLP

4. Facts

  1. The Applicant filed a patent application in Japan.
  2. The Applicant filed a Patent Cooperation Treaty application.
  3. The PCT Application entered the National Phase in Singapore.
  4. The Applicant discovered an error in Table 7 of the verified English translation of the PCT Application.
  5. The Applicant's patent agent filed Form CM4 requesting to correct the error.
  6. IPOS rejected the request to make the proposed corrections.
  7. The Applicant filed an appeal seeking an order that the Respondent’s decision be reversed in part.

5. Formal Citations

  1. Nippon Shinyaku Co, Ltd v Registrar of Patents, Tribunal Appeal No 24 of 2021, [2022] SGHC 164

6. Timeline

DateEvent
Applicant filed a patent application numbered 2018-089867 in Japan
Applicant filed a Patent Cooperation Treaty application numbered PCT/JP2019/018201
The PCT Application entered the National Phase in Singapore as Singapore Patent Application No 11202011003T
Applicant's patent agent filed Form CM4 requesting to correct an error under Rule 91(1) of the Patents Rules
IPOS issued a final decision rejecting the request to make the proposed corrections
Pre-Trial Conference held
Court heard parties
Court allowed the Applicant’s appeal and allowed the proposed correction

7. Legal Issues

  1. Correction of Errors in Patent Specifications
    • Outcome: The court held that the proposed correction to Table 7 of the PCT would be obvious to the skilled addressee and allowed the appeal.
    • Category: Substantive
    • Sub-Issues:
      • Obviousness of Correction
      • Intention of Applicant
      • Reference to Priority Documents
  2. Proper Party to Appeal
    • Outcome: The court held that the Registrar, and not IPOS, was the proper party to the present appeal.
    • Category: Procedural
    • Sub-Issues:
      • Distinction between IPOS and Registrar
      • Powers of Registrar
      • Interpretation of Statutes

8. Remedies Sought

  1. Reversal of Registrar's Decision
  2. Order allowing the proposed correction to Table 7

9. Cause of Actions

  • Appeal against Registrar's Decision

10. Practice Areas

  • Patent Registration
  • Intellectual Property Litigation

11. Industries

  • Pharmaceuticals

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Axis Law Corp v Intellectual Property Office of SingaporeHigh CourtYes[2016] 4 SLR 554SingaporeCited by the Applicant for the proposition that the proper party to be named as the Respondent in TA 24 is the IPOS, but the court declined to follow the holding in Axis.
Dukhovskoi’s ApplicationsN/AYes[1985] RPC 8United KingdomCited for the two-step test applicable in deciding whether a correction should be made: first, there must clearly be an error, and second, if there is an error, it must be clear that what is now offered is what was originally intended.
Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma CoN/AYes[2018] 3 SLR 1194SingaporeCited to support the statement that Rule 91 of the Patents Rules contains further formalities and substantive conditions that must be fulfilled before a correction request may be granted.
Lonza Biologics Tuas Pte Ltd v Genpharm International IncN/AYes[2014] SGIPOS 9SingaporeCited for the rationale for the strict approach to the correction of patent specifications.
Berg’s PatentN/AYesBL O/235/05United KingdomCited for the principle that it would not be immediately evident to the notional reader that nothing else could have been intended than to file an existing document, namely the priority application, as the specification.
Intermec, Inc’s ApplicationN/AYesBL O/769/18United KingdomCited for the principle that a fully-informed and inquisitive skilled reader would be aware that an application may differ, sometimes significantly, from its priority application.
Rieter/Textile MachinesN/AYes[1996] EPOR 72European Patent OfficeCited for the proposition that regard may be had to a priority document to determine the applicant’s intention when filing a patent application.
Caisse Palette Diffusion/Correction of drawingsN/AYes[1991] EPOR 521European Patent OfficeCited for the principle that where the proposed correction does not involve the replacement of the entire specification, reference can be made to the priority documents in determining whether nothing else other than the proposed correction was intended.
Tragen’s ApplicationN/AYesBL O/096/90United KingdomCited for the principle that if an error was present in a specification, it could be corrected by reference to the priority document, but there was a high evidentiary burden placed on the applicant to show that nothing else other than the proposed correction would have been intended.

13. Applicable Rules

Rule Name
Patents Rules (Cap 221, R 1, 2007 Rev Ed) Rule 91(1)
Patents Rules Rule 91(2)

14. Applicable Statutes

Statute NameJurisdiction
Patents Act 1994Singapore
Patents Act 1994 section 107Singapore
Government Proceedings Act (Cap 121, 1985 Rev Ed) s 19(3)Singapore
Intellectual Property Office of Singapore Act 2001Singapore
Patents Act 1994 section 90Singapore
Patents Act 1994 section 91(2)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent Specification
  • Correction of Errors
  • Priority Document
  • Skilled Addressee
  • Obviousness
  • Registrar of Patents
  • IPOS
  • Dukhovskoi Test
  • Patents Act
  • Patents Rules

15.2 Keywords

  • Patent
  • Specification
  • Correction
  • Registrar
  • Appeal
  • Intellectual Property

17. Areas of Law

Area NameRelevance Score
Patents95
Intellectual Property Law90
Review60
Extension of Validity50

16. Subjects

  • Patent Law
  • Intellectual Property
  • Civil Procedure