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Singapore – The Dilemma Of Correction Versus Amendment In Patent Applications.

2 September, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

You can either make changes to a Singapore patent specification via a correction or an amendment. As any made correction or amendment which should not have been allowed is a ground of revocation, it is important to know what requirements govern these two different actions.


The correction of error in a Singapore patent specification is allowed only if the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction. This requirement has at times befuddled practitioners. A recent IPOS Patent Office decision in Application For Correction Of A Patent By Genpharm International Inc. And Objection Thereto By Lonza Biologics Tuas Pte Ltd lends some clarity to this matter.


In the decision, the assistant registrar applied a two-step test:


(a) Is it clear there is an error? The assistant registrar puts little weight in citing supporting documents to establish this. If it were necessary to rely upon extraneous material in order to establish an error, then such an error could not be considered clear. Instead, what must be established is what the skilled person would have considered taking all the circumstances and the disclosure in the patent specifications as filed.


(b) Is it clear that what is now offered is what was originally intended? Expert evidence showed that there were two feasible conclusions. As there were two possible corrections, the assistant registrar did not allow the correction as it was not immediately evident that nothing else would have been intended than what is offered as the correction. The requirement is a strict one, and relevant consideration is not made on balance of probabilities nor indeed whether the correction is likely to be what the drafter intended.


The Examination Guidelines for Patent Applications at IPOS provides further guidance. In cases where it is not readily apparent what the correction should be, there is no restriction on the person skilled in the art having regard to other documents in order to determine what was intended. This can include other documents filed with the application, such as the foreign language application in the case of a translated document and the priority document.


Once corrected, a document is deemed always to have been in the state in which it is after the correction. Furthermore, corrections are not subject to the same “added matter” considerations that apply to amendments. Therefore, corrections can potentially result in the specification disclosing added matter or the protection conferred by the claims being extended.


Due to these implications, a correction will be subject to the scrutiny of the two-step test in determining its allowability. As such, an amendment may be the appropriate course of action if the change involves adding missing information which can be ascertained from the patent specification as filed (that is, no additional matter results from the amendment).

 

ATMD Bird & Bird

 

For further information, please contact:

 

Howard Yap, ATMD Bird & Bird

howard.yap@twobirds.com

 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

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