JURISDICTION REPORT: SINGAPORE
PATENT RESTORATION: STANDARD OF REASONABLE CARE
Ameen Kalani
Henry Goh (S) Pte Ltd
In a hearing before the Singapore Registrar of Patents in 2009, Advanced Systems Automation Ltd. filed applications for restoration of its 12 patents between 10 and 29 months aſter the patent renewal due dates.
Te evidence filed by the proprietor in support of the applications for restoration was that the patent renewal due dates coincided with an unanticipated downturn in the global electronics market, which was beyond its control. Its patents had lapsed not due to a lack of vigilance, but because the company was not in a position to renew its patents due to lack of financial resources.
Reference was made to Section 39(5) of the Singapore Patents Act, which requires the patentee to show reasonable care to ensure that any renewal fee is paid within the prescribed period or that the fee and any prescribed additional fees are paid within the six months immediately following the end of that period. Te registrar referred to the comment of Judge Aldous in the Continental Manufacturing & Sales Inc’s Patent case and distilled a three-pronged test as follows:
1. Was the proprietor able to pay the prescribed fees within the prescribed times?
2. Did the proprietor want to pay the prescribed fees within the prescribed times?
3. Did the proprietor take reasonable care to ensure that it was in a position to pay the due fees in due time?
On the first question, the registrar noted that the proprietor had the financial means to renew its Chinese patent, which cost about 44 percent of the total cost to renew all 12 Singapore patents in its portfolio. Reference was also made to the comment of Judge Aldous in Ament’s Application that “a patentee who merely establishes inability to pay does not establish that he has taken reasonable care to see that the fee is paid”. Te query was raised whether it was in fact impossible to divert partial funds to pay the renewal fees, which could be paid over 19 months.
On the second question, it was inferred that the proprietor saw the matter of the renewal of the 12 patents as something it would attend to when it had the appropriate funds to do so. Te proprietor seemed to have adopted a policy of ‘we must get the money so that we can restore our patents’ instead of ‘we must get the money so that we can renew our patents’.
On the final question of the three-pronged test, it was found that the proprietor had previously engaged the services of a patent agency firm to monitor the patent renewal due dates and to attend to payment of the renewal fees. Aſter the voluntary discharge of its patent agency firm, the proprietor had compiled a status report of its patents portfolio to assist in
66 World Intellectual Property Review May/June 2010
“ THE EVIDENCE FILED BY THE PROPRIETOR IN SUPPORT OF THE APPLICATIONS FOR RESTORATION WAS THAT THE PATENT RENEWAL DUE DATES COINCIDED WITH AN UNANTICIPATED DOWNTURN IN THE GLOBAL ELECTRONICS MARKET, WHICH WAS BEYOND ITS CONTROL”
its management. However, the status report included only nine of the 12 patents in the portfolio and the proprietor did not take action to update its address for service aſter the voluntary discharge of its patent agency firm due to lack of funds, although the total cost to update the 12 patents would have amounted to approximately $100. Te proprietor was found not to have demonstrated reasonable care to ensure that it could pay the renewal fees in due time.
Te decision of G. J. Rose’Meyer in the UK Patent Office case Burnstein Technologies, Inc & Nagaoka Co. Ltd was cited as further support by the registrar: “It appears Mr. Burnstein’s approach with regards to the patents portfolio was to secure whatever finance he could, whenever he could and then review the status of the patents portfolio to see which could be salvaged within whatever timeframe the financial rescue package happened to allow. Tis cannot in my view be regarded as reasonable care of the patents in the portfolio in general and certainly not of the patent in suit. To allow potential renewal of his patents to the chance of an unspecified and uncontrollable timeframe is not by any standards, reasonable.”
Te accepted commercial practice of attempting to obtain funds first and leaving the renewal and restoration until there are funds available was viewed as not meeting the requirements of Section 39(5) of the Singapore Patents Act. Advanced Systems Automation Ltd. failed in its action to restore its patents.
Ameen Kalani is a director at Henry Goh (S) Pte Ltd. He can be contacted at:
henryspl@singnet.com.sg or
hgoh_sg@henrygoh.com
www.worldipreview.com
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