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Divergent Paths: The Doctrine on Equivalents in Singapore
and the United Kingdom
Joel Sherard Chow, King's College London

Introduction ("EPC").3 Prior to the 1977 Act, the common

law approach to claim construction was
To determine whether a patent has been traditionally narrow. The House of Lords in
infringed, the scope of the protection accorded EMI v Lissen held that the claims marked the
4
to it must firstly be ascertained based its claims. outer limits of the scope of protection:
Courts around the world have adopted varying
approaches between two opposing extremes - a The function of the claims is to define
strictly literal approach and the use of claims as clearly and with precision the monopoly
guidelines. These have important implications claimed, so that others may know the
on legal certainty, protection for patentees and exact boundaries of the area within
encouraging innovation. which they will be trespassers. Their
primary object is to limit and not to
The apex courts of Singapore and the United extend the monopoly. What is not
Kingdom recently considered this question and claimed is disclaimed. (emphasis own)
adopted diverging approaches. The Singapore
Court of Appeal in Lee Tat Cheng v Maka GPS However, in 1981, the House of Lords in Catnic
Technologies Pte Ltd' ("Lee Tat Cheng") favoured v. Hill and Smiths, applying the 1977 Act, held
a purposive approach while the UK Supreme that claims should be construed 'purposively'.
Court in Actavis UK Ltd v Eli IjY4 ("Actavis")
adopted the doctrine of equivalents, adopted The claimant's claim in Catnic was for a lintel
the doctrine of equivalents. with a 'vertical' backplate (i.e. 90 degrees). The
defendant's lintel had a backplate at an angle
This article seeks to examine the different of 84 degrees, resulting in a marginal 0.6%
approaches adopted by the UK and Singapore reduction in load-bearing capacity. While this
and evaluate their effectiveness in attempting to fell outside the scope of a literal interpretation,
preserve the delicate balance between ensuring the defendant's lintel was found to be infringing
adequate patentee protection and certainty for under a purposive construction of the claimant's
third parties in constructing claims. This article lintel.
will only consider issues of construction and
6
not those concerning prosecution history or Lord Diplock laid out the test as follows:
validity.
whether a person skilled in the art would
The Evolution of Claim Construction pre- have understood that strict compliance
Actavis in the UK with the claim was intended by patentee to
be an essential requirement, such that any
The scope of protection accorded to a patent is variant would fall beyond the scope even
governed by section 125 of the Patents Act 1977 though it could have no material effect on
("UK Patents Act"), which is modelled after the way the invention worked.
Article 69 of the European Patent Convention
3 Section 125(1), UK Patents Act (1977); Convention
on the Grant of European Patents (5 October 1973) ("EPC").
4 (1939) 56 RPC 23, 39.
1 [2018] 1 SLR 856; [2018] SGCA 18. 5 [1982] RPC 183.
2 [2017] UKSC 48. 6 [1982] RPC 183, 243.
As such, construing the patent so narrowly to might have been difficult to overcome."0 As
exclude lintels not at 90 degrees (without making such, the slotted rubber rod did not infringe
the claimant's patent. The first two Improver
any material difference to its function) would
"would render [the] monopoly for practical questions are questions of fact, while the third
purposes worthless, since any imitator could is a question of construction. 1
avoid it and take all the benefit of the invention
by the simple expedient of positioning the back However, the Improver questions proved
plate a degree or two from the exact vertical".7 difficult in their application where construction
of the claims was required to answer the three
questions. This was the case in Ti 'n-Amgen Inc
The purposive approach was further clarified
in Improver v. Remington.8 The case concerned HoechstMaion Rousse Ltd,2 where the claimant's
a patent for an epilator which removed hairs patent related to the production of the
by trapping them in a "coiled helical spring". hormone erythropoietin ("EPO"). The claims
The defendant's device functioned identically within the patent related to production through
except that the spring was replaced by a slotted an "exogenous" DNA sequence. The issue
rubber rod. The device thus fell outside of the before the court was whether the defendant's
literal scope of the claim, however, Hoffmann production of EPO through an "endogenous"
J (as he then was) laid out three questions to DNA sequence fell within the scope of the
determine whether the variant would fall under claims.
a purposive interpretation of the claim: 9
The challenge arose as, prior to applying the
1. Does the variant have a material effect upon Improver questions, the Court had to construe
the way the invention works? If yes, the the claims - determining whether they related
variant is outside the claim. If no? to the discovery of EPO or the method of
creating the hormone. Further, the application
2. Would this (ie that the variant had no of the second question proved difficult in
material effect) have been obvious at the situations where the technology involved was
date of publication of the patent to a reader unknown at the priority date, as the person
skilled in the art? If no, the variant is outside skilled in the art would not know how it worked
the claim. If yes? at all, making a comparison inappropriate.

3. Would the reader skilled in the artnevertheles s Given the difficulties associatedwith the Improver
have understood from the language of the approach, Lord Hoffmann, in applying the
claim that the patentee intended that strict Improver questions, distilled the process down
compliance with the primary meaning was to a single question - "what a person skilled in
an essential requirement of the invention? the art would have understood the patentee to
13
If yes, the variant is outside the claim. have used the language of the claim to mean".

Hoffmann J found that the defendant's device The House of Lords also considered the
did not have a material effect on the way amended Protocol on the Interpretation to
the invention worked, and that this would Article 69 of the EPC in 2000. Article 2 of
be obvious to the person skilled in the art. the Protocol required the Court to take "due
However, on the third questions, he found account" of equivalents. 14 . Lord Hoffmann
that it would be obvious to a person skilled in
the art that the "rubber had problems.. .which 10 [1990] FSR 197.
11 Lee Tat Cheng [31].
12 [2005] RPC 9
7 [1982] RPC 183, 244. 13 [2005] RPC 9, [69].
8 [1990] FSR 181. 14 Article 2, Protocol on the Interpretation of Article
9 [1990] FSR 181, 189; Lee Tat Cheng [30]. 69, EPC.
found that the Protocol "did not expressly Lord Neuberger's second question limits the
lay down any principle for the construction extent of equivalents only to "immaterial
of claims" but rather supported a purposive variants" and thus quells concerns about
interpretation."5 broadening the scope of the monopoly
accorded to patentees. He also found that Lord
Hoffman's Improver questions (as subsequently
The Court also considered the question of
equivalents from American jurisprudence. He considered in Kifin-Amgen) conflated the two
expressed concern that "once the monopoly questions of direct infringement and immaterial
had been allowed to escape from the terms of variants and should be dealt with separately.
the claims, it is not easy to know where its limits The first question would be determined based
should be drawn"' 6 Further, he concluded on normal rules of interpretation, as laid out in
that Article 69 of EPC 2000 "firmly shuts the Wood v CapitaInsurance Services Ltd."'
door on any doctrine which extends protection
outside the claims".' Lord Neuberger further found that the Improver
questions were in need of reformulation as
Actais: The Present Position in the UK they proved unsatisfactory in determining
Twelve years following Ki '-Amget, the Supreme what constituted an immaterial variant. He
found, citing Sir Hugh Laddie, that the central
Court in Actavis considered the case law on inquiry (in accordance with the Protocol on the
claim construction and adopted the doctrine Interpretation of Art 69 EPC 2000) was not
of equivalents. In his leading judgment, Lord interpretation, but determining the scope of
Neuberger placed Art 69 of EPC 2000 front protection accorded to a claim."
and centre. He noted that the Protocol on the
Interpretation of Art 69 bore all the hallmarks A key change was made to the second Improver
of a compromise agreement and that it was "not question which Lord Neuberger considered to
at all clear how far a court is permitted to move impose "too high a burden on the patentee". 3
away from the literal meaning".1 8 However, he This is because they would have to prove that it
considered the approaches of other EPC States would have been obvious to the person skilled
and found that "it is sensible for national courts in the art (the addressee) that the variant had no
at least to learn from each other and to seek material effect on the way the invention worked.
to move towards, rather than away from, each Often, the addressee would find difficulty
other's approaches"' 9. in determining what the patentee intended
without knowing how the patent works - as
was the case in both Ki '-Amgen and Actais.
Lord Neuberger's approach required the
consideration of two issues: (i) does the variant As such, the second question would have to
infringe any of the claims as a matter of be asked assuming that the addressee knows
normal interpretation, and; (ii) does the variant how the variant works, taking into account
4
nonetheless infringe because it varies from developments from the priority date.
the invention in a way or ways which is or are
immaterial? If the answer is yes to either, there Similarly, Lord Neuberger clarified the third
is an infringement.0 question and found that it had to be "properly
applied". Specifically, he found that it was
important to consider whether the addressee
15 [2005] RPC 9, [47]-[49].
16 [2005] RPC 9, [39].
17 [2005] RPC 9, [42]-[44]. 21 [2017] 2 WLR 1095
18 [2005] RPC 9, [31],[33]. 22 Laddie, H. 'KGn-Amgen - The End of Equivalents in
19 SchutZ (UK) Ltd v Went (UK) Ltd [2013] Bus LR 565; England?' (2009) 40 1IC 3, [68].
[2013] RPC 16, [40]. 23 Acaus, [61].
20 Actavs, [54]. 24 Actau, [63].
would find that the component was an essential disregard the "clear and unambiguous words of
part of the invention (as opposed to the larger the claim". 2
product or process of which the inventive
concept is part). However, the Court of Appeal firmly closed
the door on the doctrine of equivalents
Thus, the reformulated Protocol questions are in Lee Tat Cheng, and laid out several key
thus: reasons for rejecting the Actavis approach.
Primarily, the Court found that as a matter of
1. Notwithstanding that it is not within the statutory interpretation, the Protocol on the
literal meaning of the relevant claim(s) Interpretation of Art 69 and the EPC did not
of the patent, does the variant achieve apply. The statutory regime made it clear that
substantially the same result in substantially patent protection would be determined by the
the same way as the invention, i.e. the claims. Any departure from this approach could
inventive concept revealed by the patent? thus only be made through Parliament. Further,
the Court found that a purposive approach
2. Would it be obvious to the person skilled favoured certainty for third parties, given that
in the art, reading the patent at the priority the assessment would be made at the priority
date, but knowing that the variant achieves date, rather than at the date of infringement.
substantially the same result as the invention, The Court found that this approach was needed
that it does so in substantially the same way to "provide a reasonable degree of certainty
as the invention? to third parties" who rely on patent claims as
28
delimiting the scope of patent protection.
3. Would such a reader of the patent have The Court also found that the doctrine of
concluded that the patentee nonetheless equivalents would give rise to undue certainty
intended that strict compliance with the given the limits of the claims are unclear and
literal meaning of the relevant claim(s) of the assessment would be made expostfacto. 29
the patent was an essential requirement of
the invention? Analysis of the Actavis and Lee Tat Chen
approaches
The Development of Claim Construction in
Singapore A question of statutory interpretation?

Construction of patents in Singapore is It is clear that the statutory regimes in the UK

governed by section 113 of the Patents Act, and Singapore formed the basis of the differing
which is in pani mater/a to section 125(l) the approaches. In Actavis, Lord Neuberger was
UK Patents Act.25 It is thus no surprise that bound to give effect to Art 69 EPC 2000 and
the Singapore Court of Appeal has endorsed considered European jurisprudence heavily in
the purposive approach in various judgments, arguing for a more unified approach. Similarly,
affirming the Improver/Catnicline of cases. 26 the Court of Appeal Lee Tat Cheng held that
the text of section 113, read with section 25(5)
While the Court never explicitly rejected the (a) of the Patents Act differed substantially
doctrine of equivalents, it did so implicitly in Bean from Art 69 EPC 2000 and its Protocol on
Innovations v Flexon, where the Court declined to Interpretation. As such, the Court of Appeal

27 Bean Innovations Pte Ltd v Flexon (Pte) Ltd [2001] 2

25 Cap 221, 2005 Rev Ed (Sing). SLR(R) 116; B. Ching, "Retaining the Catnic/ImproverApproach
26 FE GlobalElectronicsPte Ltd v Trek Technology (Singapore) in Patent Law: Whj Singapore Should Not Adopt the Doctrine of
Pte Ltd [2006] 1 SLR(R) 874, [14]; First Curreng Choice v Main- Equivalent' (2018) 30 SAcLJ 871, 884.
Line Corporate Holdings Ltd [2008] 1 SLR(R) 335, [25]; Bean 28 Lee Tat Cheng [52].
InnovationsPte Ltd v Flexon (Pte)Ltd [2001] 2 SLR(R) 116, [19]. 29 Lee Tat Cheng [53].
 rightly held in Lee Tat Cheng that the question of at the priority date the full breadth of
whether equivalents should apply would be one the possible applications could or has
for Parliament to consider. not been fully recognised and therefore
was not sufficiently taken into account
The differing approaches thus appear to be when drafting a claim.
consistent with their respective statutory
regimes, which have diverged with the adoption The author argues that this approach
of the Protocol on the Interpretation of Art 69 would encourage innovation, research and
EPC 2000. development, particularly in developing areas
of pharmaceutical products and technology
Extent of the notional addressee's knowledge and would not conflict with the statutory
in construing the claims regime. One of Singapore's key goals is to be a
regional IP hub and as noted by Senior Minister
One key development in Actavis was Lord of State Indranee Rajah in Parliament, speaking
31
Neuberger's departure from construing claims on amendments to the Patents Act:
by the notional addressee at the priority date.
This was in response to challenges in particular Enterprises need to be able to
fact scenarios (such as in Actamis and Kibn- effectively protect and commercialise
Amgen) where an understanding of how an their intellectual property (IP) to
invention worked was required before the claims preserve their competitive edge. The
could be construed. As noted by Floyd LJ in the Committee on the Future Economy
English Court of Appeal judgment in Actavis, (CFE) recognised this when it stated
"predicting in advance whether any particular that a strong IP ecosystem is needed
counter-ion would work was not possible, and to support innovation and technology
therefore that the second Improvertest could not adoption.
3
be answered yes". 0
The Court of Appeal in Lee Tat Cheng found As such, it is the author's view that even when
considering a purposive approach, Courts
that an ex post facto analysis involving the state should consider the developing scientific
of developing scientific knowledge at the date knowledge at the date of infringement, rather
of infringement would have a "material impact than considering the claims solely at the priority
on the protection afforded to the patentee" date. This is unlikely to affect the vast majority
and thus would give rise to undue uncertainty. of claims and does not significantly broaden
However, it is the author's view that such the scope of protection beyond the claims
concerns are overstated given the importance of themselves. Imbuing the notional addressee
according fair protection in new and developing with such knowledge does not ipso facto mean
fields. Lord Neuberger addressed this concern that the second Protocol question would be
in Actais, where he noted with approval the answered in the affirmative - the key question
extrajudicial writings of Judge Kalden, who would be one of foreseeability. As noted by
3
argued that: Lord Neuberger:

Variants that are not foreseeable at while the notional addressee may answer
the priority date may well, due to later the reformulated second question
developments, become an obvious affirmatively even where the variant was
variant at a later date. This may happen unforeseeable at the priority date, he is
in case of a pioneer invention, where
31 Par/amentatj Debates Singapore: Offidal Report vo194 (28
February 2017) (Indranee Rajah)
84 30 Acavis, [61]. 32 Acta s, [63].
 less likely to do so than in relation to
a variant which was unforeseeable as at
that date.

It is evident that the Court intended this to be

a narrow category and, as such, is unlikely to
significantly impact the question of certainty
for third-parties.

Conclusion

The decisions in Actavis and Lee Tat Cheng

demonstrate two different approaches that are
in conformity with their respective statutory
regimes. However, the Actavis approach
to 'interpretation' does include welcome
improvements, most notably in the form of
the revised second Protocol question. This
approach would not substantially depart from
the purposive approach espoused by the Court
of Appeal, but it remains to be seen whether
construing the claims by a notional addressee
with the knowledge at the date of infringement
would be a step too far for the Singapore courts.