The Singapore Court of Appeal clarifies that courts can preside over patent revocation proceedings in certain situations

Date: 2019-02-18
Author: Desmond Tan

A Singapore High Court decision in 2017 had ruled that courts were fettered in relation to ruling on patent revocation proceedings. That is no longer the case as the Court of Appeal has recently clarified situations whereby the Singapore Courts can preside over patent revocation proceedings. In the course of providing clarity in this regard, the Court of Appeal also provided guidelines to third parties seeking to threaten patent revocation actions.  

Background

The High Court in Singapore ruled in 2017, specifically during Sun Electric Pte Ltd v Sunseap Group Pte Ltd and Others [2017] SGHC 232, that the Singapore Courts did not have jurisdiction to preside over patent revocation proceedings. This was a controversial decision which threw doubt on the validity of numerous patent revocation proceedings which were ruled on by the Singapore Courts since the Singapore Patents Act (SPA) was established in 1995.

Given the uncertainty brought about by the aforementioned ruling, findings by the Court of Appeal resulting from an appeal of the aforementioned decision were eagerly anticipated. There would be significant consequences in closing certain avenues to contest the validity of a patent in Singapore but this has not eventuated. In addition, much-desired clarity has been achieved in relation to prior revocation decisions ruled by the Singapore Courts.

What was the ruling of the court of appeal?

The ruling of the Court of Appeal was favourable in relation to how certain provisions in the SPA are interpreted from now on. During the course of their deliberations, the Court of Appeal made reference to both Section 67(1) and Section 82(1)(a) of the SPA, as reproduced below:

“67(1) - Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made:

(a) for an injunction restraining the defendant from any apprehended act of infringement;

(b) for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised or any material and implement the predominant use of which has been in the creation of the infringing product;

(c) for damages in respect of the infringement;

(d) for an account of the profits derived by him from the infringement; and

(e) for a declaration that the patent is valid and has been infringed by him.

82(1) – Subject to this section, the validity of a patent may be put in issue:

(a) by way of defence, in proceedings for infringement of the patent under section 67 or proceedings under section 76 for infringement of rights conferred by the publication of an application;...”

In view of the circumstances that infringement proceedings were commenced by the patent owner in the High Court, the Court of Appeal ruled that, even though Section 80(1) of the SPA defines that only the “Registrar” is able to revoke a patent, Section 91(1) of the SPA provides basis for the High Court to be empowered to determine validity of the patent. Both pertinent Sections are also reproduced below:

“80. - (1) Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds:……

 91. - (1) The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question.”

Therefore, the Court of Appeal concluded that once the High Court reaches a decision that a patent is invalid, it then has the mandate to revoke the patent.

Further guidance provided by the court of appeal

The Court of Appeal also provided comments on whether the Courts are able to deal with revocation proceedings per se. They provided guidance in relation to how revocation actions should be initiated before the Registrar, as the Courts are unable to rule on revocation per se.

What does this mean for you?

Revoking a patent belonging to a third party competing in the same commercial space has often been a desired course of action in order to seek a commercial advantage. Based on the aforementioned further guidance provided by the Court of Appeal, it would be necessary for the revocation action to be initiated with the Registrar (that is, IPOS) rather than to directly “sue” the third party in the courts. However, there may be a perception that initiating an action at IPOS is less damaging to a business compared to a legal suit filed at the Courts, so the initiation of an action at IPOS may not be most effective.  

An alternative would be to carry out a validity assessment of the patent belonging to the third party. If the validity of the patent is deemed to be questionable, depending on the circumstances, it may be advantageous to induce the third party to initiate infringement proceedings at the Courts, whereby it would then be possible to initiate a revocation action against the patent as a defence, which can also result in the revocation of the patent.

It should be appreciated that the most desirable course of action would be highly dependent on circumstances which in turn would have a significant effect on costs. If you have any questions in this regard, please contact the author.