Patent revocation: Practice is not what it seems

03 November 2017

Alban Kang, Tan Hui Leng, Marcus Lim

Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232

In Singapore, the current practice suggests that the High Court has original jurisdiction to revoke a patent. However such a practice is not established at law, rules the Singapore High Court in Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232.

This landmark case is the first time in Singapore that the specific question of whether the High Court may hear revocation proceedings has been directly ruled upon. Justice George Wei clarified that the Singapore High Court in fact has no original jurisdiction to hear revocation proceedings or grant a prayer for revocation regardless of whether it is by way of a counterclaim in infringement proceedings.

"[T]he fact that there is a practice does not provide a basis to establish jurisdiction as a matter of law. Nor can practice trump law." says Justice George Wei.

Background

The Plaintiff is a registered proprietor of a Singapore patent in respect of a power grid system and a method of determining power consumption at building connections in the system ("the Patent"). The Plaintiff commenced an infringement action against the Defendants alleging that some but not all the claims of the Patent were infringed.

The Defendants, by way of a defence, denied the claims and filed a counterclaim against the Plaintiff which included a declaration that all claims of the Patent are invalid and for an order that the Patent be revoked. In response, the Plaintiff sought to strike out the counterclaim.

The Plaintiff asserted that the Defendants could not put in issue any claims of the Patent by way of a counterclaim for revocation. The Plaintiff’s case was that the right to institute revocation proceedings is confined to proceedings by way of an application to the Registrar of Patents (“the Registrar”), and the Defendants could not commence revocation proceedings in the High Court, not even by way of a counterclaim.

The Assistant Registrar denied the striking out application and the Plaintiff appealed to the High Court

The Appeal

On appeal, the Plaintiff argued that revocation proceedings may not be commenced in the High Court at first instance. The Plaintiff submitted that the provisions of the Patents Act indicate that only the Registrar, and not the High Court, may revoke a patent.

The Defendants, on the other hand, argued that revocation proceedings may be brought by way of a counterclaim in infringement proceedings commenced in the High Court. According to the Defendants, provisions of the Patents Act and the existing practice make clear that the High Court may hear revocation proceedings.

The High Court's Decision

Wei J's decision centred around trying to establish the statutory basis of the High Court's jurisdiction to hear revocation proceedings. He noted a Court of Appeal judgment where the Court of Appeal held that the court cannot assume or confer jurisdiction upon itself “regardless of how it may have acted”. Instead, the court’s “jurisdiction is a question of law [to] be determined by reference to the relevant legislation”.

Wei J first concluded that neither the Parliamentary Debates nor the sections of the Patents Act raised by the parties were conclusive on the issue on appeal. He then went on to examine Section 16(1) of the Supreme Court Judicature Act ("the SCJA") which provides for the court’s general civil jurisdiction to hear actions in personam. He then drew a distinction between an action in personam which binds the parties and an action in rem which also affects others not party to the proceedings.

Wei J thus proceeded to examine the conceptual nature of the proceedings and orders in the context of infringement and revocation. He noted that an order of revocation, unlike a finding on infringement, has an effect in rem. In light of the nature of a revocation proceeding and in the absence of any statutory basis conferring original jurisdiction upon the court to hear revocation proceedings, Wei J held that the High Court did not have jurisdiction under section 16(1) of the SCJA to hear patent revocation cases.

Conclusion

Some key takeaways from this landmark case are as follows:

  • Revocation proceedings cannot be heard in the High Court at first instance, whether by way of a counterclaim in infringement proceedings or an application for revocation.
  • The High Court can exercise its appellate jurisdiction to determine questions on revocation from a Registrar's decision under Section 80 of the Patents Act.
  • A declaration of invalidity in connection with proceedings for infringement and groundless threats of suit can be heard in the High Court at first instance.
  • Even if the declaration of invalidity succeeds, until a separate application to the Registrar for revocation succeeds, the patent will remain on the patents register and it is, in theory, possible for the patentee to assert the same patent against another person.

In this regard, unlike in the English Courts, an order for revocation cannot be made in a High Court proceeding where the validity of the patent is being challenged as a defence or counterclaim. The High Court can only make a declaration of invalidity which is an order in personam.

The above does not constitute legal advice and is intended to provide only general information based on the currently available information. Please contact our attorneys if you have any specific queries on the above.

Authors

Kang-Alban

Alban Kang

Partner
Singapore

Call me on: +65 6534 5266
Marcus_Lim_WEB

Marcus Lim

Associate
Singapore

Call me on: +65 6534 5266
Tan Hui Leng

Hui Leng Tan

Patent Attorney
Singapore

Call me on: +65 6534 5266