NEW DEVELOPMENTS IN SINGAPORE PATENT LAW

Singapore has seen its first major patent case in a while with the judgment in Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Other Suits [2005] SGHC 90. The High Court here considered a patent infringement case and commented on various aspects of patent law which given the dearth of local authority on the subject was a welcome development.

Facts

Trek is a Singapore incorporated company which claimed the invention of a mass storage device designed to be as portable and compact as the conventionally known floppy disk or CD-ROM storage media. This portable device called a ThumbDrive is capable of being inserted into any universal serial bus (“USB”) socket in a computer and become fully integrated with the same. This was heralded as a “groundbreaking product” and a new solution over existing conventional data storage devices.

Trek filed a patent application in Singapore on 21-02-2002 and a week later launched the device at the CeBIT 2000 exhibition in Germany. Thereafter patent applications were filed in over 30 countries and patents were granted in UK, New Zealand and South Africa.

Based on its Singapore patent (“the Patent”), Trek proceeded to sue M-Systems, an Israeli company which manufactured a portable data storage device that is known as “Disk On Key” (“DOK”) and “Diskey”, as well as Electec and FE Global who were respectively the exclusive importers and exclusive distributors in Singapore. M-Systems in turn sued Trek for threatened patent infringement.

Trek also sued Ritronics who manufactured and sold another form of data storage device known as “Slim Disk” (“SD”) and BioSlimDisk (“BSD”).

Trek’s claim was that the Patent was being infringed while the defendants challenged the validity of the Patent and alleged that misrepresentations had been made to the Registrar of Patents over the issue of inventorship and ownership.

Patent Specifications

The first issue raised was whether the specifications in the Patent disclosed the need for a cable either captive or detachable connecting the device to the computer. This was the contention of the defendants who argued that the device for coupling the data storage device and the USB socket in the computer was either a detachable or captive cable.

The court reviewed the specifications, rejected the defendants contention and held that a skilled addressee would take it that the Patent discloses a unitary data storage device with an integrated USB plug to enable connection to the USB socket of the computer and a purposive construction of Claim 1 disclosed a portable storage device without a cable.

Infringement

The court reviewed the DOK and Diskey devices and held it was infringing as M-Systems did not deny that the DOK and Diskey contains each and every element of the claims of the Patent. This task was not difficult for the judge as in the answers to the interrogatories (which are pre-trial questions put to an opposing party) the elements that were in the Diskey were revealed.

As to the SD and BSD devices, they were also held to contain every element of the Patent based on the answers to the interrogatories and testimony at trial.

Infringing acts committed

On the issue of the different categories of infringement committed, the court found that M-Systems sold the Diskey to Electec who then supplied it to FE Global and therefore there was importation and disposal of their product in Singapore, which is an infringing act.

However the interesting aspect of the court’s decision is that it found that M-Systems had disposed off the Diskey product in Singapore by offering the same on its website. The court rejected the defendants argument that promotion of products on the website is not an offer to sell in Singapore. This is as both the M-Systems and FE Global websites have “Singapore” on its list of countries where DOK is sold.

Therefore it appears that the position is now clear that offering of products on the web especially when they are stated to be available in the jurisdiction will constitute an offer to sell.

The other two interesting aspects here are the torts of conspiracy and joint tortfeasorship in respect of infringement. As to the allegation of conspiracy, the court rejected Trek’s claim that there was a conspiracy to infringe the Patent, as it held that a party will only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an understanding to carry out acts of infringement. The mere fact that M-Systems gave indemnities to FE Global and Electec was not sufficient for the court to infer that inducement had taken place to constitute acts of patent infringement, as the threshold of proving conspiracy is high.

On the claim of joint tortfeasorship against M-Systems and the two defendants on grounds that the acts of infringement were carried out in “furtherance of a common design”, the court followed the English decision of Morton-Norwich Products Inc v Intercen Limited [1975] RPC 501 where it held that two persons who agree on a common course of action and commit a tort would be joint tortfeasors. The court looked at the relationship of the parties especially the indemnity given by M-Systems and held there was a common design to infringe the Patent.

Amendment of the Patent

During the court proceedings Trek sought to amend the Patent in order to claim and clarify the true nature or extent of the ThumbDrive invention. The court confirmed that it had the power to amend under the Patents Act provided there is no disclosure of additional matter or the protection conferred by the patent is not extended.

In order to ascertain whether additional matter is disclosed by the amendment, the court adopted the three-step test as formulated by the English courts in Bonzel v Intervention Limited (No 3) [1991] RPC 553 at 574 which is:

To ascertain through the eyes of a skilled addressee what is disclosed, both explicitly or implicitly, in the application;:To do the same in respect of the patent granted; andTo compare the two disclosures and decide whether any subject matter relevant to the invention has been added by the proposed deletion or addition.

The court found that as viewed by the skilled addressee there was no disclosure of additional matter or extension of protection by the amendments sought and furthermore the amendments were supported by the existing specifications.

As to the defendants objections to the amendments on the grounds that if a disclosure teaches the use of a broad class of elements, a specific element within that class cannot be claimed, the same was rejected by the court as the proposed amendments limit the scope of the Patent as filed.

Discretion

A crucial part of the decision was the court’s review of the issue relating to the scope of discretion that is to be exercised in determining whether amendments should be allowed. The scope was set out in the English case of Smith Kline & French Laboratories v Evans Medical Limited [1989] FSR 561:

Whether the patentee has disclosed all relevant information with regards to the amendments;Whether the amendments are permitted in accordance with the statutory requirements;Whether the patentee delayed in seeking the amendments(and if so ,whether there were reasonable grounds for such delay);Whether the patentee had sought to obtain unfair advantage from the patent;Whether the conduct of the patentee discourages the amendment of the patent.

The court held that the basis for taking the approach in Smith Kline as above would be “anachronistic and out of step with a modern law of patents” following the recent English decision in Instance v CCL Labels Inc [2002] FSR 27. The court felt that in whether or not discretion should be exercised in favour of granting an amendment judicial attitudes would be shifting towards scrutiny of the conduct and motives of the patentee. The court approved the English decision of Mabbuchi Motor KK’s Patents [1996] RPC 387 which took the view that the overriding principle would be whether there was “grave misconduct by the patentee” or “bad faith (or fraud or dishonesty or insincerity)” and whether there was an effect on the public. The court also accepted that the approach of the courts in applying its discretion has “become more lenient” as stated by the editors of the CIPA Guide (2001 edition).

Defences

There were two substantive defences raised by the defendants:

(a) the lack of novelty and inventiveness of the invention as expressed in the patent;
(b) misrepresentation concerning inventorship, and/or ownership of the Patent.

Novelty and Inventive Step

On the lack of novelty the court perused the prior art documents and found that the prior art did not disclose an integrated mass storage device with an integrated plug. This is as the entire subject matter of the Patent comprises a portable mass storage device with an integrated USB plug that directly plugs into the USB socket of a computer without a cable connection. Therefore, there was no lack of novelty.

As to inventive step, the court applied the Windsurfing test and held that the prior art did not lead the skilled addressee to view an integrated device as the obvious next step in the technology. The court went on to hold that the findings of novelty and inventive step were fortified by the accolades and commercial success enjoyed by the invention.

Misrepresentation

The Patents Act in Singapore provides for revocation in the event the patent was obtained on a misrepresentation. In respect of this the court held that the onus was on the defendants to show that the misrepresentation must have actually deceived the registrar into granting the Patent.

In this case, there were some material errors such as a co-inventor’s name being omitted from the application, which were subsequently corrected and therefore the court held that the errors did not materially contribute to the decision whether or not to grant the Patent.

Conclusion

The Singapore courts have therefore clarified the position on various matters by approving and adopting the current English authorities on various aspects of patent law including matters such as adopting a liberal approach to the amendment of claims, sale by website dissemination and joint tortfeasorship.