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Singapore Court of Appeal Clarifies Stance on Entitlement to Patent Ownership

The recent decision of the Singapore Court of Appeal in Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd [2018] SGCA 52 provides much needed clarity on the laws concerning entitlement to patent ownership. The Plaintiff, the National University Hospital (“NUH”), had worked with a software development company, Cicada Cube (“Cicada”), to develop a system which facilitated the automated ordering and collection of patient specimens for laboratory analysis. Cicada filed and obtained a patent over the invention, naming itself as the sole proprietor. NUH challenged Cicada’s entitlement to the patent through a reference to the Patent Registrar and, subsequently, to the High Court.

Discussed in this article are the findings of the Court of Appeal with regard to the two key elements of the dispute, followed by a summary of key take-aways.

Entitlement to Patent Ownership

The key factors which the Court of Appeal took into account in determining which party was entitled to the patent were two-fold: first, it was necessary to identify what the inventive concepts of the patent were; secondly, in order to determine inventorship, to assess who had devised each inventive concept.

Two inventive concepts were identified. The first, that of linking the ordering of tests and the taking of specimens, was held to have been devised by Dr. Sethi (from NUH). This was separate from any contribution by the employees of Cicada.  However, in relation to the second inventive concept, the specification for taking types, quantities or amounts of specimens, the Court held that NUH had not submitted sufficient evidence to show that Dr. Ratty and Dr. Poo (from Cicada) did not devise the concept.

This led to the High Court’s decision to name Dr. Sethi, Dr. Ratty and Dr. Poo as joint inventors, and accordingly, for their employers NUH and Cicada to be named as joint proprietors of the patent. This finding was affirmed by the Court of Appeal on appeal by both parties.

The Court of Appeal observed that ‘at all material times, Dr. Ratty, Dr. Poo and Dr.Sethi were clearly the main drivers of the project leading to the Invention’. The Court considered three co-authored articles depicting the doctors’ collaboration on the project as ‘compelling evidence’ of their joint responsibility for formulating the inventive concepts. The Court concluded that the development of the inventive concepts required ‘substantial cross-pollination of ideas from two different sectors’ – the healthcare sector (Dr. Sethi from NUH) and the software sector (Drs. Ratty and Poo from Cicada).

Procedure for Claiming Entitlement

Where the Court of Appeal did diverge from the High Court’s decision was in setting out the correct procedure for a party challenging a proprietor’s entitlement to a patent after it had been granted. The controversy lay in the interpretation of s 47 of the Patents Act (Cap. 221) (the “Act”).

Section 47(1) of the Act provides that any person having or claiming a proprietary interest in a patent may refer the question of entitlement to the Registrar for determination. Under s 47(8), the Registrar may decline to deal with the reference if it appears to him that the question of entitlement would more properly be determined by the court. In such a situation, the court shall have jurisdiction to determine it. However, s 47(9) qualifies this to the extent that the court shall not determine the question if the proceedings in which the court’s jurisdiction is invoked were commenced more than two years after the date of grant of the patent. This prohibition does not apply if the registered proprietor knew, at the time of the grant, that he was not entitled to the patent. Section 47(6) contains a similar two-year limitation period as s 47(9) in relation to references to the Registrar.

NUH had submitted a reference to the Patent Registrar (under s 47(1)) to challenge Cicada’s entitlement to the patent on 27 July 2012, just shy of two years from the date the patent was granted. About two and a half years later, on 18 February 2015, the Registrar declined to determine the reference on the basis that it would be more properly decided by the court. NUH then commenced proceedings in the High Court.

Before the High Court, Cicada argued that NUH had commenced the High Court proceedings more than two years after the grant of patent; and accordingly, the High Court application was time-barred under s 47(9). The Judge disagreed, holding that the ‘proceedings in which the jurisdiction is invoked’ referred to in s 47(9), related to the reference submitted to the Registrar. As the reference was made before the expiry of two years from the date of grant, the application was held not to be time-barred.

The Court of Appeal disagreed with the reasoning of the High Court Judge. It held that the phrase ‘proceedings in which the jurisdiction is invoked’ under s 47(9) referred to the High Court proceedings. The Court took into account, among other things, the fact that the High Court and Patents Registrar have concurrent jurisdiction under the Act to determine questions of entitlement, i.e. an applicant may apply to either the Registrar or High Court to make determinations of entitlement. The court found support for its interpretation in s 47(8), which provides that the court’s jurisdiction to determine questions of entitlement, where the Registrar declines to hear a reference, is ‘without prejudice to the court’s jurisdiction to determine any such question and make a declaration’.

Given that the High Court’s jurisdiction was invoked by applying directly to the High Court, and not by way of reference through the Registrar, it was clear that the computation the two-year period under s 47(9) should be done from the date which the NUH commenced the High Court action. Accordingly, as the High Court action was commenced more than two years after the date of grant, NUH’s application would normally be time-barred, unless it could be shown that the registered proprietor (Cicada) knew, at the time of the grant, that it was not entitled to the patent. On the facts, the Court of Appeal held that this was so. Cicada was found to be clearly aware at the time of grant that they were not entitled to sole ownership due to the fact that Dr. Sethi, Dr. Ratty and Dr. Poo had closely collaborated on the project.  As such, the NUH was held not to be time-barred from seeking a declaration of entitlement from the High Court.

Take-aways

This case presents useful guidance on the law on post-grant challenges to patent entitlement and its related litigation strategy.

An applicant seeking a declaration of entitlement may opt to either: (1) directly apply to the High Court, or (2) file a reference to the Registrar.

For both options, the applicant must file the application with the High Court or the Registrar within 2 years of the grant of the patent. If he fails to do so, his application will be time-barred unless he can prove that the proprietor knew at the time of grant that he was not entitled to the patent.

Filing a reference with the registrar is likely to be cheaper in terms of litigation costs. However, where the applicant files a reference with the Registrar, he must be mindful of the two-year time limit. If the two-year mark is approaching and the Registrar has not declined to hear the reference or made a determination, it would be prudent to withdraw the reference and commence High Court proceedings. Otherwise, if the Registrar declines the reference after the 2-year mark (as it did in this case), the applicant may find himself without remedy as any application to the High Court would be time-barred unless he can prove that the proprietor had knowledge that he was not entitled to the patent at the time of grant.

By Denise Mirandah and Chow Jian Hong

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