Singapore Court of Appeal provides guidance on jurisdiction of High Court to revoke patents
30 January 2019
Sunseap Group Pte Ltd & Ors v Sun Electric Pte Ltd [2019] SGCA 4
In the recent decision of Sunseap Group Pte Ltd & Ors v Sun Electric Pte Ltd, the Singapore Court of Appeal considered whether the Singapore High Court had the jurisdiction to hear an application for patent revocation at first instance. In a significant unanimous decision, a five-judge panel in the Court of Appeal provided guidance on the issue and drew a distinction between applications for revocation by way of counterclaim and applications for revocation brought independently of infringement proceedings.
Facts
The respondent patent proprietor alleged that the appellants had infringed eight out of the 12 claims in its patent (the other four claims referred to as the “unasserted claims”). The appellants contended that all the patent’s claims were invalid. The appellants sought a declaration of invalidity and an order that the patent be revoked.
The High Court Assistant Registrar held that the validity of the unasserted claims could not be put in issue by way of defence in infringement proceedings pursuant to section 82(1)(a) of the Patents Act. However, the Assistant Registrar also held that revocation proceedings could be commenced in the High Court by way of counterclaim. The respondent patent proprietor appealed against this second finding.
Appeal before the High Court
When the appeal went before the High Court in Sun Electric Pte Ltd v Sunseap Group Pte Ltd & Ors [2017] SGHC 232, the High Court held that it did not have original jurisdiction over an application to revoke a patent.
The High Court emphasised that jurisdiction was conferred by statute and, in considering the Parliamentary debates surrounding the enactment of the Patents Act, the High Court decided that Parliament had consciously omitted references to the “court” in the provisions governing revocation of patents. In light of such omission, the High Court was of the view that Parliament did not intend for the High Court to have original jurisdiction over an application to revoke a patent.
Accordingly, the High Court allowed the respondent patent proprietor’s appeal and ordered that the defence and counterclaim be amended so as to remove any references to revocation.
Court of Appeal’s decision
On appeal, a five-judge panel of the Court of Appeal reversed the High Court’s decision.
The Court of Appeal disagreed with the High Court’s reasoning with respect to how the provisions of the Patents Act did not confer jurisdiction upon the High Court to hear revocation proceedings. The Court of Appeal clarified that there are two categories of cases where revocation might be at issue.
Applications for revocation by way of counterclaim
The first category of cases involves applications for revocation by way of counterclaim in infringement proceedings. The Court of Appeal concluded that the High Court has original jurisdiction in such cases as the High Court has jurisdiction to hear infringement proceedings under section 67 of the Patents Act. Since invalidity of a patent is a defence to infringement, and the grounds for invalidity are the same as those upon which a patent may be revoked, it follows that a defendant who succeeds in his defence would also have succeeded in establishing that a patent is invalid and should be revoked.
The Court of Appeal highlighted that in such a situation, only the validity of the asserted claims for infringement may be put in issue as part of the counterclaim for invalidity.
As such, the Court of Appeal had to consider the situation where only some of a patent’s claims are alleged to have been infringed. The Court of Appeal considered two scenarios: (1) where all independent claims are found to be invalid; and (2) where some independent claims are found to be invalid.
In the first scenario, the Court of Appeal was of the view that the patent should be revoked by the High Court. In the second scenario, the Court of Appeal was of the view that it would not be appropriate for the High Court to exercise its power of revocation as not all the patent’s claims have been invalidated. The defendant in such a situation would be entitled to a declaration of invalidity in respect of the asserted claims, but should seek revocation of the entire patent (if it wishes to do so) before the Registrar of Patents under section 80 of the Patents Act.
Applications for revocation brought independently of infringement proceedings
The second category of cases involves applications for revocation brought independently of infringement proceedings. The Court of Appeal observed that section 82(1)(d) of the Patents Act states that the validity of a patent may be put in issue in proceedings before the Registrar of Patents under section 80 for revocation of a patent, while section 82(2) of the Patents Act states that the validity of a patent may not be put in issue in any other proceedings. The effect of these provisions is that the Registrar of Patents, not the High Court, has exclusive jurisdiction over this category of cases.
Impact of this Decision
The Court of Appeal’s decision has great significance for parties interested in revoking and defending the validity of a patent.
Patent proprietors planning to initiate infringement proceedings may wish to refrain from asserting infringement of all a patent’s independent claims as doing so will expose the entire patent to revocation before the High Court during infringement proceedings.
A defendant may now be unable to revoke a patent in its entirety during infringement proceedings as only the asserted claims can be the subject of a counterclaim for revocation. If a party wishes to revoke a patent in its entirety, it should pre-empt an infringement action by proactively bringing revocation proceedings before the Registrar of Patents, thereby giving the Registrar of Patents exclusive jurisdiction over the revocation.