In recent years, there has been an increase in patent litigation in Singapore contributed by the speed and quality of decisions, relatively low costs and transparency in the legal system. Since the enactment of the Singapore Patents Act in 1995, patent law and enforcement has grown in strength. It has to be noted that since the patent registration system in Singapore is largely a self-assessing system and the fact that no opposition is allowed during the prosecution of a patent application in Singapore, the patent litigation scene in Singapore differs from other jurisdictions.
Patent litigation in Singapore covers mainly patent revocation and patent infringement as well as ancillary issues such as counterclaims for declarations of non-infringement, groundless threat of infringement and a common pre-enforcement course of action being a notice of cease and desist. Alternative dispute resolution avenues include mediation and arbitration.
Specifically in Singapore, revocation proceedings may be initiated only at the Patent Office, i.e. the Intellectual Property Office of Singapore (IPOS). Revocation proceedings as a defence against an infringement suit may, however, be carried out of the High Court. Judges and Registrars are often guided by expert witnesses, and it is crucial that parties choose a person skilled in the art, from industry or academia, who is able to provide useful assistance to the tribunal. In proceedings before the Intellectual Property Office of Singapore (IPOS) such as pure validity proceedings, both lawyers and patent agents are able to represent the parties. In proceedings before the High Court, i.e. all invalidation or infringement matters, only lawyers are able to represent the parties.
Grounds of Revocation
The ground of revocation of the patent in Singapore is spelled out under Section 80 (1) of the Patents Act, where any person can apply to revoke patents on (among other things) the following grounds: The invention is not a patentable patent, i.e. the patent lacks novelty, inventive step or industrial applicability;
The patent was granted to a person not entitled to be granted that patent;
The specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
The matter disclosed in the specification of the granted patent is broader than that disclosed and filed in the patent application;
The protection conferred by the patent has been extended by an amendment which should not have been allowed;
The patent was fraudulently obtained or obtained under a misrepresentation; or
The applicant failed to inform the Registrar of the details of corresponding international applications or provided false information.
Further, the Registrar of IPOS, on his own initiative by order, has the power to revoke a patent if the subject matter invention of the said patent forms part of the state of the art by virtue of: being disclosed in another patent as filed and published; or having an earlier priority date in another patent as filed and published.
In this instance as provided in Section 81 of the Patents Act, it is the duty of the Registrar to provide the patentee an opportunity of making any observation and/or amending the specification of the patent to exclude subject matter that forms part of the state of the art.
It has to be noted that since the patent registration system in Singapore is largely a self-assessing system and a patent applicant will not be prevented from paying the grant fee even if the examination report is unfavourable, patents granted may be weak, and may be vulnerable to revocation. Therefore, it would be prudent for applicants to consider Examiner’s report, and to take corrective steps to amend the claims if the report is adverse, in order to obtain a fairly strong patent against revocation.
Procedure & Timeline
Any interested party may commence revocation proceedings before the Intellectual Property Office of Singapore (IPOS) Office. Alternatively, validity of a patent may be put in issue in the following scenarios:
by way of defence or counterclaim in an infringement action in the High Court; in proceedings for remedy for groundless threats of an infringement action and declaration as to non-infringement.
Details of the procedure and timelines of patent revocation in Singapore are summarized in the following flowchart.