Singapore: Attack On Inventorship

August 19th, 2013

 

In the case of Energenics Pte. Ltd. v Musse Singapore Pte. Ltd. and Another, the High Court of Singapore rejected Energenics Pte. Ltd.’s application to reintroduce the issue of one Mansel’s inventorship of the invention, while accepting the Musse Singapore Pte. Ltd. and Another’s application to strike out the same.

Musse Singapore Pte. Ltd. and Another (hereinafter referred to as “the Defendants”) filed a Singapore patent application in 2009 (hereinafter referred to as “the Patent Application”) with the following inventors named, Mr. Mark Pilgrim; Mr. Paul Hitchcock; Mr. Wayne Pearce; and Mr. Ronen Hazarika (hereinafter referred to as “the Named Inventors”). The Defendants stated that the Named Inventors had assigned their individual rights in the invention to the Defendants.

Energenics Pte. Ltd. (hereinafter referred to as “the Plaintiff”) claimed that its then-employee, Mr. Ronen Hazarika, had contributed to the inventive concept of the invention in the course of his duties while he was under the Plaintiff’s employment, and that as such, the Plaintiff had ownership rights in the invention. The Plaintiff further claimed that Mr. Mansel, who had contributed towards the inventive concept of the invention, had assigned all rights and interest in the invention to the Plaintiff by way of a Deed of Assignment.

The Defendants had denied both these claims. Although Mr. Mansel withdrew the Inventorship Application by way of letter to the Singapore Registry of Patents, the Plaintiff s continued to seek its legal rights to the invention and to the Patent Application. The Plaintiff had applied to reintroduce the issue of Mr. Mansel’s inventorship of the Invention, while the Defendants’ application sought to strike out the same.

 

The Defendants argued that inventorship was not assignable under the law, and therefore that Mr. Mansel’s inventorship could not have been assigned to the Plaintiff. Hence, the Plaintiff had no locus standi to make any claims related to Mr. Mansel’s inventorship.

The Plaintiff refuted these arguments stating that Mr. Mansel had already assigned to the Plaintiff all his rights and benefits arising from the invention, and therefore, Mr. Mansel no longer had any locus standi to claim reliefs and/or benefits from the invention. The Plaintiff claimed that a finding of inventorship by the High Court would be an objective determination based on documentary evidence and/or witness testimony, regardless of Mr. Mansel’s unwillingness to register himself as an inventor with the Registry of Patents.

The High Court stated that as no patent had actually been granted, even assuming that Mr. Mansel was indeed an inventor of the invention and that he had assigned his rights to the Plaintiff it would not be possible for Mr. Mansel to have assigned any proprietorship of the patent to the Plaintiff; therefore, the interest purportedly being assigned was essentially a bundle of rights related to patent prosecution. The High Court further stated that a person or a company may be able to claim an entitlement to a patent grant on account of prior contractual arrangements with the inventor. Hence, the High Court adjudged that the Plaintiff did have the required locus standi to seek determination of Mr. Mansel’s inventorship.

The Defendants stated that according to the Singapore Patents Act, it was mandatory for a person alleging that he ought to have been mentioned as an inventor to make his application to the Registry of Patents. However, the Plaintiff had sidestepped the Registry of Patents, and going directly to the High Court for a determination of Mr. Mansel’s inventorship was an abuse of process, especially since Mr. Mansel had the opportunity to determine his inventorship in the proper forum (viz, before the Registrar of Patents) but instead elected to withdraw the Inventorship Application.

The Plaintiff argued that it was entitled to seek the High Court’s determination, at first instance, emphasizing that whether the Plaintiff had the lawful rights and interests or proprietary interests in the invention and the Patent Application was a question for the High Court’s determination, and that in determining this issue, the High Court may have to determine whether Mr Mansel was an inventor of the invention.

Citing an absence of local authority, the High Court considered the practice of the UK Intellectual Property Office (UKIPO) with regard to patent proceedings, as encapsulated in the UKIPO Patent Hearings Manual and the UKIPO Manual of Patent Practice, given the in pari materia nature of the relevant legislation and similarity of the patent regimes. The High Court noted that the interpretation taken by the UKIPO was that the High Court had first instance jurisdiction if, and only if, the Registrar of Patents had declined to do so. The High Court further noted that even if all the parties are agreeable that a particular dispute should be heard in the High Court, it is the Registrar of Patents who is statutorily empowered with the discretion to decide on this matter – not the parties, whether unilaterally or jointly. Also, the High Court noted that it was important to distinguish between the legislative provisions which refer to a “single point of entry” (viz, that the applicant must first refer a question to a specific forum, which may either be the Registrar of Patents or the High Court), and one where there was a “choice of points of entry” (viz, that the applicant may commence proceedings with either the Registrar of Patents or the High Court). In the context of the Patents Act, an example of the former is section 67(1) of the Patents Act, which makes clear that patent infringement proceedings must be commenced in court, while an example of the latter is section 78(1) of the Patents Act, which makes clear that a declaration that an act is not an infringing one may be made by either the High Court or the Registrar of Patents.

Further, the High Court stated that, as good policy reasons, at least from the perspective of case management and efficiency, certain cases should be channeled through the Registrar of Patents first, before allowing the matter to proceed for determination in the High Court. The High Court noted that the difference in the costs regime for applications before the Registrar of Patents and the High Court may be a factor for consideration in determining whether a case should proceed in the High Court.

The High Court also stated that it was important to remember the specialist nature of the Registry of Patents, which was precisely the basis for granting the Registrar of Patents the jurisdiction to determine certain matters related to patents. Therefore, if every purported inventor and/or his assignee insisted on asserting rights in the High Court at first instance, this would defeat the legislative intention behind granting the Registrar of Patents the jurisdiction to determine certain matters related to patents.

However, the High Court, for the purposes of the present judgment, deemed it not necessary to decide whether the High Court had first instance jurisdiction. The High Court stated that even if it were to find that the High Court had jurisdiction at first instance, this did not, in and of itself, mean that a party was entitled to bypass the Registrar of Patents and attempt to move High Court at first instance. Such an attempt at such circumvention would clearly be a factor to consider vis-à-vis whether that party’s actions amounted to an abuse of process.

Therefore, the onus was on the Plaintiff to justify why it should be allowed to do so. The Plaintiff argued that a potential reason for trying to proceed before the High Court at first instance was that it was applying for a rectification of the Patent Register pursuant to s 44(1) of the Patents Act, and therefore, that the High Court may determine any question which may be necessary to be decided in connection with the said rectification.

The High Court refuted this argument stating that as no patent had been granted, there was nothing in the Register of Patents to be rectified under section 44(1). The High Court, hence, held that the Plaintiff’s attempt to raise the issues before the High Court amounted to an abuse of the process.

Subsequently, the High Court rejected the Plaintiff’s application to reintroduce the issue of Mr. Mansel’s inventorship of the invention, while accepting the Defendants’ application to strike out the same.