Earlier this year, the Singapore Court of Appeal reversed a High Court decision that held Singapore legislation, including the Singapore Patents Act, did not afford the High Court with original jurisdiction in patent revocation matters.
The case of Sunseap Group Pte Ltd and Others v Sun Electric Pte Ltd [2019] SGCA 4 arose on appeal from a Singapore High Court ruling that held that the High Court did not have original jurisdiction to hear applications for patent revocation or to order that a patent be revoked. The import of the High Court’s decision was that all applications for patent revocation must be heard in the first instance by the Registrar of Patents and the High Court could only hear appeals from the Registrar's decision.
The Court of Appeal reversed the High Court's decision and held that the High Court has the power to hear applications for patent revocation and to revoke patents. However, the Court of Appeal’s decision clarified that the High Court’s power to revoke patents is confined to instances where the revocation proceeding is brought by way of counterclaim or defence in infringement proceedings.
In looking to the Singapore Patents Act for legislative basis of the High Court’s revocation powers, the Court of Appeal cited section 80(1) of the Patents Act for the premise that if a defendant is able to establish invalidity of all claims of an asserted patent based on any grounds in section 80(1) of the Patents Act, the defendant has established that the asserted patent should be revoked. The Court of Appeal further stated that section 91(1) of the Patents Act gives the High Court the power to revoke patents when the grounds for revocation have been established by the defendant.
In regards to original jurisdiction, the Court of Appeal held that the High Court does not have original jurisdiction for patent revocation actions brought independently of infringement proceedings because such jurisdiction has been excluded by the Singapore Patents Act (sections 82(1) and 82(2) of the Patents Act).
The Court of Appeal also stated that the High Court may only revoke a patent when the validity of the entire patent is challenged as a defence or counterclaim in an infringement proceeding. If the validity of the entire patent is not in issue (i.e., only certain patent claims are asserted in the infringement action), the High Court does not have the power to revoke the patent. In this case, the defendant’s only recourse is to seek revocation of the patent before the Registrar of Patents.
On the point of the entire patent being at issue, the Court of Appeal reviewed a situation where all the independent claims of a patent were asserted and found to be invalid. In this case, the Court of Appeal concluded that the dependent claims must also be invalid if all the independent claims are invalid. The entire patent, the Court of Appeal continued, could then be regarded as invalid and it would be proper for the High Court to revoke the same. While presented as a scenario where the High Court had the power to revoke a patent, this scenario differs from earlier Singapore and English precedence where dependent claims and independent claims stand and fall together only when a patentee concedes such.
So, while the High Court decision of original patent revocation jurisdiction being the province of the Registrar of Patents was a surprise for many Singapore practitioners, the Court of Appeal has clarified that the High Court also has original patent revocation jurisdiction when the issue of the entire patent’s validity is raised as a defence or counterclaim in an infringement action brought before the Hight Court.
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