Justin Yeo AR:
This judgment concerns two separate but related applications, viz Summons No 1047 of 2013 (“Summons 1047”) and Summons No 1955 of 2013 (“Summons 1955”), brought respectively in Suit No 577 of 2011 (“Suit 577”) and Suit No 383 of 2012 (“Suit 383”). Energenics Pte Ltd (“Energenics”) is the plaintiff in both suits. The defendant in Suit 577 is Musse Singapore Pte Ltd (“Musse Singapore”) – a company incorporated in Singapore, while the defendant in Suit 383 is Musse Incorporated (“Musse Incorporated”) – a company incorporated in Malaysia. Musse Singapore is a wholly owned subsidiary of Musse Incorporated. For clarity, all parties will be referred to by their abbreviated names as set out in the present paragraph, although where appropriate, Musse Singapore and Musse Incorporated will be referred to collectively as “the Defendants”.
The applications are deceptively simple. Summons 1047 is an application by Energenics pursuant to O 20 r 5 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“Rules of Court”), for leave to amend its pleaded Reply in Suit 577. Summons 1955 is an application by Musse Incorporated to strike out certain paragraphs of Energenics’s Statement of Claim in Suit 383. However, it will become apparent that the applications involve a complex procedural history and (more importantly) raise novel legal issues.
Background
There is a common factual background to both suits. On 20 October 2009, Musse Singapore filed a patent application No 200907041-8 titled “An Apparatus and Method for Size Reduction” (“the Patent Application”) vis-à-vis the invention in question (“the Invention”) with the Intellectual Property Office of Singapore (“IPOS”) or, more specifically, the Registry of Patents. The inventors named in the Patent Application are (collectively, “the Named Inventors”): Mr Mark Pilgrim; Mr Paul Hitchcock; Mr Wayne Pearce; and Mr Ronen Hazarika (“Mr Hazarika”).
According to the Defendants, the Named Inventors assigned their individual rights in the Invention to Musse Singapore by way of a Deed of Assignment dated 16 October 2009. Subsequently, Musse Singapore assigned its rights and interests in the Invention to Musse Incorporated by way of a Deed of Assignment dated 15 June 2011.
Energenics purports to assert its rights and interest in the Invention by claiming, inter alia, that: Energenics’s then-employee, Mr Hazarika, had contributed to the inventive concept of the Invention in the course of his duties while he was under Energenics’s employ, and that as such, Energenics has ownership rights in the Invention pursuant to s 49(1) of the Patents Act (Cap 221, Rev Ed 2005) (“the Patents Act”); and Further or in the alternative, that one Mr David Mansel Williams (“Mr Mansel”) who had contributed to the inventive concept of the Invention had, together with his employer MNT Consultants (UK) Limited, assigned all the rights and interest in the Invention to Energenics by way of a Deed of Assignment dated 3 November 2011 (“the Mansel Assignment Deed”).
Due to the complicated procedural history to the applications, it would be useful to set out a brief summary of the lead-up to the present applications: On 18 August 2011, Energenics filed a Statement of Claim in Suit 577, asserting rights to the Invention as the employer of Mr Hazarika. On 14 September 2011, Musse Singapore filed its Defence, denying Energenics’s rights and contending that Mr Hazarika is not an inventor of the Invention; On 15 December 2011, Mr Mansel applied to the Registry of Patents via Patents Form 7 to include himself as one of the inventors to be named in the Patent Application (“the Inventorship Application”); On 26 January 2012, Energenics filed an amended Statement of Claim in Suit 577, pleading that Mr Mansel is an inventor of the Invention. Musse Singapore filed an amended Defence on 16 February 2012, denying that Mr Mansel is an inventor of the Invention; On 9 March 2012, Mr Mansel filed a Statement of Inventorship with the Registry of Patents, setting out the facts relied upon in the Inventorship Application; On 25 June 2012, Energenics filed a Statement of Claim in Suit 383, asserting rights to the Invention, and that both Mr Hazarika and Mr Mansel are inventors of the Invention. On 8 August 2012, Musse Incorporated filed its Defence, asserting that neither Mr Hazarika nor Mr Mansel are inventors of the Invention; On 22 August 2012, Musse Incorporated filed a detailed Counter-Statement with the Registry of Patents, opposing the Inventorship Application; and A Case Management Conference was scheduled on 22 October 2012. However, Mr Mansel withdrew the Inventorship Application by way of a letter to the Registry of Patents dated 19 October 2012. Energenics asserts that Mr Mansel withdrew, not because he was not an inventor of the Invention, but because he did not wish to be directly embroiled in any acrimonious legal tussle over the Invention.
The result of the above chain of events is that neither Energenics nor Mr Mansel have applied (or are applying) to be named as the proprietor or inventor of the Invention in any of the applications filed with the Registry of Patents in respect of the Invention.
Energenics, however, continues to seek its legal rights to the Invention and to the Patent Application through Suit 577 and Suit 383. The crux of Energenics’s claim in both suits is for a declaration by the High Court of Energenics’s lawful rights and interests in the Invention and the Patent Application.
It should be noted that Energenics was initially quite content to emphasise that it was not seeking, in the High Court, any determination of Mr Mansel’s inventorship of the Invention (see paragraph 3(a) of the Reply in Suit 577). Indeed, in the 7th Affidavit of Hanumanth Rao Bhunsle filed on behalf of Energenics on 9 May 2012 at paragraph 13, the deponent confirmed that “the issue of inventorship is to be decided before the Registrar of Patents”.
The applications before this court
Both of the applications before this court concern only Energenics’s claims related to Mr Mansel’s purported inventorship of the Invention as well as his purported assignment of rights and interests in the Invention to Energenics (“the Mansel Claims”).
Energenics applied, through Summons 1047, to amend its Reply in Suit 577. While the proposed amendment is technically a deletion of certain paragraphs of Energenics’s Reply, it is a deletion of a limitation and clarification at paragraph 3 of the Reply. In other words, the proposed deletion substantially broadens the claim being brought by Energenics in Suit 577. It effectively purports to reintroduce the issue of Mr Mansel’s inventorship of the Invention (as part of the Mansel Claims) as an issue to be determined in Suit 577.
Musse Incorporated applied, through Summons 1955, to strike out paragraphs 8, 15-18 and 28(b) of Energenics’s Statement of Claim in Suit 383. The paragraphs sought to be struck out relate to the Mansel Claims. The basis for the striking out is O 18 r 19(1) of the Rules of Court, viz that the said paragraphs disclose no reasonable cause of action, that they are scandalous, frivolous or vexatious, that they may prejudice, embarrass or delay the fair trial of the action, or otherwise abuse the process of the court.
Both applications were heard together because they concerned the same subject matter, viz, the Mansel Claims. Indeed, as is evident from the two foregoing paragraphs, the paragraphs of the Statement of Claim that Musse Incorporated sought to strike out in Suit 383 concerned precisely the same issues that Energenics sought to reintroduce in Suit 577 through an amendment to its Reply. The issue of Mr Mansel’s inventorship therefore constituted the substantial crossing of swords in both applications. This means that should I decide to strike out the allegedly offending paragraphs of Energenics’s Statement of Claim in Suit 383, it would follow that I would be slow to allow an amendment to introduce the very same issues in Energenics’s Reply in Suit 577.
I therefore directed that Summons 1955 be heard first, followed immediately by Summons 1047. The respective counsel for Energenics (Mr Lionel Tan (“Mr Tan”)), Musse Singapore (Mr Vignesh Vaerhn (“Mr Vaerhn”)) and Musse Incorporated (Mr Nicholas Narayanan (“Mr Narayanan”)) were simultaneously present during the hearings of both applications. Indeed, in view of similarity of issues raised, Mr Tan was content to stand by the submissions he had made in Summons 1955 during the hearing of Summons 1047. Mr Vaerhn and Mr Narayanan also provided helpful assistance to this court during both applications, to which Mr Tan graciously did not object.
Parties’ arguments
Mr Narayanan argued that the principle of nemo dat quod non habet applies to choses of action (including patents), and accordingly, that Energenics had no locus standi to make any claims related to Mr Mansel’s inventorship. He emphasised that the Mansel Claims are premised on Mr Mansel’s purported inventorship rights, and are – in the circumstances – “wholly baseless” and “no more than a mere speculation that Mr Mansel is an Inventor or would make a claim on any inventorship rights, where the objective record shows otherwise”. Mr Narayanan argued that s 24(1) of the Patents Act, read with r 17 of the Patents Rules (Cap 221, R 1, 1996 Rev Ed) (“the Patents Rules”), means that it is mandatory for a person who alleges that he ought to have been mentioned as an inventor to make his application to the Registry of Patents on Patents Form 7. Mr Narayanan also argued that sidestepping the Registry of Patents, and going directly to the High Court for a determination of Mr Mansel’s inventorship is 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...
