Sunseap Group Pte Ltd & 2 Ors v Sun Electric Pte Ltd

• Jurisdiction: Singapore
• Judge: Andrew Phang Boon Leong JA
• Judgment Date: 10 January 2019
• Neutral Citation: [2019] SGCA 4
• Plaintiff Counsel: Lau Kok Keng, Lauw Yu An, Nicholas Lynwood and Leow Jiamin (Rajah & Tann Singapore LLP)
• Date: 10 January 2019
• Docket Number: Civil Appeal No 190 of 2017
• Hearing Date: 21 August 2018
• Subject Matter: High Court,Original,Courts and Jurisdiction,Jurisdiction,Validity,Revocation,Patents and Inventions
• Year: 2019
• Defendant Counsel: Ravindran s/o Muthucumarasamy, Jevon Louis and Chan Wenqiang (Ravindran Associates LLP)
• Court: Court of Appeal (Singapore)
• Citation: [2019] SGCA 4
• Published date: 15 January 2019

Tay Yong Kwang JA (delivering the judgment of the court): Introduction

The present appeal raises a single question of law relating to patents: does the High Court have original jurisdiction to hear an application for the revocation of a patent, in particular where such application is by way of a defence and counterclaim? In the High Court, it was held that in the absence of any express statutory provisions conferring original jurisdiction on the High Court to hear revocation proceedings by way of application or to grant a prayer for revocation whether or not by way of counterclaim in infringement proceedings, the High Court has no such jurisdiction because such order is in rem in nature (see Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232 (“the Judgment”) at [167] and [169]). The Judgment meant effectively that all applications for the revocation of a patent at first instance must be heard by the Registrar of Patents (“the Registrar”) and the High Court’s jurisdiction is limited to hearing appeals from the Registrar’s decision on the same.

Having studied the parties’ submissions and heard the parties, we are not able to agree with the conclusion that the High Court lacks original jurisdiction in all cases to hear applications for the revocation of a patent. In our view, there are two distinct categories of cases which must be dealt with separately.

The first category concerns applications for revocation which are brought by way of counterclaim in infringement proceedings. It is thus the defendant in infringement proceedings who challenges the validity of a patent in the course of “defending” itself and also seeks an order that the patent be revoked because of the alleged invalidity. In such a situation, the High Court has original jurisdiction to determine the validity of the patent, by virtue of s 67(1) read with s 82(1)(a) of the Patents Act (Cap 221, 2005 Rev Ed) (“PA”). Upon a finding of invalidity, the High Court has the power to order that the patent be revoked, pursuant to s 91(1) read with s 80 of the PA.

The analysis is quite different where the second category of cases is concerned. This category concerns applications for revocation brought independently of infringement proceedings. In other words, the applicant is the “attacker” who has chosen to challenge the validity of the patent on its own accord. It may have done so, for instance, as a pre-emptive measure in anticipation of infringement proceedings against it or because it is the proprietor of a similar patent. In this second category of cases, the High Court does not have original jurisdiction to hear applications for revocation because its jurisdiction to do so has been excluded by s 82(2) read with s 82(1) of the PA. In the absence of such jurisdiction to hear, it follows that the High Court has no power to order the revocation of that patent.

We disagree with the proposition that the High Court’s in rem jurisdiction must be invoked before the Court can order the revocation of a patent. In our judgment, a court is able to make an order with in rem effect, including an order for revocation of a patent, in the exercise of its in personam jurisdiction.

Given that the present appeal falls squarely within the first category of cases, we hold that in this case, the High Court has original jurisdiction to determine the validity of the Patent and the power to order revocation. We therefore allow the appeal and order that the pleadings are to stand in the terms stated at [98]–[102] below. We now explain our decision.

The key statutory provisions

We begin by setting out the key statutory provisions relevant to the issue before this Court. The primary statute under consideration is the PA and all references to statutory provisions in this judgment should be understood as references to the PA, unless otherwise specified.

Section 67 governs infringement proceedings. The relevant sub-section reads as follows:

Proceedings for infringement of patent

67.—(1) Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made — (a) for an injunction restraining the defendant from any apprehended act of infringement; (b) for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised or any material and implement the predominant use of which has been in the creation of the infringing product; (c) for damages in respect of the infringement; (d) for an account of the profits derived by him from the infringement; and (e) for a declaration that the patent is valid and has been infringed by him. Section 67(1) provides the basis of the High Court’s jurisdiction to hear infringement proceedings as “court” is defined in s 2(1) as the High Court. We will return to consider the significance of this provision later in this judgment.

Section 80 deals with the power to revoke patents on application, as its title states. The chapeau of s 80(1) reads as follows:

Power to revoke patents on application

Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds: …

The rest of the sub-section goes on to list the specific grounds on which revocation may be sought, eg, that the invention is not a patentable invention (s 80(1)(a)) or that the patent was obtained fraudulently (s 80(1)(f)(i)). For the purpose of determining whether the patent should be revoked on any of those grounds, the Registrar may cause the patent to be re-examined by an Examiner (see s 80(2) and (3)). In terms of procedure, s 80(9) specifies that an application for an order to revoke a patent shall be made in the prescribed form and filed at the Registry in the prescribed manner and accompanied by the prescribed fee. The prescribed form and manner of the application to the Registrar are detailed in rr 80–81 of the Patents Rules (Cap 221, R 1, 2007 Rev Ed) (“PR”).

The omission of references to the “court” whenever “Registrar” is mentioned in s 80 forms the major plank of the Respondent’s argument that Parliament intended that only the Registrar is to have original jurisdiction to hear applications for revocation. This section may be contrasted with s 78(1), for instance, where the words “by the court or the Registrar” appear.

The next pertinent provision is s 82(1), which lists the types of proceedings in which the validity of a patent may be put in issue.

Proceedings in which validity of patent may be put in issue

82.—(1) Subject to this section, the validity of a patent may be put in issue — (a) by way of defence, in proceedings for infringement of the patent under section 67 or proceedings under section 76 for infringement of rights conferred by the publication of an application; (b) in proceedings under section 77; (c) in proceedings in which a declaration in relation to the patent is sought under section 78; (d) in proceedings before the Registrar under section 80 for the revocation of the patent; or (e) in proceedings under section 56 or 58. (2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent. Section 82(2) makes it clear that s 82(1)(a)–(e) comprise an exhaustive list of the types of proceedings in which the validity of a patent may be put in issue. In other words, s 82(2) expressly excludes a specific aspect of the High Court’s subject matter jurisdiction (ie, its jurisdiction to determine the validity of a patent) if the case does not fall within one of the five types of proceedings in s 82(1)(a)–(e).

Section 82(3) provides that the only grounds on which validity may be put in issue are the grounds in s 80: (3) The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 80 or otherwise) are the grounds on which the patent may be revoked under that section.

Section 82(7) should also be highlighted. It reads: (7) Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1), no proceedings may be instituted without the leave of the court before the Registrar with respect to that patent under section 67(3), 76, 78 or 80. For example, where there are infringement proceedings under s 67 pending in the High Court and the alleged infringer intends to commence an application to revoke the patent before the Registrar under s 80, leave of court must first be obtained. We will revisit s 82(7) later in this judgment.

Section 83 governs the amendment of patents. The key portion of this section provides:

Amendment of patent in infringement or revocation proceedings

83.—(1) In any proceedings before the court or the Registrar in which the validity of a patent is put in issue, the court or, as the case may be, the Registrar may, subject to section 84, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to the publication and advertisement of the proposed amendment and as to costs, expenses or otherwise, as the court or Registrar thinks fit. …

Sections 90(1) and (3) provide that appeals from the Registrar’s decision to revoke a patent under s 80 may be appealed to the High Court and thereafter to the Court of Appeal, if leave to appeal is given by the High Court or the Court of Appeal.

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