Bringing a counterclaim for patent revocation: not so fast in Singapore

A defendant in a patent litigation action will frequently file a counterclaim seeking revocation. Kat friend Sheena Jacob of JurisAsia in Singapore reports that this may no longer be possible in Singapore.

“In a ground-breaking decision, the Singapore High Court has ruled that it does not have original jurisdiction under the Singapore Patents Act to revoke a patent. Up until this decision, it has been common practice for defendants in patent infringement proceedings to challenge the validity of a patent by means of a counterclaim for revocation of the patent in question. Indeed, prior Court decisions have exercised such jurisdiction under the Singapore Patents Act to revoke granted patents. Thus, both the validity and infringement issues were determined in the same proceedings and heard before the same judge who would also revoke the patent.

In Sun Electric Pte Ltd v Sunseap Group Pte Ltd [2017] SGHC 232, the main argument before the High Court was that section 80(1) of the Patents Act only provides that the Registrar of Patents (the "Registrar") may revoke a patent on the grounds specified therein, without any reference to "the court". The Plaintiff contended, and the Court accepted, that Parliament had never intended to vest with the court original jurisdiction for revocation. The Plaintiff relied on the contrasting provision in the UK, namely section 72(1) of the UK Patents Act 1977 (c.37), which expressly provides that the power to revoke a patent is enjoyed by both the court and the comptroller, the UK equivalent of the Registrar. The Court held that given that section 80(1) of the Patents Act was based on this UK provision, the omission of any reference to "the court" was therefore deliberate and intentional.

The Court observed that although the grounds on which the validity of a patent can be put in issue are identical to the grounds on which the patent may be revoked (see sections 80 and 82(3) of the Patents Act), it is not necessary to wait for an infringement action to be commenced before starting revocation proceedings. A counterclaim for invalidity of the patent in infringement proceedings is an in personam action (i.e., against an individual entity), and a defendant has the express right to defend the proceedings by raising the issue of validity of the res (i.e., the patent in question).

Therefore, whilst the Court could find the patent invalid as between the parties, an order revoking a patent would have effect in rem (i.e., against the patent) and is conclusive against the world. Revocation also has effect from the date of the grant of the patent. Accordingly, the Court found that jurisdiction in rem is necessary for the court to have jurisdiction to hear and determine revocation applications. In this regard, the Court noted that section 80 of the Patents Act is the only statutory provision in the Patents Act that deals with revocation. As stated above, section 80 of the Patents Act does not make any reference to the court. Further, statutory provisions and procedures on revocation in the Patents Act are directed only towards the Registrar; there are no provisions for an application for revocation of the patent to the court.

The Court was urged to exercise its powers under section 91(1) of the Patents Act, a seemingly "catch-all" provision allowing the court the right to make any order or exercise any power which the Registrar possessed for the same question that was before the Registrar. However, the Court found that section 91(1) of the Patents Act only grants the court the power, but not the jurisdiction, which the Registrar has under the Patents Act. In the absence of an express statutory provision conferring original jurisdiction upon the High Court to hear revocation proceedings or to grant a prayer for revocation, whether or not by way of counterclaim in infringement proceedings, the Court ruled that a court has no such jurisdiction.

The effect of the decision is that a defendant may still counterclaim that the patent is invalid in infringement proceedings, but that the Court will not be able to revoke the patent. The defendant (or other parties) would need to file separate revocation proceedings before the Registrar to revoke the patent. In practice, this could mean that the invalid patent would remain on the register if no revocation proceedings are brought, which is not entirely satisfactory. Whether this decision will be brought before the Court of Appeal remains to be seen. In the meantime, potential defendants in patent infringement disputes in Singapore who wish to revoke the patents in question must rethink their strategies and consider whether to commence revocation proceedings before the Registrar.”

Photo on lower left by Jacklee and is licensed under Creative Commons Attribution-Share Alike 3.0 Unported license.