Many heads better than two?

A recent decision by the Singapore Court of Appeal (CA) was issued in the case of Muhlbauer AG v Manufacturing Integration Technology Ltd. [2010] SGCA 6 on the danger of over-generalisation when deciding if a feature falls within the scope of a claim and the role of experts in the Court.

The CA highlighted that a feature in an invention if deemed to be disclosed in a prior art merely because the prior art has a plurality of the feature would be overgeneralising the feature. The HC judge had determined that the Patent for an apparatus for inspecting and rotating electronic components was not novel and thus invalid as the prior art disclosed, inter alia, many of the two "pick up heads" in the claimed invention. Although the ground for invalidity is not wrong at first glance, it was shown to be incorrect under scrutiny as the degree of specificity between the quantities of the feature may render the invention novel. Accordingly, the CA found that the specific number of "pick up heads" in the claimed invention does yield a special technical advantage and ruled the patent to be novel and inventive over the prior art. In this case, the quantitative difference is being over-generalised and an overall qualitative difference should instead be considered to determine if an invention is novel and inventive.

On the issue on the role of experts, firstly, experts are engaged and required to assist the Court on matters within their expertise. They are also required to override their obligations to the party which engaged them but this is often overlooked in practice. An issue of bias with regard to the experts could arise when the experts attempt to persuade the Court to lean towards the party who engaged them, regardless of the persuasiveness of the case. The CA noted that this issue needs to be reviewed but it may take time and parties involved in a case may, in the meanwhile, apply to the Courts to appoint an impartial and objective expert whose views they would agree to abide by. Secondly, experts typically possess extraordinary knowledge as well as expertise that are beyond what a reasonable person “skilled in the art” would possess. The CA highlighted that it is important for experts to be reminded of their role as the reasonable skilled person when presenting their evidence in Courts.

The appeal was allowed with costs.