In a recent case heard at the High Court, namely, HT S.R.L. v Wee Shuo Woon [2016] SGHC 15, the appeal judge ruled that confidential digital documents unlawfully obtained and posted online remain confidential despite being downloadable from the internet.

Review of the case

HT S.R.L. (HT), had sued Mr. Wee Shuo Woon for breaches of his employment contract. During the course of this matter, HT's computer system was hacked into and subsequently, substantial amounts (more than 500GB of data) of unlawfully obtained information were uploaded to the internet including WikiLeaks. The information included e-mail communications, labelled as "privileged and confidential", between HT and their lawyers. Mr. Wee subsequently got the e-mails from the internet and sought to strike out the bulk of the HT's claims. In response, HT sought a court order to expunge all the unlawfully obtained e-mails.

In the first instance, HT succeeded in expunging the unlawfully obtained e-mails, leading to an appeal from Mr. Wee at the High Court against the order.

At the High Court, the fact that HT was a cybercrime victim and that Mr. Wee was aware of this fact "weighed heavily" on the mind of the judge. Even though Mr. Wee was blameless for the cybercrime, the judge believed that Mr. Wee was "put on notice" regarding the "privileged and confidential" nature of the e-mails. Consequently, the judge dismissed Mr. Wee's appeal, and ruled that "an obligation of confidentiality could still be justly and reasonably imposed on Mr. Wee in respect of the e-mails". The judge felt that the decision could "meet the needs of the modern age, where the advent of the internet has made information not just more accessible, but also more vulnerable to unauthorised access".

How does this ruling affect entities who file patents in Singapore?

Singapore has a "first to file" patents system, and any invention shall be deemed to be new if it does not form part of the state of the art. The "state of the art", as defined in Section 14(2) of the Singapore Patents Act, relates to "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in Singapore or elsewhere) by written or oral description, by use or in any other way".

However, Section 14(4)(a) also provides for a grace period of twelve months if disclosure of the invention "was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person:

  1. from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or
  2. from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it".

Based on the ruling of the aforementioned case, there are now legal tests in place which determine if a first entity has an obligation of confidence to a second entity, particularly in an increasingly common situation of information being made accessible on the internet. This is particularly pertinent where the entity unlawfully obtaining the information cannot be identified. The consumers of the information then become aid when seeking reliance on Section 14(4)(a).

In the tests, generally, if the information is obtained unlawfully (regardless of who carried out the unlawful act), and the information is labelled as "confidential", it is possible that the first entity consuming the information will be deemed to owe an obligation of confidence to the second entity, the rightful owner of the information.

Thus, if the first entity breaches the obligation of confidence, the grace period of twelve months provided for in Section 14(4)(a) can possibly be relied upon for a patent application filed in Singapore, despite the information on the internet being made available to the public by written description. This can be critical to ensure that the validity of the patent upon grant is not adversely affected by such prior disclosure.

Take home points

  • It is important for entities who file patents to label all correspondence pertaining to their invention(s) which are not yet subject to a patent application with a "confidential" label.
  • In an era which is becoming increasingly paperless, it is helpful to label digital folders containing files pertaining to their invention(s) which are not yet subject to a patent application with a "confidential" label as this may be helpful for digital documents stored within the digital folders which do not have a "confidential" label.
  • The circumstances of a prior disclosure of an invention(s) should be carefully investigated before deciding if the prior disclosure is detrimental to the filing of the patent application.
  • In circumstances when it is not possible to identify an entity carrying out unlawful acquisition of information (eg. cyber hackers), it can be helpful to identify an entity who consumes the information to determine if there exists an obligation of confidentiality.
  • The aforementioned principles should also be applicable to hardcopy documents, whereby all binding files and sheets of paper containing information pertaining to invention(s) which are not yet subject to a patent application should include a "confidential" label.