On 28 August 2018, the Singapore Court of Appeal issued its decision on Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd [2018] SGCA 52. The judgement involved the determination of ownership and inventorship of a Singapore patent, as well as the interpretation of Section 47(9) of the Singapore Patents Act regarding the time limit to bring such entitlement actions.

Background

Cicada Cube Pte Ltd (Cicada) was the proprietor of a Singapore patent for a process for test ordering and collection of laboratory specimens entitled “Laboratory Specimen Collection Management System”. National University Hospital Singapore Pte Ltd (NUH) challenged Cicada’s entitlement to the patent through a reference to the Registrar three days before the expiry of two years from the date of grant for the patent. The Registrar ultimately declined to determine the reference and NUH then applied to the High Court for the determination of entitlement to the patent.

Ownership and Inventorship

In the High Court, Cicada argued that its employees, Dr Ratty and Dr Poo, came up with the invention. NUH appointed Cicada to develop software for a laboratory test ordering and result reporting system. NUH contended that its employees involved in the project, Dr Sethi and Peter Lim, were the true inventors behind the patent.

Ultimately, the High Court ordered that Dr Sethi, Dr Ratty and Dr Poo be named as joint inventors of the invention, and for NUH to be named as a joint proprietor of the patent together with Cicada. The decision was based on a finding that Dr Sethi devised a first inventive concept embodied in the invention: the linkage between the ordering of a medical test the specimen collection to prevent errors or mistakes. The decision was also based on a finding that Dr Ratty and Dr Poo contributed to a second inventive concept embodied in the invention: the process of actual interaction of different components of the system, including information processing and the display of the specification to the clinician taking the specimens, and how the system actually determined relevant constraints (such as the type of tube, number of tubes, and the amount of specimen to be collected in each tube) in each case. The court found that Peter Lim was only involved in the development of a database and graphical display for the invention and was not a deviser of either of the inventive concepts, and thus Lim was excluded from co-inventorship.

Thereafter, both Cicada and NUH appealed to the Court of Appeal contending that only their respective employees were responsible for the invention in the patent, thereby entitling them to sole ownership of the patent. However, the Court of Appeal upheld the High Court decision on the same grounds.

Interpretation of Section 47(9) of the Singapore Patents Act

Another point of contention brought before the Court of Appeal was the interpretation of Section 47(9) of the Singapore Patents Act, which provides that the court shall not in the exercise of “any such declaratory jurisdiction” determine patent entitlement if proceedings in which the jurisdiction is invoked were commenced more than two years after the date of grant of the patent, unless the applicant can show that the registered proprietor of the patent knew at the time of grant that he was not entitled to the Patent. As the application to the High Court was made more than two years after the date of grant of the Patent, Cicada argued that NUH was prevented from bringing this dispute to the High Court by this conditional time limit.

The High Court held that NUH was not caught by this conditional time limit because the phrase ‘proceedings in which the jurisdiction is invoked’ referred to in s 47(9) referred to the reference submitted to the Registrar. In contrast, the Court of Appeal held that NUH was indeed caught by the conditional time limit because the High Court and the Registrar had concurrent jurisdiction to determine patent entitlement, meaning that parties could apply to either forum to determine this question. If a party applied to the High Court after two years from the date of grant of the patent, the High Court could not determine the question unless it was shown that the proprietor knew that he was not entitled to the patent at date of grant or date of transfer. The same applies in this case where NUH had applied to the Registrar first (within the two-year period) but the Registrar declined to determine the question. Therefore, if a party decides to apply to the Registrar first and the Registrar does not make a determination by the two-year mark, it would be prudent for the party to withdraw the reference and commence proceedings in the High Court before the expiration of the two-year time limit.

Since NUH had applied to the High Court after the two-year period, the Court of Appeal had to determine whether Cicada knew at the date of grant that it was not solely entitled to the patent. Based on the facts that Dr Sethi, Dr Ratty and Dr Poo worked closely together on the invention in the patent as well as worked jointly on academic papers describing the invention, the Court of Appeal was satisfied that this was indeed the case and it was therefore empowered to determine the question of patent entitlement.

Accordingly, the Court of Appeal dismissed the appeals of both Cicada and NUH, upholding the High Court decision of joint entitlement of Cicada and NUH to ownership of the patent at issue.