In a ruling handed down on 28 September 2017, the Singapore High Court advised that revocation proceedings can only be brought before the Registrar of the Intellectual Property Office of Singapore (IPOS).

Singapore High Court says cross-claims for revocation are outside its jurisdiction

In a ruling handed down on 28 September 2017, the Singapore High Court advised that revocation proceedings can only be brought before the Registrar of the Intellectual Property Office of Singapore (IPOS).

The ruling raised the question of whether patent revocation proceedings can be brought before the High Court at first instance, by way of a counterclaim in patent infringement proceedings (see paragraph [2]). Justice George Wei found (see paragraphs [135], [145], [167] and [192]):

  • The High Court does not have jurisdiction to hear revocation proceedings or grant an order for revocation by counterclaim.
  • Section 80 of the Singapore Patents Act provides exclusive jurisdiction to the IPOS for the handling of patent revocation proceedings.

This has ramifications for defendants who have succeeded in defending against a claim for infringement by way of challenging the validity of the asserted claims. Such defendants may (see paragraph [106]):

  1. Obtain a declaration of invalidity in respect of those asserted claims; and
  2. Follow that declaration with a separate application for revocation to the Registrar of Patents.

This ruling also raises the question of whether the IPOS will direct re-examination – afforded by Section 80(2) of the Singapore Patents Act – in lieu of outright revocation of relevant claims. While the ruling itself places additional burden on the IPOS, the potential for re-examination arising from contentious proceedings, including the amendment of the granted patent specification, increases the necessity of ensuring Singapore-based representatives of patentees and applicants for revocation are appropriately technically qualified.

The IPOS' position on re-examination

The IPOS recently released a proposed new option for re-examination. This option confirms that:

  • re-examination can be requested by any party (including a patent agent);
  • re-examination is an ex partes process; and
  • re-examination may proceed even where proceedings are subsequently commenced before the court.

The proposed option has not yet been implemented. However, if it proceeds then it can provide relief for third parties seeking revocation, or against whom a letter of demand or similar has issued. Such third parties shall be provided the opportunity to have the revocation proceedings dealt with by a technically qualified IPOS Examiner in advance of any court proceedings taking place.