In a ruling handed down last Thursday, the Singapore High Court addressed the question of whether patent revocation proceedings can be brought before the High Court in the first instance by way of a counterclaim in a patent infringement proceeding before the High Court. Justice George Wei ruled that 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 Intellectual Property Office of Singapore (IPOS), Singapore’s patent office, to handle patent revocation proceedings.
Accordingly, when a defendant succeeds in the defense against an infringement action by challenging the validity of the asserted claims of the plaintiff’s patent, the High Court can hand down a declaration with respect to the asserted claims. In order to revoke the patent, the defendant will need to apply to the Registrar of Patents at IPOS under section 80 to initiate revocation proceedings.
While the Justice Wei noted that his decision “will be of concern to all who are interested in Singapore’s patent system and procedures and the public at large”, he also noted “there is much to be said for consideration anew…of the court’s jurisdiction and the patent procedures in this regards by the relevant law reform body and by Parliament.”