On 14 March 2017, the Singapore High Court issued an amended decision on National University Hospital Singapore Pte Ltd v. Cicada Cube Pte Ltd  SGHC 53. The judgement involved the determination of ownership and inventorship of a Singapore patent and examined the issues of inventive concept(s) and scope of employment.
The defendant, 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”. Cicada argued that its employees, Dr Ratty and Dr Poo, came up with the invention. The plaintiff, National University Hospital Singapore Pte Ltd (NUH), contended that its employees, Dr Sethi and Peter Lim, were the true inventors behind the patent.
Taking into account the pending disputes, the Court had to examine: what was/were the inventive concept(s) of the Invention disclosed in the Patent; who contributed to the inventive concepts; and who was/were the rightful owner(s) of the Patent.
The Inventive Concept(s)
Cicada submitted that there was only one inventive concept of the patent and it was the integration of front-end test ordering with back-end information, eliminating errors by collating and graphically displaying specimen requirements and generating a single label containing an accession number and patient information for each tube. NUH submitted that there were two inventive concepts: (1) a determination concept (specimen processing which determined, through a “business logic”, specimen requirements for test orders); and (2) a graphical display concept (the visual display of these requirements).
The Court reviewed the parties’ submissions and, in consideration of the specification and claims of the patent in question, determined that there were two inventive concepts embodied in the invention. Interestingly, they differed from the inventive concepts put forth by Cicada and NUH. The first inventive concept was found to be the linkage or interaction between what was done in the ordering of a medical test (ie. the processes for ordering tests), and what was done at the specimen-taking side (ie. the processes for collecting specimens), so that errors or mistakes were prevented. This concept was deemed to be devised by Dr Sethi.
The second inventive concept was found to be the specification for the taking of specimens, ie. among other things, how the system actually ensured identification or determination of 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, and the process of actual interaction or communication of different components of the system, including information processing and the display of the specification to the clinician taking the specimens.
The Court found that NUH failed to discharge their burden of proving to the Court that Dr Sethi instead of Dr Ratty and/or Dr Poo contributed to its formulation. Consequently, the Court named Dr Ratty and Dr Poo as co-inventors of the patent. Peter Lim, having been found by the Court to be only involved in the development of a database and graphical display for the invention but not the inventive concepts, was excluded from co-inventorship.
Scope of Employment
There was also the dispute of whether Dr Sethi developed the first inventive concept within the scope of his employment with NUH. Based on the facts presented before the Court, including an appointment contract which was in force between Dr Sethi and NUH during the material time, the Court found that Dr Sethi had, at that time, two contracts of employment: one under NUH and the other under the National University of Singapore (NUS).
A letter further revealed that Dr Sethi had been “deployed” from NUS to NUH as a Resident during the material time. In the overall analysis, the Court was convinced of Dr Sethi’s employment under NUH and was also satisfied that the devised invention was a result of his normal duties as Chief of NUH’s Department of Laboratory Medicine, rather than his duties under NUS. These decisions strengthened the position of NUH as, at least, a joint proprietor of the concerned patent.
Following the verdict on the above issues, the 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 is currently on appeal to the Singapore Court of Appeal.