In a case dealing with recognising inventors and ownership of a patent, the Singapore High Court (SGHC) recently ordered an employee of National University Hospital (NUH) to be named joint inventor and thus NUH to be named joint proprietor of a patent originally granted to Cicada Cube Pte Ltd (Cicada).1 Further costs and disbursements were awarded to NUH in the order of $100,000. It is understood that both parties are dissatisfied and have appealed. This case articulates the importance of identifying all relevant inventors in patent applications.
National University Hospital (NUH) raised an action against Cicada Cube (Cicada) who was the proprietor of Singapore Patent No. 150390 (the “Patent”) entitled “Laboratory Specimen Collection Management System”. The Patent listed two of Cicada’s founders and directors as the inventors.
NUH is part of a group of healthcare institutions, the National Healthcare Group (NHG), which embarked on a large project to digitise the clinical care processes in its hospitals. As part of this project, Dr Sethi, an employee of NUH, was tasked with computerising the workflow of specimen testing in the laboratory.
To this end, NUH appointed Cicada to develop software with regard to sample collection allowing a complete electronic laboratory trail from test ordering right through to result reporting.
Subsequently, Cicada filed Singapore Patent application no. 2007057508 relating to the developed software which was granted. This resulted in a dispute between NUH and Cicada as to the actual inventors and owner of the patent. JC Aedit Abdullah systematically addressed the issues as follows:
- identifying the inventive concepts;
- who contributed to the inventive concepts; and
- who is the rightful owner of the Patent.
Identifying the inventive concepts
JC Aedit Abdullah characterised the inventive concept as the “heart” of invention and requires the identification of the core/kernel/essence of the invention [Generics (UK) Ltd v H Lundbeck A/S]. To do so, the patent is to be construed as a whole.
The judge identified two inventive concepts, which differed from both Cicada and NUH’s allegations, listed below:
- the interaction between the processes for ordering tests and the processes for collecting specimens; and
- specification for the taking of specimens.
Who contributed to the inventive concept(s)?
S. 2(1) of the Singapore Patents Act defines an "inventor" as being the “actual deviser” of the invention. JC Aedit Abdullah looked to guidance from the courts which had described the inventor as the person who formulated or contributed to the formulation of the inventive concept. The inventor may lack the capability to design or put into place the precise details of realising the inventive concept into a functional product.2
The judge found Dr Sethi to be the deviser of the 1st inventive concept. Evidence of meetings taking place before Cicada’s involvement in the project was shown to include discussions of the inventive concept. In addition, details of the invention were drafted by Dr Sethi as part of a document to secure funding for the development of the software.
With regard to the second inventive concept, NUH failed to discharge the burden of proof that Dr Sethi was the person who contributed to the concept. Thus, JC Aedit Abdullah reinforced that the burden lies on the plaintiff to disprove the fact that the inventors as listed on the Patent did not come up with the second inventive concept.
Who was the rightful owner of the Patent?
Another issue was raised questioning if Dr Sethi was an “employee” of NUH. Dr Sethi’s contract with NUH referred to an “appointment” not an “employment”. In addition, it was tied to his position as employee of National University of Singapore (NUS).
The judge ruled that Dr Sethi was an employee of NUH and relied heavily on the fact that NUH was making monthly contributions to Dr Sethi’s Central Provident Fund (“CPF”) account and that he was entitled to benefits such as leave.
Were the inventive concepts conceived during normal course of duties?
The judge was not persuaded that Dr Sethi’s normal duties are purely clinical in nature as no express provisions in his contract imposed a duty to research, innovate or invent. The judge declared that as the Chief of NUH’s Department of Laboratory Medicine, Dr Sethi’s duties include a role to fulfil NUH’s mission to provide “care of the highest quality” by resolving problems and improving the hospitals operations and workflow. The judge urged courts to recognise that strong innovative roles are inherent in many jobs even though not explicitly mentioned within normal job scope.
The judge ordered Dr Sethi to be named joint inventor and thus NUH to be named joint proprietor of the Patent. Further costs and disbursements were awarded to NUH in the order of $100,000. This case articulates the importance of identifying all relevant inventors in patent applications.