In a landmark judgment, Sun Electric Pte Ltd (hereinafter “Sun Electric”) v Sunseap Group Pte Ltd and others (hereinafter “Sunseap Group”), handed down on 28 September 2017 by Justice George Wei, the Singapore High Court (HC) ruled that it does not have original jurisdiction to hear patent revocation proceedings or to grant orders for revocation, even by way of a counterclaim in patent infringement proceedings.
Sun Electric is the owner of Singapore patent number 10201405341Y relating to a power grid system and a method of determining power consumption at building connections in the system. On 18 November 2016, Sun Electric initiated an infringement action against Sunseap Group for infringing certain claims of the Singapore patent.
Instead of attacking the validity of only the asserted claims, Sunseap Group attacked the validity of the entire patent and counterclaim to revoke the patent. In response, Sun Electric sought to strike out Sunseap Group’s counterclaim. In other words, Sun Electric asserted that Sunseap Group could not put in issue any claims in the patent by way of a counterclaim for revocation as the right to institute proceedings is confined to the Registrar of Patents, which is the key issue in this HC judgement.
Sun Electric’s position is that Section 80(1) of the Singapore Patents Act (SGPA) is the sole provision that grants jurisdiction for revocation proceedings in Singapore. Section 80(1) reads: “Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds…”. On a literal interpretation of Section 80(1), the provision only provides that the Registrar may revoke a patent, but is silent on whether the HC may do so. Section 80(1) of the SGPA was enacted based on Section 72(1) of the United Kingdom Patents Act (UKPA). The key difference is that Section 72(1) of the UKPA provides that the court and the comptroller (equivalent of the Registrar) may revoke a patent on certain grounds, whereas Section 80(1) of the SGPA does not include the Court within its ambit.
Sunseap Group, on the other hand, contended that Section 91(1) of the SGPA confers upon the original jurisdiction to hear revocation proceedings. Section 91(1) reads: “The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question”. Sun Electric countered that Section 91(1) of the SGPA only confers upon the HC the power that the Registrar would have in determining any issue, but not the jurisdiction to hear any issue over which the Registrar has jurisdiction. Sun Electric submitted that the jurisdiction of the HC must be distinguished from its power, and that the HC’s power can be exercised only after jurisdiction is established.
To support its position, Sunseap Group also cited cases wherein the HC had granted revocation orders, some of which were affirmed by the Court of Appeal (CA) . In one of the cited cases, Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd  SGCA 45, the CA noted that Novartis was challenging the validity of the claims and had counterclaimed for revocation. However, the question as to whether the HC or CA had the jurisdiction and power to order revocation was neither raised nor determined. In another of the cited cases, ASM Assembly Automation Pte Ltd v Aurigin Technology Pte Ltd and others  1 SLR 1, there was a counterclaim for revocation of the entire patent and the judge ordered the patent to be revoked for lacking novelty and inventiveness. However, there was no contest on the HC’s jurisdiction and power to revoke the patent.
While Justice Wei accepted that the cited cases establish the “common practice” in Singapore, it was never directly decided in any of the cases as to whether the HC has original jurisdiction to hear revocation proceedings brought by way of a counterclaim. With due respect to the cited cases, Justice Wei noted that common practice does not provide a basis to establish jurisdiction as a matter of law; the court’s jurisdiction must instead be statutorily conferred.
As a result, Justice Wei agreed with Sun Electric’s position in that there is no provision in the SGPA that confers on the HC the jurisdiction to hear revocation proceedings, and that the power vested by Section 91(1) of the SGPA is different from jurisdiction. Consequently, the judge decided that the HC does not have original jurisdiction to hear revocation proceedings under Section 80(1) of the SGPA, but only to decide on the validity of the patent. The judge did clarify that the HC could determine questions on revocation in the exercise of its appellate jurisdiction over decisions made by the Registrar.
The judgement appears to suggest that a patentee may bring infringement proceedings against a defendant before the HC without risking revocation of the patent at the HC. The patent remains on the patent register until a separate application for revocation is initiated before the Registrar. Even if every claim of the patent is asserted in infringement proceedings and found to be invalid, the HC could only grant a declaration of invalidity with respect to the asserted claims and not grant an order for revocation of the patent.
This judgement is likely to have minimal impact on standalone revocation proceedings, as it is common for such to be commenced before the Registrar instead of the HC. However, the decision would impact defendants since it is common for defendants to counterclaim to revoke a patent as part of their defence. With this decision, this effectively means that the defendant cannot counterclaim for revocation of the patent as part of the infringement proceedings. Instead, the defendant has the added responsibility to initiate revocation proceedings separately before the Registrar as either a pre-emptive action or a standalone action after the infringement proceedings, unless leave is granted by the HC while the infringement proceedings are pending.
In our opinion, it seems superfluous to place on the defendant the responsibility to initiate revocation proceedings separately before the Registrar, especially where the HC has already granted a declaration of invalidity of the asserted claims and the Registrar may simply rubber stamp the decision and order the revocation of the patent. On the other hand, if the Registrar hears the revocation action afresh after the HC’s decision, which we would doubt it, uncertainties may also arise.
Notwithstanding the above, Justice Wei in obiter dictum noted that this judgement would be of concern to the intellectual property industry and public at large, and suggested that there is room for reconsideration of the HC’s jurisdiction and procedures for revocation of patents, at the appropriate time and by the relevant legislative bodies.
Note: We understand that Sunseap Group has filed an appeal against the HC’s decision and thus, there might be further twist to this saga.