A recent judgement by the Hearing and Mediation Group of the Intellectual Property Office of Singapore has highlighted the need for inventors to draw a line between inventions developed in previous employment and inventions developed in their current employment.
The judgement concerned the revocation of a patent in the name of FOSTA PTE LTD upon application for revocation by CAMBRIAN engineering corporation PTE LTD of Singapore Patent No. 126809.
The invention in question provides a means whereby a sensor is suitable for long-term measurement of physical quantities.
The invention may be applied in the context of structural health monitoring (“SHM”) particularly in the fields of construction and civil engineering. SHM systems provide information regarding the integrity of buildings and other structures. This is of importance as these structures are subject to damage from factors such as physical load, corrosion, aging and even seismic activity. When damage is detected through SHM, remedial action can then be taken.
Patent was obtained fraudulently and by misrepresentation
The applicant argued that the patent was obtained fraudulently and by misrepresentation. The inventor was working for CPG laboratories at the time of filing of the patent, and therefore the patent should have been filed in the name of his employer. Furthermore, the applicant argued that the inventor was aware of the various SHM projects of CPG laboratories and therefore, in view of this, was aware that the invention was not his own intellectual property.
From the submissions of the applicant, it appeared that the inventor was involved in SHM monitoring, and that his employer, CPG Laboratories, was involved in SHM projects in Singapore, which included installation of SHM and testing of fibre optic sensors. There was found a likelihood that as the invention was also directly related to SHM projects and fibre optic sensors, it was developed as part of the duties of the inventor while at CPG Laboratories.
The hearing officer concluded that the invention of the patent was developed during the course of the inventor’s employment, and as part of his normal duties, with CPG Laboratories. As such, the rightful owner of the invention at the time of filing of the patent application was CPG Laboratories, and therefore the inventor misrepresented himself to the Registrar as the owner of the invention. This led the Registrar to grant the patent to a person to whom the invention did not belong.
Consequently, the hearing officer found that the inventor obtained the patent by misrepresenting himself as the owner of the invention, when it should have belonged to his employer, CPG laboratories. The patent was therefore revoked.