Apex court rules NUH and software firm are joint owners of contested patent

SINGAPORE - A court fight between the National University Hospital (NUH) and a software engineering company, over who gets to patent a system to manage the collection of patient samples, has ended in a draw.

Both NUH and Cicada Cube had worked together to develop the system, which allows samples to be collected from hospital patients in an automated manner for laboratory testing.

But a dispute over the patent went all the way to the Court of Appeal, where each side argued that it should be the sole owner of the patent because only their respective employees were responsible for the heart of the invention.

The apex court, in a written judgment released on Tuesday (Aug 28), dismissed both appeals. It upheld a High Court decision that NUH and Cicada Cube both contributed to the invention and were entitled to joint ownership of the patent.

The invention at the centre of the case was developed as part of the National Healthcare Group's move in 2004 to digitise the clinical care processes in its hospitals, which included NUH.

In NUH's case, an additional component dealing with sample collection was required to enable to have a complete electronic laboratory trail, from the ordering of tests to the reporting of results.

The hospital appointed Cicada Cube, a Singapore company founded by Dr Danny Poo Chiang Choon and Dr Anil Kumar Ratty, to develop software for this purpose.

NUH's chief of the department of laboratory medicine, Dr Sunil Kumar Sethi, and its principal medical technologist, Mr Peter Lim, were also involved in the project.

As NUH lacked the funds, Cicada applied for funding from The Enterprise Challenge initiative under the Prime Minister's Office. A tripartite agreement was signed in March 2006, under which pilot trials of the system were to be conducted.

In August 2007, Cicada Cube filed an application for the patent of the system, naming itself as the sole proprietor and Dr Poo and Dr Ratty as the inventors.

The patent was granted in July 2010.

In July 2012, NUH challenged Cicada Cube's entitlement to the patent. It applied to be replaced as sole proprietor of the patent, with Dr Sethi to be named the inventor.

In February 2015, the Registrar of Patents declined to deal with the "complex" matter involving contractual issues.

NUH took its case to the High Court the following month, asking for Dr Sethi and Mr Lim to be named as the rightful inventors.

Cicada Cube opposed NUH's application, arguing that its founders were the ones who came up with the inventive concepts.

Last year, a High Court judge found that both Cicada and NUH were jointly entitled to the ownership of the patent, after concluding that Dr Sethi, Dr Poo and Dr Ratty were joint inventors.

Both sides appealed. But a three-judge Court of Appeal agreed that Dr Sethi, Dr Ratty and Dr Poo had jointly formulated the inventive concepts.

Dr Sethi had materially contributed to the proposals and papers detailing the invention in the patent, while Dr Ratty and Dr Poo had contributed their software expertise, said the court.

The 52-page judgment, penned by Judge of Appeal Tay Yong Kwang, also clarified the procedures and principles to be applied when determining the question of patent entitlement.