High Court has power to revoke patents, Apex court rules in Sun Electric-Sunseap case

A file photo of the Supreme Court of Singapore. In a case involving two Singapore-based solar power companies, the Court of Appeal held there are two categories of patent revocation cases - one of which can be heard in the High Court.
A file photo of the Supreme Court of Singapore. In a case involving two Singapore-based solar power companies, the Court of Appeal held there are two categories of patent revocation cases - one of which can be heard in the High Court.PHOTO: ST FILE

It has jurisdiction in one of two distinct categories of cases, rules Court of Appeal

The Court of Appeal has reversed a High Court decision and ruled that the latter does have the jurisdiction to hear an application to revoke a patent - a ruling that will have consequences for future patent cases.

In a case involving two Singapore-based solar power companies, the Court of Appeal held there are two categories of patent revocation cases - one of which can be heard in the High Court.

In such cases, the defendant in patent infringement proceedings must challenge the validity of a patent and seek a revocation order, giving the High Court the jurisdiction to determine the validity of the patent based on the relevant sections of the Patents Act (PA).

"Upon a finding of invalidity, the High Court has the power to order that the patent be revoked," ruled the appeal court.

However, it said the second category of cases - which is "quite different" - involves applications for revocation brought independently of infringement proceedings. "In other words, the applicant is the 'attacker' who has chosen to challenge the validity of the patent on its own accord," the appeal court explained.

In such standalone applications, "the High Court does not have original jurisdiction to hear applications for revocation because its jurisdiction to do so has been excluded by section 82(2) read with section 82(1) of the PA".

For such second-category stand-alones, the application is to be heard by the Registrar of Patents and the High Court's role is limited to hearing appeals from the Registrar's decisions.

 

In the case in question, Sun Electric (SE) sued Sunseap Group, a holding company for a licensed electricity retailer and developer of rooftop photovoltaic systems, claiming Sunseap had infringed its patent for a power grid system and a method of determining power consumption.

Sunseap denied the allegations and, made a counterclaim to have SE's patent revoked.

SE then sought to strike out Sunseap's bid to revoke the patent, but failed before a High Court assistant registrar. It then succeeded on appeal to the High Court in 2017.

Last year, Sunseap appealed against this decision to the apex court through its lawyers from Rajah & Tann.

The court allowed the appeal and in delivering judgment last week, Judge of Appeal Tay Yong Kwang said: "We are not able to agree with the conclusion that the High Court lacks original jurisdiction in all cases to hear applications for revocation of a patent."

The court, which also included Judges of Appeal Andrew Phang, Judith Prakash and Steven Chong, and Justice Belinda Ang, said: "In our view, there are two distinct categories of cases which must be dealt with separately."

In a client update issued on the case, Rajah & Tann lawyers led by Mr Lau Kok Keng, said: "The (2017) High Court decision had implications on previous court decisions involving patent revocation, since a lack of jurisdiction would mean that those proceedings were a nullity."

The court found the present case fell within the first category, allowed the appeal and directed that the defence papers be amended to accord with the legal principles it set out.

SE was ordered to pay $36,000 in costs and disbursements for its appeal and further costs for the 2017 High Court hearing since the finding was reversed.

The case is expected to be heard later this year.

A version of this article appeared in the print edition of The Straits Times on January 19, 2019, with the headline 'High Court has power to revoke patents: Apex court'. Print Edition | Subscribe