Power to the High Court to hear revocation proceedings

Power to the High Court to hear revocation proceedings

Power to the High Court to hear revocation proceedings

Sunseap Group Pte Ltd and others v Sun Electric Pte Ltd [2019] SGCA 4

Further to our article reporting the High Court’s decision that it does not have original jurisdiction to hear proceedings for patent revocation, the Court of Appeal has now partially overturned this decision.

It has been clarified that the High Court may rule on a cross-claim for revocation made in infringement proceedings, but may not hear a claim for revocation made other than as a defence to infringement.


Facts of the case

Sun Electric Pte Ltd (Respondent) is a retailer of solar energy to consumers in Singapore and is the proprietor of Singapore Patent Application No. 10201405341Y (Patent). Sunseap Group Pte Ltd (Appellant) is a holding company for its subsidiary businesses in electricity retailing and rooftop solar photovoltaic systems. The Respondent asserted that the Appellant infringed some, but not all, of the claims of the Patent. The Appellant denied any infringement, and counterclaimed for revocation of the Patent. During the High Court (HC) proceedings, it was ruled that proceedings for patent revocation cannot be heard by the HC. An appeal against this decision was brought to the Court of Appeal (CA), with the following question being posed:

Does the HC have original jurisdiction to hear an application for the revocation of a patent?


High Court has original jurisdiction to hear infringement proceedings in which the validity of a patent is put in issue by way of defence and revocation of a patent as a relief is sought

The CA clarified that pursuant to section 67(1) of the Singapore Patents Act (SPA), a proprietor of a patent can bring proceedings in court in respect of any act alleged to infringe the patent. S 82(1a) of the SPA codifies that a defendant in infringement proceedings is entitled to challenge the validity of a patent by way of defence.

By S 82(1a) the HC therefore acquires jurisdiction to determine the validity of the patent, when validity is challenged by the defendant as a defence to infringement. If the defendant is able to successfully establish invalidity of the patent, the HC in exercising its original jurisdiction to determine the validity of a patent also has the power to revoke the patent (pursuant to s 91(1)).

It should be noted that the scenario above is based on the premise that all claims in the patent are asserted to be infringed.

In the scenario where some but not all the claims are asserted to be infringed, and the HC has found that the asserted claims are invalid, it would not be appropriate for the HC to exercise its power to revoke the entire patent. In this case, the defendant would be entitled to a declaration of invalidity in relation to the asserted claims. If the defendant wishes, he may subsequently initiate proceedings before the Registrar to invalidate the unasserted claims for the revocation of the patent.


High Court has appellate jurisdiction to hear proceedings independent of infringement proceedings

The CA further distinguishes the situation where a party, without having been sued for infringement, commences proceedings for revocation of a patent.

In this scenario, pursuant to s 82(1d) of the SPA, the party can only attack the patent by bringing his case before the Registrar. If the party is dissatisfied with the Registrar’s decision, he may appeal to the HC under s 90(1) of the SPA and thereafter, if necessary, to the CA.


Some Comments

Parties to proceedings for revocation of a patent should take note of the appropriate forum and how the pleadings should be phrased.