Court has no jurisdiction to revoke patents

The High Court has ruled, in a departure from 13 previous cases, that it has no jurisdiction to revoke patents, when it rejected a move by a defendant to have one revoked.

The court noted that the 13 past decisions did not raise objections to the right of a defendant to counterclaim and revoke a patent on the grounds that it was invalid.

"With due respect and deference to those cases, the fact that there is a practice does not provide a basis to establish jurisdiction as a matter of law. Nor can practice trump law," said Justice George Wei in judgment grounds issued on Thursday.

Sun Electric, which sells solar energy to consumers here, had sued a holding company for a licensed electricity retailer and developer of rooftop photovoltaic systems.

Sun claimed the company, Sunseap, had breached Sun's patent, which was for a power grid system and a method of determining power consumption at building connections in the system.

Sunseap denied the allegations and, among other things, made a counterclaim to have the patent revoked.

Sun Electric then sought to strike out Sunseap's bid to revoke the patent, but failed before a High Court assistant registrar.

Through a team of lawyers led by M. Ravindran, the company then appealed to the High Court in June.

Mr Ravindran argued that the right to apply to revoke patents was confined to the Registrar of Patents and Sunseap could not start revocation proceedings in the High Court, not even by a counterclaim.

But defence lawyer Lau Kok Keng cited past cases in which such proceedings to revoke a patent had been brought to the High Court by counterclaim, and noted that academic opinion also supported such moves.

Justice Wei said the cases referred "implicitly suggest" the High Court may hear such cases but "it does not appear that this question was ever directly raised, contested or ruled upon in any of the cases. It follows that these decisions cannot be treated as precedents to determine the question of law at hand."

In his 81-page judgment grounds, Justice Wei analysed the relevant provisions of the Patents Act and found the High Court did not possess jurisdiction to revoke a patent, or by way of a counterclaim.

The judge allowed Sun Electric's appeal to strike out the bid by Sunseap to revoke its patent.

Justice Wei acknowledged the decision would draw public interest and be of concern, adding that there was much to be said to reconsider anew, at an appropriate time, the court's jurisdiction and patent procedures by the relevant law reform body and Parliament. - Vijayan, Straits Times, Singapore

LES Malaysia New Office Bearers 2017/2018

On 29 Sep, 2017, the Annual General Meeting of the Licensing Executives Society Malaysia was held. The following executive officers were elected:

President: Michelle Loi
Vice President: Anita Kaur
Secretary: Dennis Tan
Assistant Secretary: Sri Sarguna
Treasurer: Jillian Chia
Committee members: Lim Pui Keng, Eddie Poh, Suaran Singh, Chong Tze Lin

LES Malaysia is the national section of LES International, an organization that advances the business of intellectual property globally.

IPO Phillipines Appointed as PCT International Search Authority

The Intellectual Property Office of the Philippines (IPOPHL) was appointed as an International Search Authority at the 57th WIPO General Assembly on 5 Oct 2017.

IPOPHL is the 23rd in the world and 2nd in ASEAN to be appointed as search authority. The appointment is a form of recognition over the patent bureau's capability in examining patent applications.

Josephine Santiago, director general of IPOPHL said that the bureau of patents undertook a number of improvements in the last two years in order to meet the requirements for appointment. These requirements are:

(1) sufficient number of technical and man power competence to carry out search and examination in required technical fields. There are 110 full time patent examiners.

(2) use of comprehensive commercial and publicly accessible databases covering patent and non-patent science and engineering databases.

(3) a comprehensive and multi-tiered quality management system namely, in process quality check, ISO QMS 9001:2008 and internal Patent Quality Review System (PQRS),

(4) recommendation by established international authorities, particularly the Japan Patent Office (JPO) and IP Australia.

Santiago also cited the vibrant Philippine economy and the country’s achievement of having a highly successful network of Innovation and Technology Support Offices or ITSOs. This network of research institutions and universities is a potential source of patent filings. The Philippines has also been identified by WIPO as a “hub for intellectual property creation and commercialization”. The UN Conference on Trade and Development (UNCTAD) ranked Philippines among the top 15 preferred investment destinations of multinational enterprises.

Philippines is the fifth most active country for patents after Singapore, Malaysia, Indonesia and Thailand.

Each search authority can set their own search fee. IPOPHL have not announced their search fee. Search fee by Offices of Australia, Japan, and Singapore are USD1688, USD1372 and USD1645, respectively.