• Skip to navigation
  • Skip to content
Davies Collison Cave Davies Collison Cave
Phone: 1800 636 588
  • Services
    Back Services Overview
    Service
    • Patents
      Back Patents Overview
      • Patent Drafting, Filing & Prosecution
      • Innovation Patents
      • Patent Searching
      • Patent Oppositions
      • IP Portfolio Management and Maintenance
      • Patent Litigation
      • Commercialisation and Licensing of Patents
      • New Zealand Patent Services
      • Patent Registration Services – South Pacific Region
      • Plant Breeder’s Rights
      • PCT Wheel English
      • PCT Wheel Chinese
    • Trade Marks
      Back Trade Marks Overview
      • Trade Mark Registration
      • Trade Mark Searching
      • Trade Mark Portfolio Management & Renewals
      • Domain Name Protection & Disputes
      • Business Name Protection
      • Plant Name Protection
      • Trade Mark Infringements & Enforcement
      • Trade Mark Commercialisation & Licensing
      • New Zealand Trade Mark Services
      • Pacific Island Trade Mark Protection
    • Designs & Copyright
      Back Designs & Copyright Overview
      • Design Registration
      • Design Infringements & Enforcement
      • Copyright Protection and Enforcement
    • Commercialisation
      Back Commercialisation Overview
      • Commercialisation and Licensing
      • Confidential Information
      • Competition Law and Consumer Protection Law
      • Privacy and Data Protection
    • Litigation & Dispute Resolution
      Back Litigation & Dispute Resolution Overview
      • IP Mediation
      • IP Litigation
      • Anti-counterfeiting
      • Parallel Imports
    • Overseas Applicants
      Back Overseas Applicants Overview
      • Overseas Applicants
      • Patent Filing Requirements in Australia and New Zealand
      • Trade Mark Filing Requirements in Australia and New Zealand
      • Design Filing Requirements in Australia and New Zealand
      • PCT Wheel English
      • PCT Wheel Chinese
    • Privacy and Data Protection
    • Technology, Media and Telecommunications
    Service Offerings
    • Patent Drafting, Filing & Prosecution
    • Innovation Patents
    • Patent Searching
    • Patent Oppositions
    • IP Portfolio Management and Maintenance
    • Patent Litigation
    • Commercialisation and Licensing of Patents
    • New Zealand Patent Services
    • Patent Registration Services – South Pacific Region
    • Plant Breeder’s Rights
    • PCT Wheel English
    • PCT Wheel Chinese
    • Trade Mark Registration
    • Trade Mark Searching
    • Trade Mark Portfolio Management & Renewals
    • Domain Name Protection & Disputes
    • Business Name Protection
    • Plant Name Protection
    • Trade Mark Infringements & Enforcement
    • Trade Mark Commercialisation & Licensing
    • New Zealand Trade Mark Services
    • Pacific Island Trade Mark Protection
    • Design Registration
    • Design Infringements & Enforcement
    • Copyright Protection and Enforcement
    • Commercialisation and Licensing
    • Confidential Information
    • Competition Law and Consumer Protection Law
    • Privacy and Data Protection
    • Technology, Media and Telecommunications
    • IP Mediation
    • IP Litigation
    • Anti-counterfeiting
    • Parallel Imports
    • Overseas Applicants
    • Patent Filing Requirements in Australia and New Zealand
    • Trade Mark Filing Requirements in Australia and New Zealand
    • Design Filing Requirements in Australia and New Zealand
    • PCT Wheel English
    • PCT Wheel Chinese
  • Industries & Technology
    Back Industries & Technology Overview
    • Agribusiness, Food and Nutrition
    • Arts, Marketing and Media
    • Biotechnology
    • Building and Construction
    • Chemical Engineering & Materials Science
    • Clean Technology and Energy
    • Electrical and Electronic Engineering
    • Engineering and Manufacturing
    • Fashion, Architecture and Design
    • Food, Beverages & FMCG
    • ICT & Software
    • Medical Devices & Technologies
    • Mining and Resources
    • Nanotechnology
    • Pharmaceuticals & Chemistry
    • Universities and Research
  • About DCC
    Back About DCC Overview
    • Our History
    • Awards
    • DCC News
  • Locations
    Back Locations Overview
    • Melbourne
    • Sydney
    • Brisbane
    • Singapore
    • Greater Western Sydney
    • Newcastle
    • Canberra
    • Geelong
    • Tasmania
    • Regional Australia
    • Adelaide
  • IP News
    Back IP News Overview
    • IP Articles
    • IP Update
    • IP Update Subscription
  • IP Info & Tools
    Back IP Info & Tools Overview
    • DCC Videos
    • Introduction to types of IP
    • Patent basics
    • Innovation Patents
    • Patenting process in Australia
    • Trade mark basics
    • Trade mark process in Australia
    • Trade mark process in NZ
    • Plant Name Protection
    • Copyright basics
    • Raising the bar guide
    • PCT Wheel English
    • TM Wheel
    • PCT Wheel Chinese
  • Our People
  • Careers
    Back Careers Overview
    • Current vacancies
    • General Career Enquiries
    • Trainee attorneys
    • IP law clerkship
    • Patent Internship Program
  • Contact
    Back
    Contact Us
    View all contacts
    • Phone Melbourne office +61 3 9254 2777
    • Fax Melbourne office +61 3 9254 2770
    • Phone Sydney office +61 2 9293 1000
    • Fax Sydney office +61 2 9262 1080
    • Phone Brisbane office +61 7 3011 9700
    • Fax Brisbane office +61 7 3011 9701
    • Phone Singapore office +65 6727 3777
    • Fax Singapore office +65 6727 3771
    • Phone Parramatta and Greater Western Sydney office +61 2 8896 6200
    • Fax Parramatta and Greater Western Sydney office +61 2 9262 1080
    • Phone Newcastle and The Hunter Region office +61 2 4960 8366
    • Fax Newcastle and The Hunter Region office +61 2 9262 1080
    • Phone Canberra office +61 2 6248 8063
    • Fax Canberra office +61 2 6248 6591
    • Phone Geelong office +61 3 5247 9334
    • Fax Geelong office +61 3 9254 2770
    • Phone Tasmania office 1800 636 588 (free call)
    • Phone Regional Australia office 1800 636 588 (free call)
    • Phone Adelaide office 08 7088 4878
    • Send an online enquiry
    Location
    • Melbourne
    • Sydney
    • Brisbane
    • Singapore
    • Greater Western Sydney
    • Newcastle
    • Canberra
    • Geelong
    • Tasmania
    • Regional Australia
    • Adelaide
  • Home
  • IP News
  • Cicada Cube Pte Ltd bugged by ownership issues

Related Industries

  • Electrical and Electronic Engineering
  • Engineering and Manufacturing
  • ICT & Software
  • Universities and Research

Cicada Cube Pte Ltd bugged by ownership issues

12 April, 2017 By Desmond Tan and Kristy Tan

In a case dealing with recognising inventors and ownership of a patent, the Singapore High Court (SGHC) recently ordered an employee of National University Hospital (NUH) to be named joint inventor and thus NUH to be named joint proprietor of a patent originally granted to Cicada Cube Pte Ltd (Cicada).1 Further costs and disbursements were awarded to NUH in the order of $100,000.  It is understood that both parties are dissatisfied and have appealed.  This case articulates the importance of identifying all relevant inventors in patent applications.

Background

National University Hospital (NUH) raised an action against Cicada Cube (Cicada) who was the proprietor of Singapore Patent No. 150390 (the “Patent”) entitled “Laboratory Specimen Collection Management System”.  The Patent listed two of Cicada’s founders and directors as the inventors.

NUH is part of a group of healthcare institutions, the National Healthcare Group (NHG), which embarked on a large project to digitise the clinical care processes in its hospitals.  As part of this project, Dr Sethi, an employee of NUH, was tasked with computerising the workflow of specimen testing in the laboratory. 

To this end, NUH appointed Cicada to develop software with regard to sample collection allowing a complete electronic laboratory trail from test ordering right through to result reporting.  

Subsequently, Cicada filed Singapore Patent application no. 2007057508 relating to the developed software which was granted.  This resulted in a dispute between NUH and Cicada as to the actual inventors and owner of the patent.  JC Aedit Abdullah systematically addressed the issues as follows:

  • identifying the inventive concepts; 
  • who contributed to the inventive concepts; and
  • who is the rightful owner of the Patent.


Identifying the inventive concepts 

JC Aedit Abdullah characterised the inventive concept as the “heart” of invention and requires the identification of the core/kernel/essence of the invention [Generics (UK) Ltd v H Lundbeck A/S].  To do so, the patent is to be construed as a whole. 

The judge identified two inventive concepts, which differed from both Cicada and NUH’s allegations, listed below:

  • the interaction between the processes for ordering tests and the processes for collecting specimens; and 
  • specification for the taking of specimens.

Who contributed to the inventive concept(s)?

S. 2(1) of the Singapore Patents Act defines an "inventor" as being the “actual deviser” of the invention.  JC Aedit Abdullah looked to guidance from the courts which had described the inventor as the person who formulated or contributed to the formulation of the inventive concept.  The inventor may lack the capability to design or put into place the precise details of realising the inventive concept into a functional product.2

The judge found Dr Sethi to be the deviser of the 1st inventive concept.  Evidence of meetings taking place before Cicada’s involvement in the project was shown to include discussions of the inventive concept.  In addition, details of the invention were drafted by Dr Sethi as part of a document to secure funding for the development of the software. 

With regard to the second inventive concept, NUH failed to discharge the burden of proof that Dr Sethi was the person who contributed to the concept.  Thus, JC Aedit Abdullah reinforced that the burden lies on the plaintiff to disprove the fact that the inventors as listed on the Patent did not come up with the second inventive concept.

Who was the rightful owner of the Patent?

Another issue was raised questioning if Dr Sethi was an “employee” of NUH.  Dr Sethi’s contract with NUH referred to an “appointment” not an “employment”.  In addition, it was tied to his position as employee of National University of Singapore (NUS).

The judge ruled that Dr Sethi was an employee of NUH and relied heavily on the fact that NUH was making monthly contributions to Dr Sethi’s Central Provident Fund (“CPF”) account and that he was entitled to benefits such as leave.

Were the inventive concepts conceived during normal course of duties?

The judge was not persuaded that Dr Sethi’s normal duties are purely clinical in nature as no express provisions in his contract imposed a duty to research, innovate or invent.  The judge declared that as the Chief of NUH’s Department of Laboratory Medicine, Dr Sethi’s duties include a role to fulfil NUH’s mission to provide “care of the highest quality” by resolving problems and improving the hospitals operations and workflow.  The judge urged courts to recognise that strong innovative roles are inherent in many jobs even though not explicitly mentioned within normal job scope. 

Conclusion

The judge ordered Dr Sethi to be named joint inventor and thus NUH to be named joint proprietor of the Patent.  Further costs and disbursements were awarded to NUH in the order of $100,000.  This case articulates the importance of identifying all relevant inventors in patent applications.

 


End notes

  1. ^ National University Hospital (Singapore) Pte Ltd v Cicada Cube Pte Ltd [2017] SGHC 53
  2. ^ Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax) [2011] 3 SLR 227
Filed Under: IP article IP Articles Case Studies Patents

Get in touch about this article

  • Desmond Tan
    Desmond Tan

    Contact Desmond

  • Kristy Tan (Trainee Patent Attorney)
    Kristy Tan

    Trainee Patent Attorney

    Contact Kristy

Useful Tools

  • Download pdf
  • Email
  • Tweet
  • Share via linkedin

Share this on...

Twitter LinkedIn

You may also be interested in…

  • Clarification on Obligations of Confidentiality – Start-ups Take Note!

    18 April, 2018

    Rohm and Haas Electronic Materials CMP Holdings, Inc v NexPlanar Corp and another [2017] SGHC 310 This dispute revolves around a patent...

  • Intellectual Property Protection in Cambodia

    16 April, 2018

    Cambodia is a developing country supported mainly by three pillars of economic development - agriculture, tourism and textiles. With an...

  • Amendments Clarify New Zealand Patent Practice

    12 April, 2018

    Changes introduced with the Patents Amendment Regulations 2018 have clarified New Zealand patent practice   The New Zealand...

Return to
IP News
Questions?
Contact us

Get in touch about this article

  • Desmond Tan
    Desmond Tan

    Contact Desmond

  • Kristy Tan (Trainee Patent Attorney)
    Kristy Tan

    Trainee Patent Attorney

    Contact Kristy

Useful Tools

  • Download pdf
  • Email
  • Tweet
  • Share via linkedin

Quick Links

  • Our People→
    • Patent attorneys Melbourne
    • Patent attorneys Sydney
    • Patent attorneys Brisbane
    • Trade mark attorneys Melbourne
    • Trade mark attorneys Sydney
    • Trade mark attorneys Brisbane
    • IP lawyers Melbourne
    • IP lawyers Sydney
    • IP lawyers Brisbane
  • Services→
    • Patents
    • Trade Marks
    • Designs & Copyright
    • Commercialisation
    • Litigation & Dispute Resolution
    • Overseas Applicants
  • IP News→
    • IP Articles
    • IP Update
    • IP Update Subscription
  • IP Info & Tools→
    • DCC Videos
    • Introduction to types of IP
    • Patent basics
    • Innovation Patents
    • Trade mark basics
    • Copyright basics
    • PCT Wheel
  • Key Locations→
    • Melbourne
    • Sydney
    • Brisbane
    • Singapore

Servicing Australia, New Zealand & Asia Pacific

  • Melbourne

    +61 3 9254 2777

  • Sydney

    +61 2 9293 1000

  • Brisbane

    +61 7 3011 9700

  • Singapore

    +65 6727 3777

  • Parramatta and Greater Western Sydney

    +61 2 8896 6200

  • Newcastle and The Hunter Region

    +61 2 4960 8366

  • Canberra

    +61 2 6248 8063

  • Geelong

    +61 3 5247 9334

  • Tasmania

    1800 636 588 (free call)

  • Regional Australia

    1800 636 588 (free call)

  • Adelaide

    +61 8 7088 4878

Website by August

© 2006-2018 Davies Collison Cave. Disclaimer & Privacy