Revocation of a patent for misrepresentation under section 80(1)(f)(ii) of the Singapore Patents Act
In a recent case at the Singapore Patent Office, an application was filed by Cambrian Engineering Corporate Pte Ltd (the applicant) to revoke Singapore Patent No. 126809.
The patent was filed in the name of Song Dong Qing (the inventor) on 6 May 2005 and was assigned from the inventor to FOSTA Pte Ltd (the proprietor) after grant. The invention relates to a sensor and related installation method for monitoring deformations in an object. The sensor was designed such that it is suitable for long term measurements.
Section 80(1)(f) of the Singapore Patents Act
The applicant sought to revoke the patent on a number of grounds under Section 80(1)(a), (d), (e) and (f) of the Patents Act. The Registrar disagreed with the applicant on the first three grounds but found the patent to be liable for revocation under Section 80(1)(f)(ii) for misrepresentation.
Section 80(1)(f) of the Patents Act reads:
80. —(1) Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds:
The patent was obtained —
(ii) on any misrepresentation; or
(iii) on any non-disclosure or inaccurate disclosure of any prescribed material information, whether or not the person under a duty to provide the information knew or ought reasonably to have known such information or the inaccuracy;
Applicant for revocation must show that misrepresentation deceived the registrar of patents into deciding to grant the patent
The applicant provided a number of reasons why it considered that the patent was obtained fraudulently and/or based on misrepresentation. In considering these reasons, the Registrar referred to Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Others  3 SLR 389, in which the Judge at , in reference to Whitford J in Intalite International N.V. v Cellular Ceilings Ltd (No 2)  RPC 532, considered that the onus is on the applicant for revocation to show that the misrepresentation actually deceived the Registrar of Patents into deciding to grant the patent.
Considerations under section 49 of the Patents Act
One of the applicant’s assertions was in relation to the employment of the inventor at the time of filing that patent.
Under Section 49 of the Patents Act, an invention made by the employee shall be taken to belong to the employer if made during the course of his normal duties or if it results from carrying out his duties, or as part of his obligation to further the interests of the employer’s undertaking.
The applicant argued that the inventor was a public servant at the time of filing of the patent as he was employed by CPG Laboratories Pte Ltd, which was a subsidiary of CPG Corporation, the corporatized entity of the former Singapore Public Works Department. The applicant also claimed that the inventor used the knowledge obtained as part of this employment in CPG laboratories to develop the sensor covered by the patent. Accordingly, the application for the patent should have been filed in the name of CPG laboratories, or CPG Corporation, and should not have been filed in the name of the inventor.
Registrar finds inventor misrepresented himself as the owner of the invention
The Registrar was unable to gain any detailed insights into what the duties of the inventor were during the course of his employment with CPG Laboratories, due to the lack of submissions from the proprietor or the inventor. However, based on the submissions of the applicant, the Registrar noted that the inventor was involved in structural health monitoring (SHM), and that his employer, CPG Laboratories, was involved in SHM projects in Singapore, which included installation of SHM and testing of fibre optic sensors. Hence, the Registrar found that there was a likelihood that given the invention is also directly related to SHM projects and fibre optic sensors, it was developed as part of the duties of the inventor.
The Registrar noted that neither the inventor nor the proprietor had countered the arguments of the applicant. Hence, according to Rule 80(4), in the absence of any evidence to the contrary, it was taken that the facts before the Registrar were conceded.
The Registrar therefore found that the rightful owner of the invention at the time of filing the patent application was CPG Laboratories and that the inventor did misrepresent himself to the Registrar as the owner of the invention. This had led the Registrar to grant the patent to a person to whom, by virtue of Section 49, the invention did not belong. The patent was therefore revoked under Section 80(1)(f)(ii) of the Patents Act for misrepresentation.
The above case provides an example on how a Singapore patent might be revoked under Section 80(1)(f)(ii) of the Patent Act for misrepresentation. In this example, the misrepresentation was due to the inventor applying for a patent that did not belong to him, by virtue of Section 49, which led the decision of the Registrar of Patents to granting the patent to him.
To discuss this topic further please do not hesitate to contact our Singapore patents team.
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