If you have been to Singapore, you would have noticed that many taxis there are equipped with a rooftop display unit consisting of multi-coloured LED lights that indicate the hiring status of the taxis. It may come as a surprise to you to find out that this same display unit was the subject of a patent revocation action that was recently decided on by the Singapore High Court after almost two years. The patent in question is Singapore Patent No. 89534 which was filed on 4 October 2000 and granted on 30 April 2004.
Dien Ghin Electronic (S) Pte. Ltd. (the plaintiff), a Singapore company that supplies the rooftop display units to three local taxi fleet operators, took an action at the High Court against Mr. Khek Tai Ting (the defendant) who owned the said Singapore Patent. The plaintiff sought a declaration that they were not infringing the patent and called for the patent to be invalidated. In his counterclaim, the defendant alleged that the plaintiff was infringing the same patent.
The plaintiff argued that the defendant’s patent should be revoked because:
- the invention in question was not patentable because it was not new and lacked an inventive step at the time of filing of the patent;
- the patent specification did not sufficiently disclose the invention; and
- the invention in question was not invented by the defendant and he has misrepresented himself as the inventor and the owner at the time of filing of the patent.
The High Court found that the invention was not new and inventive at the time of filing of the patent because of four prior art documents submitted by the plaintiff. Chan Seng Onn J, in his decision, elaborated on how each of the cited prior art documents killed the novelty and the inventiveness of each of the claims.
The Court also found that the description of the invention in the specification was not sufficient to be considered as an enabling disclosure. In particular, the Court held that the specification does not explain how the entire taxi display unit may be assembled to form a functional finished product.
Notwithstanding the above issues, the Court held that the defendant is the actual inventor of the invention and therefore the owner of the invention. The plaintiff had argued that the defendant was not a technical person and therefore did not have the expertise to invent the invention in question. The plaintiff supported this argument with a testimony from one Mr. Peh Moon Pak, who was the defendant’s ex-employee. He testified that although the invention was devised by the defendant, the actual electronic circuits of the invention were developed by one Mr. Ng Geok Hwa, something the defendant had admitted during the trial. The Court considered this view by relying on Section 2 of the Singapore Patents Act which defines an inventor to be the actual deviser of the invention, and this means that a person can claim to be the inventor of an invention even though precise details of how the inventive concept comes to be realized into a functional product may be worked out by other persons.
Considering the above issues, the Court had declared that Singapore Patent No. 89534 to be revoked and not enforceable. The Court also rejected the plaintiff’s counterclaim for infringement.
At the time of writing this article, it remains uncertain whether the defendant will appeal against the High Court’s decision at a higher court.
Our Regional Office in Singapore, KASS Regional IP Services Pte. Ltd., can assist you with any requests or enquires that you may have on any South East Asian IP matters. Please do not hesitate to contact us at ipr@kass.com.sg
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