By Howard Lee
Facing a long-drawn and uphill lawsuit with the Ministry of Defence over a patent issue, Dr Ting Choon Meng, an innovator and medical professional, decided to withdraw his case due to mounting legal costs and a battle for which he saw no end in sight.
Even worse, given that Mindef is now demanding about S$580,000 in legal fees, to have his patent revoked and assign the rights to the Ministry, Dr Ting is looking at the very grim prospects of closing down his company Mobilestats Technologies Pte Ltd, the company holding the patent rights to his invention, the Station With Immediate First-Aid Treatment (SWIFT) vehicle.
“I am completely disheartened,” said Dr Ting. “After this incident, suffice to say that I have lost confidence in Singapore’s ability to be a global IP hub.”
What made his case even more poignant is that Dr Ting was appointed to the board of directors for the Intellectual Property Office of Singapore (IPOS) since April 2013. He has since stepped down in January 2014, after he withdrew his case against Mindef.
“It has come to a point whereby I am honestly convinced that there is no true conviction right at the top of our government for Singapore to be transformed into a Global IP Hub,” he had written in his resignation letter.
“Recent events and processes in my own encounter have unfortunately shown me that without real conviction and internalization from the top, what we are trying to do in IPOS are but lip service.”
International certification for innovation
Dr Ting and his partners invented SWIFT, effectively a quick-deployment first aid station for crisis use, after the 11 September 2001 attacks on the US. Television footage of 9/11 made him realise that a vehicle-based medical facility would be a great game-changer in managing casualties during crises.
Subsequently, he applied for patent rights for his invention in no less than nine countries and successfully obtained the rights to intellectual property (IP) in almost all of them, including his home country Singapore.
His application to IPOS was filed on 27 December 2002, whereby it received a few rounds of checks through the reputed Danish Patent and Trademark Office, before it was finally approved on 6 July 2005.
Dr Ting and his partners continued to file for patent rights in eight other countries and regions, and received similar approvals in Australia, Japan, Israel, Taiwan, Malaysia, Hong Kong, the United States of America and Europe.
During the long journey of certifying the IP for SWIFT, Dr Ting and his partners presented the concept to Commissioner of the Singapore Civil Defence Force Singapore Civil Defence Force, Mr James Tan, in 2004 and was asked to help build a prototype for trial purposes.
SCDF eventually called for a tender in 2006 for vendors to manufacture SWIFT, and within the tender documents, indicated that interested bidders need to first sign a licensing agreement with Mobilestats before SCDF would consider their bid. The SWIFT vehicles went on to serve its operational needs, and were publicised several times as an icon of “SCDF innovation”.
“It needs to be ruggedized”
However, Dr Ting had a less pleasant experience with Mindef. At a trade fair in 2005, Dr Ting spoke to BG (Dr) Wong Yue Sie, then chief of the SAF Medical Corps, about the SWIFT vehicle that was on display.
“He told me that changes would have to be made to the vehicle if it were to be adapted for SAF’s use,” recounted Dr Ting. “For example, the vehicle would have to be painted to camouflage and it needed to be ruggedized. I told him that such changes would not be a problem, but I informed him the vehicle was patented.”
“He told me that he would contact SCDF and said to me that, “maybe we can do it on our own” or words to that effect. I remember that clearly because I remember telling him that he could not do that because the vehicle was patented.”
Dr Ting never heard from Mindef since. However, in April 2009, the Defence Science and Technology Agency called a tender to procure a “Mobile First-Aid Post”. While the tender required bidders to obtain licensing agreements for IP, DSTA’s tender did not specifically mention Dr Ting’s SWIFT, as SCDF’s has done. The contract was eventually awarded to Syntech Engineers Pte Ltd for production, which did not contact Dr Ting or his partner about the patent.
“In fact, I didn’t know that they infringed our IP until we saw the vehicle exhibited at National Day Parade 2011,” said Dr Ting. It was supposedly the same vehicle that was featured in the 2011 National Day Parade, apparently as a fully operational model.
Intention to infringe?
Dr Ting decided to pursue the legal route with Mindef. “I can’t take it up with the vendor – they will just throw it back to Mindef, because they set out the tender. In any case, it was Mindef who drew up the specifications, they decided on the vehicle, so they should uphold the IP.”
Curiously, in the exchange of legal letters, Dr Ting received a letter from Syntech, dated March 2009 and addressed to Mindef, outlined the company’s clear intent not to pay any heed to Dr Ting’s patent. Syntech wrote:
“We noted your concern with regards to the possible infringement of their patent rights under their SG Publication Number 113446. Together with our legal advisors, we have studied their patent design as compared to our Medical Shelter design submitted under Tender Ref No. 7108105610. We have conclude that there is no infringement of their patent rights. Moreover, we have also concluded that their patent lacked novelty and/or inventive step… As such, it will be very difficult for them to defend their patent rights.”
“It’s clear that Mindef is aware of potential infringement and had asked Syntech about it, but the company has decided not to obtain the IP license from us,” said Dr Ting. “Why did Mindef let that happen? Instead, they have effectively decided that our IP can be contested. And this was after IPOS has certified the patent!”
War of attrition
What Dr Ting did not count on was that the case would drag on for two years, costing him a fortune that effectively outweighed any licensing fee he would have been able to obtain from a successful case.
“It’s a war of attrition,” he said. “Mindef not only had the Attorney General defending them, they also contracted Wong and Leow. Why did they need so many lawyers? They kept delaying the case, claiming that their witness was not available. Meanwhile, every delay cost me in legal fees. I have no more money to fight this case.”
Eventually, Dr Ting decided to drop the case in January 2014, as the legal cost was too high for him to bear.
Just as perturbing was Mindef’s actions to “settle” the case. Dr Ting had offered them settlement terms indicating that each party pay for their legal fees, that he would not claim IP license fees for the vehicles Mindef has already built and allowing them royalty-free use for up to three years. However, charges will apply for subsequent vehicles built by Mindef. Fairly reasonable, he thought.
However, just two weeks before the scheduled trial, Mindef dropped a bombshell with their “counter-offer”: Dr Ting had to pay for Mindef legal costs, drop all claims to IP, and surrender his patent for SWIFT in Singapore as well as for the other seven countries the patent is registered in. This meant that Dr Ting not only lost the right to claim damages for the original infringement, but can no longer exercise his patent rights to SWIFT with other developers anywhere else in the world.
Just as strangely, although the courts awarded Mindef the right to revoke Dr Ting’s patent for SWIFT in October 2014, he heard from his sources that the agency has to date not gone to IPOS to complete the revocation.
“When I dropped the case, my conditions was that I would not claim for the vehicles Mindef has made, so long as they stop infringing on my IP,” said Dr Ting. “Instead, they countered by demanding that I pay their legal fees, and grant them free use of the patent.”
Meanwhile, Wong and Leow LLC slapped him with a legal bill of about S$580,000. Dr Ting had no more money to pay, and would likely have to put the company in receivership. Which means any party that takes over Mobilestats would still have the IP rights to SWIFT, until Mindef chooses to revoke it with IPOS.
“I honestly have no idea what Mindef is now planning to do with the IP for SWIFT,” said Dr Ting. “What I do know is that Mindef has produced up to 58 copies of the same vehicles. What for? I was a battalion commander in the Medical Corps before, and by my estimate, the entire SAF would only need about 12 to 14 SWIFT vehicles for its entire operational needs. Why produce 58?”
In its response to this article, MINDEF has issued a response on 20 January stating,
1. MINDEF did not infringe any patent as one can’t infringe a patent that was never valid in the first place.
2. The case was actually a commercial dispute between MobileStats Technologies and Syntech Engineers, which supplied the mobile BCS to MINDEF. As the manufacturer of the mobile BCS, the supplier, not the consumer, is responsible for honouring valid patents. MINDEF’s actions were correct and above board. All of MINDEF’s suppliers are required to uphold Intellectual Property laws and obtain the necessary licenses so that MINDEF is free to use the products that it have paid for.
3. As to the clarification on whether did MINDEF sought to destroy MobileStats with the prolonged court case and the demand for the payment of $580K, it gave a non-answer by stating that the case was not initated by it and gave no response to the point that it took two years for them to come up with a key witness and that they never submitted any evidence to support their case.
Editor’s note: An earlier version of the Article had made statements against Wong & Leow LLC which were false and without foundation and that the Article has therefore since been corrected. TOC unreservedly apologises to Wong & Leow LLC for the statements.