Patent revocation: Court of Appeal reserves judgment on High Court’s jurisdiction and powers

by Guo Rendi

In what circumstances do the High Court have the power to revoke patents? Can the High Court do so at first instance in patent infringement proceedings, where the defendant seeks to have the patent revoked by way of a counterclaim? These confusing yet challenging questions had made their way before a five-judge Court of Appeal on Tuesday (21st August).

The question of High Court’s jurisdiction to revoke patents arose from defence pleadings in the context of a suit, brought by solar energy retailer Sun Electric against Sunseap Group and its subsidiaries, Sunseap Energy and Sunseap Leasing, for infringement of patent in respect of a power grid system and a method of determining power consumption at building connections in the system. Sunseap contested the infringement claims and included, as part of their defence, a counterclaim for the patent to be revoked, to which Sun Electric responded, inter alia, by applying to strike out the counterclaim.

It failed before an Assistant Registrar at first instance, but Justice George Wei struck out the counterclaim on appeal, holding that the High Court has no jurisdiction to revoke a patent by way of a counterclaim. Sunseap’s lawyers from Rajah & Tann, led by Mr Lau Kok Keng, then appealed to the Court of Appeal, seeking to have the counterclaim for patent revocation restored for trial.

The court – led by Judge of Appeal Andrew Phang and which also includes Judges of Appeal Judith Prakash, Tay Yong Kwang and Steven Chong, as well as Justice Belinda Ang – reserved judgment at the conclusion of the two-hour appeal hearing.

During the hearing, Mr Lau first argued that the High Court has the original jurisdiction to hear patent revocation proceedings at first instance, and as a standalone claim; i.e. there is no need for infringement claims to have concurrently existed at the time of a patent revocation claim.

Justice Prakash raised her concerns with Mr Lau’s general reliance on the Supreme Court of Judicature Act to support the jurisdiction of the High Court to hear standalone patent revocation claims, noting that whenever a plaintiff took out a writ or summons and served the requisite documents on the defendant, it only notifies the court of the plaintiff’s intention to file a suit but does not confer jurisdiction on the court in the first place.

Mr Lau also argued that the court ought to have the power to revoke patents as a consequential remedy upon a finding of invalidity, as allowing an invalid patent to remain on the register would amount to misrepresentation.

On the other hand, the Judges of Appeal were taken by surprise when Sun Electric’s legal team from Ravindran Associates, led by Mr M Ravindran, presented their oral arguments. Mr Ravindran had slightly deviated from his position in written submissions and, contrary to a minor aspect of Justice Wei’s judgment, when he stated that the High Court did have the power to revoke patents, but only if the patent had been found to be invalid. He maintained the position that the High Court had no jurisdiction in respect of a patent revocation counterclaim.

Justice Prakash, Justice Tay and Justice Chong all questioned the consistency of this argument. They expressed their views that it was illogical for a High Court to exercise its power to revoke a patent, on its own accord and upon a finding that the patent is invalid, when a defendant was not allowed to include a counterclaim for patent revocation as part of its defence in the first place. Justice Prakash also noted that this appeared to be an issue with the form, rather than the substance, of the claims and pleadings.

Justice Phang characterized the matter in dispute as a “false dichotomy”, with Mr Ravindran clarifying that they were trying to “provide alternative solutions to the court”, given the possibility of a “lacuna” in the law of intellectual property.