Case Details
- Citation: [2018] SGIPOS 14
- Court: Intellectual Property Office of Singapore
- Date: 2018-08-01
- Judges: Ms See Tho Sok Yee
- Plaintiff/Applicant: Singapore Shipping Association and Association of Singapore Marine Industries
- Defendant/Respondent: Hitachi, Ltd
- Legal Areas: Patents and inventions — Revocation
- Statutes Referenced: Patents Act
- Cases Cited: [2018] SGCA 18, [2018] SGIPOS 14
- Judgment Length: 16 pages, 8,805 words
Summary
This case involves an application by the Singapore Shipping Association and Association of Singapore Marine Industries to revoke Singapore Patent No. 161075, which is held by Hitachi, Ltd. and relates to a ballast water management system (BWMS) for ships. The Applicants argued that the patent lacks an inventive step, does not disclose the invention clearly and completely, extends beyond the original disclosure, and is one of multiple patents for the same invention. After considering the parties' submissions and expert evidence, the Hearing Officer found that the Applicants had established that the patent lacks an inventive step and should be revoked.
What Were the Facts of This Case?
Singapore Patent No. 161075, entitled "Ballast water treatment system", was filed on 4 November 2008 and granted to Hitachi, Ltd. on 7 July 2015. The invention relates to a BWMS for ships, which is used to control the stability of ships by managing the ballast water taken on board.
The Applicants, the Singapore Shipping Association and Association of Singapore Marine Industries, filed a joint application to revoke the patent on 22 June 2017. They argued that the invention lacks an inventive step, is not disclosed clearly and completely, extends beyond the original disclosure, and is one of multiple patents for the same invention.
The Proprietor, Hitachi, Ltd., initially indicated that it would file a counter-statement but later informed the Registrar that it would not be doing so for business reasons. Under the Patents Rules, this meant that the Applicants' assertions would be considered conceded, except to the extent they were contradicted by other documents in the Registrar's possession.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the invention lacks an inventive step under Section 80(1)(a) of the Patents Act;
- Whether the specification of the patent discloses the invention clearly and completely for it to be performed by a person skilled in the art under Section 80(1)(c) of the Patents Act;
- Whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed under Section 80(1)(d) of the Patents Act; and
- Whether the patent is one of two or more patents for the same invention having the same priority date and filed by the same party or their successor in title under Section 80(1)(g) of the Patents Act.
How Did the Court Analyse the Issues?
The Hearing Officer noted that the burden of proof in the case fell on the Applicants. She reviewed the Applicants' submissions, expert evidence, and the prior art documents provided.
Regarding the lack of inventive step, the Hearing Officer considered the expert evidence provided by the Applicants' witness, Mr. Peter Sahlen. Mr. Sahlen's evidence included a claim chart comparing the claims of the patent with the disclosures of the prior art. The Hearing Officer found Mr. Sahlen's evidence to be persuasive and concluded that the invention lacks an inventive step.
On the issue of whether the specification discloses the invention clearly and completely, the Hearing Officer noted that the Applicants had initially pleaded this ground but later confirmed they no longer intended to rely on it. She therefore did not make any findings on this issue.
Regarding the extension of matter, the Hearing Officer reviewed the specification and found that it did not appear to extend beyond the original disclosure. She noted that the description included embodiments not claimed in the present patent, but stated she would only refer to those embodiments that related to the invention as defined in the claims.
Finally, on the issue of multiple patents for the same invention, the Hearing Officer found that the Applicants had not provided any evidence to support this ground, and she therefore did not make any findings on it.
What Was the Outcome?
Based on her analysis, the Hearing Officer concluded that the Applicants had established that the invention lacks an inventive step and that the 075 patent should be revoked under Section 80(1)(a) of the Patents Act.
Why Does This Case Matter?
This case is significant for a few reasons:
First, it demonstrates the importance of properly pleading and supporting grounds for patent revocation. The Applicants initially pleaded multiple grounds, but ultimately only succeeded on the lack of inventive step. The Hearing Officer made it clear that she would only consider the grounds that were properly pleaded and supported by evidence.
Second, the case highlights the role of expert evidence in patent revocation proceedings. The Hearing Officer found the Applicants' expert witness, Mr. Sahlen, to be persuasive in establishing the lack of inventive step. This underscores the value of having qualified experts provide detailed analysis to support the revocation grounds.
Finally, the case is relevant to practitioners dealing with patent families and related inventions. The Hearing Officer's approach of only considering the embodiments relevant to the claims of the patent at issue, rather than the broader disclosure, provides guidance on how to navigate such situations.
Legislation Referenced
- Patents Act (Cap 221, 2005 Rev Ed)
- Patents Rules (Cap 221, 2007 Rev Ed)
Cases Cited
- [2018] SGCA 18
- [2018] SGIPOS 14
Source Documents
This article analyses [2018] SGIPOS 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.