Patent invalidity in Singapore – is it a black and white issue?

With thanks to Kin Wah Chow of Rouse Indonesia for this update.

Singapore is fast becoming a choice venue for IP owners to set up R&D facilities and file test cases in court. Because of its historical connections, and the fact that its Patent Act is modeled on the UK Act, Singapore courts typically refer to landmark English cases for familiar judicial statements in determining novelty, obviousness and sufficiency. The adoption of established English cases and law is good in principle in providing certainty and clarity to IP owners who are familiar with litigating in developed IP litigation forums such as the UK. Dedicated IP courts, like those in the UK, are likely to help the Singapore court become a high quality IP court in Asia. A recent case indicates this is unsurprisingly a work in progress and that, not for the first time, UK law and judicial statements in these landmark cases may not be as immediately clear to the relatively unfamiliar reader as they might be. In the Singapore High Court decision in Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting [2011] SGHC 36, the court had to consider issues of novelty and insufficiency.

The patent related to the operation of an taxi rooftop display indicating the occupied, off-duty or availability status of the taxi. Another feature of the invention was to prevent taxi drivers from having manual control of the display - this is achieved by using the onboard taxi meter to control the rooftop display so that the display of "HIRED" will only come on when the taximeter begins its charging mode.

Novelty

On the novelty question, the judge sought to apply the reverse infringement test referred to in General Tire v Firestone [1972] RPC 457 which is stated as follows:

....if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. 

... If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.....

On the facts of the case, the judge had to deal with a feature that was not specified in the prior art - the patent claim include the integer of a multi-coloured display whereas the prior art does not specify whether the display is multi-coloured or not. The judge nevertheless found that it was common general knowledge to use multi-coloured display even if the prior art is silent on whether the display should be multi-coloured or monochrome.

This led the judge to find that the prior art anticipated claim 1 of the patent. He reasoned as follows:

Where it is already common knowledge at the date of publication of the prior art that electronic displays for …. can be either monochrome or multicoloured and when the prior art description does not specify that the electronic display must be monochrome or must be multicoloured but merely stipulates as one of the integers that an electronic display is to be used, I would construe the scope of the prior art to cover both monochrome and multi-coloured electronic displays within that integer. The drafter of the [prior art] document must have intended to cover unambiguously both alternatives and not merely the use of a monochrome electronic display to the exclusion of the multicoloured, or the use of a multicoloured electronic display to the exclusion of the monochrome in his inventive concept.

In analyzing this passage, it is possible that the judge might have fallen foul of the clarification of the distinction between novelty and inventive step in Sachs LJ’s judgment in General Tire that

... if, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.

The judge said that the above clarification only applies when the disclosure is vague. In the case before him, the use of a muliticoloured display was common general knowledge at the material time and the person skilled in the art would arrive at the end result of using a multi-coloured display even if the document does not specify whether the display should be multi-coloured or monochrome. The author respectfully submits that the end result might be correct but the inquiry should have been from the obviousness angle.

The clarification in General Tire was laid down for good reason, to avoid the blurring of the distinction between anticipation (lack of novelty) and obviousness. Once a prior document has to be supplemented by either another disclosure or common general knowledge, the inquiry falls under the realm of obviousness. Support for this can be found in the UK Patent Office Manual:

3.45 If the invention can be produced by combining the teaching of one document with common general knowledge or with standard practice in the art, then even if the inventor has not conceived it nor the applicant presented it in such terms, there is a strong presumption that such a combination would be obvious to the skilled person. If, in his application, the applicant refers to prior art as “conventional”, this may be taken to indicate that the prior art is common general knowledge (NEC Corporation’s Application (BL O/038/00)).

Insufficiency

On the question of insufficiency, the court has to consider how the skilled person would understand the specification, and in order to do so, evidence of how the skilled person would read it, and what the common general knowledge was, is needed, usually from an expert. A lay person reading a patent specification might think that there are gaps that make it impossible to put the invention into practice. However, the question has to be viewed through the eyes of the skilled person, with the requisite technical skill, utilizing his common general knowledge. Without evidence on that question, there is very little basis on which a court can decide that a specification is insufficient. That this position is also correct in Singapore is supported by the premise, which applies in Singapore, that it is for the party challenging validity to prove it.

On the facts of the case, the judge did not identify support for his ultimate conclusion from any expert evidence. On this issue, the judge referred only to the testimony of the patentee's expert, who testified that the drawings were sufficient for him to work the invention even if the text of the specification alone was not. Notwithstanding the patentee's view that the specification was sufficient (and more particularly the diagrams which comprise flow charts), the judge found the specification failed to provide sufficient disclosure for the person skilled in the art to work the invention. However, on the face of the decision this author is not certain that the Court was in a position to reach that conclusion.