In the High Court decision last week, Justice George Wei in determining the substantive issue of whether this court may hear the Defendants’ counterclaim for revocation under s 80(1) of the Singapore Patents Act, ruled that the High Court does not possess original jurisdiction under the Patents Act to revoke a patent by way of a counterclaim in infringement proceedings.  The Court took the position that Section 80 of the Patents Act provides exclusive jurisdiction to the Intellectual Property Office of Singapore (IPOS), Singapore’s patent office, to handle patent revocation proceedings.

Following this, a challenge to the patent in the High Court must be limited to the asserted claims the validity of which has been put in issue by way of the defence and the counterclaim for groundless threats of suit.

This means that when a defendant succeeds in the defense against an infringement action by challenging the validity of the asserted claims of the plaintiff’s patent, the High Court can hand down a declaration with respect to the asserted claims.  However, the patent is not revoked.  In order to revoke the patent, the party will have to apply to the Registrar of Patents at IPOS under section 80 to initiate revocation proceedings.

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