Thailand joins Patent Coorperation Treaty

Thailand (country code: TH) has acceded to the Patent Cooperation Treaty ("PCT") on 24 September 2009. Thailand is the 142nd contracting state to accede to this multilateral pact that facilitates the filing of patents in multiple countries. The treaty will enter into force for Thailand on 24 December 2009.

With respect to any international applications filed on or after 24 December 2009, Thailand will be automatically designated and will be elected in any demand for international preliminary examinations. Nationals and residents of Thailand will also be able to file PCT applications from 24 December 2009.

Singapore Designers Day

23 October marks the Designers Association Singapore's inaugural Singapore Designers Day, where the public is given an opportunity to acquaint themselves with selected members of the DAS and what they do. We are privileged to be one of the 9 designated members, the rest being esteemed design houses and branding consultants, and hope to be overrun with attendees thirsting to know more about us (we promise to throw in a little bit of intellectual property too).

Changes to Patents Rules

There was a gathering of IP lawyers and patent attorneys at IPOS yesterday. An email had been sent some days before, announcing a briefing by IPOS on changes to the Patents Rules. Thinking this must surely refer to the recent substantive proposed changes to the patent system, yours truly mentally prepared herself for an afternoon of heated discussion between "them" and "us". It was therefore somewhat of a let-down when we were told that the briefing was for something else, and that it would indeed be brief.

So here they are, the 2 most recent changes to the Patents Rules, which will take effect later this month :

1. The Hungarian Patent Office joins the Austrian, Australian and Danish Patent Offices on the panel of search and examination authorities appointed by IPOS.

2. The fees for post-grant search and examination will be revised to range from between S$2,600 and S$3,800, up from the current S$2,340 to S$2,515. The revised fees for the Austrian Patent Office will only take effect some time next year.

Singapore company prevails in patent battle and solders on

The High Court of Singapore recently ruled on a suit involving patent infringement and revocation.

The plaintiff, ASM Assembly Automation Ltd ("ASM") commenced an action against Aurigin Technology Pte Ltd ("Aurigin") and 2 other defendants for the infringement of its registered patent for an apparatus and method for automatically placing an array of solder balls onto a substrate. The defendants counterclaimed on 2 main grounds; first, that ASM's patent was invalid for lack of novelty and inventiveness and second, that ASM had made groundless threats of infringement.

On the issue of novelty, while ASM's expert witness made certain unfavourable concessions in the course of cross-examination, Aurigin's expert witness explained how the patent was not new as each of the tendered prior art documents individually disclosed all the elements of the invention. His testimony on novelty was unreservedly accepted by the court, which then held that ASM's patent was not novel.

On the issue of inventiveness, ASM asserted that the patent was inventive as it was an improvement over the prior art. However, this assertion did not bear out during cross-examination. On the contrary, the court observed that the patent was "a disadvantageous modification of the closest prior art".

It was not surprising, therefore, that the court held that the patent was neither novel nor inventive, and Aurigin succeeded in revoking the patent. Accordingly, there could be no patent infringement and the threats made by Aurigin were found to be groundless.

As patent cases rarely make it to trial in Singapore, those that do are valuable stockpiles of instruction and guidance for future cases. Even though the court's judgment did not modify or expand on the law, having applied established common law principles laid down in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 for novelty and Windsurfing International Inc v Tabur Marine [1985] RPC 59 as approved by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 for inventiveness, the following lessons may still be learnt from this case :

1. Exercise care in the selection of expert witnesses; patent attorneys, no matter how qualified, may not necessarily be persons skilled in the art.

2. Ensure that witnesses are qualified and well-prepared to endure cross-examination by opposing counsel. In this case, the court had commented that ASM's expert witness was not familiar enough with the prior art. Cross-examination also demonstrated that the expert witness was ill-prepared, resulting in damage to ASM's case.

The decision is currently under appeal.

Citation : ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009] SGHC 206

Patent Practice Update

The Intellectual Property Office of Singapore has just issued a practice direction stating that issued Certificates of Grant for registered patents will no longer be accompanied by a copy of the granted specification. Patent owners who want a copy of the granted specification will have to download it from the ePatents database. This change will take effect on 1 November 2009.

Out and About

The final quarter of the year is looking to be a busy one. We (or at least one of us) will be speaking at the following events :

1. "The Artist and Copyright" at Art Singapore 2009 on Sunday, 11 October; and

2. "Intellectual Property Enforcement - An Overview of Trademark and Patent Cases" organised by the Law Society of Singapore on Thursday, 5 November.

We will also be attending FLAsia 2009 from 15 to 17 October and APAA 2009 from 18 to 22 November - do say hello if you are there as well.