In Singapore, it is possible to obtain the grant of a national phase patent application without any further examination by simply relying on the findings of the International Search Report (ISR), Written Opinion (WO) or the International Preliminary Report on Patentability (IPRP), particularly if the examination reports issued by the PCT Examiner suggest that the invention disclosed in the PCT application is patentable.
Recently, Muhlbauer AG had sued Manufacturing Integration Technology (MIT) Ltd for infringement of Muhlbauer’s Singapore Patent No. 117982 entitled “Device for Inspecting and Rotating Electronic Components”, with a priority date of 16 February 2004. MIT counter-sued Muhlbauer for revocation of the said patent.
Singapore Patent No. 117982 is a national phase application of Muhlbauer’s PCT application which had been examined, with the issued IPRP to the PCT application indicating that all 10 claims were patentable. The Singapore patent was granted with the same 10 claims.
During trial, MIT had submitted five prior art documents, some of which were not considered during the examination at the international stage.
The Court, after having considered various documents submitted by both parties and the opinions from experts appointed by the parties, had concluded that the Muhlbauer patent was neither novel nor inventive in view of the prior documents, in particular a patent owned by ASA.
It is therefore imperative to note that the examination reports issued by the PCT Examiners are non-binding reports and patents granted on the basis of positive PCT examination reports can still be revoked in courts should novelty and/or inventive step destroying prior art documents be presented in the courts.
We would strongly recommend that our clients with patents in Singapore revisit their patent portfolio, particularly on Singaporean patents which were granted on the basis of positive PCT examination reports, and ascertain the strength of their patents before taking any patent infringement actions against any parties.
Our Regional Office in Singapore, KASS Regional IP Services Pte. Ltd., can assist you with any request or enquiry that you may have on Singapore IP matters. We also coordinate and provide advice on all IP prosecution, enforcement and litigation matters in South East Asian region. Please feel free to contact our Singapore Office at firstname.lastname@example.org