SG Patent Revocation vs. Non-Infringement Declaration, which one is "better"?
I have here an SG patent that disturbs my client and I am wondering what to recommend. The patent owner sits overseas, and the patent has a filing date of 2006. There are a number of parallel granted patents overseas, in the same patent family and claiming the same priority. The scope of protection of all these patents is very different.
Seeking a declaration of non-infringement is an uphill battle at High Court that comes with a lot of uncertainties.
Before you even serve the writ on the patent owner you have to establish what the patent owner possibly will amend his patent to. Only then can you hold out a detailed invalidity analysis and then an infringement analysis for your client´s product.
That means that you can start a non-infringement analysis only if you have found claims that could possibly remain standing if the patent owner tries to make post-grant amendments.
One way for guessing this is to look at the granted claims of the family applications in the same patent family as the SG patent in suit.
This is more effective than doing a feature vs claim analysis of your client´s products for each claim of the SG patent in suit, especially when your arguments for non-infringement of the SG patents in suit in the current state are already not the strongest. And this would also show you potential amendments of the claims with elements that are taken up into the claims from the specification (drawing plus description) of the patents in suit.
In other words, you are supposed to find out:
a) what claims you can possibly expect after the amendment of the SG patent in suit
and only then check
b) whether your client infringes these claims or not
Please note that extra hurdles exist for amending a Singapore patent after grant, especially when parallel corresponding patents exist in other countries.
What remains to be done if you find an infringement of such amended claims, is to evaluate whether these claims are invalid, i.e. if they remain standing in the light of the prior art.
I have here an important aspect that should not be overlooked: a court action for obtaining a declaration of non-infringement is always a major effort, and especially in the present case with 3 large patent families.
Auch a venture comes with large costs, and that is why it is preferred to initiate revocation proceedings against the SG patent in suit, at the Intellectual Property Office of Singapore.
This is where I am coming from: time plays in your favor, and having in mind that the SG patent in suit has a filing date of 2006, this patent will only survive a few more years. You may be able to drag out the IPOS revocation proceedings such that the SG patent in suit will finally expire by reaching its maximum life span.
Revocation proceedings at IPOS come with a number of advantages over a full-fledged lawsuit at High Court:
- much lower costs for the IPOS procedure as compared with a court action, for a number of reasons that lie in the Singapore court procedure system, check out my article here https://ip-lawyer-tools.com/road-map-on-patent-infringement-court-proceedings-in-sg-with-estimated-costs-assigned-to-each-step/
- almost the same number of ways to delay the procedures, plus you can still file a time-consuming appeal against any future IPOS decision to the High Court
- we do not need to serve a writ on the defendant overseas, we simply file a revocation request at IPOS in Singapore
- the patent owner must declare at an early stage of the proceedings what claims they are going to defend. This is much better than us guessing “what claims we can possibly expect after amendment and then check whether we infringe these claims or not”
- there is a time-consuming mediation step in the revocation proceedings
- the patent owner cannot start an infringement lawsuit from the patents in suit as long as the revocation proceedings are ongoing
There is an outline of the revocation proceedings at IPOS found here https://www.ipos.gov.sg/protect-ip/apply-for-a-patent/disputes
Again, time is in your favor, and the patent owner overseas faces extra costs by having two law firms in the communication line: the Singapore representative and the US patent attorney. Any movement in the revocation procedures goes through two costly extra steps.
It is my experience that this will soon raise eyebrows at the patent owner overseas, and chances are high that this increases the willingness of the patent owner to settle or even abandon the case. I have provided support for a patent revocation case for a Singapore company against a German patent owner before, and the patent owner has given up after a few months because of the outrageous costs of their two patent attorneys in Singapore and Germany.
But I can also start a high court case for non-infringement, and then commence invalidity proceedings with high court as part of my infringement defence, right?