Nguyen Michael Anh v Serial System Ltd: Patent Assignment Dispute over Invention Ownership
In Nguyen Michael Anh v Serial System Ltd, the High Court of Singapore addressed a dispute over a patent assignment. Nguyen Michael Anh sued Serial System Ltd for the remaining shares owed to him after he assigned a patent application to the company. Serial System Ltd counterclaimed, arguing that Nguyen did not have full title to the invention because it was developed while he was employed by Omni Peripherals Pte Ltd. The court found in favor of Serial System Ltd, holding that Nguyen did not have full title to the invention he assigned, as it was substantially developed during his employment with Omni. The court ordered Nguyen to pay costs to Serial System Ltd.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment in favor of the defendant on the preliminary issue.
1.3 Case Type
Civil
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Nguyen Michael Anh sues Serial System Ltd for unpaid shares related to a patent assignment. The court finds Nguyen did not have full title to the invention.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Nguyen Michael Anh | Plaintiff | Individual | Preliminary issue decided against the plaintiff | Lost | |
| Serial System Ltd | Defendant | Corporation | Preliminary issue decided in favor of the defendant | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Kan Ting Chiu | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Tan Kok Peng | Drew and Napier LLC |
| Hri Kumar | Drew and Napier LLC |
4. Facts
- Nguyen assigned his rights to a patent application to Serial System Ltd for $1.4 million and shares.
- Nguyen was previously employed by Omni Peripherals Pte Ltd.
- Serial System Ltd alleged Nguyen did not own the invention because it was developed during his time at Omni.
- Nguyen's employment with Serial System Ltd was terminated.
- The invention was a personal storage computer (PSC).
- Nguyen did not disclose offers from Serial System to Omni's board.
- The court found that Arawana was a progression from mySTOR-1000/Eagle, and that it was conceived and worked on in April/May 2000 at the latest.
5. Formal Citations
- Nguyen Michael Anh v Serial System Ltd, Suit 1198/2002, [2004] SGHC 264
6. Timeline
| Date | Event |
|---|---|
| Omni Peripherals Pte Ltd resolved to wind up. | |
| Singapore Patent Application No 200004835-5 filed. | |
| Service agreement and patent assignment between Nguyen and Serial System Ltd signed. | |
| First lot of new shares issued to Nguyen. | |
| Nguyen's employment with Serial System Ltd terminated. | |
| Judgment reserved. |
7. Legal Issues
- Ownership of Invention
- Outcome: The court found that the plaintiff did not have full title to the Invention or the Patent Application that he purported to assign to the defendant.
- Category: Substantive
- Sub-Issues:
- Development of invention during employment
- Assignment of patent rights
8. Remedies Sought
- Shares
- Unpaid Salary
- Salary in Lieu of Notice
- Central Provident Fund Contributions
9. Cause of Actions
- Breach of Contract
10. Practice Areas
- Commercial Litigation
- Intellectual Property Litigation
11. Industries
- Electronics
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| No cited cases | |||||
13. Applicable Rules
| Rule Name |
|---|
| Patents Rules (Cap 221, R 1, 1996 Rev Ed) r 22(3) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 1995 Rev Ed) s 25(5) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent Assignment
- Invention
- Personal Storage Computer
- Omni Peripherals
- Arawana
- mySTOR-1000
- Eagle Project
15.2 Keywords
- patent
- assignment
- invention
- intellectual property
- personal storage computer
17. Areas of Law
16. Subjects
- Intellectual Property
- Patents
- Contract Law