Energenics Pte Ltd v Musse Singapore Pte Ltd: Inventorship Rights & Patents Act Dispute

In Energenics Pte Ltd v Musse Singapore Pte Ltd, the High Court of Singapore heard applications related to Suit 577 and Suit 383 concerning patent rights. Energenics, the plaintiff, claimed rights to an invention based on contributions from its employee, Mr. Hazarika, and an assignee, Mr. Mansel. Musse Singapore and Musse Incorporated, the defendants, challenged Energenics' claims. The court struck out paragraphs related to Mr. Mansel's claims in Suit 383, deeming it an abuse of process, and denied Energenics' application to amend its Reply in Suit 577.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Application to strike out paragraphs of the Statement of Claim in Suit 383 granted; application to amend Reply in Suit 577 denied.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Energenics sued Musse over patent rights, claiming its employee and assignee contributed to the invention. The court struck out claims related to the assignee, deeming it an abuse of process.

1.7 Decision Date

18 July 2013

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Energenics Pte Ltd	Plaintiff	Corporation	Claims related to Mr. Mansel's inventorship struck out	Lost	Lionel Tan of Rajah & Tann LLP Jocelyn Chan of Rajah & Tann LLP
Musse Singapore Pte Ltd	Defendant	Corporation	Claims against Musse Singapore related to Mr. Mansel's inventorship dismissed	Won	Vignesh Vaerhn of Allen & Gledhill LLP Tan Lijun of Allen & Gledhill LLP
Musse Incorporated	Defendant	Corporation	Claims against Musse Incorporated related to Mr. Mansel's inventorship dismissed	Won	Nicholas Narayanan of Nicholas & Tan Partnership LLP

3. Judges

Judge Name	Title	Delivered Judgment
Justin Yeo	Assistant Registrar	Yes

4. Counsels

Counsel Name	Organization
Lionel Tan	Rajah & Tann LLP
Jocelyn Chan	Rajah & Tann LLP
Vignesh Vaerhn	Allen & Gledhill LLP
Tan Lijun	Allen & Gledhill LLP
Nicholas Narayanan	Nicholas & Tan Partnership LLP

4. Facts

Musse Singapore filed a patent application for an invention.
Energenics claimed its employee, Mr. Hazarika, contributed to the invention.
Mr. Mansel allegedly assigned his rights in the invention to Energenics.
Mr. Mansel withdrew his application to be named as an inventor.
Energenics sought a declaration of its rights in the invention through the High Court.
Energenics was seeking a rectification of the Patent Register pursuant to s 44(1) of the Patents Act.

5. Formal Citations

Energenics Pte Ltd v Musse Singapore Pte Ltd, Suit No 577 of 2011 (Summons No 1047 of 2013) and Suit No 383 of 2012 (Summons No 1955 of 2013), [2013] SGHCR 21

6. Timeline

Date	Event
2009-10-16	Deed of Assignment signed by Named Inventors to Musse Singapore.
2009-10-20	Musse Singapore filed patent application No 200907041-8 with IPOS.
2011-06-15	Musse Singapore assigned rights to Musse Incorporated via Deed of Assignment.
2011-08-18	Energenics filed Statement of Claim in Suit 577.
2011-09-14	Musse Singapore filed its Defence in Suit 577.
2011-11-03	Deed of Assignment signed by Mr. Mansel to Energenics.
2011-12-15	Mr. Mansel applied to the Registry of Patents to be included as an inventor.
2012-01-26	Energenics filed an amended Statement of Claim in Suit 577.
2012-02-16	Musse Singapore filed an amended Defence in Suit 577.
2012-03-09	Mr. Mansel filed a Statement of Inventorship with the Registry of Patents.
2012-05-09	7th Affidavit of Hanumanth Rao Bhunsle filed on behalf of Energenics.
2012-06-25	Energenics filed a Statement of Claim in Suit 383.
2012-08-08	Musse Incorporated filed its Defence in Suit 383.
2012-08-22	Musse Incorporated filed a Counter-Statement with the Registry of Patents.
2012-10-19	Mr. Mansel withdrew the Inventorship Application.
2012-10-22	Case Management Conference scheduled.
2013-07-19	Decision Date

7. Legal Issues

Inventorship Rights
- Outcome: The court held that Energenics' attempt to seek a determination of Mr. Mansel's inventorship in the High Court at first instance amounted to an abuse of process.
- Category: Substantive
- Sub-Issues:
  - Non-assignability of inventorship
  - Determination of inventorship by the High Court
  - Locus standi to claim inventorship rights
Abuse of Process
- Outcome: The court found that Energenics' attempt to raise the Mansel Claims before the High Court at first instance amounted to an abuse of process.
- Category: Procedural
- Sub-Issues:
  - Circumvention of legislative framework
  - Bypassing the Registrar of Patents
  - Seeking determination in the High Court at first instance
Locus Standi
- Outcome: The court found that Energenics has locus standi under ss 19(2) and/or 20(1)(a) of the Patents Act to seek a determination of the Mansel Claims.
- Category: Procedural
- Sub-Issues:
  - Right to seek determination of inventorship
  - Assignment of interest in invention
  - Rights related to patent prosecution

8. Remedies Sought

Declaration of rights and interests

9. Cause of Actions

Declaration of lawful rights and interests in the Invention and the Patent Application

10. Practice Areas

Patent Litigation
Intellectual Property Litigation

11. Industries

Technology

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International holdings Inc	N/A	Yes	[2007] Bus LR 1796	N/A	Cited to define 'inventor' as the actual deviser of the invention.
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International holdings Inc	N/A	Yes	[2008] RPC 1	N/A	Cited to define 'inventor' as the actual deviser of the invention.
University of Southampton’s Applications	N/A	Yes	[2005] RPC 220	N/A	Cited to define 'actual devisers' as those who have contributed to the formulation of the inventive concept.
LIFFE v Pinkava	Court of Appeal of England and Wales	No	[2007] EWCA Civ 217	England and Wales	Cited to support the argument that ownership of a patent between employer and employee was governed by the UK Patents Act and not by contract.
LIFFE v Pinkava	Court of Appeal of England and Wales	No	[2007] RPC 30	England and Wales	Cited to support the argument that ownership of a patent between employer and employee was governed by the UK Patents Act and not by contract.
KCI Licensing Inc v Smith & Nephew plc	High Court of England and Wales	Yes	[2010] EWHC 1487 (Pat)	England and Wales	Cited to explain that if one of the circumstances mentioned in the UK equivalent of ss 19(2)(b) and 19(2)(c) of the Patents Act applies, the person to whom the invention has been assigned becomes entitled to apply for and be granted a patent.
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits	High Court of Singapore	Yes	[2005] 3 SLR(R) 389	Singapore	Illustrates how ss 19(2)(b) and 19(2)(c) of the Patents Act work.
Gabriel Peter & Partners v Wee Chong Jin	Court of Appeal	Yes	[1998] 3 SLR(R) 649	Singapore	Cited for the principle that a case should not be struck out if it discloses some cause of action, even if it is weak.
Luxim Corp v Ceravision Ltd	High Court of England and Wales	Yes	[2007] EWHC 1624	England and Wales	Cited to support the argument that the Registrar of Patents has first instance jurisdiction to hear any question on whether a person is entitled to be granted a patent.
Luxim Corp v Ceravision Ltd	High Court of England and Wales	Yes	[2007] RPC 33	England and Wales	Cited to support the argument that the Registrar of Patents has first instance jurisdiction to hear any question on whether a person is entitled to be granted a patent.
IDA Ltd v Metcalfe	Court of Appeal of England and Wales	Yes	[2006] EWCA Civ 145	England and Wales	Cited as case law on the factors that the Comptroller should take into consideration in exercising his jurisdiction.
Stanelco Fibre Optics Limited v Bioprogress Technology Limited	N/A	Yes	[2004] EWHC 2263	N/A	Cited as examples where the court determined issues of inventorship despite the inventors themselves not being parties to the proceedings.
Henry Brothers (Magherafelt) Ltd v Ministry of Defence and Northern Ireland Office	N/A	Yes	[1999] RPC 442	N/A	Cited as examples where the court determined issues of inventorship despite the inventors themselves not being parties to the proceedings.

13. Applicable Rules

Rule Name
Rules of Court O 87A r 10

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, Rev Ed 2005) s 49(1)	Singapore
Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 20 r 5	Singapore
Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 18 r 19(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 2(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 24(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 24(2)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 19(2)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 20(1)(a)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 20(7)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 67(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 78(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 91(1)	Singapore
Patents Act (Cap 221, Rev Ed 2005) s 44(1)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Invention
Patent Application
Inventorship
Mansel Claims
Registry of Patents
Abuse of Process
Locus Standi
Deed of Assignment
Proprietor
Inventor

15.2 Keywords

Patent
Invention
Inventorship
Assignment
High Court
Registrar
IPOS

17. Areas of Law

Area Name	Relevance Score
Patents	90
Civil Procedure	60
Administrative Law	30

16. Subjects

Patent Rights
Intellectual Property
Civil Procedure