National University Hospital v Cicada Cube: Patent Ownership Dispute over Laboratory Specimen Collection System

The National University Hospital (Singapore) Pte Ltd (NUH) sued Cicada Cube Pte Ltd in the High Court of Singapore, seeking to be named the sole or joint proprietor and for its employees, Dr. Sunil Kumar Sethi and Peter Lim, to be named as the rightful inventors of Singapore Patent No. 150390, a laboratory specimen collection management system. Cicada Cube, the registered proprietor, contended its directors, Dr. Anil Kumar Ratty and Dr. Danny Poo, were the inventors. The court, presided over by Aedit Abdullah JC, determined that there were two inventive concepts, one contributed by Dr. Sethi and the other by Dr. Ratty and Dr. Poo. The court ordered that Dr. Sethi, Dr. Ratty, and Dr. Poo be named joint inventors and NUH and Cicada Cube be named joint proprietors of the patent.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Ordered that Dr. Sethi, Dr. Ratty and Dr. Poo be named as joint inventors of the invention, and for NUH to be named as a joint proprietor of the Patent together with Cicada.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The High Court addressed a patent ownership dispute between NUH and Cicada Cube over a laboratory specimen collection system, ruling for joint inventorship and proprietorship.

1.7 Decision Date

13 March 2017

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
National University Hospital (Singapore) Pte Ltd	Plaintiff	Corporation	Partial Judgment	Partial	Tan Tee Jim of Lee & Lee Christopher de Souza of Lee & Lee Darrell Wee of Lee & Lee
Cicada Cube Pte Ltd	Defendant	Corporation	Partial Judgment	Partial	N Sreenivasan of Straits Law Practice LLC Jevon Louis of Ravindran Associates Ivan Qiu of Straits Law Practice LLC Andrew Heng of Straits Law Practice LLC

3. Judges

Judge Name	Title	Delivered Judgment
Aedit Abdullah	Judicial Commissioner	Yes

4. Counsels

Counsel Name	Organization
Tan Tee Jim	Lee & Lee
Christopher de Souza	Lee & Lee
Darrell Wee	Lee & Lee
N Sreenivasan	Straits Law Practice LLC
Jevon Louis	Ravindran Associates
Ivan Qiu	Straits Law Practice LLC
Andrew Heng	Straits Law Practice LLC

4. Facts

NUH sought to be named the rightful proprietor of a patent for a laboratory specimen collection management system.
Cicada Cube was the registered proprietor of the patent, with Dr. Ratty and Dr. Poo named as inventors.
NUH claimed its employees, Dr. Sethi and Peter Lim, were the actual inventors.
The dispute centered on who contributed to the inventive concept of the patent.
NUH engaged Cicada to develop software for the Advanced Test Ordering Management System (ATOMS).
Cicada applied for and obtained a patent encompassing NUH's pre-existing and envisioned workflows.
The court found two inventive concepts within the invention: linkage between test ordering and specimen taking, and specification for specimen taking.

5. Formal Citations

National University Hospital (Singapore) Pte Ltd v Cicada Cube Pte Ltd, Originating Summons No 239 of 2015, [2017] SGHC 53

6. Timeline

Date	Event
2004-01-01	NHG embarked on a project to digitise clinical care processes in its hospitals.
2004-01-01	Dr. Sethi conceived an electronic solution to problems with laboratory specimen collection.
2005-01-01	NHG held meetings to discuss and design workflows for NUH's electronic systems.
2005-02-01	Dr. Ratty met with NHG's representative.
2005-02-16	Dr. Poo created the first draft of the TEC proposal.
2005-03-01	Dr. Sethi added his parts to the TEC proposal.
2005-06-01	A vendor was appointed for the supply and implementation of the EMR system.
2005-12-16	NHG and Cicada entered into a Memorandum of Understanding to develop ATOMS.
2007-08-14	Cicada filed an application to register the Patent.
2010-07-30	The Intellectual Property Office of Singapore granted the Patent.
2012-07-27	NUH filed a reference to the Registrar of Patents.
2015-02-18	The Registrar issued a decision declining to deal with the reference.
2015-03-17	NUH commenced OS proceedings.
2015-07-10	NUH obtained leave to amend the OS.
2016-03-15	Trial began.
2016-03-17	Trial.
2016-04-20	Trial.
2016-05-04	Trial.
2016-05-16	Trial.
2016-07-11	Trial.
2016-07-18	Trial.
2016-08-01	Trial.
2016-08-24	Trial.
2016-09-07	Trial.
2016-09-15	Trial.
2017-03-14	Judgment issued.

7. Legal Issues

Inventorship
- Outcome: The court determined that Dr. Sethi, Dr. Ratty, and Dr. Poo were joint inventors.
- Category: Substantive
- Sub-Issues:
  - Contribution to inventive concept
  - Joint inventorship
Patent Ownership
- Outcome: The court determined that NUH and Cicada Cube were joint proprietors of the patent.
- Category: Substantive
- Sub-Issues:
  - Employee's invention
  - Proprietary interest in patent
Employee Status
- Outcome: The court determined that Dr. Sethi was an employee of NUH at the material time.
- Category: Substantive
Applicability of Section 47(9) of the Patents Act
- Outcome: The court decided that s 47(9) of the Patents Act did not apply in the present OS proceedings.
- Category: Procedural

8. Remedies Sought

Declaration of Proprietorship
Declaration of Inventorship

9. Cause of Actions

Determination of Patent Ownership
Determination of Inventorship

10. Practice Areas

Patent Litigation
Intellectual Property Litigation

11. Industries

Healthcare
Software Engineering

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax)	High Court	Yes	[2011] 3 SLR 227	Singapore	Cited to define 'inventor' as the actual deviser of the invention, the natural person who came up with the inventive concept.
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc	Unknown	Yes	[2008] RPC 1	United Kingdom	Cited to define 'actual' deviser of the invention as the natural person who came up with the inventive concept.
University of Southampton’s Application	Unknown	Yes	[2005] RPC 11	United Kingdom	Cited to define 'actual' deviser of the invention as the natural person who came up with the inventive concept.
Henry Brothers (Magherafelt) Limited v Ministry of Defence	Unknown	Yes	[1997] RPC 693	United Kingdom	Cited to define 'actual' deviser of the invention as the natural person who came up with the inventive concept.
Henry Brothers (Magherafelt) Limited v Ministry of Defence	Unknown	Yes	[1999] RPC 442	United Kingdom	Cited to define 'actual' deviser of the invention as the natural person who came up with the inventive concept.
Henry Brothers (Magherafelt) Ltd v Ministry of Defence and the Northern Ireland Office	Unknown	Yes	[1997] RPC 693	United Kingdom	Cited regarding the inventive concept consisting of a combination of elements.
Stanelco Fibre Optics Ltd’s Applications	Unknown	Yes	[2005] RPC 15	United Kingdom	Cited regarding the test for determining joint inventorship.
Generics (UK) Ltd v H Lundbeck A/S	House of Lords	Yes	[2009] UKHL 12	United Kingdom	Cited to define the inventive concept as the 'heart' of an invention.
Markem Corp v Zipher Ltd	English Court of Appeal	Yes	[2005] RPC 31	England and Wales	Cited regarding questions of entitlement before a patent was granted.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and Another Appeal	Court of Appeal	Yes	[2008] 1 SLR 335	Singapore	Cited regarding the difference between what is considered an invention and what monopoly an inventor chooses to obtain.
Merck & Co Inc v Generics (UK) Ltd	Unknown	Yes	[2004] RPC 31	United Kingdom	Cited regarding the difference between what is considered an invention and what monopoly an inventor chooses to obtain.
Stevenson, Jordan and Harrison Ltd v Macdonald and Evans	Unknown	Yes	[1952] 69 RPC 10	United Kingdom	Cited regarding whether the work of the alleged employee was done as an integral part of the business of the alleged employer.
Kuala Lumpur Mutual Fund Berhad v J Bastian Leo & Anor	Unknown	Yes	[1988] 2 MLJ 526	Malaysia	Cited regarding whether the alleged employee was paid a regular salary or commission.
Kureoka Enterprise Pte Ltd v Central Provident Fund Board	High Court	Yes	[1992] SGHC 113	Singapore	Cited regarding whether the alleged employee was entitled to leave and holidays.
Chew Swee Hiang v Attorney-General and another	Unknown	Yes	[1990] 2 SLR(R) 215	Singapore	Cited regarding whether the alleged employer had the power to dismiss the alleged employee from his service.

13. Applicable Rules

Rule Name
Order 87A Rule 8 of the Rules of Court

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221)	Singapore
Section 47(1) of the Patents Act (Cap 221)	Singapore
Section 47(8) of the Patents Act (Cap 221)	Singapore
Section 47(9) of the Patents Act	Singapore
Section 19(2) of the Patents Act	Singapore
Section 49 of the Patents Act	Singapore
Section 2(1) of the Patents Act	Singapore
Section 113(1) of the Patents Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Patent
Inventive Concept
Proprietorship
Inventorship
Laboratory Specimen Collection
ATOMS
Specimen Processing System
Specimen Collection Station
TEC Proposal
Business Logic
Graphical Display
SVM

15.2 Keywords

Patent
Inventorship
Laboratory
Specimen
Collection
Management
System
Software
Hospital
Employee
Invention

17. Areas of Law

Area Name	Relevance Score
Patents	95
Corporate Law	5

16. Subjects

Patent Law
Intellectual Property
Inventorship
Employment Law