Cicada Cube Pte Ltd v National University Hospital: Patent Ownership Dispute

Cicada Cube Pte Ltd and National University Hospital (Singapore) Pte Ltd were in dispute over the ownership of a patent for a laboratory specimen collection system. Cicada Cube had been granted the patent, but National University Hospital challenged this, claiming joint inventorship. The High Court found both parties were jointly entitled to the patent. Both parties appealed. The Court of Appeal dismissed both appeals, upholding the High Court's decision of joint ownership and inventorship.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeals Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Dispute over patent ownership for a laboratory specimen collection system. The court determined joint ownership between Cicada Cube and National University Hospital.

1.7 Decision Date

27 August 2018

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
National University Hospital (Singapore) Pte Ltd	Respondent, Appellant	Corporation	Appeal Dismissed	Neutral	Tan Tee Jim SC of Lee & Lee Christopher de Souza of Lee & Lee Vanessa Goh of Lee & Lee Basil Lee of Lee & Lee
Cicada Cube Pte Ltd	Appellant, Respondent	Corporation	Appeal Dismissed	Lost	N. Sreenivasan SC of Straits Law Practice Ravindran s/o Muthucumarasamy of Ravindran Associates Jevon Louis of Ravindran Associates Ivan Qiu of Straits Law Practice Shankar AS of Straits Law Practice

3. Judges

Judge Name	Title	Delivered Judgment
Andrew Phang JA	Judge of Appeal	Yes
Tay Yong Kwang JA	Judge of Appeal	Yes
Steven Chong JA	Judge of Appeal	Yes

4. Counsels

Counsel Name	Organization
Tan Tee Jim SC	Lee & Lee
Christopher de Souza	Lee & Lee
Vanessa Goh	Lee & Lee
Basil Lee	Lee & Lee
N. Sreenivasan SC	Straits Law Practice
Ravindran s/o Muthucumarasamy	Ravindran Associates
Jevon Louis	Ravindran Associates
Ivan Qiu	Straits Law Practice
Shankar AS	Straits Law Practice

4. Facts

Cicada Cube Pte Ltd applied for and was granted a patent in 2010 for a laboratory specimen collection management system.
National University Hospital (Singapore) Pte Ltd challenged Cicada’s entitlement to the Patent.
The High Court Judge found that both parties contributed to the invention and were entitled jointly to the Patent.
The invention facilitates the automation of the specimen ordering and collection process.
The system determines and relays the requirements for the specimen to be taken from the patient for the particular test ordered.
The processing system aggregates information relating to the specimen and relays them to the specimen collection system such that a label is printed onsite for the tube.
Dr. Sethi, Dr. Ratty and Dr. Poo worked closely together on the invention as disclosed in the Patent and Dr. Sethi contributed substantially to their joint efforts.

5. Formal Citations

Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd and another appeal, , [2018] SGCA 52
Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd, Civil Appeal No 138 of 2016, Civil Appeal No 138 of 2016
National University Hospital (Singapore) Pte Ltd v Cicada Cube Pte Ltd, Civil Appeal No 139 of 2016, Civil Appeal No 139 of 2016

6. Timeline

Date	Event
2004-01-01	National Healthcare Group embarked on a project to digitise clinical care processes.
2004-11-01	National Healthcare Group called for proposals for digitisation processes and systems.
2005-06-01	Vendor appointed for the supply and implementation of the Electronic Medical Records system.
2005-12-16	National Healthcare Group and Cicada Cube Pte Ltd entered into a Memorandum of Understanding to develop Advanced Test Ordering Management System.
2006-03-01	Cicada Cube Pte Ltd, National Healthcare Group, and the Prime Minister’s Office entered into a tripartite agreement under which pilot trials of Advanced Test Ordering Management System were to be conducted.
2007-08-14	Cicada Cube Pte Ltd filed an application for the Patent.
2010-07-30	The Registrar granted the Patent to Cicada Cube Pte Ltd.
2012-07-27	National University Hospital (Singapore) Pte Ltd filed the Reference with the Registrar under s 47(1) of the Patents Act.
2015-02-18	The Registrar declined to deal with the Reference.
2015-03-17	National University Hospital (Singapore) Pte Ltd filed Originating Summons No 239 of 2015 in the High Court.
2017-12-01	Reserved judgment.
2018-04-10	Reserved judgment.
2018-08-28	Judgment reserved.

7. Legal Issues

Patent Ownership
- Outcome: The court determined that both Cicada Cube and National University Hospital were joint proprietors of the patent.
- Category: Substantive
- Sub-Issues:
  - Inventorship
  - Joint Inventorship
  - Entitlement to Patent
- Related Cases:
  - [2017] SGHC 53
  - [2011] 3 SLR 227
  - [2005] EWCA Civ 267
  - [2009] UKHL 12
  - [2004] All ER (D) 06
  - (BL O/204/05)
  - [2008] 1 SLR(R) 335
  - [2007] UKHL 43
  - (BL O/235/08)
  - (BL O/209/87)
  - [2016] 2 SLR 1114
Time Limit for Patent Entitlement Proceedings
- Outcome: The court held that the two-year conditional time limit in s 47(9) of the Act applies to the High Court Proceedings.
- Category: Procedural
- Sub-Issues:
  - Application of s 47(9) of the Patents Act
  - Concurrent Jurisdiction of Registrar and High Court
Inventive Concept
- Outcome: The court identified two inventive concepts: (a) automatic determination and relaying of specimen requirements; (b) automatic and centralised retrieval of information for a single label.
- Category: Substantive
- Sub-Issues:
  - Identification of Inventive Concept
  - Contribution to Inventive Concept
- Related Cases:
  - [2011] 3 SLR 227
  - [2005] EWCA Civ 267
  - [2009] UKHL 12
  - [2004] All ER (D) 06
  - (BL O/204/05)
Estoppel
- Outcome: The court rejected Cicada's argument that NUH was estopped from claiming ownership of the Patent.
- Category: Substantive
- Related Cases:
  - [2016] 2 SLR 1114

8. Remedies Sought

Declaration of Sole Proprietorship of Patent
Declaration of Joint Proprietorship of Patent
Declaration of Inventorship

9. Cause of Actions

Determination of Patent Entitlement

10. Practice Areas

Patent Litigation
Intellectual Property

11. Industries

Healthcare
Technology

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
National University Hospital (Singapore) Pte Ltd v Cicada Cube Pte Ltd	High Court	Yes	[2017] SGHC 53	Singapore	The High Court's decision that both Cicada and NUH were jointly entitled to the ownership of the Patent was upheld.
Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax)	High Court	Yes	[2011] 3 SLR 227	Singapore	Cited for the principle that the inventor of a patent is the actual deviser of the invention and must have formulated or contributed to the formulation of the inventive concept.
Markem Corp v Zipher Ltd	England and Wales Court of Appeal (Civil Division)	Yes	[2005] EWCA Civ 267	England and Wales	Cited for the principle that the inventive concept is the heart of the invention and that there may be more than one heart of an invention.
Generics (UK) Limited and others v H Lundbeck A/S	United Kingdom House of Lords	Yes	[2009] UKHL 12	United Kingdom	Cited for the principle that the inventive concept is the core of the invention which entitles the inventor’s achievement to be called inventive.
Stanelco Fibre Optics Ltd v Bioprogress Technology Ltd	England and Wales High Court (Patents Court)	Yes	[2004] All ER (D) 06	England and Wales	Cited for the principle that in some cases there may be more than one inventive concept.
Statoil ASA v University of Southampton	UK Patent Office	Yes	(BL O/204/05)	United Kingdom	Cited for the principle that it was possible for a patent to have more than one inventive concept.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal	Court of Appeal	Yes	[2008] 1 SLR(R) 335	Singapore	Cited for the distinction between patent claims and specification.
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc	United Kingdom House of Lords	Yes	[2007] UKHL 43	United Kingdom	Cited for the principle that amending a claim of joint ownership to one of sole entitlement to a patent did not amount to making a new claim.
Lockheed Martin Corporation v Hybrid Air Vehicles Ltd	UK Intellectual Property Office	Yes	(BL O/235/08)	United Kingdom	Cited for the principle that the patent proprietor must have actually known that it was not entitled to the patent and it is not enough that it ought to have known.
Peart’s Patent	UK Intellectual Property Office	Yes	(BL O/209/87)	United Kingdom	Cited for the principle that wilful blindness would be deemed to constitute actual knowledge of his non-entitlement.
The Bunga Melati 5	Court of Appeal	Yes	[2016] 2 SLR 1114	Singapore	Cited for the principle that to establish estoppel, Cicada must prove that there was a representation of fact by NUH which Cicada relied upon to its detriment.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5, 2014 Rev Ed)
O 87A r 8 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed)
Order 57 r 13(5) of the ROC
r 65(1) of the Patents Rules (Cap 221, R 1, 2007 Rev Ed)
Order 59 r 3 of the ROC

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2005 Rev Ed)	Singapore
s 47 of the Patents Act (Cap 221, 2005 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Patent
Invention
Inventive Concept
Proprietor
Specimen Collection
Laboratory Information System
Electronic Medical Records
Computerised Physician Order Entry
Advanced Test Ordering Management System
TEC Proposal
Specimen Requirements
Joint Proprietorship
Entitlement Proceedings

15.2 Keywords

patent
intellectual property
inventorship
joint ownership
laboratory
specimen
healthcare
technology

17. Areas of Law

Area Name	Relevance Score
Patents	90
Inventorship	80
Patent Entitlement	75
Intellectual Property Law	70
Civil Procedure	30

16. Subjects

Intellectual Property
Patent Law
Civil Procedure