Bifurcated or not?

Two important decisions from Singapore and Vietnam

 

Currently, the enforcement of a patent that is registered in several ASEAN countries involves the risk of getting different and conflicting decisions from the national courts and Patent Offices. While some countries in the ASEAN favor bifurcated patent litigation system where claims of infringement and validity of a patent are decided independently of each other in separate proceedings at different institutions (court, IP Office etc), some others support non-bifurcated system where infringement and validity are decided jointly in the same proceedings at a single court. Recently, Singapore and Vietnam Courts have issued two ground breaking decisions in opposite directions. These decisions are relevant in the context of cross borders patent litigation in South-East Asia.

Singapore case : valid and infringed

In a solar panel patent infringement case opposing two Singaporean companies Sunseap Group Pte Ltd v.Sun Electric Pte Ltd the Court of Appeal ruled that a High Court has an original jurisdiction to hear an application to revoke a patent in particular where such application is by way of a defence and counterclaim. This is a radical change from the previous practice. For some time, the High Court ruled that it had no jurisdiction to hear patent invalidation proceedings even by way of a counterclaim in infringement proceedings. In other words, all applications for the revocation of a patent must be heard by the Registrar of Patents. The Court of Appeal reversed the decision and it is now clear that when a defendant in patent infringement proceedings challenges the validity of a patent and seek a revocation order, the High Court has jurisdiction to determine validity of the patent.

Vietnam case : invalid but still infringed?

On July 17, 2019, in a pharmaceutical patent infringement case, the People’s Court of Bing Duong Province rejected to suspend the case on the infringement action until the Patent Office decided on a patent cancellation request that the defendant has filed before the trial opened. The Court compared the Civil Procedure Code of 2015 and the Law on Intellectual Property and decided the latest should prevail since it is a specialized law. The Court ruled that no provisions in the Law on Intellectual Property require the court to suspend the infringement case until a decision on validity is made.