In Nippon Shinyaku Co, Ltd v Registrar of Patents [2022] SGHC 164, in its appeal to the High Court from a decision of the Registrar of Patents (the “Registrar”), the appellant commenced proceedings against the Intellectual Property Office of Singapore (“IPOS”). The issue arose as to whether the proper respondent in the appeal should be IPOS or the Registrar. The High Court has provided clarity on the issue by holding that the Registrar is the proper respondent.
Background
The case involved an appeal from a decision of the Registrar made pursuant to section 107 of the Patents Act refusing a proposed correction to the specification of a patent application filed in Singapore. Briefly, the applicable test for corrections is the two-step test as set out in Dukhovskoi’s Application [1985] RPC 8, which prescribes that a correction would only be allowed if, first, it is clear that there was an error; and second, it is clear that what is now offered is what was originally intended. The Registrar refused the correction on the basis that the second step had not been satisfied – that is, it was not immediately evident to the skilled addressee that what is offered as the proposed correction is what was originally intended.
However, the High Court disagreed with the Registrar’s conclusion and held, on the facts, that the proposed correction should be allowed. As this part of the decision was very much based on the application of the peculiar facts of the case to settled law, we will not dwell on it for the purposes of this article.
The Registrar is the proper party
The more interesting issue that arose was whether IPOS or the Registrar is the proper party to be named as the respondent in the appeal.
The applicant argued that IPOS is the proper respondent because it is a body corporate that is capable of being sued in its own name and that any relief sought can only be granted by IPOS acting in its official capacity as the Registrar. The applicant cited the High Court’s previous decision in Axis Law Corp v Intellectual Property Office of Singapore [2016] 4 SLR 554 in support of its case.
Axis involved an application for judicial review against a decision of the Registrar of Trade Marks dismissing the applicant’s application for leave to amend its statement of grounds in trade mark invalidation proceedings. The issue arose as to whether IPOS or the Attorney General (“AG”) was the proper party to the proceedings, and the court held that it should be IPOS, being a body corporate which is capable of being sued in its own name. However, Axis was found not to be helpful, given that the issue of whether the Registrar of Trade Marks should have been a party to the proceedings had not been considered. As mentioned, the issue in Axis was whether IPOS or the AG should be the proper party.
The High Court held that the Registrar should be the proper party in view of the following statutory provisions:
- First, there are provisions in both the Patents Act (section 106) and the IPOS Act (sections 34(2) and 34(3)) that draw a distinction between IPOS and the Registrar as an officer of IPOS. These statutes were found to envision that legal proceedings may involve either IPOS or the Registrar in the exercise of their respective powers.
- The conclusion that IPOS and the Registrar have different powers was found to be supported by the following provisions in the Patents Act – namely, section 103(2) empowers IPOS to make regulations prescribing offences which may be compounded, and section 107 empowers the Registrar to correct errors in patent applications.
- Section 90 of the Patents Act contemplates that there may be an appeal from “[any/a] decision of the Registrar”.
- Finally, section 91(2) of the Patents Act concerns cost orders in proceedings under the Patents Act involving the Registrar. The section provides that the court has the discretion to award costs to the Registrar but may not order costs against the Registrar. Read together with section 90; this provision was found to envision that the Registrar can be a party to court proceedings.
The High Court concluded that since the appeal is from a decision of the Registrar made pursuant to his power under the Patents Act to correct errors in patent applications, the Registrar is the proper party to the appeal. The Appellant was therefore, directed to amend the name of the respondent in the appeal from IPOS to the Registrar.
Conclusion
This decision provides much needed clarity on the issue of the proper party to be sued when appealing to the High Court from a decision made by a Registrar. In such a case, it is the Registrar who should be sued. Notably, the same principle would apply to appeals from decisions made not only by the Registrar of Patents but also by the Registrar of Trade Marks, Registrar of Designs, and Registrar of Geographical Indications. On the other hand, IPOS would be the proper respondent when the decision appealed from is one made by IPOS pursuant to the exercise of its powers conferred by the IPOS Act or the Patents Act.
The authors acted for the respondent in the proceedings.
This article is produced by our Singapore office, Bird & Bird ATMD LLP. It does not constitute as legal advice and is intended to provide general information only. Information in this article is accurate as of 28 July 2022.
Alban Kang, Partner, Bird & Bird,
alban.kang@twobirds.com
