Top 5 Misconceptions Start-ups Have About Patents In Singapore.

23 June, 2017

 

For Start-ups expanding in South-East Asia, IP protection should be considered one of its core priorities. Today’s blog post has been kindly drafted for us by Ms. Chan Wai Yeng who is a patent specialist at Taylor Vinters Via LLC. Ms. Chan Wai Yeng will explore five common misconceptions regarding patenting – something which will be useful for any European Start-up looking to expand their business in South-East Asia, and Singapore in particular.

 

Intellectual property protection is an important consideration for most start-ups. The exclusive monopoly that comes with patents can help start-ups carve a niche in a crowded marketplace. Patents have always been important to some industries like Big Pharma where they develop expensive drugs in lengthy R&D processes. They have become increasingly important and relevant to new business models and technologies in the technology sector.

 

While the concept of a patent is fairly simple to understand, there are several misconceptions about patents which I’d love to clarify. It is important to clarify these misconceptions before embarking on the intensive patenting process.

 

Myth 1: A patent applicant has rights to enforce his pending patent

 

It is a common mistake amongst first time patentees to think that once their patent application has been filed, they will immediately gain the rights to sue third parties for infringement of their patent. Rights to bring about a suit for infringement are in fact only available to the patent owner after his patent has been granted. The Intellectual Property Office of Singapore indicates that patents filed in Singapore can take between 2 to 4 years to grant. Thus patentees should be aware that during the period when the patent is still pending, they are not able to take action against third parties that commercially exploits their invention.

 

Myth 2: A patent once granted cannot be challenged

 

After having spent several years applying for a patent, the patent office finally grants you a patent for your invention. You receive a patent certificate that is proudly displayed amongst other framed accolades on the wall of your office and your company is benefiting from the monopoly over the technology that has been patented.

 

Fast forward three years later and you discover a third party has been infringing your patent. You decide to sue for infringement and the other party counter sues for invalidity of your patent. During proceedings, new evidence shows that your invention is not new. The court invalidates your patent and dismisses your infringement suit.

 

Is the above dramatic turn of events a fictional conjecture or does it happen in real life?

 

The owners of Malaysian patent MY124182A found this out the hard way when they filed a patent infringement claim against a competitor in 2012. The Court eventually held that Malaysian patent MY124182A was not novel due to the existence of an earlier Japanese patent and declared that the Malaysian patent was invalid and therefore not enforceable. The plaintiff’s case was thus dismissed with cost at RM50,000.00 (approximately SGD 16,000.00) to be paid by the plaintiff to the defendants.

 

Patentees should be aware that a patent granted by the patent office can be challenged by third parties. If the challenge is successful, the patent can be revoked such that the patent is deemed never to have been granted.

 

Myth 3: A patent gives the patent owner the right to use his patented invention

 

A patent is strictly a negative or exclusionary right – the right to exclude others from commercially exploiting the patented invention. This principle is often misunderstood by patentees who think that owning a patent means that they are allowed to exploit their own invention.

 

Frequently, due to the large number of patents existing across the same technology and the overlapping nature of patent protection, a patent owner will often require licences from other patent owners before being able to freely using his own invention.

For example Company A owns the patent for a method of multiple sensor fitness data collection. Company B is the patentee of wearable fitness devices that uses data collected by multiple sensors. In order to use his own invention, Company B has to first obtain a licence from Company A since the wearable fitness device makes use of the multi sensor fitness data technology that has been patented by Company A.

 

Similarly, if a third party plans to manufacture wearable fitness devices that uses data collected by multiple sensors, he will need to obtain licences from both patent owners, Company A and Company B.

 

A simple diagram below shows the overlap in patent coverage between Company A’s patent and Company B’s patent: