Compulsary Licensing In Singapore

Question 1
Our licensee is about to make a pitch to a major electronics company in order to get the tray business. We might consider sending a notice to all the electronics company. What are the rules in Singapore?

Answer 1
As far as the notice to be sent to all the electronics company:
1) it must not contain a "groundless threat" under Singapore Law
2) it is a must to mention to all the electronics company that you have recorded the licensees under Singapore Law, my written advice is as follows:
Intellectual Property Rights are often involved in transactions in the modem business environment Contracts and Agreements to assign rights are very common especially where the Patents are Part of a Intellectual Property portfolio including other forms of Property Rights. Such contracts and agreements may also include the granting of licenses.

A license for the working of the invention may be granted under a patent. The license may permit the making of sub-licenses may be even assigned or mortgaged when appropriate terms are present in a contract/agreement.

An exclusive license is a license from the proprietor of or applicant for a patent conferring on the licensee or to the exclusion of all other persons including the proprietor or applicant)' any in respect of the invention to which the patent or application relates.

An exclusive licensee has the right to bring proceedings in respect of any infringement of the patent after the date of the license agreement

Recordal of transactions:
Most transactions involving Patents must be registered with the Registrar. Section 43(3) lists the type of transactions that must be registered.
They are:
(1) an assignment of the Patent or application for a patent;
(2) a mortgage of the patent or application;
(3) the grant or assignment of a license or sub-license or mortgage of a licensee or sub-license, under the patent or application;
(4) the death of the Proprietor or one of the proprietors of the patent or application or any person having a right in or under the patent or application and the vesting by an assent of personal representatives of a patent or application or any such rights; and
(5) any order/directions of a court/competent authority transferring a patent or application or any right in or under it to any personal or that an application should proceed in the name of any person together with registration of the event under which the court/authority had the power to make the order or give the directions.

Under s 43(1), the above transactions must be registered because once a person claims not to know of an earlier transactional instrument, or event:
(1) the registration of acquisition of property in a patent or an application defeats earlier transactions, instruments or events that have not been registered (registration provides proof of ownership);
(2) the subsequent proprietor (from the original proprietor) of the patent or an exclusive licensee may be unable to obtain damages or an account of profits for any infringement of the patent.

Under s 75 where a person becomes the proprietor or an exclusive licensee of a patent by virtue of a transaction instrument, or event to which s 43 applies, that person shall not be entitled to recover damages or an account of profits in respect of infringement subsequent to the transaction, instrument or event if a recordal was not done with the Registrar within six months of its date. Six months is an arbitrary period, as the Registrar and courts are receptive to recordals after longer periods as long as it was shown that a recordal was not practicable to be done within six months, and the recordal was sought as soon as practicable.

This view was followed by Lee Sieu Kin JC (as he was then) Contour Optik Inc v Pearl's Optical Co Pte Ltd, Lee JC commented;
The Plaintiffs submit that although the instruments were not registered within the six month window, the registrations were done within a reasonably practicable time thereby falling within s 75รพ). However, this is a bare submission and the Plaintiffs did not adduce any evidence of their registering the instruments as soon as it was practicable to do so.

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