Research on s82(2) of the Patents Act

"The validity of a patent may not be put in issue in any

other proceedings and!

in particular! no proceedings may be instituted (whether under this $ct or otherwise) see+ing only a declaration as to the validity or invalidity of a patent." The current state of the law is that there is no express prohibition on whether s82(2) prohibits validity issues from being raised in arbitral proceedings. There is also no written definition (in case law or statute) that I could find of the word "proceedings" and the term has been used extensively as a descriptor rather than an actual class ranging from divorce proceedings! to third party proceedings to infringement proceedings! criminal proceedings etc etc. "owever! the phrase "any proceedings" appears several times in the #atents $ct itself in several permutations! for e%ample in s&2 and s8'(().

In most scenarios where the term "any proceedings" appears in the #atents $ct! there is a corresponding reference to either the )ourt or the *egistrar within the same section. $lso! it is noted that s82(&) itself clarifies the word "proceedings" as "proceedings with respect to a patent (before a court).

$s such! it may be possible to conclude that any other proceedings merely refers to any other proceedings before a court or Registrar, or alternatively! to the same effect! any other proceedings with respect to a patent before a court or *egistrar.

)ase law that could be found on this issue also do not define what "any other proceedings" means. *ather! they merely ma+e very specific ,udgments on what kinds of proceedings fall within the ambit of "any other proceedings" of s82(2) or the -. e/uivalent! s&0(2). 1 In the -.I#2 case of Sonomatic Ltd v Flexlife Ltd1it was held that raising issues of validity at an opposition hearing to a post grant amendment would fall afoul of the phrase "any other proceedings" In both the -. case of Organon Teknika Limited v F. offmann!la "oche # and the 34 case of $srtra%eneca $& v "anbaxy' (which applied Organon)! it was held that raising issues of validity by commencing a writ to seek a declaration from the court directly would fall afoul of the phrase "any other proceedings".

"owever! the e%amples raised in these cases would be consistent with the interpretation that "any other proceedings" deals with any other proceedings (with respect to a patent) before a ourt or Registrar! There is also dicta from the case of $rrow (enerics v )erc * +O ,nc-! where .itchin 5 stated that6 "In my ,udgement clear words are re./ired to excl/de that right and section &0 sho/ld be interpreted no more widely than necessary to give effect to its purpose" $rguably! clear words are also needed to e%clude arbitration proceedings.

Additional Arguments in support of Arbitration

4enerally spea+ing! if there is a prima facie arbitration agreement! the )ourts generally leave it to the arbitral tribunal to decide on whether it has the ,urisdiction to hear the dispute pursuant to $rticle (7(() of the 8odel 9aw. The Tribunal has wide general powers to hear all manners of disputes sub,ect to the restrictions in s(( of the I$$! which states6

$s long as there is nothing to suggest that s82(2) of the #atents $ct amounts to either a mandatory rule or public policy! the dispute may be heard. 8oreover! any
1

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2

interpretation that s82(() seems to restrict validity issues to be only raised in the 3ingapore )ourts would not be a bar to arbitral proceedings as per s(((2) of the I$$.