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Singapore – Are Inventor’s Notes Discoverable?

7 November, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

In the recent case of Syntroleum Corp v Neste Oil Singapore Pte Ltd [2014] SGHCR 18, the Singapore Court (“the Court“) confirmed that a patent inventor’s notes may be discoverable where relevant in legal proceedings.

 
This case concerns applications by Neste Oil Singapore Pte Ltd (“the defendant“) for the disclosure of three categories of documents, one of which is the inventor’s notes in relation to Singapore Patent Nos. 172045 and 169053 granted in the name of Syntroleum Corp (“the plaintiff“).

 
Upon consideration of relevant English authorities, the Court agreed that inventor’s notes are discoverable for the following reasons:

 
(i) it may serve as evidence as to the way in which an inventor arrives at the invention and may be of considerable assistance to the Court in reaching a determination as to whether what is alleged to be inventive was really little more than routine work;

 
(ii) if the evidence of the inventor is material, then equally will so his notes be; and

 
(iii) inventor’s notes may be relevant to the issues of obviousness (for example, to show the state of the art at the time of the invention) and insufficiency of the patent.

 
Discovery of inventor’s notes, may extend to the purposes of, for example, showing the subjective intentions of the inventor (when this is relevant), the state of the art at the time of the invention or to demonstrate that he has adopted inconsistent positions in different proceedings.

 
Inventor’s notes, however, should not be relied upon as primary evidence to prove or disprove obviousness, and obviousness should be construed objectively through a purposive construction of the patent claims as drafted.

 
On the question of when the inventor’s notes are to be disclosed, the Court took the view that inventor’s notes should not be discoverable during standard discovery unless the issues for which they are required have been especially particularised and that disclosure should only take place when their relevance is more evident. These may be through pleadings or through a list of issues. Moreover, detailed issues, and not just abstract grounds of challenge, as well as how the inventor’s notes are to be used after discovery should be properly considered.

 
Appropriate disclosure orders tailored at case management conferences should also restrict disclosure to specific periods and parties should consider using interrogatories in place of discovery giving indications whether the inventor will eventually be called to trial. This will assist to ensure that the discovery of the inventor’s notes as secondary evidence is properly managed in order to adhere to the principle of proportionality and to manage litigation costs.

 
Points to take away from the case:

 
(i) inventor’s notes are discoverable;

 
(ii) discovery of inventor’s notes should not take place during standard discovery unless issues for which they are required are sufficiently considered and listed in detail;

 
(iii) inventor’s notes should not be used as primary evidence to assess obviousness and instead, publicly available documents should be used;

 
(iv) interrogatories in place of discovery should be used whenever possible; and

 
(v) the order for discovery must be properly tailored to ensure proportionality and management of costs.

 

ATMD Bird & Bird

 

For further information, please contact:

 
Hui Leng Tan, ATMD Bird & Bird
huileng.tan@twobirds.com
 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

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