Case Update: Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45 – landmark decision on patent law

Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45

Significance: Landmark Singapore Court of Appeal decision on issues in patent law not previously considered before by the Singapore courts. The case involved two large pharmaceutical companies. These issues relate to the protection of subsequent medical uses of known substances and the validity of “Swiss-style” claims under the Patents Act. Warner-Lambert Company LLC’s appeal failed in this case. It tried to apply to amend its patent which was alleged to be invalid for claiming a monopoly over methods of treatment of the human or animal body, something impermissible under Singapore’s patent law as section 16(2) of the Patents Act provides: “An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application.” The Court upheld the trial judge’s findings that the amendments, if granted, would extend the scope of protection of the patent and that there had been undue delay by Warner-Lambert in seeking the amendments which warranted the exercise of the court’s discretion to disallow the amendments.

Case Update: Intellectual Property Office of Singapore Case Summary: Bigfoot Internet Ventures Pte Ltd v Apple Inc. [2017] SGIPOS 4 – trade mark revocation dispute involving online post-sale upgrades and software updates

Significance: the Registrar of Trade Marks considered evidence of online post-sale upgrades and software updates to determine that the “Sherlock” trade mark registered by Apple Inc. was not put to genuine use during the relevant 5-year period after the “Sherlock” search tool and trade mark was phased out.

Apple Inc. needed to provide sufficient evidence to persuade the Registrar that the “Sherlock” trade mark was used within the relevant 5-year period, notwithstanding indications that the “Sherlock” search tool in Mac OS had been phased out. Thus, because there was no evidence that there were downloads of the online updates by Singapore users in the relevant 5-year period, the Registrar was not persuaded that the “Sherlock” trade mark was put to genuine use during that time. The Registrar thus granted the application for revocation of the trade mark as at date of the application.

Explanation of Some Proposals to Changes in Singapore Copyright Law

A writer friend wanted some clarification on the proposed changes to Singapore’s Copyright Law. Yes, the Singapore Government is proposing changes and these have impact on many of us, whether professional or amateur creatives; whether a blogger, a novelist, a song writer, a performer, a film maker, a teacher, or a visual artist, etc.
 
 
Below is my attempt at explaining some of the proposals.

(1) Copyright Registry

Govt is proposing a registry by which creators of copyright work e.g. books, articles, song lyrics, music, films, photographs, can voluntarily register their work with the registry.
 
Two possibilities: (i) title only registry–just register the title of the work, creator’s name, general description, etc. (ii) deposit registry–deposit the entire work. Must pay more $$ for (ii). In my view, option (i) is quite pointless since the disputed issue of copying will most of the time be about the content of the work not the general description or existence of the work.
 
Registering with registry means presumption of copyright belonging to who registered first. But if you don’t register, doesn’t mean you don’t own copyright. But if there’s a dispute later, it’s easier to prove you have copyright if you had registered with registry (duh).
 
Registry also proposed to have records of dealings in the copyright. E.g. assignments, licences. So people who spotted say a photograph and want to use it. They go to the registry to find the copyright owner. They may notice that the copyright has already been assigned to some other person. Then they will know to approach that other person instead.
 
Overall, a good proposal. If you’re willing to pay to register, you register. But if you register everything can be very costly. If you don’t register, that’s still fine.

(2) Ownership of Commissioned Works

Currently, the law is that whoever commissioned a work is the copyright owner. This is subject to contract between the creator and the commissioner.
 
The proposed change is for creators to have copyright ownership as default for photos, portraits and engravings. Also separately for sound recordings and films. (That one a bit more complex as to who is the ‘creator’ of those works: for sound recordings it’s the person who owns the first record which embodies the sound recording, and for film, the producer of the film.)
 
I think this is a good proposal. Especially so because many times, creatives don’t have the opportunity to properly discuss contract or copyright ownership with the people commissioning it for smaller deals. It’s fairer that the creator retains ownership. And then leave it to be subject to ownership. It’s for the commissioning person to bargain for copyright to be transferred to him and pay $$ for it.

(3) Attribution Rights

Currently, there is no right of attribution. Only a right to take issue when someone falsely attributes your work. So the proposal is to have a positive right of attribution to the creator or performer. So creators or performers can insist on having the work credited to their name.

(4) Fair Use: removal of reasonableness of obtaining creative work at ordinary commercial price

Proposal is to remove this factor as a grounds for fair use (which is an exception to copyright breach). E.g. you use some music as background music for a video you’re making pro bono for a charity. Proposal is to remove this factor. Implications? I think it means as long as a copyright work is easily available for purchase online, it will be hard to say it’s fair use. But hard to say also cos you can purchase a song for personal consumption. Doesn’t mean it’s purchase for use in a video. But the point is that with the Internet today, it’s not that hard to do a bit of due diligence in finding the copyright owner and asking for permission / purchase right.

(5) Orphan Works

This is an interesting and complex issue. I.e. works which it’s not clear who the maker is. Proposals are three-fold. Won’t elaborate here.

(6) Educational Purpose

Teachers will be heartened to note also the proposed new exception for educational use as an exception to copyright breach. Currently, teachers may use photos for their classes or online lessons. It is arguably not covered previously under the exception. The new proposal allows for teachers and students to use copyrighted work if the purpose is for giving or receiving educational instruction, regardless of the media or platform of instruction.

(7) Non-Profit Museums and Galleries

A good proposal is to create exceptions for non-profit museums and galleries to make copies of materials in their collections for preservation, for records, for publicity materials, for exhibition and catalogues for exhibitions, and for research and study. Previously, there was no specific protection for museums and galleries.

(8) Data Mining & Analysis

To keep up with the whole Big Data trend, the proposal is that data mining and analysis of data which is otherwise copyrighted is not a copyright breach. But if you take the data and sell it as a database without any analysis, then it’s not permissible.

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