S'pore followed global process for 'patent troll'

Singapore's intellectual property office says it approved controversial image-linking patent based on processes accepted in an international treaty.
Written by Eileen Yu, Senior Contributing Editor

SINGAPORE--The country's intellectual property office says it had observed internationally recognized processes when it decided to award a controversial image-linking patent.

News broke last week that Singapore-registered company, Vuestar Technologies, held patent to the technology that enables "Internet searching via visual images". It implied that any Web site that uses pictures and graphics to link to another site or Web page will need a license from Vuestar.

The news angered many in the online community, some of whom labeled the Singapore company a "patent troll"--a term usually used negatively to describe someone who enforces his patents against another in an aggressive manner.

It also elicited a flurry of responses from ZDNet Asia readers, calling for the patent to be revoked due to prior art. When highlighted in a patent application, prior art encompasses anything which depicts similar inventions published before the patent was filed.

One reader named "Harl Delos" wrote: "There's plenty of prior art, so the patent is obviously invalid."

Another anonymous ZDNet Asia reader penned: "First, this little company needs to be taken to task. Perhaps a class-action lawsuit by Web site owners and developers? And then, the idiots who issued this patent need to be tarred and feathered."

Relying on global processes
A spokesperson from the Intellectual Property Office of Singapore (IPOS) told ZDNet Asia that the patent, for "method of locating Web pages by utilizing visual images", was granted on Oct. 27, 2003, to a Ronald N. Langford.

The spokesperson said in an e-mail interview that the patent application was filed by an organization called Goldspirit Investments, under the Patent Cooperation Treaty on Oct. 3, 2001.

A registry whois search revealed that Vuestar's corporate domain name, vuestar.biz, is registered to a Ron Langford at Goldspirit Investments.

According to Vuestar, its patent has also been granted in Australia, New Zealand and the United States.

The IPOS officer said: "Before grant, the patent in this case underwent an international search and examination under the Patent Co-operation Treaty (PCT) process."

First established in 1970, the PCT allows inventors to submit an international patent application simultaneously to countries that have agreed to participate in the treaty. The current list of 139 participating nations includes Singapore, Australia, the United States, Malaysia, China and the Philippines.

The IPOS spokesperson explained that patent applicants who choose to "rely" on the International Preliminary Examination Report (IPER) issued under the PCT, can inform the IPOS of their intention and "no further action will be taken by the IPOS to examine the patentability" of their application.

He said the patent was granted in Singapore on the basis of the search and examination conducted via the PCT route.

"Under Section 29 of the Patents Act, the IPOS accepted the search and examination results issued under the PCT," he added. "The IPER that was issued stated the invention as being patentable in terms of novelty, inventive step and industrial applicability."

When asked whether prior art was taken into consideration, the IPOS spokesperson replied: "Prior art is considered during the search and examination stage of a patent application, where the patentability of the invention contained therein is considered."

The officer told ZDNet Asia that there is no provision for opposition in Singapore prior to the grant of the patent.

Commonly practised in trademark applications, notice of opposition is a legal process in which a party can submit a request to prevent the registration of a trademark.

However, the IPOS spokesperson said the validity of a patent can be challenged "by way of defense in proceedings for patent infringements". A request for the search and examination report can also be requested, upon payment of a prescribed fee, in respect of any claims pertaining to the patent.

He added that concerns pertaining to the presence of prior art can also be raised by anyone and proved in written or oral form, or by use.

Anyone can apply to revoke a patent for an invention based on guidelines highlighted in the Patents Act, such as that the invention is not a patentable invention, the IPOS officer said.

He added that, to date, the IPOS has not received any application or request to revoke Vuestar's patent.

Two Singapore law firms ZDNet Asia contacted declined comment because they were representing companies that received notification letters sent by Vuestar, demanding to be paid licensing fees.

At press time, the patent offices of Australia and the United States did not respond to ZDNet Asia's queries.

Meanwhile, a Singapore university student set up a Web site calling for companies that have received notification letters from Vuestar to band together and contest the patent licensing claims.

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