This country-specific Q&A provides an overview of the legal framework and key issues surrounding patent litigation law in Singapore.
This Q&A is part of the global guide to Patent Litigation.
For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/patent-litigation/
What is the forum for the conduct of patent litigation?
An action for patent infringement in Singapore is governed by Part XII of the Patents Act (Cap 221, Rev Ed Sing) (“PA”). All claims of patent infringement must be commenced in the Singapore High Court .
However, where patent revocation is concerned, the appropriate forum to bring such a claim in will depend on the stage in which the application for revocation is brought. There are two categories of cases where an application for revocation is brought.
The first is where there is an ongoing action for patent infringement in the High Court. In this case, the Defendant will have to include a prayer for the revocation of the Plaintiff’s patent in its Defence and Counterclaim, and this will be heard together with the ongoing action for patent infringement.
The second is where there are no ongoing actions for patent infringement, and the application for revocation of a patent is brought by an interested party, who is seen to be “attacking” the validity of the patent as a stand-alone application. In this situation, the Registrar at the Intellectual Property Office of Singapore (“IPOS”) has exclusive jurisdiction to determine the validity of the patent in issue.
However, the above position should now be read in light of the Intellectual Property (Dispute Resolution) Bill (the “IPDR Bill”), which seeks to amend the PA to clarify that the High Court has jurisdiction to revoke patents. This applies regardless whether the revocation is sought by way of a counterclaim or as a standalone action. The IPDR Bill was passed in Parliament on 5 August 2019 and will be gazetted and come into force at a later date.
Under the Supreme Court of Judicature (Amendment) Bill (the “SCJA Bill”) which was tabled for First Reading in Parliament on 7 October 2019, Singapore High Court will be restructured into the General Division of the High Court (“General Division”) which will comprises the existing High Court, and a new Appellate Division of the High Court (“Appellate Division”). The Court of Appeal, the apex Court of Singapore, remains unchanged. The new Appellate Division will hear all civil appeals from the General Division except for certain prescribed matters. An appeal arising from a case heard in the General Division relating to the law of patents (even if the appeal does not raise any issue relating to the law of patents) is such a prescribed matter, and will therefore continue to be heard in the Singapore Court of Appeal.
What is the typical timeline and form of first instance patent litigation proceedings?
A rough timeline is as follows:
• The Plaintiff files and serves on the Defendant the Writ, Statement of Claim and Particulars of Infringement. The Particulars of Infringement must state which of the claims in the specification of the patent are alleged to be infringed, and must give at least one instance of each type of infringement alleged.
• Within 8 days of the service of the Statement of Claim and Particulars of Infringement, the Defendant is to file a Memorandum of Appearance in the proceedings.
• Within 14 days of the service of the Statement of Claim, the Defendant must give prior notice of his intention to put in issue the validity of the patent. If the Defendant does not do so, its Defence and Counterclaim will be due within 14 days of the service of the Statement of Claim.
• If the Defendant files a Notice of Intention to Put in Issue the Validity of the Patent, the Defendant has to file its Defence and Counterclaim and Particulars of Objection within 42 days of the service of the Statement of Claim.
• Within 14 days of the service of the Defence and Counterclaim, the Plaintiff has to file its Reply and Defence to Counterclaim.
After the pleadings are in, the parties will proceed to the discovery stage. It is usually on or around this time that the Court will decide whether the proceedings should be bifurcated or not. It is more common for the Court to bifurcate the issue of liability and the issue of damages. Infringement and invalidity are generally heard together due to the need to engage expert witnesses for common issues such as claim construction. See also the answer to question 26 below.
Thereafter, affidavits of evidence-in-chief (“AEICs”) will be exchanged. It is usually on or around the stage of the exchange of AEICs that the Court will deal with whether the issues of claim construction will be considered separately from or together with infringement and/or validity, and in general how the trial of the matter should be conducted.
It typically takes around 1.5 to 2 years from the commencement of the proceedings to obtain a first instance decision.
Can interim and final decisions in patent cases be appealed?
Interim or interlocutory proceedings in patent cases, like all other civil cases before the Singapore High Court may be appealed at least once. Such appeals are called Registrar’s Appeals and are typically heard by a single Judge in the High Courts. However, some particular types of interlocutory decisions may not be appealed or may only be appealed with leave of Court. Registrar’s Appeals are generally heard and decided within a month of the first instance interlocutory decision.
As for first instance decisions following the trial of a patent suit, there is only one round of appeal to the Court of Appeal. Parties do not need to obtain permission to appeal to the Court of Appeal. The notice of appeal must be filed within 1 month of the date of the judgment or order. Typically, an appeal will take roughly 6 months to 1 year to be heard and decided by the Court of Appeal.
As for revocations of patents heard at the IPOS Registry, a party has the right to appeal the decision to the High Court except where the decision:
(a) relates to the form of the abstract;
(b) relates to the omission of disparaging or offensive matter from a specification;
(c) relates to the prohibition of publication of information prejudicial to national security; and/or
(d) is given under rules which except the right of appeal.
The above position will be modified by the IPDR Bill, which introduces a new system of re-examination by the IPOS Registry, and further provides that a party does not have the right to appeal a decision of the IPOS Registry to:
(a) not grant a request for re-examination; and/or
(b) not revoke a patent after re-examination.
A party who wishes to further appeal the High Court’s decision on revocation to the Court of Appeal will need to seek the leave of the Court of Appeal to do so. Such an appeal will only be allowed if the IPOS Registry’s decision was given on a specified matter listed in section 90(3) of the PA.
Generally, there is no automatic stay of proceedings until and unless a party applies for and obtains a stay of execution of the decision that is the subject of an appeal.
Which acts constitute direct patent infringement?
A person is liable for direct or primary infringement of the patented product or process if he does in Singapore any of the prohibited acts stipulated in section 66(1) of the PA without the consent of the patentee, unless the defences in section 66(2) of the PA apply.
Under section 66(1)(a) of the PA, prohibited acts in relation to a patented product are:
(a) making the product;
(b) disposing of the product;
(c) offering to dispose of the product;
(d) using the product;
(e) importing the product; or
(f) having the product whether for disposal or otherwise.
Under section 66(1)(b) and (c) of the PA, prohibited acts in relation to a patented process are:
(a) using the process;
(b) offering the process for use in Singapore when he knows, or it is obvious to a reasonable person in the circumstances that its use without the patentee’s consent would be an infringement of the patent;
(c) disposing of any product obtained directly by means of the process;
(d) offering to dispose of any product obtained directly by means of the process;
(e) using any product obtained directly by means of the process;
(f) importing any product obtained directly by means of the process; or
(g) keeping any product obtained directly by means of the process, whether for disposal or otherwise.
A person who does any of the prohibited acts stated above is not liable for infringement if the defences in section 66(2) of the PA apply. Defences to patent infringement are addressed in greater detail in Question 7 below.
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
The concepts of indirect or secondary patent infringement exist in Singapore, and a party’s indirect or secondary liability is governed by the common law position on joint tortfeasorship. Unlike the English position in which contributory infringement is statutorily enshrined under section 60(2) of the UK Patents Act 1977, indirect or secondary patent infringement is not legislatively provided for in Singapore.
A person may be liable as a joint tortfeasor in two ways.
The first is where the party conspires with the primary party or induces the commission of the infringement. The party must be shown to have actually induced the infringement, or there is evidence of an agreement or understanding to carry out the infringing acts. The mere assistance of infringement by selling or offering to sell or dispose an article with knowledge that it is going to be used to infringe is insufficient to constitute a conspiracy to infringe.
The second is where two or more parties join in a common design pursuant to which the infringing acts were carried out. In establishing the existence of a common design, it is unnecessary for the parties to have mapped out a plan. Rather, tacit agreement suffices.
How is the scope of protection of patent claims construed?
Under section 113(1) of the PA, the scope of protection conferred by a patent is determined by the claims of the specification of the patent. Ascertaining the meaning of the claims is an exercise in claim construction, which is undertaken with a purposive approach.
The key principles to claim construction are as follows:
(a) in ascertaining the true construction of a patent specification, the claims themselves are the principal determinant. What is not claimed is deemed to be disclaimed;
(b) the description and other parts of the patent specification form the context for and may assist in claim construction;
(c) the claims are to be construed purposively and not literally. Since this is aimed at giving the patentee the full extent, but not more, of the monopoly which a person skilled in the art and reading the claims in context would think the patentee was intending to claim, the threshold question is to ask what the notional skilled person would have understood the patentee to mean by the use of the language in the claims;
(d) generally, the notional skilled person should be taken to be a skilled technician aware of all relevant prior art but incapable of a scintilla of invention or to engage in lateral thinking;
(e) a Court is not entitled to disregard clear and unambiguous words in a patent claim, or to rewrite or amend the claim; and
(f) an article infringes a patent if it falls within the words of one of the claims of a patent and usurps each and every one of the essential elements of that relevant claim.
Under the doctrine of equivalents, a device which is functionally equivalent to the patented invention will be held to infringe it, notwithstanding that certain essential features of the patented invention are absent from the device. This doctrine has not been accepted in Singapore on the basis that a wholly functional approach to claim construction objectionably disregards the clear and unambiguous words stated in the patent claims when such words must be given their natural and ordinary meaning.
What are the key defences to patent infringement?
Besides non-infringement, a defendant may bring itself within the exceptions created by section 66(2) of the PA for acts which would otherwise constitute infringement by virtue of being prohibited by section 66(1) of the PA. The main categories of exceptions in section 66(2) of the PA are:
(a) acts which are done privately and for non-commercial purposes;
(b) acts which are done for experimental purposes relating to the subject-matter of the invention;
(c) uses of a patented product or process by aircraft and ships which had temporarily or accidentally entered into Singapore’s airspace or territorial waters (as the case may be) or by exempted aircraft or ships; and
(d) the parallel importation into Singapore, with consent of the foreign patentee or his licensee, of any patented product or any product obtained by means of a patented process or to which a patented process has been applied.
Further, under section 71(1) of the PA, a person who in Singapore before the priority date of the invention does in good faith an act which would constitute an infringement of the patent if it were in force, or makes in good faith effective and serious preparations to do such an act has the right to continue to do that act notwithstanding the grant of the patent.
Together with its defence, a defendant to a patent infringement action may, by way of counterclaim, apply to revoke the patentee’s patent on one or more of the grounds of revocation due to patent invalidity as stated in section 80(1) of the PA. The grounds of revocation are examined in more detail in Question 8.
What are the key grounds of patent invalidity?
The grounds of patent invalidity are exhaustively stated in section 80(1) of the PA:
(a) the patent is not a patentable invention, i.e. it lacks novelty, it does not involve an inventive step, or is incapable of industrial application, or that it is an invention the publication or exploitation of which will generally be expected to encourage offensive, immoral or anti-social behaviour;
(b) the patent was granted to a person who was not so entitled;
(c) the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
(d) ¬the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed;
(e) an amendment or correction had been made to the specification of the patent or an application for the patent which should not have been allowed;
(f) the patent was obtained fraudulently, on any misrepresentation or on any non-disclosure or inaccurate disclosure of any prescribed material information; and
(g) the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or his successor in title.
How is prior art considered in the context of an invalidity action?
What constitutes prior art
Under section 14(2) of the PA, prior art in the case of a particular invention comprises all matter which has at any time before the invention’s priority date been made available to the public (whether in Singapore or elsewhere). The concept of “prior art” embraces a wide array of material and includes all informational matter whether a product, a process, or information about either. Written prior art may take the form of published articles, books and patent specifications which have been filed and published.
Under section 14(3) of the PA, prior art for the purposes of assessing the novelty of a claimed invention also includes matter contained in an application for another patent which was published on or after the priority date of that invention, if that matter was contained in the application for that other patent both as filed and as published and the priority date of that matter is earlier than that of that invention. Only patent applications which are filed in Singapore, or filed under the Patent Co-operation Treaty as an international patent which designates Singapore as the country in which protection for the invention is sought are relevant for section 14(3) of the PA.
Section 15 of the PA states that section 14(3) of the PA is disregarded in conducting the obviousness assessment of a claimed invention. That means that matter contained in a patent application which was unpublished as at priority date of the claimed invention but which was subsequently published does not constitute prior art in determining whether the invention was obvious.
Information about an invention which is made publicly available by oral disclosure may also constitute prior art. Further, prior art also includes prior demonstration or use of products or processes which makes the information embodied in them publicly available. Therefore, the trial use of a prototype traffic controller in public which gave the public “direct and unambiguous” access to information contained in the invention placed that information into the prior art, thus anticipating the patent in suit for that invention.
However, the following disclosures of matter constituting an invention made within 12 months prior to the date of filing the application will be disregarded:
(a) where the disclosure of matter which was obtained unlawfully or in breach of confidence;
(b) where the disclosure was made in breach of confidence;
(c) where the disclosure is an inventor-originated disclosure made at an international exhibition or before a learned society; and
(d) where the disclosure is an inventor-originated disclosure made in circumstances which do not fall under the above, but excluding an inventor or joint inventors’ own published applications unless such publication was erroneous.
Prior art is considered when the validity of a patent is being assessed particularly in respect of the ground of novelty and inventive step.
Relevance of prior art in the novelty assessment
An invention is novel if it does not form part of the state of the art (also known as “prior art”).
After the prior art in relation to a particular invention is ascertained, a two-step inquiry is to be undertaken to determine whether the invention lacks the necessary novelty and is therefore anticipated by the prior art.
The first is to ask whether the prior art discloses the invention.
There is disclosure if the prior art contains “clear and unmistakable directions to do what the patentee claims to have invented”, in that the inventor of the cited prior art is clearly shown to have “planted his flag at the precise destination” of the patentee’s claim.
Alternatively, one may ask whether the performance of an invention in the prior art would necessarily infringe the patent if it were granted in respect of the patent-in-suit. This must be strictly proven by the party seeking invalidation of a patent. As long as there is more than one possible consequence of performing the invention disclosed by the prior art, it cannot be said that infringement would “necessarily result”. Indeed, the mere fact that infringement was “overwhelmingly likely” is insufficient for the purposes of establishing anticipation.
Generally, in conducting the novelty inquiry, the claimed invention must be compared against each individual piece of prior art separately to determine whether it was anticipated by each piece of prior art. However, cross-referencing may be allowed where a later prior art document refers to an earlier document or where a series of documents forming a series of disclosures refer to each other. Nonetheless, where a later document references only one aspect of the earlier document, only that part (as opposed to the entire document or that chapter containing that reference) is to be read with that earlier document.
The second is to ask whether the prior disclosure is enabling.
As a preliminary matter, enablement is conceptually distinct from disclosure. While the disclosure is concerned with whether the prior art discloses an invention which if performed would necessarily infringe the patent-in-suit, the enablement focuses on whether the technical teachings of the prior art provides enough information to enable the person skilled in the art to work the invention as disclosed by the prior art.
The person skilled in the art is a legal construct, being a person who:
(a) possesses common general knowledge, being the mental equipment that is necessary for competency in the field of endeavour in question;
(b) has a practical interest in the subject matter of the patent or be likely to act on the directions given in it; and
(c) whilst unimaginative, is reasonably intelligent and wishes to make the directions of the patent work.
The person skilled in the art can also consist of a notional team of persons having different skills, depending on the relevant art.
Relevance of prior art in the obviousness assessment
An invention will involve an inventive step if the invention is not obvious to a person skilled in the art having regard to the prior art. Prior art for the purposes of the obviousness assessment comprises all matter which has at any time before the invention’s priority date been made available to the public (whether in Singapore or elsewhere).
Unlike the novelty assessment, in conducting the obviousness assessment, it is permissible for prior art references to be read collectively in a “mosaic” if they can be put together by an unimaginative man with no inventive capacity. For example, in assessing the obviousness of a patent in a suit which deals with the inspection and placement of electronic components onto printed circuit boards, it is fair to mosaic prior art references which are all obviously concerned with the handling of wafer dies.
Whether a claimed invention involves an inventive step is determined with reference to the four-step Windsurfing approach:
(a) identify the inventive concept embodied in the patent in suit;
(b) assume the mantle of the normally skilled but unimaginative person in the art at the priority date and impute to him what was, at that date, common general knowledge in the art in question;
(c) identify what, if any, differences exist between the prior art and the alleged invention; and
(d) ask whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
One test in the obviousness assessment is whether the person skilled in the art would “assess the likelihood of success as sufficient to warrant actual trial”. This is also known as the “obvious to try” test. However, this test must be applied with care, given that not all inventions are solutions to problems that were known in the prior art and that in some cases the inventive step resides in the identification of the problem instead.
Can a patentee seek to amend a patent that is in the midst of patent litigation?
A patent that is the subject of a patent litigation may be amended in the midst of patent litigation.
The patentee may only apply do so if the validity of the patent has been put in issue before the Court or the Registrar. This would usually be in a case where there is a counterclaim filed by the defendant and alleged infringer to invalidate and revoke the patent. A patentee intending to do so must give notice of his intention to the Registrar and a copy of an advertisement containing relevant details of the patent sought to be amended must be published in the patent journal by the patent Registry. Such details include the full particulars of the amendment sought, whether the amendment is by way of deletion or re-writing of claims and the patentee’s address for service within Singapore.
Any person may oppose the amendment and that person must give written notice of his intention to oppose to the patentee within 28 days after the publication of the advertisement. This notice is to be accompanied by a statement of opposition, which is to contain full particulars of all grounds of opposition to the patentee’s application to amend.
After the expiration of 42 days from the appearance of the advertisement, the patentee must make his application to amend by way of summons in the proceedings pending before the Court. A copy of the summons and a copy of the specification with amendments marked up in coloured ink must be served on the Registrar, the parties to the proceedings and any person who has given notice of his intention to oppose the amendment.
An amendment application will be refused if it is made in respect of a matter which has been disclosed in an earlier application or in the specification of a patent which has been granted, or if it discloses additional matter being matter that extends beyond that disclosed in an earlier application.
Further, the Court retains the discretion to allow an amendment. The following factors are relevant to the exercise of this discretion:
(a) whether the patentee had disclosed all relevant information with regard to the proposed amendments;
(b) whether the amendments comply with the statutory requirements;
(c) whether the amendments introduce additional matter;
(d) whether the amendments extend the scope of protection of the patent (i.e. the amended patent is broader than the patent in its current form);
(e) Whether there had been undue and inexplicable delay on the patentee’s part in taking out the amendment application;
(f) whether the patentee had sought to obtain an unfair advantage from the patent by delaying the amendments which it knew were needed; and
(g) whether the patentee’s conduct discourages the amendment of the patent.
Following a successful application to amend the patent specifications, the patentee (i.e. the plaintiff) may be in a better position to resist any claims from the defendant that the patent in the suit is invalid on the ground of anticipation by the prior art. This is generally why a patentee seeks to amend its patent.
However, the adverse implication to an application to amend a patent specification is that it indicates to the adverse party and to the Court that the unamended patent as granted may not be valid. As such, if the application to amend is rejected, it is more likely that the unamended patent would not withstand an invalidity/revocation attack from the adverse party.
The Court has the discretion to direct whether the hearing of the patent amendment application should be at the trial of the patent infringement suit or separately, which would be before the trial of the patent infringement suit. While the patent amendment application is considered an interlocutory application where cross-examination of deponents is typically not allowed, given the complexity and the finding of facts involved in a patent amendment application, expert witnesses are usually cross-examined at the hearing of a patent amendment application that is separate from the trial of the suit.
Is some form of patent term extension available?
A patent’s term is 20 years beginning on the date the application for the patent was filed.
The term of a patent may be extended on the following grounds:
(a) There was an unreasonable delay by the Registrar in granting the patent. There is unreasonable delay only when, excluding any delays caused by the applicant:
(i) more than 4 years have passed between the date of filing of the application for the patent and the date of issue of the grant; or
(ii) more than 2 years have passed between the date on which the applicant filed a request for a search and examination report, or an examination report (as the case may be) and the date of issue of grant.
(b) Where an applicant relies on the prescribed information of a corresponding application to obtain the grant of a patent in Singapore, there was an unreasonable delay in the issue of the corresponding patent or related national phase patent (as the case may be) and the patent office which granted that patent has extended its term on the basis of such delay.
(c) Where the subject of the patent includes a substance which is the active ingredient of any pharmaceutical product and this is the first pharmaceutical product containing the patented active ingredient to obtain marketing approval, that there was an unreasonable curtailment of the opportunity to exploit the patent caused by the process of obtaining marketing approval of that product. There is unreasonable curtailment only when:
(i) the marketing approval was obtained after the patent grant; and
(ii) excluding any delays caused by the applicant, more than 2 years have passed between the date of the application of marketing approval for the pharmaceutical product was made and the date such approval was granted.
How are technical matters considered in patent litigation proceedings?
In the context of patent litigation, experts may be called to give opinion evidence on technical matters and scientific information relating to the patent. Expert evidence is admissible in relation to matters that ordinary persons are unlikely to have sufficient knowledge to give meaningful evidence. Specifically, an expert may give evidence on:
(a) the prior art at any given time;
(b) the meaning of any technical terms used in the prior art and an explanation as to facts of a scientific kind;
(c) whether, on a given hypothesis as to the meaning of what is described in the patent specification, whether the specification can be carried out by a skilled worker;
(d) at any given time, what a given piece of apparatus or any given sentence on any given hypothesis would have taught or suggested to him;
(e) whether a particular operation relating to the art would be carried out; and
(f) what is common general knowledge to a person skilled in the art.
While the Court may appoint a Court expert on its own motion or on the application of any party to the proceedings to assist the Court on technical matters, parties usually engage their own respective experts.
It is the duty of an expert to assist the Court on the matters within his expertise, and this duty overrides any obligation owed to the person instructing or paying him.
Unless the Court otherwise directs, expert evidence is given in a form of a written report. This report must contain relevant details including details of his expert’s qualifications, a statement setting out the issues he was asked to consider, and the literature or materials he has consulted in preparing his report. A party may with the Court’s leave put written questions to an expert about his report. ¬
This report will be sworn by the expert in his AEIC, and either party may cross-examine the other party’s expert on the contents of his report.
The Court may also order that some or all of the expert witnesses give their evidence concurrently by testifying as a panel if parties consent (i.e. hot-tubbing).
Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
The process of discovery for civil actions generally applies to patent infringement actions. Parties may be ordered to give discovery during proceedings by making and serving on the other party a list of documents which are or have been in his possession, custody or power. Such documents include documents which the parties rely or will rely, and documents which are adverse to or support either party’s case. Documents referenced in the list of documents may be inspected by the other party.
However, the following classes of documents are exempted from being listed:
(a) documents relating to the infringement of a patent by a product or process, if before serving the list of documents, the party alleged to have infringed the patent has provided the other party with full particulars of the allegedly infringing product or process;
(b) documents relating to any ground on which the validity of a patent is put into issue, except documents which came into existence within the period beginning 2 years before the claimed priority date and ending 2 years after that date; and
(c) documents relating to the issue of commercial success.
Pre-action discovery and pre-action interrogatories (collectively referred to as “pre-action disclosure”) may be sought against a defendant prior to commencement of proceedings against a party to compel it to make disclosures of documents and facts in order to help the plaintiff ascertain whether he has a viable cause of action against a potential defendant. Further, pre-action disclosure may be sought against non-parties to the proceedings in order to identify possible parties to the proceedings.
An order for samples to be taken of any property which is the subject matter of the action may also be sought for the purpose of obtaining information or evidence of patent infringement for the trial. Further, a search order (also known as an Anton Piller order) may be sought to require the defendant to permit persons to enter his premises to search for documents or other movable property and take them away for preservation of such evidence until the trial.
A party which desires to establish any fact by experimental proof (the “Requesting Party”) shall serve a notice of experiments on the other party, stating the facts which it desires to establish and full particulars of the experiments proposed to establish those facts. Within 21 days of such service, the other party is to serve upon the Requesting Party a notice stating whether or not he admits each fact. Where any such fact is not admitted, the Requesting Party may seek an order for the experiments to be conducted.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
Generally, the patentee bears the burden of proving that its patent has been infringed. However, the burden of proof is reversed in patent infringement proceedings involving a process for obtaining a new product. In such proceedings, the alleged infringer bears the burden of proving that the product is not made by that process if:
(a) the product is new; or
(b) substantial likelihood exists that the product is made by that process and the patentee has been unable through reasonable efforts to determine the process actually used.
There is no automatic requirement for the defendant to provide a process description. If the plaintiff wishes to compel the defendant to do so, the plaintiff may apply for the defendant to furnish such details by way of an application to Court for discovery or interrogatories.
Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
The parties to the proceedings are subject to an implied undertaking not to use the documents disclosed during the discovery process and the information obtained thereon for a purpose other than pursuing the action in respect of which discovery is obtained. This is known as the Riddick principle.
Parties may agree on other forms of confidentiality undertakings beyond the Riddick principle:
(a) The parties may consider subjecting the disclosure of documents to a Non-Disclosure Agreement (“NDA”). The NDA may be executed prior to the exchange of the lists of documents pursuant to general discovery; and/or
(b) The parties may consider forming a confidentiality club to protect the confidential information about the patent in suit and/or the allegedly infringing product. Members typically comprise the parties’ representatives, lawyers, appointed expert witnesses, and whoever the parties deem necessary to include. The members will sign the necessary confidentiality undertakings before the disclosure of the abovementioned confidential documents. Where these confidential documents are used in Court, they are typically collated into a confidential bundle that is only available to the members of the confidentiality club. The Court session will also be conducted in camera. The terms of the confidentiality undertakings generally include personal indemnity clauses in the event of a breach of the said undertakings.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
Singapore’s system of post-grant opposition proceedings is known as the revocation of a patent at the IPOS Registry. This is to be differentiated from the revocation of a patent in the High Court, which will generally be brought by way of a Defence and Counterclaim (see answer to Question 1 above). Once patent infringement proceedings have commenced in the High Court, revocation proceedings can only be brought in the High Court and these proceedings will be heard together with the patent infringement suit.
In the event that post-grant opposition proceedings have commenced at the IPOS Registry prior to the revocation action in the patent infringement proceedings in the High Court, the parties can consider whether any of the proceedings ought to be stayed, and if so, which one. While there are no provisions in the Rules of Court that provide for an automatic stay of proceedings, it is likely that parties will opt for the IPOS Registry proceedings to be stayed given that any appeal from the IPOS Registry would eventually be heard in the High Court.
The IPDR Bill, which has yet to come into force, will introduce a re-examination system as an alternative to revocation proceedings. This will allow third parties to request the IPOS Registry to re-examine a granted patent in certain situations, instead of having to engage in the relatively lengthy and costly process of revocation.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
Given that patent law is territorial, it has been acknowledged by the Singapore Courts that an adjudication on patent rights is predicated upon not only the applicable regulatory framework and practices, but also the evidence presented as well as the submissions made to the tribunal concerned. Accordingly, care must be taken when referring to and/or relying on another apparently similar decision on the “same” issue from another jurisdiction.
The above notwithstanding, general principles of law stated by Courts in other Commonwealth jurisdictions (UK in particular) are typically considered persuasive by the Singapore Courts. As the Singapore PA is modelled after the UK Patents Act 1977, cases that apply the UK Patents Act 1977 would be persuasive in the Singapore Courts. An example of this is the endorsement of the “four-step Windsurfing approach” in relation to the assessment of obviousness as a ground of invalidity of a patent.
How does a court determine whether it has jurisdiction to hear a patent action?
The Singapore Court does not have jurisdiction to consider questions of infringement or validity in respect of foreign patents that do not fall under the PA (i.e. are not filed in the IPOS Registry).
There has not been a local case dealing with the circumstances under which a Court will grant an anti-suit injunction in relation to overseas patent infringement and/or validity proceedings. In theory, while there is likely no issue with the Singapore Courts granting an anti-suit injunction to injunct overseas patent litigation proceedings where the patent concerned is within Singapore’s jurisdiction, we note that such cases would be unlikely given that patents are widely regarded as being territorial in nature and thus it is likely that litigants will commence proceedings in the appropriate forums at the outset.
What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
While parties are advised to consider ADR options including arbitration or mediation to resolve their disputes, there are no mandatory ADR provisions in Singapore relating to the resolution of disputes concerning intellectual property rights.
There may have been some apprehension with arbitrating disputes concerning intellectual property rights in Singapore. It may have been previously thought that such disputes may be non-arbitrable given that certain intellectual property rights (including patent rights) require registration. Further uncertainty arose from whether an arbitral tribunal’s award is binding over IPOS.
However, the IPDR Bill clarifies that disputes concerning intellectual property rights, including patent disputes, are arbitrable in Singapore. The Bill provides that disputes concerning intellectual property rights, including patent rights, are arbitrable regardless of whether such rights are registered or whether they subsist in Singapore. The Bill further provides that an arbitral award on IP disputes only takes effect on the parties to the arbitration and not on third parties.
Parties may also choose to submit their disputes to mediation. In particular, under the Enhanced Mediation Promotion Scheme established by IPOS, parties who choose mediation as an alternative to a hearing may receive funding towards mediation costs. Mediation providers which the parties can choose include the WIPO Arbitration and Mediation Center’s Singapore Office, the Singapore Mediation Centre and the Singapore International Mediation Centre.
What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
Proceedings for patent infringement are to be begun by writ.
As patent infringement is a statutory tort, the limitation period of 6 years for an action founded on a tort applies. Where there is ongoing infringement of the patent in question, a fresh cause of action accrues every day. However, the patentee’s right to bring an action is restricted to the part of the wrong which was committed in the past six years.
While not mandatory, a letter of demand is usually sent before proceedings are commenced. This depends on whether the patentee wishes to engage the alleged infringer in negotiations prior to the commencement of proceedings. That being said, the patentee must be aware that in the event that the Court eventually finds that the patentee’s patent has not been infringed, the Court has the discretion to award the alleged infringer relief for groundless threats of infringement. Such relief could include a declaration that the threats are unjustifiable, an injunction against the continuance of the threats and/or damages for any loss sustained thereby.
Where applicable, it is also prudent to conduct trap purchases before the start of any proceedings. A lawyer may conduct the trap purchases on behalf of its client, or a private investigator may be engaged to do so.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
A proprietor of a patent has standing to bring a patent infringement action. An equitable owner of a patent may also bring a patent infringement action although he must perfect his equitable title before final judgment.
Where there are multiple proprietors for a patent, any of them may bring an action without the consent of the other proprietors, but they must be named as defendants in the proceedings unless the Court orders otherwise.
An assignee or exclusive licensee of a patent also has standing to bring an action in respect of any infringement of the patent committed after the date of the assignment or license, or for infringements occurring prior to that date if such right is included in the relevant grant of title. The transaction, instrument or event by which the proprietor or exclusive licensee is conferred rights in a patent should be registered within a period of 6 months of its date, or if registration within that period is not practicable, as soon as practicable thereafter. The failure to do so would preclude the proprietor or licensee from obtaining damages or an account of profits in respect of a subsequent infringement of the patent occurring after the transaction, instrument or event but before the same was registered.
Licensees under a licence of right or a licence granted compulsorily may request for the proprietor of a patent to bring proceedings to prevent any infringement of the patent, and if the proprietor neglects to do so within 2 months, the licensee may institute proceedings in his own name, making the proprietor a defendant to such proceedings.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
The following persons may bring an invalidity action against a patent:
(a) defendants of a patent infringement proceeding are entitled to challenge the validity of the patent holder’s patent by way of defence. In the recent Court of Appeal decision, Sunseap Group Pte Ltd and others v Sun Electric Pte Ltd  1 SLR 645, the Court of Appeal has held that the Singapore High Court has the original jurisdiction to revoke an invalid patent only in proceedings where the validity of the patent was put in issue by way of a defence.
(b) applicants of a groundless threat of infringement proceeding under section 77 of the PA may challenge the invalidity of a patent. However, these applicants must have had their commercial interests adversely affected or likely to be adversely affected. The defendant can be any persons and need not be limited to only the proprietor of the patent or a person that is entitled to any right in a patent, for example, a licensee;
(c) applicants who applied for a declaration of non-infringement under section 78 of the PA;
(d) applicants who applied to revoke the patent pursuant to any or all of the grounds set out in section 80 of the PA. Although any person may bring a revocation application, an applicant must establish a cause of action entitling him to a ruling on validity since no proceedings may be instituted solely to seek a declaration as to the validity or invalidity of a patent ; and
(e) The Government or parties authorised by the Government involved in proceedings relating to the use of patented inventions by the Government and its authorised parties under sections 56 and 58 of the PA. Section 56 of the PA provides that the use of a patented invention by the Government or its authorised party would not constitute an infringement of the patent if done (a) for a public non-commercial purpose or (b) for/during a national emergency or other circumstances of extreme urgency.
Do note that these applications must be made to the IPOS Registry, with the exception of (a) above which must be made to the High Court (see also the answers made to question 16 above).
Are interim injunctions available in patent litigation proceedings?
While there have not been many reported cases in Singapore in relation to interim injunctions in patent litigation proceedings, interim injunctions may be applied for patent infringement cases as it may be applied for in other civil cases.
An application for an interim injunction in patent litigation follows similar principles as those in other cases. The applicant must show that there is a serious question to be tried, that damages are not an adequate remedy and that the balance of convenience lies in favour of granting an injunction. The procedure for obtaining an interim injunction is set out in Order 29 of the Rules of Court. In exchange for obtaining an interim injunction, the plaintiff may be required to undertake to the court to compensate the defendant in the event that his claim fails and the interim injunction has caused the defendant loss.
In specific relation to therapeutic products to be registered in Singapore, a 30-month moratorium on registering the said products is available to patent proprietors who are put on notice (as required by the relevant legislation) that an applicant is seeking to register a therapeutic product which is related to a patent that is currently in force. This moratorium is automatic and will kick in on the date that the application for the moratorium is made.
An application for an interim injunction must be made by summons together with a supporting affidavit. Where the case is urgent, the application may be made ex parte.
Even if the interim injunction is not granted, a party may apply for an expedited trial of the action.
What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
The following remedies are available for patent infringement:
(a) an injunction restraining the defendant from any apprehended act of infringement;
(b) an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised or any material and implement the predominant use of which has been in the creation of the infringing product;
(c) damages to be assessed or an account of profits; and
(d) a declaration that the patent is valid and has been infringed by him.
An injunction is most commonly sought as it is a remedy against further injury arising from continued infringement of the patent. A quia timet injunction may be sought against a party who is about to infringe the patentee’s rights. The reliefs sought and granted depend on the individual facts of the case.
As against a single tortfeasor, the patentee must elect between the alternative remedies of damages or an account of profits. The rationale for this election is to prevent the patentee from being overcompensated.
However, where there are multiple tortfeasors who have caused the plaintiff different damage, the patentee is entitled to proceed with the remedy of damages against one tortfeasor, and an account of profits against the other. In this case, the remedies available to the patentee are cumulative.
A qualification is that the both remedies of damages and an account of profits will not be ordered against a defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for supposing that the patent existed.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
Being an economic tort, the principle underlying an award of damages for patent infringement is to put the patentee in the same position as he would have been had he not suffered the wrong. Damages may be assessed on one of the following bases:
(a) Damages may be assessed on a ‘loss of profit’ basis if the proprietor is a manufacturer;
(b) If the proprietor exploits his invention by issuing licenses, damages may be assessed with reference to the amount of royalty he would have received if the infringer had taken a license from him; and
(c) Damages may also be based on a notional royalty basis, which may take into account factors such as potential profitability.
As the law stands, an award of exemplary damages for patent infringement is not available in Singapore.
How readily are final injunctions granted in patent litigation proceedings?
Generally, final injunctions are prayed for in the Plaintiff’s Statement of Claim. While the Court retains discretion as to whether a final injunction should be granted, if the Court eventually finds that the patent in the suit has been infringed, the Court will generally grant the final injunction.
The standard form of final injunction is one which restrains the defendant 'from making, disposing of, offering to dispose of, using, importing and/or keeping whether for disposal or otherwise products which infringe the patent in issue, and/or using or offering for use in Singapore processes which infringe the patent in issue’.
A successful plaintiff is also entitled to damages as compensation for the loss that it suffered due to the infringement. Typically, patent infringement claims are bifurcated, and damages are assessed at a separate inquiry held subsequent to the infringement trial. In a great deal of cases, the proper measure of damages is a reasonable royalty in respect of each infringement committed. If the patentee habitually grants licences at a particular royalty, quantum is easy to estimate. Even if he does not, an estimate can be made. Claims to larger damages can be made, on the ground that the patentee has lost profits, or, for example, has had to reduce his prices. The onus is on the plaintiff to prove that his lost profit has resulted from the infringing acts and that if those acts had not taken place he would have made the profits. If he cannot, the reasonable royalty basis will apply. Claims are often made for other damages (for example, loss of sales of related products not covered by the patent, or loss of orders of spare parts or loss of service contracts). See also the answer to question 2 above.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
A patentee may rely on section 67(1)(e) of the PA to seek a declaration that the patent in suit is valid and has been infringed by the defendant.
Conversely, a defendant or any person may rely on section 78(1) of the PA to seek a declaration that an act or proposed act would not constitute an infringement of a patent if the following conditions are met:
(a) The proprietor of the patent has not made any assertion to the contrary;
(b) The person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed and has furnished him with full written particulars of the relevant act; and
(c) The proprietor of the patent has refused or failed to give any such acknowledgment.
What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
The costs incurred by each party will differ depending on the complexity of each case and the number of interlocutory applications taken out by the parties. Given the above, it is difficult to provide an estimate of such costs.
Can the successful party to a patent litigation action recover its costs?
In our experience, a successful party will be able to recover about 30% to 40% of its legal costs from the losing party and 100% of court filing fees and reasonable disbursements from the other side. These costs are awarded on a standard basis (i.e. the winning party will be able to recover costs that were reasonably incurred and are reasonable in amount, and any doubts that the Court may have as to whether the costs were reasonably incurred or were reasonable in amount shall be resolved in favour of the paying party).
Where a party refuses to accept an offer to settle under Order 22A of the Rules of Court, and the terms of the offer to settle is just as favourable or more favourable than the judgment eventually ordered, the Court has the discretion to penalise the party who refused to accept the offer to settle with costs on an indemnity basis (i.e. the winning party will be able to recover all costs except those that have been unreasonably incurred or are unreasonable in amount, and any doubts which the Court may have as to whether the costs were reasonably incurred or were reasonable in amount shall be resolved in favour of the receiving party).
A Defendant may apply for a security for costs (“SFC”) order, which requires the Plaintiff to put up a certain amount of money as security / a guarantee for the Defendant’s legal costs in the event the Plaintiff loses his case. For the avoidance of doubt, the legal costs referred to here are Party-and-Party Costs (“P&P Costs”).
Usually, a losing party must pay the winning party’s P&P Costs. P&P Costs are not the legal fees a party pays to his lawyer, which are called Solicitor-and-Client Costs (“S&C Costs”). P&P Costs are not meant to compensate the winning party for his S&C Costs and are generally far lower than S&C Costs. However, P&P Costs still go some way towards the winning party recouping its expenses.
SFC applications are usually granted when the Court is persuaded that the Defendant will have difficulty obtaining P&P Costs from the Plaintiff if the Plaintiff’s claim fails. The grounds on which an SFC application can be sought is set out in Order 23 of the Rules of Court:
(a) where the Plaintiff is ordinarily resident out of the jurisdiction;
(b) where the Plaintiff is a nominal plaintiff who is suing for the benefit of some other person and that there is reason to believe that he will be unable to pay the costs of the defendant if ordered to do so;
(c) where the Plaintiff’s address is not stated in the writ or other originating process or is incorrectly stated therein, and such failure to state the same is not made innocently nor without an intention to deceive; and
(d) where the plaintiff has changed his address during the course of the proceedings with a view to evading the consequences of the litigation.
Along with the grounds above, the Court will still have regard to all the circumstances of the case and order the SFC application if the Court thinks it just to do so.
The process of obtaining SFC is started by the Defendant writing to the Plaintiff requesting for security to be provided. If the Plaintiff refuses, the Defendant will have to make a formal application to Court by way of summons supported by affidavit. This affidavit will contain the Defendant’s reasons for wanting security to be provided and the amount of security sought. If the Court grants an application for SFC, the Plaintiff may provide security by way of depositing the sum of monies into an account held by the Singapore Court, or by way of a bank guarantee, or by way of a solicitor’s undertaking.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
It is likely that patent infringement of pharmaceutical drug patents that fall under the definition of a therapeutic product under the Health Products Act (Chapter 122D) will continue to be a large part of patent matters in Singapore. As stated in the answer to Question 23 above, applicants that are looking to register their therapeutic products are required to notify the proprietor (of the patent that its application relates to) of its intended application. Upon receipt of such notice, the patent proprietor must apply to the Court for an order restraining the application within 45 days, otherwise the Health Sciences Authority may proceed to register the same.
Further, due to the predicted increase in patent applications relating to Fintech and Artificial Intelligence, these are also areas which are forecasted in the near future to contribute significantly to patent litigation in Singapore.
As part of Singapore’s increased efforts to promote an ecosystem for innovation in its financial services sector and to support its shift towards a digital economy, IPOS has recently launched the FinTech Fast Track (April 2018) and Accelerated Initiative for Artificial Intelligence (April 2019) programmes to expedite the application-to-grant process for Fintech and AI patent applications respectively.
The financial services sector has clearly responded to Singapore’s technological climate. There have been 92 FinTech patent publications filed as of 27 Oct 2018, which surpassed the 83 publications in the preceding year. A greater increase may follow this year, as FinTech-enabled businesses seek to leverage on the expedited application-to-grant process under the FinTech Fast Track programme, before its stipulated end-date in April 2020.
Conventional areas of patent litigation in the pharmaceutical, healthcare and manufacturing industries continue to feature strongly in the Singapore landscape.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
How the Courts would treat challenges to the validity of independent and dependent claims is likely to be a hot-button issue in the months to come.
Following the Court of Appeal’s decision in Sunseap Group v Sun Electric Pte Ltd  1 SLR 645, the Court of Appeal held that if the Court finds in the Defendant’s favour that the independent claims are invalid, it follows that the dependent claims must also fail. Accordingly, once a defendant succeeds in establishing that all the independent claims are invalid, the dependent claims must necessarily fall away and the patent will be considered invalid.
The Court of Appeal reasoned that since dependent claims refer back to independent claims and incorporate all of its features, the invalidation of an independent claim would necessarily mean that a dependent claim would also be invalidated.
Traditionally, a dependent claim is likely to contain a separate and inventive integer that distinguishes it from the independent claim that it stems from. Following Sunseap Group v Sun Electric Pte Ltd  1 SLR 645, patent drafters and patent litigators are likely to keep their eyes on how the Courts will apply the Court of Appeal’s decision to an analysis of dependent claims when the validity of independent claims are challenged, which will in turn affect the utility and/or form of dependent claims in a patent moving forward.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
One notable aspect of patent litigation which warrants consideration for reform concerns the guidelines for party-and-party costs which is payable to the successful party in patent litigation. The daily tariff rates for party-and-party costs for trials depend on the subject matter of the dispute. While the general complexity of intellectual property litigation has been duly recognised by the guidelines so as to attract the highest tariff rate, it remains the case that the time and expense required in addressing the highly specialised and technical issues arising from patent disputes usually significantly exceed that reflected in the applicable tariff rate for intellectual property disputes in general. A significant proportion of costs are incurred in the preparation of expert reports by parties’ appointed expert witnesses on technical or scientific matters.
The same concern applies to the quantum of security for costs awarded to a defendant to a patent action, as the award of security is guided by the costs guidelines referred to above.
Another aspect of patent litigation which may attract reform relates to the issue of excessive prior art citations pleaded by party seeking invalidation of the patent in suit, which has the effect of unnecessarily increasing the complexity and costs of litigation. Reforms to limit unnecessary prior art citations are required to ensure that the true issues engaged by the dispute are resolved in a timely and cost-efficient manner.
Similarly, the excessive number of claims asserted by a Plaintiff in a patent infringement suit may also need to be curtailed by the Court. One approach that might be considered is that of identifying which claims have independent validity (i.e. claims that can be said to have independent validity even if the independent claims that they stem from are invalidated), pursuant to the English High Court case of Edwards Lifesciences AG v Cook Biotech  EWHC 1900 (Pat), where the Court has an active role in ensuring that a Plaintiff makes a realistic identification of claims that are independently valid.
What are the biggest challenges and opportunities confronting the international patent system?
The biggest challenge facing the international patent system arises from the firmly territorial nature of patents and national patent systems. While harmonisation efforts, including the filing of patents under the Patent Cooperation Treaty (“PCT”), have made significant headway in ensuring countries around the world apply a similar concept of patentability, the continued lack of uniformity in substantive patent law and patent practice across countries means that a unified international examination system for patents remains elusive.
One example of divergent patent practice even between International Searching Authorities (“ISA”) under the PCT is shown by how the United States Patent and Trademark Office (USPTO) regards method of treatment claims as being patent eligible, while the European Patent Office (EPO) does not.
Another example is the differing treatment across various countries of prior disclosures of an invention in the assessment of a patent’s novelty. In some jurisdictions, there is a grace period of 12 months given to applicants to obtain protection for their invention notwithstanding that matter constituting the invention has been disclosed prior to the application. This grace period may not be recognised in other jurisdictions. This may mean that the applicant in the country with the grace period may suffer a loss of patent rights.
Further difficulties are posed by searches of prior art in different languages. Due to language constraints, a search conducted by an ISA may not uncover prior art which is not in its primary language. An applicant may hence be required to have prior art in a foreign language translated at its own cost to ensure completeness of the search.
Nonetheless, since the priority date of a patent filed under the PCT procedure is the date when the application was filed with a Receiving Office, the PCT affords applicants the opportunity to obtain for priority even before it has reached a decision on which country it seeks protection in.
The initial search an examination undertaken by the ISA and its subsequent written opinion on the patentability of the invention will enable the applicant to make an assessment of whether applications ought to be filed in other PCT Contracting States, or whether the claims ought to be narrowed in light of the identified prior art. Positive examination results in the international phase may also expedite the examination process undertaken by national patent offices.