SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
Drew & Napier LLC 10 Collyer Quay #10-01 Ocean Financial Centre Singapore 049315
Tel: +65 6535 0733 Fax: +65 6535 4906
Email: mail@drewnapier.com Web: www.drewnapier.com
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action
Licensees under a licence of right or a licence grant ‑ ed compulsorily may request the patent proprietor to bring proceedings to prevent any infringement of the patent, and if the proprietor neglects to do so within two months, the licensee may institute proceedings in their own name, making the proprietor a defendant to such proceedings. Section 82 (1) of the Patents Act (PA) provides that the validity of a patent may be put in issue only in the following proceedings: • a request for re-examination of the specification of a patent under Section 38A; • by way of defence, in proceedings for infringement of the patent under Section 67 or proceedings under Section 76 for infringement of rights con ‑ ferred by the publication of an application; • in proceedings under Section 77 (ie, applications for remedies for groundless threats of infringement proceedings); • in proceedings in which a declaration in relation to the patent is sought under Section 78 (ie, applica ‑ tions for a declaration of non-infringement); • in proceedings before the court or the Registrar under Section 80 for the revocation of the patent; or • in proceedings under Sections 56 or 58 of the PA (ie, proceedings relating to the use of patented inventions by the government and its authorised parties). Section 82 (2) of the PA further states that no proceed ‑ ings may be instituted seeking only a declaration as to the validity or invalidity of a patent. A mere declara ‑
A patent proprietor has standing to bring a patent infringement action. An equitable owner of a patent may also bring a patent infringement action although they must perfect their equitable title before final judg ‑ ment. Where there are multiple patent proprietors, any of them may bring an action without the consent of the other proprietors, but they must be named as defend ‑ ants in the proceedings unless the court orders oth ‑ erwise. An assignee or exclusive licensee of a patent also has standing to bring an action in respect of any infringe ‑ ment of the patent committed after the date of the assignment or licence, or for infringements occur ‑ ring 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 six months of its date, or if registra ‑ tion within that period is not practicable, as soon as practicable thereafter. The failure to do so does not mean that the assignee or exclusive licensee cannot sue, but it will preclude the assignee 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.
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