SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
1.4 Structure of Main Proceedings on Infringement/Validity Infringement and invalidity are generally heard togeth ‑ er due to the need to engage expert witnesses for common issues such as claim construction. It is very rare for the court to agree to bifurcate infringement and validity proceedings. The court will usually agree if there is a very clear case of invalidity. For example, prior to the amendment to the Singapore Patents Act in 2021, there was no grace period of 12 months for prior disclosures to be disregarded, unlike other juris ‑ dictions (eg, USA). Consequently, prior sales within the 12-month grace period might have been excluded in other jurisdictions, but it will be considered as cita ‑ ble prior art in Singapore. In such situations, the court may be of the view that it would be better to bifurcate the infringement and validity proceedings, since the possibility of the patent being invalidated by its own poison prior disclosure is high. While it is technically possible for another party to file nullity proceedings in court while patent office revoca ‑ tion actions are ongoing, in practice, once IPOS learns that nullity proceedings have been filed in court, IPOS will typically stay proceedings at IPOS pending the court’s determination on the matter. 1.5 Timing for Main Proceedings on Infringement/Validity Proceedings for patent infringement must be com ‑ menced by Originating Claim in the General Division of the High Court. As patent infringement is a statu ‑ tory tort, the limitation period of six 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 patent propri ‑ etor’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 usu ‑ ally sent before proceedings are commenced. This depends on whether the patent proprietor wishes to engage the alleged infringer in negotiations prior to the commencement of proceedings. Under Order 5 of the ROC 2021, the parties have a duty to consider amicable resolution of the dispute before commence ‑ ment and during the course of any action. A party therefore must make an offer of amicable resolution
before commencing the action unless the party has reasonable grounds not to do so. That being said, the patent proprietor must be aware that in the event that the court eventually finds that their 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 purchas ‑ es 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. A party does not need to wait for the patent proprietor to commence a claim in the General Division of the High Court for patent infringement. If the party wishes to, it may commence a claim in the General Division of the High Court for a declaration of non-infringement of the patent. However, before commencing such an action for a declaration of non-infringement, the party must write to the patent proprietor for a written acknowl ‑ edgement that it does not infringe the patent proprie ‑ tor’s patent and furnish the patent proprietor with full particulars in writing of the act in question and the patent proprietor must have refused to provide such an acknowledgement. A rough timeline is as follows. • The claimant files and serves on the defendant the Originating Claim, Statement of Claim and Particu ‑ lars 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 infringe ‑ ment alleged. The method of service is personal service, unless the defendant’s lawyers have written to the claimant’s lawyers to state that the defendant’s lawyers are instructed to accept ser ‑ vice on behalf of the defendant. If the defendant is out of jurisdiction, the claimant must apply to court for permission to serve the Originating Claim out of jurisdiction. Typically, since patent infringement acts are territorial, it is unlikely that the defendant will be out of jurisdiction.
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