SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
• Within 14 days of the service of the Statement of Claim and Particulars of Infringement, the defend ‑ ant must file and serve a Notice of Intention to Contest or Not Contest in the proceedings. • If the defendant intends to put in issue the valid ‑ ity of the patent (or just asserted patent claims, whichever the case may be), the defendant must give prior notice of their intention to put in issue the validity of the patent within 14 days of the service of the Statement of Claim by filing a Notice of Intention to Put In Issue the Validity of the Patent (“Notice”). • If the defendant does not challenge the valid ‑ ity of the patent, its defence (and counterclaim if applicable) will be due within 21 days after the Statement of Claim is served on the defendant. If the defendant files the Notice, the defendant must file its defence and counterclaim and Particulars of Objection to the Validity of the Patent within 42 days of the service of the Statement of Claim. • A claimant does not have an automatic right of reply to the defence. If the claimant wishes to file a reply, it will have to seek the court’s permission to do so. Thereafter, the parties will typically proceed to the dis ‑ covery stage. Once pleadings are filed, the court will hold a case management conference to ask the par ‑ ties’ views on whether, amongst others, this is a case where affidavits of evidence-in-chief (AEICs) should be exchanged before discovery. Although the court may, in some cases, direct that AEICs be exchanged first before discovery, in practice, this is unlikely to happen for patent infringement matters where the par ‑ ties have no existing commercial relationship (unlike, for example, contract matters). It is also usually on or around this time during the case management confer ‑ ence, that the court will decide whether the proceed ‑ ings should be bifurcated or not, either on its own volition or pursuant to an application from a party in the proceedings. It is more common for the court to bifurcate the issue of liability/invalidity and the issue of damages. As explained above, infringement and invalidity are generally heard together due to the need to engage expert witnesses for common issues such as claim construction.
If the court directs that discovery proceeds first, then after discovery (and the disposal of all interlocutory applications and/or interim orders), 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 con ‑ sidered separately from or together with infringement and/or validity, and in general how the trial of the mat ‑ ter should be conducted. It typically takes around one-and-a-half to two years or more from the commencement of the proceedings to obtain a first instance decision. Further, with effect from 1 April 2022, the Supreme Court of Judicature (Intellectual Property) Rules 2022 (IP Rules) introduced a simplified optional track for intellectual property litigation known as the “Simpli ‑ fied Process for Certain Intellectual Property Claims” (“Simplified Process”) to resolve intellectual property disputes in a quicker and more cost-effective manner. The Simplified Process is applicable for certain intel ‑ lectual property claims (including actions of patent infringement under Section 67 of the PA and decla ‑ ration of non-infringement of a patent under Section 78 of the PA) where (i) the monetary relief claimed by each party in the action does not or is not likely to exceed SGD500,000, or (ii) where all parties agree to the application of the simplified process. A case may also be suitable having regard to: • whether a litigant can only afford to participate in the proceedings under the Simplified Process; • the complexity of the issues; • whether the estimated length of the trial is likely to exceed two days; and • any other relevant matter. For claims under the Simplified Process, the total costs recoverable is subject to an overall cap of SGD50,000 for the trial, and an overall cap of SGD25,000 for any bifurcated assessment of monetary relief. In line with the spirit of streamlining intellectual property dispute resolution, the court will also give directions on all matters that are necessary for the dispute to proceed expeditiously and where practicable, will give direc ‑ tions to ensure that the trial is completed within two days.
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