SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
1.6 Requirements to Bring Infringement Action An infringement action can be filed the moment the patent is granted in Singapore. All patent applications filed in Singapore must be filed in English, so there is no requirement for patents to be further translated. Generally, the patent proprietor (ie, the claimant) 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 (i) the product is new, or (ii) substantial likelihood exists that the prod ‑ uct is made by that process and the claimant has been unable through reasonable efforts to determine the process actually used. There is no automatic require ‑ ment for the defendant to provide a process descrip ‑ tion. If the claimant wishes to compel the defendant to do so, the claimant may apply for the defendant to furnish such details by way of an application to court for discovery or interrogatories. In Towa Corporation v ASM Technology Singapore Pte Ltd and another [2014] SGHCR 16, the Singapore High Court Registrar held that the Singapore High Court has no jurisdic ‑ tion to order an inspection of a process in a patent infringement action under Order 29 Rule 2 of the Sin ‑ gapore Rules of Court 2014 (equivalent to Order 13 Rule 2 of the ROC 2021). This decision has not been overturned by any appellate decision. 1.7 Pre-Action Discovery/Disclosure Under Order 11 Rule 11 of the ROC 2021, the claim ‑ ant may seek pre-action discovery and pre-action interrogatories (collectively referred to as “pre-action disclosure”) against a defendant prior to commence ‑ ment of proceedings against a party to compel it to make disclosures of documents and facts in order to help the claimant ascertain whether they have a viable cause of action against a potential defendant. Further, pre-action disclosure may be sought against non-par ‑ ties to the proceedings in order to identify possible parties to the proceedings. Pre-action discovery is for the claimant who is unable to plead a case as they do not know whether they have a viable or good cause of action and require the
discovery to ascertain the gaps in their case. Where the claimant has evidence sufficient to commence a claim, they are generally not entitled to discovery before action in order to fully plead their case. Pre- action discovery is also not designed to allow a par ‑ ty to determine whether it is likely to succeed in its cause of action against a potential defendant. Nor is it designed to allow a claimant, who already has an accrued cause of action, to uncover other causes of action. An application for pre-action disclosure must be supported by an affidavit setting out the grounds for the application, the material facts pertaining to the intended action, and whether the person against whom the order was sought was likely to be a party to subsequent proceedings. The applicant also must prove that the defendant has possession, custody or power of these documents. These documents must also be proved to be relevant to the intended action. In other words, the scope of the pre-action discovery should be substantially similar to the scope of dis ‑ covery expected during the main action (if launched). The court must be satisfied that the pre-action dis ‑ closure is not frivolous or speculative, and that the claimant is not on a fishing expedition. The costs for the pre-action discovery is borne by the applicant. Under Singapore law, there is an implied undertaking by a party who receives documents in discovery not to use these documents for a collateral purpose, which includes proceedings in other jurisdictions. It may be possible to use materials obtained in other jurisdictions. That is dependent on the laws of the par ‑ ticular jurisdiction from which the party obtained these documents. If there is no similar prohibition for use of these documents, then the party can use those docu ‑ ments in Singapore. If there is a similar prohibition, then the party who intends to use these documents obtained in other jurisdictions must satisfy the court in Singapore that permission was by the court of law in that jurisdiction to use these documents in Singapore. Under Rule 37 of the IP Rules, there are classes of doc ‑ uments that are exempt from discovery. These classes of documents are likely to be similarly exempted from
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