SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
the scope of pre-action discovery. More details relat ‑ ing to the exempt classes of documents are discussed further in this chapter. 1.8 Search and Seizure Orders Under Order 13 of the ROC 2021, search and seizure orders (previously known as Anton Piller orders) are available in Singapore. There is no requirement for the main action to be started as part of the application. In view of the draconian nature of the search order (which is usually made ex-parte in light of the risk that the defendant may destroy or conceal the documents and/or incriminating material), the court will have to balance the claimant’s right to seize and preserve evidence against the violation of the privacy of the defendant who had no rights to defend themselves at the ex-parte hearing. • There must be a very strong prima facie case of a civil cause of action. A scrutiny of the merits of the claimant’s case is an essential preliminary to the grant of a search order. • The damage, potential or actual, to the claimant to be avoided by the grant of an order must be very serious. If an order is sought in order to forestall the destruction of evidence, the evidence in ques ‑ tion must be of major, if not critical, importance. • There must be clear evidence that the defendant has in their possession incriminating documents or items. • There must be a real possibility that the defendant may destroy such material before an application inter partes can be made. The requirements for a search order therefore goes beyond what is required for pre-action discovery. It is a pre-requisite to a search order that the materials that the claimant intends to seize is relevant and necessary to the action. It may be possible to use materials obtained in other jurisdictions. See 1.7 Pre-Action Discovery/Disclo- sure . 1.9 Declaratory Relief A claimant 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: • the patent proprietor has not made any assertion to the contrary; • the person has applied in writing to the patent pro ‑ prietor for a written acknowledgment to the effect of the declaration claimed and has furnished them with full written particulars of the relevant act; and • the patent proprietor has refused or failed to give any such acknowledgment. However, Section 82 (2) of the PA further states that no proceedings may be instituted seeking only a dec ‑ laration as to the validity or invalidity of a patent. A mere declaration means that no further action is taken against the patent apart from the fact that the court has declared that the patent is invalid. Consequently, if any party wishes to launch a standalone action chal ‑ lenging the validity of the patent, it must be for the revocation of the patent. To date, the Singapore Court has not dealt with “Arrow” declarations. It remains to be seen whether this will be recognised in Singapore. 1.10 Doctrine of Equivalents The general principle under the doctrine of equivalents is that a device which is functionally equivalent to the patented invention will be held to infringe it, notwith ‑ standing 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. 1.11 Clearing the Way The obligation for a generic to “clear the way” ahead of a new product launch is statutorily imposed in Sin ‑ gapore pursuant to Regulation 23 of the Regulations.
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