SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
1.12 Experts It is very common for parties and consequently the court to rely on expert evidence for patent infringe ‑ ment and validity issues. This is because patent infringement and validity issues often require technical evidence which lawyers and judges require assistance with. In fact, most patent proceedings in Singapore rely heavily on expert-led evidence. Experts may be called to give opinion evidence on technical matters and scientific information relat ‑ ing to the patent. Parties usually engage their own respective experts. While it is not common for parties to agree on a single joint expert for patent matters, pursuant to the ROC 2021, parties to all civil proceed ‑ ings (including actions under the PA) commenced on or after 1 April 2022 must agree on a single expert as far as possible. No expert evidence may be used in court unless it is approved by the court. Expert evi ‑ dence is admissible in relation to matters that ordinary persons are unlikely to have sufficient knowledge to give meaningful evidence. Specifically, an expert may give evidence on: • the prior art at any given time; • the meaning of any technical terms used in the prior art and an explanation as to facts of a scien ‑ tific kind; • whether, on a given hypothesis as to the meaning of what is described in the patent specification, the specification can be carried out by a skilled worker; • at any given time, what a given piece of apparatus or any given sentence on any given hypothesis would have taught or suggested to them; • whether a particular operation relating to the art would be carried out; and • what is common general knowledge to a person skilled in the art. It is increasingly common for the Singapore court to appoint a court expert (referred to as a Court Asses ‑ sor) to assist the court in matters where the subject matter is highly technical. It is the duty of an expert to assist the court on the matters within their expertise, and this duty overrides
any obligation owed to the person instructing or pay ‑ ing them. Unless the court otherwise directs, expert evidence is given in a form of a written report. Typically, there are no limits on the length or amount of expert evidence that may be adduced. This report must contain rel ‑ evant details, including: • the expert’s qualifications showing that they have the requisite specialised knowledge on the issues referred to them; • the expert’s statement that they understand their duty is to assist the court in the matters within their expertise and on the issues referred to them and that such duty to the court overrides any obligation to the person from whom they receive instructions or by whom they are paid; • the issues referred to the expert and the common set of agreed or assumed facts that they relied on; and • a list of the materials that the expert relied on and including only extracts of the materials which are necessary to understand the report. A party may, with the court’s approval, request in writ ‑ ing that an expert clarify their report in any aspect. This report will be sworn by the expert in their AEIC, and either party may cross-examine the other party’s expert on the contents of their report. The court may also order that some or all of the expert witnesses give their evidence concurrently by testifying as a panel (ie, hot-tubbing). There are no restrictions for parties to rely on expert evidence in PI proceedings. Typically, expert evidence adduced at the trial would address issues of infringe ‑ ment and/or invalidity in-depth, whereas expert evi ‑ dence adduced at the PI stage would focus on the issue of infringement. 1.13 Use of Experiments A party which desires to establish any fact by experi ‑ mental proof (the “Requesting Party”) shall serve a notice of experiments on the other party, stating the facts which it desires to establish and full particulars of the experiments proposed to establish those facts. Within 21 days of such service, the other party is to
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