SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
serve upon the Requesting Party a notice stating whether or not they admit each fact. Where any such fact is not admitted, the Requesting Party may seek an order for the experiments to be conducted. At this stage, the court will manage the conduct of experiments and timelines to ensure that there is judicious use of time and costs. 1.14 Discovery/Disclosure There is no closed list of types of documents that the parties are required to provide in discovery. As long as the category of documents is proved to be material to the issues in the proceedings, and that discovery is necessary, parties must disclose them and the court can order discovery of these documents. In exercising its power to order discovery, the ROC 2021 states that the court must bear in mind that a claimant is to sue and proceed on the strength of the claimant’s case and not on the weakness of the defendant’s case. Types of documents that must be disclosed therefore include the following. • Proof that the alleged infringing samples were obtained from the defendant – ie, provenance and chain of custody of the alleged infringing samples. • Evidence of infringement – eg, technical analysis, expert reports and lab reports. • If the patent is a process patent, the defendant will be required to disclose its method of manufacture. For this, the defendant can apply for a confidenti ‑ ality order limiting the disclosure of its method of manufacture to named individuals. The following classes of documents are exempted from discovery. • Documents relating to the infringement of a patent by a product or process, if before serving a list of documents, the party against whom the allegation of infringement is made has served on the other parties, full particulars of the product or process alleged to infringe, including if necessary drawings or other illustrations.
• Documents relating to any ground on which the validity of a patent is put into issue, except docu ‑ ments which came into existence within the period beginning two years before the claimed priority date and ending two years after that date. • Documents relating to the issue of commercial success (collectively referred to as the “exempt classes”). Notwithstanding this, however, any party may apply for further and better production or specific produc ‑ tion of any document in an exempt class. Where the issue of commercial success arises in any proceedings relating to an action for infringement of a patent or a declaration of non-infringement of a patent or any proceedings where the validity of a patent is in issue, and where the commercial success relates to an article or product, the proprietor of the patent must serve a schedule containing the following details: • an identification of the article or product (for exam ‑ ple, by product code number) which the proprietor asserts has been made in accordance with the claims of the patent; • a summary by convenient periods of sales of any such article or product; • a summary for the equivalent periods of sales (if any) of any equivalent prior article or product mar ‑ keted before the article or product mentioned in (i) above; and • a summary by convenient periods of any expendi ‑ ture on advertising and promotion which supported the marketing of the articles or products mentioned in (i) and (iii) above. Where the commercial success relates to the use of a process, the proprietor of the patent must serve a schedule containing the following details: • an identification of the process which the proprie ‑ tor asserts has been used in accordance with the claims of the patent; • a summary by convenient periods of the revenues received from the use of such process; • a summary for the equivalent periods of the rev ‑ enues (if any) received from the use of any equiva ‑ lent prior art process; and
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