SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
• a summary by convenient periods of any expendi ‑ ture which supported the use of the process men ‑ tioned in the first and second bullet points above. It is not common for the court to grant discovery of inventor lab notebooks. Usually, the inventor’s subjec ‑ tive intentions and understanding of the patent and the motivations behind their invention are irrelevant. Validity issues and claim construction are always viewed from the lens of a person skilled in the art. 1.15 Defences and Exceptions to Patent Infringement The two key defences to patent infringement are (i) the invalidity of the patent, which is a complete defence; and (ii) non-infringement. While rarely relied on, a defendant may also rely on exceptions created by Section 66 (2) of the PA for acts which would otherwise constitute infringement by vir ‑ tue of being prohibited by Section 66 (1) of the PA. The main categories of exceptions in Section 66 (2) of the PA are: • acts which are done privately and for non-commer ‑ cial purposes; • acts which are done for experimental purposes relating to the subject-matter of the invention; • acts which consist of the extemporaneous prepa ‑ ration of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consist of dealing with a medicine so prepared; • uses of a patented product or process by aircraft and ships which had temporarily or accidentally entered into Singapore’s airspace or territorial waters (as the case may be) or by exempted air ‑ craft or ships; and • the parallel importation into Singapore, with consent of the foreign patent proprietor or their licensee, of any patented product or any prod ‑ uct obtained by means of a patented process or to which a patented process has been applied. Further, under Section 71 (1) of the PA, a person who in Singapore before the priority date of the invention does in good faith an act which would constitute an infringement of the patent if it were in
force, or makes in good faith effective and serious preparations to do such an act, has the right to continue to do that act notwithstanding the grant of the patent. 1.16 Stays and Relevance of Parallel Proceedings In the event that post-grant opposition proceedings have commenced at the IPOS Registry prior to the revocation action in patent infringement proceedings in the General Division of the High Court, the parties can consider whether any of the proceedings ought to be stayed, and if so, which one. While there are no provisions in the ROC 2021 that provide for an automatic stay of proceedings, it is likely that par ‑ ties will opt for the IPOS Registry proceedings to be stayed given that any appeal from the IPOS Registry would eventually be heard in the General Division of the High Court. It is, however, unlikely for the Singapore Court to agree to any stay on the basis of foreign proceedings since the patent will be different, and the acts are also dif ‑ ferent (based on territory). The Singapore Court may take into account the deci ‑ sions of the Court in other jurisdictions, but the Singa ‑ pore Court is never bound. Further, the weight that the Court accords to the Court decisions in these other jurisdictions depends on whether the patent language in these other jurisdictions is substantially similar to the patent granted in Singapore and whether the basis of the Court’s finding is based on laws that are sub ‑ stantially similar in Singapore. For example, a finding of infringement for a US-equivalent of the patent on the basis of the doctrine of equivalents will not be relevant at all for the issue of infringement of the Sin ‑ gapore patent. 1.17 Patent Amendment A patent that is the subject of a patent litigation may be amended in the midst of patent litigation. The pat ‑ ent proprietor may only apply to do so if the validity of the patent has been put in issue before the court or the Registrar. This would usually be in a case where there is a counterclaim filed by the defendant in a pat ‑ ent infringement action to invalidate and revoke the patent.
225 CHAMBERS.COM
Powered by FlippingBook