SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
moment the patent proprietor files a patent infringe ‑ ment suit against the generic. In exchange for obtaining an interim injunction, the claimant may be required to undertake to the court to compensate the defendant in the event that their claim fails and the interim injunction has caused the defendant loss. Interim injunctions are enforceable from the date the order is made. A breach of the order will entitle the claimant to commence enforcement proceedings and contempt of court proceedings, which may include a custodial sentence for the directors of the defend ‑ ant company against whom the interim injunction was ordered. An appeal does not operate as an automatic stay of the interim injunction. The defendant must file an application for a stay pending appeal, and in so doing, the defendant must convince the court that if a stay is not granted, it will nullify the appeal. It is in practice difficult to convince the court of this since an interim injunction is usually prohibitory rather than mandatory, unless there is a time limit on the defendant to do the act which is covered by the interim injunction and the expiry of the time limit will cause irreparable prejudice to the defendant should the defendant not act. 5.2 Final Injunctive Relief Generally, final injunctions are prayed for in the claim ‑ ant’s Statement of Claim. While the court retains discretion as to whether a final injunction should be granted, if the court eventually finds that the patent in the suit has been infringed, it will generally grant the final injunction. The standard form of final injunction is one which restrains the defendant “from making, disposing of, offering to dispose of, using, import ‑ ing and/or keeping whether for disposal or otherwise products which infringe the patent in issue, and/or using or offering for use in Singapore processes which infringe the patent in issue”. Final injunctions are enforceable from the date the order is made. A breach of the order will entitle the claimant to commence enforcement proceedings and contempt of court proceedings, which may include a custodial sentence for the directors of the defend ‑
ant company against whom the final injunction was ordered. Unlike an interim injunction, there is no requirement for the patent proprietor to give an undertaking as to damages or to pay a bond before it can enforce the final injunction. An appeal does not operate as an automatic stay of the final injunction. The defendant must file an appli ‑ cation for a stay pending appeal, and in so doing, the defendant must convince the court that if a stay is not granted, it will nullify the appeal. For example, if the injunction covers the whole of the defendant’s business, and the defendant will no longer be able to finance the appeal if the injunction is in place, the defendant may be able to convince the court that a stay should be granted. 5.3 Discretion to Award Injunctive Relief (Final or Preliminary) Injunctions are an equitable remedy. Consequently, the court will have the discretion to decide whether it should award injunctive relief. In practice, once the court finds that there is infringe ‑ ment, it will readily order a final injunction unless the defendant has given evidence that it had already ceased with the alleged infringing activities even before the order was made, such that an injunction is of no use. 5.4 Damages A successful claimant is entitled to damages as compensation for the loss that it suffered due to the infringement. Typically, patent infringement claims are bifurcated, and damages are assessed at a separate inquiry held subsequent to the infringement trial. In a great deal of cases where the patent proprietor does not have a competing product of its own, the proper measure of damages is a reasonable royalty in respect of each infringement committed. If the pat ‑ ent proprietor habitually grants licences at a particular royalty, quantum is easy to estimate. Even if they do not, an estimate can be made.
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