SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action A patent proprietor has standing to bring a pat - ent infringement action. An equitable owner of a patent may also bring a patent infringement action although he/she must perfect his/her equitable title before final judgment. Where there are multiple patent proprietors, any of them may bring an action without the con - sent of the other proprietors, but they must be named as defendants in the proceedings unless the court orders otherwise. An assignee or exclusive licensee of a patent also has standing to bring an action in respect of any infringement of the patent committed after the date of the assignment or licence, or for infringements occurring prior to that date if such right is included in the relevant grant of title. The transaction, instrument or event by which the proprietor or exclusive licensee is conferred rights in a patent should be registered within a period of six months of its date, or if registration within that period is not practicable, as soon as practicable thereafter. The failure to do so does not mean that the assignee or exclusive licensee cannot sue, but it will preclude the assignee or licensee from obtaining damages or an account of profits in respect of a subsequent infringe - ment of the patent occurring after the transac - tion, instrument or event, but before the same was registered. Licensees under a licence of right or a licence granted compulsorily may request the patent proprietor to bring proceedings to prevent any infringement of the patent, and if the proprietor neglects to do so within two months, the licen - see may institute proceedings in his/her own
name, making the proprietor a defendant to such proceedings. Section 82(1) of the Patents Act (PA) provides that the validity of a patent may be put in issue only in the following proceedings: • a request for examination of the specification of a patent under Section 38A of the PA; • by way of defence, in proceedings for infringement of the patent under Section 67 or proceedings under Section 76 for infringe - ment of rights conferred by the publication of an application; • in proceedings under Section 77 (ie, applica - tions for remedies for groundless threats of infringement proceedings); • in proceedings in which a declaration in rela - tion to the patent is sought under Section 78 (ie, applications for a declaration of non- infringement); • in proceedings before the court or the Regis - trar under Section 80 for the revocation of the patent; or • in proceedings under Section 56 or 58 of the PA (ie, proceedings relating to the use of patented inventions by the government and its authorised parties). Section 82(2) of the PA further states that no proceedings may be instituted seeking only a declaration 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 challenging the valid - ity of the patent, it must be for the revocation of the patent. Infringement and/or validity opinions are not available from IPOS.
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