SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
wishes to engage the alleged infringer in nego - tiations prior to the commencement of proceed - ings. Under Order 5 of the ROC 2021, the parties have a duty to consider amicable resolution of the dispute before commencement and during the course of any action. A party therefore has to make an offer of amicable resolution before commencing the action unless the party has rea - sonable grounds not to do so. That being said, the patent proprietor must be aware that in the event that the court eventually finds that his/her patent has not been infringed, the court has the discretion to award the alleged infringer relief for groundless threats of infringe - ment. Such relief could include a declaration that the threats are unjustifiable, an injunction against the continuance of the threats and/or damages for any loss sustained thereby. Where applica - ble, it is also prudent to conduct trap purchases before the start of any proceedings. A lawyer may conduct the trap purchases on behalf of its client, or a private investigator may be engaged to do so. A party does not need to wait for the patent proprietor to commence a claim in the General Division of the High Court for patent infringement. If the party wishes to, it may com - mence a claim in the General Division of the High Court for a declaration of non-infringement of the patent. However, before commencing such an action for a declaration of non-infringement, the party must write to the patent proprietor for a written acknowledgement that it does not infringe the patent proprietor’s patent and fur - nish the patent proprietor with full particulars in writing of the act in question and the patent proprietor must have refused to provide such an acknowledgement. A rough timeline is as follows.
• The claimant files and serves on the defend - ant the Originating Claim, Statement of Claim and Particulars of Infringement. The Particu - lars of Infringement must state which of the claims in the specification of the patent are alleged to be infringed, and must give at least one instance of each type of infringement alleged. The method of service is personal service, unless the defendant’s lawyers have written to the claimant’s lawyers to state that the defendant’s lawyers are instructed to accept service on behalf of the defendant. If the defendant is out of jurisdiction, the claim - ant must apply to court for permission to serve the Originating Claim out of jurisdiction. Typically, since patent infringement acts are territorial, it is unlikely that the defendant will be out of jurisdiction. • Within 14 days of the service of the State - ment of Claim and Particulars of Infringement, the defendant has to file and serve a Notice of Intention to Contest or Not Contest in the proceedings. • If the defendant intends to put in issue the validity of the patent (or just asserted pat - ent claims, whichever the case may be), the defendant must give prior notice of his or her intention to put in issue the validity of the patent within 14 days of the service of the Statement of Claim by filing a Notice of Inten - tion to Put In Issue the Validity of the Patent (“Notice”). • If the defendant does not challenge the valid - ity of the patent, its defence (and counter - claim if applicable) will be due within 21 days after the Statement of Claim is served on the defendant. If the defendant files the Notice, the defendant has to file its defence and counterclaim and Particulars of Objection to the Validity of the Patent within 42 days of the service of the Statement of Claim.
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