SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
• A claimant does not have an automatic right of reply to the defence. If the claimant wishes to file a reply, it will have to seek the court’s permission to do so. Thereafter, the parties will typically proceed to the discovery stage. Once pleadings are filed, the court will hold a case management con - ference to ask the parties’ views on whether, amongst others, this is a case where affidavits of evidence-in-chief (AEICs) should be exchanged before discovery. Although the court may, in some cases, direct that AEICs be exchanged first before discovery, in practice, this is unlikely to happen for patent infringement matters where the parties have no existing commercial relation - ship (unlike, for example, contract matters). It is also usually on or around this time during the case management conference, that the court will decide whether the proceedings should be bifurcated or not, either on its own volition or pursuant to an application from a party in the proceedings. It is more common for the court to bifurcate the issue of liability/invalidity and the issue of damages. As explained above, infringe - ment and invalidity are generally heard together due to the need to engage expert witnesses for common issues such as claim construction. If the court directs that discovery proceeds first, then after discovery (and the disposal of all interlocutory applications and/or interim orders), AEICs will be exchanged. It is usually on or around the stage of the exchange of AEICs that the court will deal with whether the issues of claim construction will be considered sepa - rately from or together with infringement and/or validity, and in general how the trial of the matter should be conducted.
It typically takes around 1.5 to 2 years or more from the commencement of the proceedings to obtain a first instance decision. Further, with effect from 1 April 2022, the Supreme Court of Judicature (Intellectual Prop - erty) Rules 2022 (IP Rules) introduced a simpli - fied optional track for intellectual property litiga - tion known as the “Simplified Process for Certain Intellectual Property Claims” (“Simplified Pro - cess”) to resolve intellectual property disputes in a quicker and more cost-effective manner. The Simplified Process is applicable for certain intellectual property claims (including actions of patent infringement under Section 67 of the PA and declaration of non-infringement of a patent under Section 78 of the PA) where (i) the mon - etary relief claimed by each party in the action does not or is not likely to exceed SGD500,000, or (ii) where all parties agree to the application of the simplified process. A case may also be suitable having regard to: • whether a litigant can only afford to partici - pate in the proceedings under the Simplified Process; • the complexity of the issues; • whether the estimated length of the trial is likely to exceed two days; and • any other relevant matter. For claims under the Simplified Process, the total costs recoverable is subject to an overall cap of SGD50,000 for the trial, and an overall cap of SGD25,000 for any bifurcated assessment of monetary relief. In line with the spirit of stream - lining intellectual property dispute resolution, the court will also give directions on all matters that are necessary for the dispute to proceed expedi - tiously and where practicable, will give directions to ensure that the trial is completed within two days.
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