SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
1.6 Requirements to Bring Infringement Action An infringement action can be filed the moment the patent is granted in Singapore. All patent applications filed in Singapore must be filed in English, so there is no requirement for patents to be further translated. Generally, the patent proprietor (ie, the claim - ant) bears the burden of proving that its patent has been infringed. However, the burden of proof is reversed in patent infringement proceedings involving a process for obtaining a new prod - uct. In such proceedings, the alleged infringer bears the burden of proving that the product is not made by that process if (i) the product is new, or (ii) substantial likelihood exists that the product is made by that process and the claim - ant has been unable through reasonable efforts to determine the process actually used. There is no automatic requirement for the defendant to provide a process description. If the claimant wishes to compel the defendant to do so, the claimant may apply for the defendant to furnish such details by way of an application to court for discovery or interrogatories. In Towa Corporation v ASM Technology Singapore Pte Ltd and anor [2014] SGHCR 16, the Singapore High Court Registrar held that the Singapore High Court has no jurisdiction to order an inspection of a process in a patent infringement action under Order 29 Rule 2 of the Singapore Rules of Court 2014 (equivalent to Order 13 Rule 2 of the ROC 2021). This decision has not been overturned by any appellate decision. 1.7 Pre-Action Discovery/Disclosure Under Order 11 Rule 11 of the ROC 2021, the claimant may seek pre-action discovery and pre- action interrogatories (collectively referred to as “pre-action disclosure”) against a defendant prior to commencement of proceedings against
a party to compel it to make disclosures of docu - ments and facts in order to help the claimant ascertain whether he/she has a viable cause of action against a potential defendant. Further, pre-action disclosure may be sought against non-parties to the proceedings in order to iden - tify possible parties to the proceedings. Pre-action discovery is for the claimant who is unable to plead a case as he/she does not know whether he/she has a viable or good cause of action and requires the discovery to ascertain the gaps in his/her case. Where the claimant has evidence sufficient to commence a claim, he/ she is generally not entitled to discovery before action in order to fully plead his/her case. Pre- action discovery is also not designed to allow a party to determine whether it is likely to suc - ceed in its cause of action against a potential defendant. Nor is it designed to allow a claimant, who already has an accrued cause of action, to uncover other causes of action. An application for pre-action disclosure has to be supported by an affidavit setting out the grounds for the application, the material facts pertaining to the intended action, and whether the person against whom the order was sought was likely to be a party to subsequent proceed - ings. The applicant also has to prove that the defendant has possession, custody or power of these documents. These documents must also be proved to be relevant to the intended action. In other words, the scope of the pre-action dis - covery should be substantially similar to the scope of discovery expected during the main action (if launched). The court must be satisfied that the pre-action disclosure is not frivolous or speculative, and that the claimant is not on a fishing expedition.
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