SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
The costs for the pre-action discovery is borne by the applicant. Under Singapore law, there is an implied under - taking by a party who receives documents in discovery not to use these documents for a col - lateral purpose, which includes proceedings in other jurisdictions. It may be possible to use materials obtained in other jurisdictions. That is dependent on the laws of the particular jurisdiction from which the party obtained these documents. If there is no similar prohibition for use of these documents, then the party can use those documents in Singapore. If there is a similar prohibition, then the party who intends to use these documents obtained in other jurisdictions must satisfy the court in Singapore that permission was by the court of law in that jurisdiction to use these documents in Singapore. Under Rule 37 of the IP Rules, there are classes of documents that are exempt from discovery. These classes of documents are likely to be similarly exempted from the scope of pre-action discovery. More details relating to the exempt classes of documents are discussed further in this chapter. 1.8 Search and Seizure Orders Under Order 13 of the ROC 2021, search and seizure orders (previously known as Anton Piller orders) are available in Singapore. There is no requirement for the main action to be started as part of the application. In view of the draconian nature of the search order (which is usually made ex-parte in light of the risk that the defendant may destroy or con - ceal the documents and/or incriminating mate - rial), the court will have to balance the claimant’s
right to seize and preserve evidence against the violation of the privacy of the defendant who had no rights to defend him-/her-self at the ex-parte hearing. • There must be a very strong prima facie case of a civil cause of action. A scrutiny of the merits of the claimant’s case is an essential preliminary to the grant of a search order. • The damage, potential or actual, to the claim - ant to be avoided by the grant of an order must be very serious. If an order is sought in order to forestall the destruction of evidence, the evidence in question must be of major, if not critical, importance. • There must be clear evidence that the defendant has in his/her possession incrimi - nating documents or items. • There must be a real possibility that the defendant may destroy such material before an application inter partes can be made. The requirements for a search order therefore goes beyond what is required for pre-action dis - covery. It is a pre-requisite to a search order that the materials that the claimant intends to seize is relevant and necessary to the action. It may be possible to use materials obtained in other jurisdictions. See 1.7 Pre-Action Discov- ery/Disclosure . 1.9 Declaratory Relief A claimant may rely on Section 67(1)(e) of the PA to seek a declaration that the patent in suit is valid and has been infringed by the defendant. Conversely, a defendant or any person may rely on Section 78(1) of the PA to seek a declaration that an act or proposed act would not constitute an infringement of a patent if the following condi - tions are met:
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