SINGAPORE Law and Practice Contributed by: Tony Yeo, Meryl Koh, Rozalynne Asmali and Javier Yeo, Drew & Napier LLC
In exercising its power to order discovery, the ROC 2021 state that the court must bear in mind that a claimant is to sue and proceed on the strength of the claimant’s case and not on the weakness of the defendant’s case. Types of documents that will have to be dis - closed therefore include the following. • Proof that the alleged infringing samples were obtained from the defendant, ie, provenance and chain of custody of the alleged infringing samples. • Evidence of infringement, eg, technical analy - sis, expert reports, and lab reports. • If the patent is a process patent, the defend - ant will be required to disclose its method of manufacture. For this, the defendant can apply for a confidentiality order limiting the disclosure of its method of manufacture to named individuals. The following classes of documents are exempt - ed from discovery. • Documents relating to the infringement of a patent by a product or process, if before serving a list of documents, the party against whom the allegation of infringement is made has served on the other parties, full particu - lars of the product or process alleged to infringe, including if necessary drawings or other illustrations. • Documents relating to any ground on which the validity of a patent is put into issue, except documents which came into existence within the period beginning two years before the claimed priority date and ending two years after that date. • Documents relating to the issue of commer - cial success (collectively referred to as the “exempt classes”).
Notwithstanding this, however, any party may apply for further and better production or spe - cific production of any document in an exempt class. Where the issue of commercial success aris - es in any proceedings relating to an action for infringement of a patent or a declaration of non-infringement of a patent or any proceed - ings where the validity of a patent is in issue, and where the commercial success relates to an article or product, the proprietor of the patent must serve a schedule containing the following details. (i) an identification of the article or product (for example, by product code number) which the proprietor asserts has been made in accordance with the claims of the patent; (ii) a summary by convenient periods of sales of any such article or product; (iii) a summary for the equivalent periods of sales (if any) of any equivalent prior article or product marketed before the article or product men - tioned in (i) above; and (iv) a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or prod - ucts mentioned in (i) and (iii) above. Where the commercial success relates to the use of a process, the proprietor of the patent must serve a schedule containing the following details: (1) an identification of the process which the proprietor asserts has been used in accordance with the claims of the patent;
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