Patent laws in the region vary in their effectiveness. Regulations across jurisdictions to crack down on infringers are in a constant state of renewal and revision in order to stay ahead of those who steal intellectual property. Keeping the trolls at bay depends on staying abreast of regional developments in patent law
The Singapore Patents Act is modelled after the UK statute and, as such, the general approach is similar to the English approach. Below are options available to patentees looking to enforce their patents, as well as to parties on the other side of the fence that are faced with a patent infringement claim or potential claim.
What are the options for challenging the validity of a Singapore patent? A Singapore patent can be challenged on the usual grounds, namely, lack of novelty or inventive step, insufficiency, added matter, and double-patenting. The fact that the patent was obtained fraudulently or on a misrepresentation is also a ground for revocation, although this ground is not commonly raised. Unlike some other jurisdictions, lack of clarity of the patent claims is not a ground for revocation.
An application for patent revocation must be filed in the registry, unless there are proceedings in the High Court, for example for infringement, groundless threats or a declaration of non-infringement, in which event the validity of the patent may be put into issue before the High Court as part of these proceedings.
The typical timeframe for a revocation action before the registry is around 18 months to three years. The parties will be given an opportunity to file and exchange their respective cases and evidence, and the proceedings will culminate in a hearing. The registry’s decision can be appealed to the High Court.
What measures can a person who has been threatened with patent infringement proceedings take? A person who has been threatened with patent infringement proceedings may bring an action in court against the patentee for “groundless threats”. In fact, any person who is aggrieved by such threats can bring the action and he/she need not be the person to whom the threats are made. So, for example, a supplier may bring the action in respect of threats made to his/her customers. However, groundless threats actions cannot be brought if the acts in relation to which proceedings were threatened consist of making or importing a product for sale or using a process, as these acts are considered to form the most fundamental rights of the patentee. Possible reliefs include: (1) a declaration that the threats are unjustifiable; (2) an injunction against the continuance of the threats; and (3) damages in respect of any loss suffered by reason of the threats.
Groundless threats claims are typically pleaded as counterclaims in patent infringement actions, although there is nothing to prevent the alleged infringer from firing the first salvo by bringing the claim first. To avoid groundless threats claims, demand letters should be worded carefully to avoid the letter being interpreted as threats. Section 77(5) of the Patents Act expressly provides that “a mere notification of the existence of a patent does not constitute a threat of proceedings”. Care must be taken if the letter is to provide more than “a mere notification”.
The action will not succeed if the patentee is able to: (1) prove that the acts in relation to which proceedings were threatened amount to infringement; and (2) successfully defend any claim that the patent is invalid. Further, while it used to be that the patentee must necessarily sue and succeed in order to be able to defend a groundless threats claim, the Singapore courts have recently (in copyright cases based on an equivalent provision in the Copyright Right) propounded a more nuanced approach that involves looking at all the circumstances of the case to determine if the threat was warranted and if relief is required at all. This allows some leeway when crafting demand letters though prudence would still be advisable.
What actions can a competitor take if he believes that his product or process does not infringe? It is possible to apply to the registry or the court for a declaration as to non-infringement, i.e., that an action or proposed act does not constitute infringement of a patent. The prerequisite, however, is that the potential applicant must first write to the patentee providing full particulars in writing of the act in question to seek a written acknowledgement from the patentee that the act does not infringe. The application to the registry or court may only be made if the patentee has refused or failed to provide such acknowledgment.
From the authors’ experience, patentees will typically not be too willing to provide such an acknowledgment, and will try to delay the process, for example, by asking for more information. There may also be a tussle as to who should foot the patentee’s costs for carrying out the tests necessary to provide the acknowledgment. As a result of these difficulties, this process is not often used and, practically speaking, is likely to be useful only when there are relatively clear-cut reasons for saying that there is no infringement.
Can third party observations (for bringing relevant prior art to the attention of the examiner) be filed in Singapore? There is no formal process for filing third party observations (TPOs) in Singapore, although legislative amendments have recently been proposed to introduce such a process. Even so, any prior art that may be relevant for assessing the novelty and/or obviousness of an invention that is the subject of a pending patent application may be brought to the registry’s attention by way of a letter.
Seeing as the process is not formalised, there are no requirements for what the letter must contain. Based on the authors’ experience, it will typically be useful to enclose a claim chart comparing the claims to the prior art, or at least an explanation of how the prior art discloses the invention or renders it obvious. The registry will place the letter before the examiner and will also forward a copy of the same to the patent applicant.
Patent infringement actions in Singapore. A patent infringement action has to be brought before the High Court in the first instance. For patent infringement cases, the typical timeframe from the filing of a writ to when the case is heard at trial is about two to three years, and the High Court’s judgment will typically be rendered in about six months to a year
after the trial.
The High Court’s decision is appealable to the Court of Appeal. From the time the High Court’s judgment is issued, the parties have a month to file an appeal if they wish to do so. Typically, the appeal will be heard within about six months, and a judgment will be rendered in about six months to a year after the hearing. The Court of Appeal’s decision is final and is not subject to any further appeal.
Trial is typically bifurcated. Assuming that the validity of the patent is challenged, the High Court will hear the issues relating to infringement and validity in the first tranche of trial. Issues relating to quantification of damages or profits for which the infringer must account will be heard in the second tranche. This way, if liability is not established, there will be no need for the second tranche.
There is a discovery process by which the parties are entitled to apply for orders compelling the other party or parties to produce certain documents. However, the disclosures required are not extensive as those prescribed by US discovery rules.
What is the procedure where there are multiple infringers? Multiple infringers can be joined in one action where: (a) the reliefs claimed by the patentee arise out of the same transaction or series of transactions; or (b) if separate actions were brought against each of the infringers, some common question of law or fact would arise in all the actions. So, for example, where the infringers are a manufacturer and its distributor(s), a single action would typically be filed against all the infringers.
But if the infringers are unconnected and carried out separate and independent acts of infringement, then separate actions would typically be filed. There is always an option to apply for the actions to be joined at a later stage in the proceedings if the need arises.
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