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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
Every IP case will be listed in the IP docket of the High Court. The court also has specialist lists where specific IP judges with the requisite skills and expertise will hear IP disputes.
Are cases decided by one judge, a panel of judges or a jury?
Usually, cases are decided by a single High Court judge. On appeal, the appeal will be heard by a three-judge appeal court.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
There are no jury trials in IP cases.
What role can and do expert witnesses play in proceedings?
Expert witnesses provide assistance to the court and counsel to illuminate technical issues. Each expert’s evidence can be cross-examined, and experts commonly attend court proceedings.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
No. Under the existing law, the Singapore courts apply the principle of purposive construction. The courts take notice of English law developments as the Singapore Patents Act was largely derived from the UK Patents Act 1977.
However, the courts may reassess the doctrine of equivalents when determining issues of infringement in light of the recent holding in Actavis UK Limited v Eli Lilly and Company ( UKSC 48).
In Actavis Lord Neuberger addressed the issue of whether a variant infringes a patented invention because it varies from the invention only in a way or ways that are immaterial. He stated that this issue “squarely raises the principle of equivalents but limits its ambit to those variants which contain immaterial variations from the invention”. To make sense of this issue, Neuberger reformulated and gave pointers on how to apply Justice Hoffmann’s three questions from the seminal case of Improver Corp v Remington Consumer Products Ltd ( FSR 181)
Arguably, the effect of his reformulations is to make it harder for a court to find that a hypothetical skilled addressee would conclude that the patent intends for strict compliance with the literal meaning of the relevant claim of the patent to be an essential requirement of the invention. In other words, there is greater scope for the courts to find that the patentee intended to claim a wider scope of protection than stated in the literal wording of a claim. This may increase the likelihood of an equivalent product or process being found to be infringing.
In Singapore, the courts have affirmed that a patent claim should be construed purposively, and have consistently used the three Improver questions as guidelines when applying the principle of purposive construction of a patent claim to equivalents. It remains to be seen how and to what extent the Singapore courts will adopt the revised Improver questions.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
Yes, the High Court can order a preliminary injunction, although a high threshold exists for injunction applications. In determining whether an injunction is warranted, the court will consider whether:
- there is a serious question to be tried;
- the balance of convenience lies in favour of granting the injunction; and
- there are any special circumstances or factors.
Further, the applicant must give an undertaking in respect of any damages suffered by the defendant.
How are issues around infringement and validity treated in your jurisdiction?
Patent validity and revocation can be heard by the registrar of IPOS.
Issues of patent infringement can be heard by the High Court. In these proceedings a claim may be made for:
- an injunction restraining the defendant from any apprehended act of infringement;
- an order for it to deliver up or destroy:
- any patented product in relation to which the patent is infringed;
- any article in which that product is inextricably comprised; or
- any material and implement the predominant use of which has been in the creation of the infringing product;
- damages in respect of the infringement;
- an account of the profits derived by him from the infringement; and
- a declaration that the patent is valid and has been infringed by him.
Parties may also, by agreement, refer to the IPOS registrar the question of whether there has been infringement of a patent. On reference, the patent owner may claim damages in respect of the infringement or request a declaration that the patent is valid and has been infringed.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Yes, cases from the commonwealth jurisdictions such as the UK IP Enterprise Court can be highly persuasive if the facts are similar.
Damages and remedies
Can the successful party obtain costs from the losing party?
Yes, the default principle is that the losing party will pay the winning party’s costs. However, this is at the court’s discretion. It can decline to award costs or can choose to award full costs to the winning party after considering all of the circumstances of the case.
What are the typical remedies granted to a successful plaintiff?
The court can order the following remedies in infringement proceedings:
- an injunction;
- damages or an account of profits;
- delivery up or disposal of infringing articles related to the registered patent; and
- a declaration that the patent is valid and has been infringed.
How are damages awards calculated? Are punitive damages available?
The court will consider any loss suffered or likely to be suffered by the exclusive licensee as a result of the infringement or the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.
Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
The courts can also grant permanent injunctions to successful plaintiffs.
As the injunction is an equitable remedy, there is an element of judicial discretion. Injunctions may be tailored in terms of scope and duration, allowing the defendant time to negotiate with the plaintiff or to dispose of infringing products.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
It usually takes two years from the commencement of an action to trial.
How much should a litigant plan to pay to take a case through to a first-instance decision?
A litigant can expect to pay between S$250,000 and S$400,000, excluding the cost of engaging expert witnesses.
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