At a glance: patent enforcement proceedings in Singapore

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Enforcement is generally by way of bringing civil proceedings in the Singapore High Court. A single judge with expertise in IP is appointed to hear the proceedings.

It is also possible to request a determination of infringement by the Intellectual Property Office of Singapore (IPOS), subject to agreement between the patentee and the alleged infringer. Remedies for infringement are limited to damages and a declaration that the patent is valid and infringed. IPOS may decline to hear the matter and instead refer it to the High Court, if it is believed that the matter would more properly be determined by the Court.

What is the format of a patent infringement trial?

A patent infringement trial is held based on written and oral submissions and evidence adduced by the parties. Issues in dispute are decided by a judge. There are no jury trials for patent infringement.

The parties may appoint expert witnesses, as may the court. Experts must generally be available for cross-examination.

Patent infringement trials typically last between 18 and 36 months. Historically, trial hearings last at least two days but may be up to a month for complex cases.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof for establishing infringement or invalidity is borne by the party seeking to prove its case. The standard of proof is the balance of probabilities.

The exception to this general rule is where there is a reasonable likelihood a product was made by a patented process. In this case, the burden can be shifted to the alleged infringer, who must show that the product was made by a different process.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

A patent infringement suit may be brought by the patent proprietor (or co-proprietor) or by an exclusive licensee.

An accused infringer may make an application for a declaration that an act or a proposed act does not constitute an infringement of the patent. 

If the accused infringer is being threatened with infringement proceedings and believes that the threats are groundless, the accused infringer may bring proceedings against the person making the threats. It may ask for a declaration that the threats are unjustifiable, obtain an injunction against the continuance of the threats and claim for damages in respect of any loss sustained by the threats.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

There are no statutory provisions relating to inducement or contributory infringement. A party may be liable for patent infringement under the torts of conspiracy or joint tortfeasorship. Joint tortfeasorship may occur when one party conspires with the primary party or induces the infringement, or when two or more persons participate in the common design pursuant to which the infringement occurs.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same action if both of the following conditions are met:

• there is some common question of law or fact; and
• all rights to relief claimed in the action are in respect of or arise from the same transaction or series of transactions.

It is not necessary for all the defendants to have infringed the same patents.

If the defendants are making, using or selling substantially similar methods or products, it may not be possible to join them in the same proceedings since the plaintiff’s rights to relief against each defendant do not arise from the same transaction; however, it may be possible for the plaintiff to request a consolidation such that the cases are heard back to back by the same judge, especially if the different defendants raise the same or substantially the same grounds of invalidation against the asserted patents.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activity outside Singapore will generally not support a charge of patent infringement unless it ultimately results in an infringing act taking place within Singapore. To this end, the torts of conspiracy and joint tortfeasorship may come into play, and foreign parties may be joined as defendants where they cooperate with infringers in Singapore.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

The doctrine of equivalents was recently expressly rejected by the Court of Appeal in Lee Tat Cheng v Maka GPS Technologies Pte Ltd.

When assessing infringement, a court will adopt a ‘purposive’ construction of the claims, following the UK approach in Catnic Components Ltd v Hill & Smith Ltd and Improver Corporation v Remington Consumer Ltd. Under this approach, something that may not constitute an infringement under a literal interpretation of the claim may still constitute an infringement if:

1. it has no material effect on the way the invention works;
2. people skilled in the art would know point (1); and
3. people skilled with the art would also appreciate that strict compliance with the literal wording was not an essential requirement of the invention.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Discovery is the main mechanism for obtaining documentary evidence from an opponent. It generally takes place after the close of pleadings. Each party must disclose all relevant documents that are or have been in their possession, custody or power. The scope of ‘relevant documents’ is wide and includes documents that the party relies or will rely on, as well as documents that could adversely affect the party’s own case, adversely affect another party’s case or support another party’s case. In addition to general discovery, either party may also make an application for specific discovery of particular documents subject to the requirements of relevance and necessity.

Pre-action discovery is also available against third parties prior to the commencement of a suit. Similar considerations as set out above under general discovery apply. The objective is to enable the potential claimant to ascertain whether there is a good or viable cause of action. However, the party seeking pre-action discovery of documents typically bears the costs for the third party’s compliance with any order of court granted subsequent thereto.

A Singapore court may make an order for a person residing overseas to appear before a judicial person to make a deposition. In this regard, the court must issue a letter of request to the foreign judicial authority where the party resides to have the evidence of that person taken.  

Notwithstanding the above, generally, all witness evidence is led by the witness’s affidavit of evidence-in-chief (AEIC). AEICs contain sworn statements by the witness that stand as the witness’s testimony at trial. Witnesses will be cross-examined on their AEICs during trial. If a witness resides outside Singapore, he or she will also be required to submit an AEIC that is notarised in his or her own country.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

It generally takes between one and one-and-a-half years from the time an action for patent infringement is commenced for the matter to proceed to trial. The timeline may be extended if interlocutory applications (eg, applications for summary judgment, striking out, specific discovery, or further and better particulars) are made. Where an appeal is filed, it generally takes about four to six months for the appeal to be heard.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The costs of a patent infringement lawsuit vary greatly depending factors such as the number of patents being asserted, the complexity of the patents involved, the scope of infringements alleged and the legal issues engaged by the dispute. A breakdown of the estimated costs of each stage of the proceedings is as follows:

Contingency fees are prohibited under Singapore law.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

An adverse decision may be appealed from the High Court to the Court of Appeal. If an infringement suit is heard by IPOS, an adverse decision can be appealed to the High Court.

Additional evidence may be adduced on appeal in some circumstances. Generally, the following requirements apply when appealing a decision on the merits (the Ladd v Marshall test):

• non-availability: the evidence could not have been obtained with reasonable diligence for use in the lower court;
• relevance and materiality: the evidence would probably have an important influence on the result of the case, although it need not be decisive; and
• credibility or reliability: the evidence must be apparently credible, although it need not be incontrovertible.

These requirements may be relaxed where common sense or the interests of justice demand it. For example, if the new evidence reveals perpetration of fraud on the trial court, or the subject matter of the dispute is such that it is in the interests of justice to allow the new evidence, the court may not apply the Ladd v Marshall test strictly.

The Court of Appeal in Martek Biosciences Corp v Cargill International Trading Pte Ltd held that patent infringement suits may relate to the type of subject matter that justifies relaxation of the test as the existence of a patent affects public interest.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Generally, it is unlikely that a patentee, in enforcing its patent rights under the relevant patent legislation, would be liable for competition law violations, unfair competition or a business-related tort; however, the enforcement of a patent may raise competition law concerns where a patentee enforces a patent right in an attempt to extend the patentee’s existing market power into a neighbouring or related market beyond the scope granted by the patent right.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

All manner of ADR mechanisms, including mediation, arbitration and neutral evaluation, are available in Singapore. For example, the Singapore Mediation Centre and the Singapore International Mediation Centre are equipped to administer mediation proceedings to resolve patent disputes. The World Intellectual Property Organization also runs a centre in Singapore that administers arbitration and mediation of patent disputes in Singapore. 

The Singapore courts will generally be supportive of litigants’ efforts to consider and attempt ADR, especially mediation, early on in the proceedings. Where any party unreasonably objects to at least attempting to mediate a dispute, this may result in adverse cost consequences for that party at the conclusion of the proceedings.

Singapore’s arbitration laws have also been amended to clarify the acceptance of the arbitrability of intellectual property in general. This includes arbitration of issues relating to both Singapore patents and foreign patents, including issues pertaining to their infringement and validity.

Law stated date

Give the date on which the information above is accurate.

5 November 2020.