International Patent Litigation in Singapore

In Singapore, the following entities are entitled to sue for patent infringement: 

• The proprietor of a patent (section 67 of the Patents Act 1994 (“PA”)).  
• One of two or more joint proprietors, provided that the other joint proprietors are made parties to the proceedings (s 73(2) PA). These other joint proprietor(s), if made a defendant, are not liable for any costs or expenses unless they file and serve a notice of intention to contest or not contest and take part in the proceedings. 
• An assignee or exclusive licensee, provided that the assignment or exclusive license expressly confers the right to sue for patent infringement (ss 41(7), 74 PA). 

Yes. Following Rule 32 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (“IPR”)) read with Order 9 Rule 9 of the ROC 2021, the addition or removal of parties is one matter dealt with under a single application pending trial. Following Rule 32 of the IPR read with Order 9 Rule 10 of the ROC 2021, the Court may add or remove one or more claimants or defendants. 

Yes. Following Rule 32 of the IPR read with Order 10 Rule 1 of the ROC 2021, a defendant may issue a third-party notice if the defendant: 

1. claims against a person not already a party to the action any contribution or indemnity; 
2. claims against such a person any relief or remedy relating to or connected with the original subject matter of the action and substantially the same as some relief or remedy claimed by the claimant; or 
3. requires that any question or issue relating to or connected with the original subject matter of the action should be determined not only as between the claimant and defendant but also as between either or both of them and a person not already a party to the action. 

Claims for patent infringement must be brought within 6 years from the date on which the cause of action accrued (i.e. from the date on which the infringing acts occurred) (s 6 Limitation Act 1959).

No.

The relevant court is the General Division of the High Court (“GDHC”) (s 2 read with s 67 PA). 

Revocation of a patent may be brought before the Intellectual Property Office of Singapore (“IPOS”) but if infringement proceedings are pending, a revocation action before IPOS would require permission of the court.  

Infringement and validity are usually decided in a single proceeding with invalidity of a patent typically asserted as a defence to the infringement.  

No.

Yes. Per s 77(3) PA, the relevant relief is a declaration to the effect that the threat of the infringement proceeding is unjustifiable. 

It depends on the various interlocutory applications and the complexity of the case.  

It depends on the complexity of the case, but usually within 18 – 24 months.

The appointed judge will usually have expertise in Intellectual Property and may have technical expertise. 

No.

A party can file an application to revoke a patent pursuant to s 80 PA, but this does not stop them from potentially being sued for patent infringement.  

There is no specific procedure for an action to be filed in respect of a FRAND license. 

Yes, any interested person may apply to the court for the grant of a licence under a patent on the ground that the grant of the licence is necessary to remedy an anti-competitive practice (s 55 PA). 

The issue of FRAND defence has not been tested in the Singapore courts and the PA does not deal with FRAND and Standard Essential Patents (“SEP”). 

The Competition and Consumer Commission of Singapore is the competition regulator in Singapore and its Guidelines on the Treatment of Intellectual Property Rights provide that “where an owner of an SEP has a dominant position in a market, its refusal to license its SEP on FRAND terms to any applicant for a licence (irrespective of its position in the value chain) may give rise to competition concerns under section 47 of the [Competition Act 2004]. In addition, it should be noted that seeking an injunction based on an alleged infringement of a SEP may give rise to competition concerns under section 47 of the [Competition Act 2004] if the SEP holder has a dominant position in a market, has given a voluntary commitment to license its SEP on FRAND terms and where the party against whom the SEP holder seeks to injunct is willing to enter into a licence agreement on such FRAND terms”. 

Yes, expert witnesses are used by parties to a patent infringement case.  

A party can bring its own expert witnesses. However, the expert has the duty to assist the court in the matters within his or her expertise and on the issues referred to him or her. The expert’s duty to the court overrides any obligation to the person from whom the expert receives instructions or by whom the expert is paid. 

Yes. Under Order 11 of the Rules of Court 2021 (“ROC 2021”), the parties must disclose: 

1. all documents that the party in question will be relying on 
2. all known adverse documents (including documents which a party ought reasonably to know are adverse to the party’s case); 
3. where applicable, documents that fall within a broader scope of discovery: 
4. as may be agreed between the parties or any set of parties; or 
5. as ordered by the court. 

Pursuant to Order 11 Rule 4 of the ROC 2021, the court may, of its own accord and at any time, order any party or non-party to produce a copy of any document that is in the person’s possession or control, subject to Order 11 Rules 5, 8 and 9

Yes to both.  

Pursuant to Order 11 Rule 11 of the ROC 2021, the court may order the production of documents and information before the commencement of proceedings or against a non-party to identify possible parties to any proceedings, to enable a party to trace the party’s property or for any other lawful purpose, in the interests of justice. 

In relation to seizure of documents, Order 13 Rule 1 of the ROC 2021 states that a party may apply for a search order, which may be before the originating process is issued and may be without notice (but supported by an affidavit justifying why the application is without notice).  

For decisions of the Registrar elating to revocation of patents, appeals can be made to the GDHC (see s 90 PA). A further appeal may be possible to the Court of Appeal (“CA”) subject to the ground(s) in the next question. 

For decisions made solely by the GDHC, such as patent infringements and validity, an appeal can be made only to the CA. 

An appeal from a decision of the GDHC to the CA is only possible:  

1. Where the decision of the GDHC is wrong in law (see s 90(3)(b) PA);  
2. If the GDHC’s exercise of discretion was based on a misunderstanding of the evidence before it; or  
3. If the GDHC’s decision “was so aberrant that it must be set aside on the ground that no reasonable judge mindful of his duty to act judicially could have reached it” (see at E C Investment Holding Pte Ltd v Ridout Residence Pte Ltd [2011] SGCA 50 at [76]). 

Regarding appeals from a decision of the Registrar, a notice of appeal must be filed and served with the GDHC within the following timelines (see Rule 40 of the IPR): 

1. if the Registrar’s decision is on a matter of procedure, within 28 days after the Registrar’s decision; and 
2. in any other case, within 6 weeks after the Registrar’s decision. 

Regarding appeals from the GDHC, a notice of appeal must be filed and served with the CA within 28 days of the decision of the GDHC, including on costs (see Order 19 Rule 25 of the ROC 2021). This is the last form of appeal since the CA, as the appellate court, is highest court in Singapore. 

An appeal is usually heard within 12 months. 

Regarding patent infringements heard by the GDHC only, which are actions commenced by originating claim (see rule 33 of the IPR, a notice of appeal must be filed and served with the CA within 28 days of the decision of the GDHC, including on costs (see Order 19 Rule 25 of the ROC 2021). This is the only form of appeal since the CA, as the appellate court, is highest court in Singapore. 

An appeal is usually heard within 12 months. 

Appeals to the CA do not operate as a stay of execution or enforcement or of proceedings under the decision appealed against, unless the GDHC whose decision is appealed against or the CA so orders (see s 60C SCJA). 

It is difficult to provide a figure regarding the estimated legal costs of patent litigation for a first instance decision. This is because the costs incurred depends on, among other things, the complexity of the case. 

It is difficult to provide a figure regarding the estimated legal costs of patent litigation proceedings for an appeal. This is because the costs incurred depends on, among other things, the complexity of the case. 

Whether litigation costs are recoverable, and the extent to which they can be recovered, are at the discretion of the court hearing the case, subject to any written law (see Order 21 Rule 2 of the ROC 2021). There are no legal limitations, however the losing party is traditionally ordered to pay only a portion of the actual costs incurred by the winning party (i.e. two-thirds).  

Besides litigation and/or arbitration, parties may resort to mediation, negotiation or expert determination, which are commonly used.  

Following Rule 32 of the IPR read with Order 5 Rule 1(1) of the ROC 2021, parties to any proceedings have a duty to consider amicable resolution of the dispute before the commencement and during the course of any action or appeal.  

Following Rule 32 of the IPR read with Order 5 Rule 1(3) of the ROC 2021, an offer of amicable resolution in this Order means making an offer to settle the action or appeal or making an offer to resolve the dispute other than by litigation, whether in whole or in part.

Following Rule 32 of the IPR read with Order 5 Rule 3(1) of the ROC 2021, the court may order the parties to attempt to resolve the dispute by amicable resolution.  

Following Rule 32 of the IPR read with Order 5 Rule 3(5) of the ROC 2021, the court may suggest solutions for the amicable resolution of the dispute to the parties at any time as the court thinks fit. 

Under section 67(1) of the PA, the proprietor of the patent may claim for the following: 

(a) for an injunction restraining the defendant from any apprehended act of infringement; 

(b) for an order for the defendant to deliver up or destroy any patented product in relation to which the patent is infringed or 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; 

(c) for damages in respect of the infringement; 

(d) for an account of the profits derived by the defendant from the infringement; and 

(e) for a declaration that the patent is valid and has been infringed by the defendant. 

Under section 67(2) of the PA, the court must not, in respect of the same infringement, both award the proprietor of a patent damages and order that the proprietor be given an account of the profits. This is to avoid double recovery.

In the Singapore High Court case of Main-Line Corporate Holdings Ltd v UOB Bank Ltd [2017] 3 SLR 901, the English case of General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1975] 1 WLR 819 (“General Tire”) was referred to for the calculation of damages. In General Tire at 824, Lord Wilberforce stated that in general, patentees usually derive remuneration from their inventions either (i) by manufacturing articles or products which they sell at a profit or (ii) by permitting others to use their inventions under licence in exchange for royalty payments.  

In the former situation, the measure of damages would normally be lost profits on sales which the patentee would otherwise have made, or lost profit on the patentee’s own sales to the extent that he was forced by the infringement to reduce his own price. 

In the latter situation, the measure of damages will likely be what the patentee would have charged the defendant for a licence based on the “accepted royalty rate”. However, “it must be shown that the circumstances under which the going rate was paid are the same or at least comparable” with the present situation in which the patentee and infringer are assumed to strike their bargain (see General Tire at 825). Lord Wilberforce stated in General Tire at 826 that there may be situations where the patentee cannot show a normal or established licence royalty or a rate of profit as a manufacturer. In such cases, the claimant would have to adduce admittedly general or hypothetical evidence in the form of expert opinion or practice in the trade, to support a finding of a reasonable royalty. 

Following Rule 32 of the IPR read with Order 17 Rule 5 of the ROC 2021, money payable under an order is subject to (a) interest as agreed between the parties; or (b) if there is no agreement on interest, simple interest at 5.33% per year. 

Yes, there are separate proceedings for the inquiry into damages. 

The court has the discretion to determine what remedies it may award. There are no specific provisions mandating that additional remedies are given if the infringement was deliberate such as treble damages or punitive damages. 

Yes. Section 67(1)(b) states that the court may order the defendant to deliver up or destroy any 

patented product in relation to which the patent is infringed or 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.  

There is no specific limitation in time, but the court may specify such timelines in its decision

Yes. The court may issue an interim or interlocutory injunction. Following Rule 32 of the IPR read with Order 13 Rule 1 of the ROC 2021, a party may apply for an injunction, whether or not a claim for such relief was included in that party’s originating process, counterclaim or third-party notice.  

The applicant must satisfy the following requirements under the American Cyanamid test (see Astrata (Singapore) Pte Ltd v Tridex Technologies Pte Ltd [2011] 1 SLR 449 at [17]): 

1. There is a serious question to be tried; and 
2. The balance of convenience lies in favour of granting an injunction. 

Relevant factors include the following (Bouvier, Yves Charles Edgar v Accent Delight International Ltd [2015] 5 SLR 558 at [151], [157]): 

• The court does not engage in complex questions of law or fact at the interlocutory stage. 
• Regarding interlocutory proprietary injunctions, the first element (i.e. serious question to be tried) is satisfied if the claimant has “a seriously arguable case” that it has a proprietary interest. 
• Regarding interlocutory proprietary injunctions, the second element (i.e. balance of convenience) is likely satisfied if the claimant asserts a “proprietary interest in unique property, or property that cannot be readily purchased or substituted on the market”. 

Yes, in cases of urgency. Following Rule 32 of the IPR read with Order 13 Rule 1(3) of the ROC 2021, the application for an injunction may be by originating application without notice or summons without notice, supported by an affidavit stating the urgency and explaining why the defendant should not be informed about the application and the merits of the application. 

In an urgent case, the applicant may apply for an injunction before the originating process is issued. The applicant must justify to the court why, on the facts, the case is an “urgent case”. 

Following Paragraph 71 of the Supreme Court Practice Directions 2021 (“SCPD 2021”), except in cases of extreme urgency or with the permission of the relevant court, the party must give a minimum of 2 hours’ notice to the other parties before the hearing. The notice should inform the other parties of the date, time and place fixed for the hearing of the application and the nature of the relief sought. If possible, a copy of the originating process, the summons without notice or the originating application without notice (if no originating process has been issued yet) and supporting affidavit(s) should be given to each of the other parties in draft form as soon as they are ready to be filed in relevant court. 

Where the circumstances are shown to be urgent or time-sensitive, the Singapore courts may issue an injunction immediately upon application. 

An appeal is possible, but it does not by itself suspend the effect of the injunction. Please note that if the injunction is granted ex parte, the parties will be heard again by the judge to determine if the injunction should be upheld. This is not by way of an appeal but is part of the proceedings for the injunction. 

Following Rule 32 of the IPR read with Order 18 Rule 6 of the ROC 2021, except so far as the lower court or appellate court may otherwise direct, an appeal does not operate as a stay of enforcement or of proceedings under the decision of the lower court. 

Security is only required to be offered to fortify the relevant undertaking by the applicant where the court orders as such.  

Following Paragraphs 13/1/28 to 13/1/30 of the Singapore Civil Procedure 2022 (“White Book 2022”) and CHS CPO GmbH v Vikas Goel [2003] 3 SLR(R) 202 at [18], an undertaking as to damages is described as a standard requirement that accompanies the court’s grant of an injunction almost as a matter of course. The court cannot compel an applicant to give an undertaking as to damages as a condition of an interlocutory injunction, however it can refuse to grant an injunction unless the applicant does so.  

Following Paragraph 73(f) of the SCPD 2021, an application for an interlocutory injunction without notice must be accompanied by an affidavit that includes “[a]n undertaking to pay for losses that may be caused to the opponent or other persons by the granting of the orders sought, stating what assets are available to meet that undertaking and to whom the assets belong”.   

The applicant may be required by the court to fortify the abovementioned undertaking by giving security. Following Paragraph 13/1/33 of the White Book 2022, where the court has imposed the condition of fortifying the undertaking with security, unless the applicant is willing and able to provide the security ordered, the injunction will not be granted. A defendant should apply for the security at the time when the injunction is granted, after an inter partes hearing, and the undertaking is given. The court has no subsequent power to impose such an additional term on the grant of an injunction.

Yes. A final injunction is however separate from an interim injunction and is only issued after trial, a summary judgment or a default judgment. 

Mareva injunctions and Anti-Suit Injunctions (see next question) are typically the types of cross-border injunctions granted by the Singapore courts. 

Mareva Injunction 

Following Rule 32 of the IPR read with Order 13 Rule 1(7) ROC 2021, a Mareva injunction is available to prohibit the disposal of assets worldwide. Following Paragraph 13/1/79 of the White Book 2022, a worldwide Mareva injunction may be used where the assets which are to be frozen are wholly located abroad (including within several foreign jurisdictions) or where some of the assets are within the jurisdiction and some are abroad. Such an injunction may be granted either before judgment or after judgment. 

Yes.  

Following Lakshmi Anil Salgaocar v Jhaveri Darsan Jitendra [2019] 2 SLR 372 at [49] citing Société Nationale Industrielle Aerospatiale v Lee Kui Jak [1987] AC 871 at 892, the following are the general principles governing ASIs: 

1. The jurisdiction is to be exercised when the “ends of justice” require it. 
2. Where the court decides to grant an ASI, its order is directed not against the foreign court but against the parties so proceeding or threatening to proceed. 
3. An ASI will only be issued to restrain a party who is amenable to the jurisdiction of the court, against whom an injunction will be an effective remedy. 
4. Since such an order indirectly affects the foreign court, the jurisdiction is one which must be exercised with caution. 

Following Sun Travels & Tours Pvt Ltd v Hilton International Manage (Maldives) Pvt Ltd [2019] 1 SLR 732 at [66] and John Reginald Stott Kirkham v Trane US Inc [2009] 4 SLR(R) 428 at [28]-[29], the court will consider the following elements to determine whether an ASI will be granted: 

1. Whether the defendant (in relation to the ASI) is amenable to the SGC’s jurisdiction; 
2. Whether Singapore is the natural forum for resolving the dispute between the parties; 
3. The alleged vexation or oppression to the claimant (in relation to the ASI) if the foreign proceedings continue; 
4. The alleged injustice to the defendant (in relation to the ASI), such as deprivation of legitimate juridical advantages sought in the foreign proceedings, if the ASI is granted; and 
5. Whether the institution of the foreign proceedings is in breach of any agreement between the parties.