10. The principal Rules are amended by deleting Order 87A and substituting the following Order:| Interpretation (O. 87A, r. 1) |
1. In this Order —| “Act” means the Patents Act (Chapter 221); |
| “journal” means the journal published pursuant to the rules made under section 115(4) of the Act; |
| “patent” means a patent granted under the Act or a patent in force by virtue of section 116(3) of the Act; |
| “Registrar” means the Registrar of Patents; |
| “Registry” means the Registry of Patents established under the Act. |
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| Action for infringement (O. 87A, r. 2) |
2.—(1) Notwithstanding anything in Order 5, Rule 4, proceedings in which a claim is made by the plaintiff in respect of the infringement of a patent shall be begun by writ.| (2) The plaintiff in such an action must serve with his statement of claim particulars of the infringement relied on, showing which of the claims in the specification of the patent are alleged to be infringed and giving at least one instance of each type of infringement alleged. |
| (3) If a defendant in such an action alleges, as a defence to the action, that at the time of the infringement there was in force a contract or licence relating to the patent made by or with the consent of the plaintiff and containing a condition or term void by virtue of section 51 of the Act, he must serve on the plaintiff particulars of the date of, and parties to, each such contract or licence and particulars of each such condition or term. |
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| Objections to validity of patent (O. 87A, r. 3) |
3.—(1) A party to an action who puts in issue the validity of a patent by way of defence or counterclaim must serve his defence or counterclaim (as the case may be) together with particulars of the objections to the validity of the patent on which he relies within 42 days after service upon him of the statement of claim, provided that he gives prior notice of his intention to put in issue the validity of the patent within 14 days after service upon him of the statement of claim.| (2) Particulars given pursuant to paragraph (1) must state every ground on which the validity of the patent is put in issue and must include such particulars as will clearly define every issue which it is intended to raise. |
(3) If the grounds stated in the particulars of objections include want of novelty or want of any inventive step, the particulars must state the manner, time and place of every prior publication or user relied upon and, if prior user is alleged, must —| (a) | specify the name of every person alleged to have made such user; | | (b) | state whether such user is alleged to have continued until the priority date of the claim in question or of the invention, as may be appropriate, and, if not, the earliest and latest date on which such user is alleged to have taken place; | | (c) | contain a description accompanied by drawings, if necessary, sufficient to identify such user; and | | (d) | if such user relates to machinery or apparatus, state whether the machinery or apparatus is in existence and where it can be inspected. |
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(4) If in the case of an existing patent —| (a) | one of the grounds stated in the particulars of objections is that the invention, so far as claimed in any claim of the complete specification, is not useful; and | | (b) | it is intended, in connection with that ground, to rely on the fact that an example of the invention which is the subject of any such claim cannot be made to work, either at all or as described in the specification, |
| the particulars must state that fact and identify each such claim and must include particulars of each such example, specifying the respects in which it is alleged that it does not work or does not work as described. |
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| (5) In any action or other proceedings relating to a patent in which the validity of the patent has been put in issue on the ground of obviousness, a party who wishes to rely on the commercial success of the patent must state in his pleadings the grounds upon which he so relies. |
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| Admissions (O. 87A, r. 4) |
4.—(1) Notwithstanding anything in Order 27, where a party desires any other party to admit any fact, he shall, within 21 days after service of a defence or a reply or after the expiration of the period fixed for the service thereof, serve on that other party a notice requiring him to admit for the purpose of the action or proceedings the facts specified in the notice.| (2) A party upon whom a notice under paragraph (1) is served shall within 21 days after service thereof serve upon the party making the request a notice stating in respect of each fact specified in the notice whether or not he admits it. |
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| Discovery of documents (O. 87A, r. 5) |
5.—(1) Order 24 shall apply in an action for infringement of a patent or a declaration of non-infringement of a patent or any proceedings where the validity of a patent is in issue, except that documents from the exempt classes shall not be listed.(2) The exempt classes are —| (a) | 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 particulars of the product or process alleged to infringe, including if necessary drawings or other illustrations; | | (b) | documents relating to any ground on which the validity of a patent is put in issue, except documents which came into existence within the period beginning 2 years before the earliest claimed priority date and ending 2 years after that date; and | | (c) | documents relating to the issue of commercial success. |
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(3) Where the issue of commercial success arises in any proceedings specified in paragraph (1), the proprietor of the patent shall serve a schedule containing the following details:| (a) | where the commercial success relates to an article or product —| (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 mentioned in sub-paragraph (i); and | | (iv) | a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products mentioned in sub-paragraphs (i) and (iii); |
| | (b) | where the commercial success relates to the use of a process —| (i) | an identification of the process the proprietor asserts has been used in accordance with the claims of the patent; | | (ii) | a summary by convenient periods of the revenues received from the use of such process; | | (iii) | a summary for the equivalent periods of the revenues, if any, received from the use of any equivalent prior art process; and | | (iv) | a summary by convenient periods of any expenditure which supported the use of the process mentioned in sub-paragraphs (i) and (iii). |
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| (4) Notwithstanding paragraphs (1) and (2), any party may apply under Order 24 for further and better discovery or specific discovery of any document in an exempt class. |
| (5) Paragraphs (1) and (2) shall not create any privilege in a document in an exempt class. |
| (6) If, notwithstanding paragraphs (1) and (2), a party produces for inspection a document from an exempt class, that party shall, if so requested in writing by any other party, serve on the requesting party, within 14 days of such a request, a supplementary list of all the other documents within the same class as the document so produced, unless the Court otherwise orders. |
| (7) This Rule is without prejudice to the Court’s power to limit discovery on any other ground. |
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| Experiments (O. 87A, r. 6) |
6.—(1) Where a party desires to establish any fact by experimental proof, he shall within 21 days after service of the lists of documents under Rule 5, serve on the other party a notice stating the facts which he desires to establish and giving full particulars of the experiments proposed to establish them.| (2) A party upon whom a notice under paragraph (1) is served shall, within 21 days after service thereof, serve upon the other party a notice stating in respect of each fact whether or not he admits it. |
| (3) Where any fact which a party desires to establish by experimental proof is not admitted, he may at the hearing of the summons for directions apply for directions in respect of such experiments. |
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| Restrictions on admission of evidence (O. 87A, r. 7) |
7.—(1) Except with the leave of the Court, no evidence shall be given of any alleged infringement, or of any objection to the validity, of the patent, if the infringement or objection was not raised in the particulars of infringements or objections, as the case may be.| (2) In any action or other proceeding relating to a patent, evidence which is not in accordance with a statement contained in particulars of objections to the validity of the patent shall not be given in support of such an objection unless the Court allows the evidence to be admitted. |
| (3) If any machinery or apparatus alleged to have been used before the priority date referred to in Rule 3(3)(b) is in existence at the date of service of the particulars of objections, no evidence of its user before that date shall be given unless it is proved that the party relying on such user offered, where the machinery or apparatus is in his possession, inspection of it to the other parties to the proceedings or, where it is not, used all reasonable endeavours to obtain inspection of it for those parties. |
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| Determination of question or application where Registrar declines to deal with it (O. 87A, r. 8) |
| 8. Where the Registrar declines to deal with a question under section 20 (7), 47(8) or 67(5) of the Act, any person entitled to do so may, within 28 days after the Registrar’s decision, apply to the Court by originating summons to determine the question or application. |
| Proceedings for determination of certain disputes (O. 87A, r. 9) |
9.—(1) The following proceedings must be begun by originating motion:| (a) | proceedings for the determination of any dispute referred to the Court under section 64 of the Act; and | | (b) | any application under section 52(3) of the Act. |
| (2) There must be at least 14 days between the service of notice of a motion under this Rule and the day named in the notice for hearing the motion. |
| (3) On the hearing of a motion under this Rule, the Court shall give such directions for the further conduct of the proceedings as it thinks necessary or expedient and, in particular, directions for the service of particulars and as to the manner in which the evidence shall be given and as to the date of the hearing. |
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| Application for rectification of register of patents (O. 87A, r. 10) |
10.—(1) An application to the Court for an order that the register of patents be rectified must be made by originating motion, except where it is made by way of counterclaim in proceedings for infringement or by originating summons in proceedings for an order under section 52 of the Trustees Act (Chapter 337).| (2) Where the application relates to the register of patents, the applicant shall forthwith serve a copy of the application on the Registrar who shall be entitled to appear and to be heard on the application. |
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| Application for leave to amend specification under section 83 of the Act (O. 87A, r. 11) |
11.—(1) The proprietor of a patent intending to apply under section 83 of the Act for leave to amend his specification must give notice of his intention to the Registrar accompanied by a copy of an advertisement —| (a) | identifying the proceedings pending before the Court in which it is intended to apply for such leave; | | (b) | giving particulars of the amendment sought; | | (c) | stating the applicant’s address for service within Singapore; | | (d) | stating that a Statement of Reasons is available from that address; and | | (e) | stating that any person intending to oppose the amendment must, within 28 days after the appearance of the advertisement, give written notice of his intention to the applicant, such notice to be accompanied by a Statement of Opposition, |
| and the Registrar shall insert the advertisement once in the journal. |
| (2) A person who gives notice in accordance with the advertisement shall be entitled to be heard on the application subject to any direction of the Court as to costs. |
| (3) The applicant must at the same time as giving notice to the Registrar serve a copy of the Statement of Reasons together with a copy of the patent as proposed to be amended on all parties to the proceedings. |
(4) The Statement of Reasons shall contain full particulars of the amendment sought, the reasons therefor and the reasons why the applicant contends that in the exercise of the discretion the amendment should be allowed and in particular the Statement should contain —| (a) | a statement whether the amendment is by way of deletion of claims or re-writing of claims; | | (b) | insofar as it involves re-writing claims, details as to why the proposed amendment is in accordance with the statutory requirements of an amendment; and | | (c) | insofar as the amendment is sought to distinguish over prior art, an indication of the prior art. |
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| (5) The Statement of Opposition shall contain full particulars of all grounds of opposition to the application to amend. |
| (6) As soon as may be after the expiration of 42 days from the appearance of the advertisement the applicant must make his application under the said section 83, by motion, in the proceedings pending before the Court, and notice of the motion, together with a copy of the specification certified by the Registrar and showing in coloured ink the amendment sought, must be served on the Registrar, the parties to the proceedings and any person who has given notice of his intention to oppose the amendment. |
(7) On the hearing of the motion, the Court shall give such directions for the further conduct of the motion as it thinks necessary or expedient and, in particular, directions —| (a) | determining whether the motion shall be heard with the other proceedings relating to the patent in question or separately and, if separately, fixing the date of hearing thereof; | | (b) | as to the manner in which the evidence shall be given and, if the evidence is to be given by affidavit, fixing the times within which the affidavits must be filed; and | | (c) | as to whether any discovery is necessary and, if so, as to the extent of discovery and the manner and time within which the same is to be given. |
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| (8) Where the Court allows a specification to be amended, the applicant must forthwith file a copy of the order made by the Court with the Registrar and, if so required by the Court or the Registrar, leave at the Registry a new specification and drawings as amended, prepared in compliance with the Act and the rules made under the Act. |
| (9) The Registrar shall cause a copy of the order to be inserted at least once in the journal. |
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| Service of documents (O. 87A, r. 12) |
12.—(1) This Rule applies to the service of any document (including originating process) on a party until such time as that party has provided an address for service within the meaning of Order 6, Rule 2(2) or Order 12, Rule 2(3).(2) Subject to paragraph (3), for the purposes of any proceedings relating to a patent (including proceedings for declaration as to non-infringement or groundless threats of infringement proceedings or any other proceedings of a kind mentioned in this Order) where any document is served in the manner prescribed by Order 10 or Order 62 at an address for service given in the register kept under section 42 of the Act —| (a) | service shall be deemed to have been effected on the proprietor of the patent on the date on which the document was served at the said address; and | | (b) | the party on whom service is deemed to have been effected under sub-paragraph (a) shall be treated, for the purposes of any provision of these Rules which specifies a time-limit for responding to the document so served (whether by entering an appearance or otherwise), as having been served on the 7th day after the date on which the document was served at the said address. |
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| (3) Nothing in paragraph (2) shall prevent service from being effected on the proprietor in accordance with the provisions of these Rules. |
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| Appeals under the Act (O. 87A, r. 13) |
13.—(1) An appeal to the Court from a decision of the Registrar in any case in which a right of appeal is given by the Act must be brought by originating motion, and the notice of motion is referred to in this Order as “notice of appeal”.| (2) An appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar and, except with the leave of the Court, no further evidence shall be given. |
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| Notice of appeal (O. 87A, r. 14) |
14.—(1) Notice of appeal shall be filed with the Court —| (a) | in the case of a decision on a matter of procedure, within 14 days after the date of the decision; and | | (b) | in any other case, within 6 weeks after the date of the decision. |
| (2) The Registrar may determine whether any decision is on a matter of procedure and any such determination shall itself be a decision on a matter of procedure. |
| (3) Notice of appeal may be given in respect of the whole or any specific part of the decision of the Registrar and must specify the grounds of the appeal and the relief which the appellant seeks. |
| (4) Except with the leave of the Court, the appellant shall not be entitled on the hearing of the appeal to rely on any ground of appeal or to apply for any relief not specified in the notice of appeal. |
| (5) The appellant shall, within 5 days of lodging a notice of appeal, serve a copy thereof on the Registrar and other party to the proceedings before the Registrar. |
| (6) On receiving the notice of appeal, the Registrar shall forthwith transmit to the Court all the papers relating to the matter which is the subject of the appeal. |
| (7) Except by leave of the Court, no appeal shall be entertained unless the notice of appeal has been given within the period specified in paragraph (1) or within such further time as the Registrar may allow upon request made to him prior to the expiry of that period. |
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| Respondent’s notice (O. 87A, r. 15) |
15.—(1) A respondent who, not having appealed from the decision of the Registrar, desires to contend on the appeal that the decision should be varied, either in any event or in the event of the appeal being allowed in whole or in part, must give notice to that effect, specifying the grounds of that contention and the relief which he seeks from the Court.| (2) A respondent who desires to contend on the appeal that the decision of the Registrar should be affirmed on grounds other than those set out in the decision must give notice to that effect, specifying the grounds of that contention. |
| (3) A respondent’s notice shall be served on the Registrar and on the appellant and every other party to the proceedings before the Registrar within 14 days after receipt of notice of appeal by the respondent, or within such further time as the Court may direct. |
| (4) A respondent must, within 5 days after service of the notice on the appellant, furnish 2 copies of the notice to the Court. |
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| Hearing of appeal (O. 87A, r. 16) |
| 16. The Court shall give to the Registrar and to the appellant and every other party to the proceedings before the Registrar not less than 7 days’ notice of the date appointed for the hearing of the appeal, unless the Court directs that a shorter notice be given.”. |
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