With the Singapore government looking to cement the country’s reputation as a leading startup hub, the climate for starting your own business has never been more favorable. As an aspiring entrepreneur, you may be looking to provide a new product or process that you think may fulfil an unmet market demand. This is your invention, which may have been borne out of one eureka moment or may be the result of years of grueling research and experimentation. You are of course hoping that this invention will be a commercial hit, but what if there are unethical parties seeking to profiteer off your invention by offering an identical or near-identical product or process?
The answer to this is to own a patent over your invention, which would enable you to enforce your rights against such errant behaviour. While patent enforcement is a very complex undertaking, this article sets out a simplified guide to the process that will hopefully clarify your basic rights against a suspected infringer.
Filing a patent
A patent comprises a set of exclusive rights over an invention. When you obtain a patent, you are essentially awarded a 20-year monopoly to exploit the invention starting from the date of filing, provided that applicable annuity fees are paid in a timely manner. In exchange for these exclusive rights, and to encourage innovation, you are required to disclose the details of your invention in the public domain.
Under the Patents Act of Singapore, there are 3 key conditions an invention must meet in order to be considered patentable in Singapore:
- The invention is new, i.e. it must not have been made known to the public anywhere in the world;
- It involves an inventive step that improves any existing product or process, but is not obvious to a person “skilled in the art”, who is assumed to have practical experience and knowledge in the relevant industry; and
- It is capable of industrial application, meaning that said product or process may be applied to achieve an end result in the relevant industry.
Even if your invention meets the 3 criteria of patentability listed above, it will not be granted a patent in Singapore if:
- It is a treatment method for humans or animals by way of surgery, therapy or diagnosis; or
- It encourages offensive, immoral or anti-social behaviour.
When is someone infringing my patent?
Assuming that a patent has been granted over your invention, under what circumstances can you enforce it?
- When the subject matter overlaps with what is protected by your patent.
Before thinking about enforcement, it is crucial that you understand what is protected by your patent. In particular, you should review the claims in your patent carefully before taking any action against someone who you suspect to be infringing your patent. This is because the claims define the scope of protection afforded to you. Your review should focus on whether the wording of the claims overlaps with the alleged infringing subject matter. - Secondly, when certain acts are performed without your prior consent.
The following acts are regarded as patent infringement if it is performed without your prior consent:- [Where the patent covers a product] Making, disposing of, offering to dispose of, using or importing the product or keeping the product whether for disposal or otherwise;
- [Where the patent covers a process] Using the process or offering it for use in Singapore when the person knows, or it is obvious to a reasonable person in the circumstances, that its use without your consent would be an infringement of the patent;
- [Where the patent covers a process] Disposing of, offering to dispose of, using or importing any product obtained directly by means of the process or keeping the product whether for disposal or otherwise.
Remedies available
Under Singapore law, you may claim the following remedies against an alleged infringer:
1) An injunction restraining him from further acts of infringement;
2) An order for him to hand over or destroy all infringing material;
3) Monetary damages in respect of the losses suffered as a result of the infringement;
4) An account of the profits derived by him from the infringement; and / or
5) A Court declaration that your patent is valid and has been infringed by him.
Only one monetary remedy, i.e. either 3) or 4), will be awarded to a successful claimant in respect of the same act of infringement.
In the recent case of Main-Line Corporate Holdings v United Overseas Bank Ltd and another [2016] SGHC 285, the High Court ruled that it did not have the power to award exemplary (or punitive) damages for patent infringement. This means that you cannot claim damages from the infringer on the basis that he should be punished for his wrongful conduct.
Is “sue first, talk later” a good strategy when it comes to enforcing my patent?
When you find out that your patent may have been infringed, your instinctive response may be to file a suit against the alleged infringer.
Before doing so, you should bear in mind that the costs of a patent infringement lawsuit may be prohibitively high, given that infringement proceedings are at the trial stage brought before the High Court of Singapore*. Additionally, these proceedings often involve expert witnesses, who may be appointed by the Court or called by parties to assess complex technical issues that must be viewed through the eyes of a person “skilled in the art”. The time incurred by these experts for file review and preparation will likely be expensive.
As no invalid patent can be enforceable, the alleged infringer may file a counter-claim to revoke your patent by challenging its validity, which you must be prepared to defend. This not only results in mounting litigation costs but may also compromise the rights you have in your patent. It is for this reason that you may seek as a remedy, a Court declaration that your patent is valid, and has been infringed.
The alleged infringer may also bring civil proceedings in court against you for groundlessly threatening them with patent infringement proceedings. You may be liable to pay damages if the claimant successfully proves that the threats are groundless and that they have sustained losses resulting from these threats.
It goes without saying that the various claims and counter-claims filed by parties contribute to a lengthy trial process involving numerous issues which require the Court’s consideration, hence resulting in exorbitant legal fees. Whether you can recover the costs of litigation if you win is left to the Court’s discretion. In most cases, the winning party should be able to recover part of their costs except under special circumstances, for example, if they have conducted themselves improperly during the litigation process.
*Alternatively, parties may mutually agree to refer the question of infringement to the Registrar of Patents – if so, however, your claim is limited to remedies 3) or 5) as listed in the previous section above. Given the importance of injunctive relief to most plaintiffs in patent infringement proceedings, this option is usually less utilised.
So, what should I do if I suspect that my patent has been infringed?
Talk to an intellectual property lawyer and obtain an assessment of your case against the alleged infringer. The key question to ask is: Based on your existing patent(s), are you likely to succeed in a claim for infringement?
Most patent owners will, as a first step, send cease-and-desist letters (usually through their lawyers) to suspected infringers. In an ideal scenario, the letter will have the effect of curbing the infringing acts swiftly, at minimal cost to the patent owners.
Even where parties are initially unable to resolve the matter amicably, disputes tend to be settled before reaching the trial stage due to the significant time and expense involved in a patent infringement trial. Often, it is the borderline cases which proceed to trial, as opposed to the cases where infringement is blatant and obvious.
Frequently asked questions
Question 1: Can I rely on my Singapore patent to prevent someone outside of Singapore from copying my invention?
Unfortunately, a patent is territorial – this means that the scope of patent protection is limited to the specific country which has granted the patent. The only instance in which a party will be held liable for infringement based on its activities occurring outside Singapore, is when said party has made an offer to the Singapore public to ‘dispose of’ an infringing product.
Similarly, you will not be able to enforce a foreign patent against a party for its activities in Singapore.
Question 2: I am thinking of patenting my invention, but have not actually done so due to budgetary concerns. Can I describe my invention as “patent pending” in the meantime to ward off potential copycats?
No, as it is a criminal offence under the Patents Act to make any unauthorised claims about patent rights, or patents applied for. This includes falsely claiming that your invention is “patented”, “patent pending” or that you have applied for a patent.
Question 3: Is there a time limit for me to take action against a suspected infringer?
The Limitation Act bars you from taking action against an alleged infringer after 6 years from the date on which you find out that your patent may have been infringed. Procedural rules aside, given the relatively short 20-year lifespan of a patent, it would not make sense for you to wait too long to enforce your patent, especially if what you are seeking is an injunction.
Have a question about the enforcing your patent?
If you need legal advice on intellectual property, you may wish to request a quotation from Bridget Goh. Alternatively, you can get a Quick Consult with one of the practicing lawyers for a transparent, flat fee of S$49 and expect a call back within 1-2 days to get your questions answered.
This article is written by Bridget Goh from Withers KhattarWong and edited by Tang Chee Seng from Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.