Meaning of infringement
Open ↗66.—(1) Subject to the provisions of this Act, a person infringes a patent for an invention if, but only if, while the patent is in force, the person does any of the following things in Singapore in relation to the invention without the consent of the proprietor of the patent:(a)
where the invention is a product, the person makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b)
where the invention is a process, the person uses the process or the person offers it for use in Singapore when the person knows, or it is obvious to a reasonable person in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;
(c)
where the invention is a process, the person disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
(2) An act which, apart from this subsection, would constitute an infringement of a patent for an invention is not an infringement of a patent if —(a)
it is done privately and for purposes which are not commercial;
(b)
it is done for experimental purposes relating to the subject matter of the invention;
(c)
it consists of the extemporaneous preparation of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consists of dealing with a medicine so prepared;
(d)
it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing Singapore (including the airspace above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle;
(e)
it consists of the use, exclusively for the needs of a relevant ship, of a product or process in the body of the ship or in its machinery, tackle, apparatus or other accessories, in a case where the ship has temporarily or accidentally entered the territorial waters of Singapore;
(f)
it consists of the use of an exempted aircraft which has lawfully entered or is lawfully crossing Singapore as mentioned in paragraph (d) or of the importation into Singapore, or the use or storage, of any part or accessory for that aircraft;
(g)
subject to subsections (3) and (6), it consists of the import, use or disposal of, or the offer to dispose of, any patented product or any product obtained by means of a patented process or to which a patented process has been applied, which is produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor, and for this purpose “patent” includes a patent granted in any country outside Singapore in respect of the same or substantially the same invention as that for which a patent is granted under this Act and “patented product”, “patented process” and “licensed” are to be construed accordingly;
(h)
it consists of the doing of any thing set out in subsection (1) in relation to the subject matter of the patent to support any application for marketing approval for a pharmaceutical product, provided that any thing produced to support the application is not —(i)
made, used or sold in Singapore; or
(ii)
exported outside Singapore,
other than for purposes related to meeting the requirements for marketing approval for that pharmaceutical product; or
(i)
subject to subsection (6), it consists of the import, disposal or offer to dispose of a patented pharmaceutical product for use by or on a specific patient in Singapore, or the use of that product by or on that patient, where —(i)
that product is required for use by or on that patient;
(ii)
the relevant authority has granted approval specifically for the import of that product for use by or on that patient; and
(iii)
that product was produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor (and for this purpose “patent” includes a patent granted in any country outside Singapore in respect of the same or substantially the same product and “licensed” is to be construed accordingly).[18/2008]
(3) Subsection (2)(g) does not apply to the import of any patented pharmaceutical product by any person (called in this subsection and subsection (4) the importer) if —(a)
the product has not previously been sold or distributed in Singapore by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor of the patent to sell or distribute the product in Singapore;
(b)
the import of the product by the importer would result in the product being distributed in breach of a contract between —(i)
the proprietor of the patent; and
(ii)
any person licensed by the proprietor of the patent to distribute the product outside Singapore; and
(c)
the importer has actual or constructive knowledge of the matters referred to in paragraph (b).
(4) For the purposes of subsection (3), where the importer has received a written notice containing the prescribed particulars, the importer is deemed to have constructive knowledge of the matters referred to in subsection (3)(b).
(5) To avoid doubt, in subsection (3), “patent” does not include a patent granted in any country outside Singapore in respect of the same or substantially the same product and “licensed” is to be construed accordingly.
(6) Subsection (2)(g) and (i) does not apply to the import or sale of, or the offer to sell, any relevant health product produced for export to any country, other than Singapore, which is an eligible importing member of the World Trade Organisation.[18/2008]
(7) In this section —“eligible importing member”, in relation to the World Trade Organisation, means a member of the World Trade Organisation which —(a)
is a least-developed country; or
(b)
has given the Council for TRIPS the notification referred to in —(i)
paragraph 1(b) of the Doha Declaration Implementation Decision; or
(ii)
paragraph 1(b) of the Annex to the TRIPS Agreement;
“exempted aircraft” means an aircraft to which section 30 of the Air Navigation Act 1966 applies;
“relevant ship” and “relevant aircraft, hovercraft or vehicle” mean, respectively, a ship and an aircraft, a hovercraft or a vehicle registered in, or belonging to, any country, other than Singapore, which is —(a)
a party to the Paris Convention; or
(b)
a member of the World Trade Organisation.[18/2008]
Proceedings for infringement of patent
Open ↗67.—(1) Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made —(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.
(2) 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.
(3) In this Act, unless the context otherwise requires, any reference to a claimant includes a reference to the proprietor of the patent.[Act 23 of 2019 wef 01/04/2022]
[Act 25 of 2021 wef 01/04/2022]
(4) [Deleted by Act 23 of 2019 wef 01/04/2022]
(5) [Deleted by Act 23 of 2019 wef 01/04/2022]
(6) Subject to this Part, in determining whether or not to grant any kind of relief claimed under this section and the extent of the relief granted, the court must apply the principles applied by the court in relation to that kind of relief immediately before 23 February 1995.[Act 23 of 2019 wef 01/04/2022]
Reversal of burden of proof
Open ↗68.—(1) In any proceedings for the infringement of a patent, where the subject matter of the patent is a process for obtaining a new product, the burden of proving that a product is not made by the process is on the alleged infringer if the product is new or a substantial likelihood exists that the product is made by the process and the proprietor of the patent has been unable through reasonable efforts to determine the process actually used.
(2) In considering whether a party has discharged the burden imposed upon the party by this section, the court is not to require the party to disclose any manufacturing or commercial secret if it appears to the court that it would be unreasonable to do so.
Restrictions on relief for infringement
Open ↗69.—(1) In proceedings for infringement of a patent, damages must not be awarded and no order may be made for an account of profits against a defendant who proves that at the date of the infringement the defendant was not aware, and had no reasonable grounds for supposing, that the patent existed.
(2) A person is not to be taken to have been aware or to have had reasonable grounds for supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words.
(3) In proceedings for infringement of a patent, the court may, if the court thinks fit, refuse to award any damages, make an order for an account of profits or grant any other relief (including an injunction) in respect of an infringement committed during the period prescribed under section 36(3), but before the payment of the renewal fee and any additional fee prescribed for the purposes of section 36(3).[15/2012]
[Act 23 of 2019 wef 01/04/2022]
[Act 7 of 2022 wef 26/05/2022]
(4) Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the court must not, in proceedings for an infringement of the patent committed before the decision to allow the amendment, award any damages, make an order for an account of profits or grant any other relief (including an injunction) unless the court is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.[Act 23 of 2019 wef 01/04/2022]
Relief for infringement of partially valid patent
Open ↗70.—(1) If the validity of a patent is put in issue in proceedings for infringement of the patent and it is found that the patent is only partially valid, the court may, subject to subsection (2), grant relief in respect of that part of the patent which is found to be valid and infringed.[Act 23 of 2019 wef 01/04/2022]
(2) Where in any such proceedings it is found that a patent is only partially valid, the court must not grant relief by way of damages, costs or expenses, except where the claimant proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court as to costs or expenses and as to the date from which damages should be reckoned.[Act 23 of 2019 wef 01/04/2022]
[Act 25 of 2021 wef 01/04/2022]
(3) As a condition of relief under this section, the court may direct that the specification of the patent be amended to the court’s satisfaction upon an application made for that purpose under section 83, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.[Act 23 of 2019 wef 01/04/2022]
Right to continue use begun before priority date
Open ↗71.—(1) Where a patent is granted for an invention, a person who in Singapore before the priority date of the invention —(a)
does in good faith an act which would constitute an infringement of the patent if it were in force; or
(b)
makes in good faith effective and serious preparations to do such an act,
has the right to continue to do the act or, as the case may be, to do the act, despite the grant of the patent.
(2) The right conferred by subsection (1) does not extend to granting a licence to another person to do the act.
(3) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may —(a)
authorise the doing of that act by any partner of that person for the time being in that business; and
(b)
assign that right, or transmit it on death (or in the case of a body corporate on its dissolution) to any person who acquires that part of the business in the course of which the act was done or the preparations were made.
(4) Where a product is disposed of to another person in exercise of the rights conferred by subsection (1) or (3), that other person and any person claiming through that other person may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.
Certificate of contested validity of patent
Open ↗72.—(1) Where in any proceedings before the court or the Registrar the validity of a patent to any extent is contested and that patent is found by the court or the Registrar to be wholly or partially valid, the court or the Registrar may certify the finding and the fact that the validity of the patent was so contested.
(2) Where a certificate is granted under this section, then, if in any subsequent proceedings before the court for infringement of the patent or before the court or the Registrar for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent as found in the earlier proceedings, that party, unless the court or the Registrar otherwise directs, is entitled to that party’s costs or expenses as between solicitor and own client other than the costs or expenses of any appeal in the subsequent proceedings.[Act 23 of 2019 wef 01/04/2022]
Proceedings for infringement by co-owner
Open ↗73.—(1) In the application of section 66 to a patent of which there are 2 or more joint proprietors, the reference to the proprietor is to be construed —(a)
in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any agreement mentioned in that section, is or are entitled to do that act without its amounting to an infringement; and
(b)
in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any such agreement, is or are the proper person or persons to give the requisite consent.
(2) One of 2 or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but must not do so unless the others are made parties to the proceedings; but any of the others if made a defendant shall not be liable for any costs or expenses unless the defendant files and serves a notice of intention to contest or not contest and takes part in the proceedings.[Act 25 of 2021 wef 01/04/2022]
Proceedings for infringement by exclusive licensee
Open ↗74.—(1) The holder of an exclusive licence under a patent has the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in this Act relating to infringement are to be construed accordingly.
(2) In awarding damages or granting any other relief in any such proceedings, the court is to take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.[Act 23 of 2019 wef 01/04/2022]
(3) In any proceedings taken by an exclusive licensee by virtue of this section, the proprietor of the patent need not be made a party to the proceedings, but if made a defendant shall not be liable for any costs or expenses unless the defendant files and serves a notice of intention to contest or not contest and takes part in the proceedings.[Act 25 of 2021 wef 01/04/2022]
Effect of non-registration on infringement proceedings
Open ↗75. Where by virtue of a transaction, instrument or event to which section 43 applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, the court is not to award the person damages or order that the person be given an account of the profits in respect of such a subsequent infringement occurring before the transaction, instrument or event is registered unless —(a)
the transaction, instrument or event is registered within the period of 6 months beginning with its date; or
(b)
the court is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.[Act 23 of 2019 wef 01/04/2022]
Infringement of rights conferred by publication of application
Open ↗76.—(1) Where an application for a patent for an invention is published, then, subject to this section, the applicant has, as from the publication and until the grant of the patent, the same right as the applicant would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court for damages in respect of any act which would have infringed the patent.[Act 23 of 2019 wef 01/04/2022]
(2) References in sections 66 to 69 and 73 to 75 to a patent and the proprietor of a patent are to be respectively construed as including references to any such application and the applicant, and references to a patent being in force, being granted, being valid or existing are to be construed accordingly.
(3) The applicant is entitled to bring proceedings by virtue of this section in respect of any act only —(a)
after the patent has been granted; and
(b)
if the act would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent, but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Registry.
(4) Section 69(3) and (4) does not apply to an infringement of the rights conferred by this section but in considering the amount of any damages for such an infringement, the court is to consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 27, that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to infringe those rights, and if the court finds that it would not have been reasonable, the court is to reduce the damages to such an amount as the court thinks just.[Act 23 of 2019 wef 01/04/2022]
Remedy for groundless threats of infringement proceedings
Open ↗77.—(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he or she is the person to whom the threats are made) may, subject to subsection (4), bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).
(2) In any such proceedings, the claimant, if the claimant proves that the threats were so made and satisfies the court that the claimant is a person aggrieved by them, is entitled to the relief claimed unless —(a)
the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and
(b)
the patent alleged to be infringed is not shown by the claimant to be invalid in a relevant respect.[Act 25 of 2021 wef 01/04/2022]
(3) The said relief is —(a)
a declaration to the effect that the threats are unjustifiable;
(b)
an injunction against the continuance of the threats; and
(c)
damages in respect of any loss which the claimant has sustained by the threats.[Act 25 of 2021 wef 01/04/2022]
(4) Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.
(5) A mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.
(6) Nothing in this section renders an advocate and solicitor or any other person liable to an action under this section in respect of an act done by the advocate and solicitor or the other person in the advocate and solicitor’s or the other person’s professional capacity on behalf of a client.
Declaration as to non-infringement
Open ↗78.—(1) Without prejudice to the jurisdiction of the court to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court in proceedings between the person doing or proposing to do the act and the proprietor of the patent, even though no assertion to the contrary has been made by the proprietor, if it is shown —(a)
that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished the proprietor with full particulars in writing of the act in question; and
(b)
that the proprietor has refused or failed to give any such acknowledgment.[Act 23 of 2019 wef 01/04/2022]
(2) [Deleted by Act 23 of 2019 wef 01/04/2022]
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
