Singapore Patent Litigation

Question 1
A has recently notified B of a potential issue with respect to the corresponding Singapore patent. Can pre-notice acts done by B constitute an infringement? Pre-2007, there were many B sales. 2007-2009: not so many B sales.

Answer 1
Yes. Pre notice acts done by B constitute an infringement as prima facie the right of the patent belongs to the patentee. There isn't a need for A to issue a notice to B as there is a provision for Groundless Treats in Singapore Patents Act (Section 77). Thus, regardless of the volume of B's sales (pre-2007, high volume of sales; 2007-2009: low volume of sales); all action taken/done by B is considered to be infringing.
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 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).

Question 2
Types of damages? Measure of damages: Statutory, punitive, standard (plaintiff’s lost profits, i.e. put the patentee in the position he would have been in had the patent not be infringed), account for profits etc? Is discovery available for damages inquiry?

Answer 2
Yes. Discovery is available for damages inquiry wherein it depends on the result of infringement /destruction of the infringing material. It is measured by the profits made by the infringer from the infringing activity wherein the patentee's financial loss is irrelevant and it is meant to prevent unjust enrichment.

Question 3
If C had obtained and paid for licences to A for overall use of patents in C’s product, would that reduce the amount of damages payable if B is found to have infringed A’s patent. Which is for a component?

Answer 3
No. There will be no reduction in the amount of damages payable if B is found to have infringed A's patent in a case where C had obtained and paid for licenses as exhaustion of rights is applicable in this scenario (in relation to parallel import). According to exhaustion of rights, the patentee has made use of the statutory exclusive right of exploiting the patent (possibly through his licensee) and thereby has used it up so that he cannot prohibit subsequent activities of exploitation. Thus, in relation to this matter, if the software used in B's chip is patented by A, B is to pay royalty/damages directly to A even if C had obtained and paid for licenses as it is only applicable for the initial stage of transaction.

Question 4
Defences to infringement e.g. undue delay, laches, statute of limitations (6 years) or any other statutory defences?

Answer 4
Expiration of the patent could be considered as a form of defence as B’s Singapore patent has expired in mid-2009.

Question 5
Would a process or method claim be infringed if the software was put on the chip but the software did not actually run? E.g. passed through assembly line only.

Answer 5
Yes. A process or method claim is considered as direct infringement. In the manufacturing scenario wherein the software is loaded into the chip; also known as embedded system, the program/software that is written for embedded systems are known as firmware. For example, B's chip will be loaded with A's software/program. However, A's software is only loaded in the chip and is not activated. It will only be activated based on respective application/use-for wifi's technology or an application which requires Bluetooth's protocol. In my opinion, it is considered as direct infringement although A's software is only loaded and not activated into B's chip with an intention of use.

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