Non-Infringement Declaration In Singapore

Question 1
A brief explanation/ introduction to Non-Infringement Declaration in Singapore?

Answer 1
Under Section 78 of the Singapore Patents Act, a person could apply to the Registrar or the court for a declaration that an act or proposed act would not constitute an infringement of a patent. However, the following conditions must be satisfied:

(a) that the person had applied in writing to the proprietor for a written acknowledgement to the effect of the declaration claimed, and had furnished him with full particulars in writing of the act in question; and
(b) that the proprietor had refused or failed to give such acknowledgement.

A declaration made by the Registrar shall have the same effect as a declaration made in court.

Section 78 recites that:-
(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 or the Registrar in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that 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 him with full particulars in writing of the act in question; and
(b) that the proprietor has refused or failed to give any such acknowledgment.

(2) A declaration made by the Registrar under this section shall have the same effect as a declaration made by the court.

Question 2
What are the procedures and timelines involved in filing an application for a Non-Infringement Declaration in Singapore?

Answer 2
A) An application to the Registrar under Section 78 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made on Patents Form 33 (Official Fee 290Sing) and shall be accompanied by a copy thereof and a statement setting out fully the facts upon which the applicant relies as showing that Section 78 (1) (a) and (b) have been complied with and the relief which he seeks.

B) The Registrar shall send a copy of the statement to the proprietor of the patent who shall, if he wishes to contest the application, within 2 months from the date of the Registrar’s letter forwarding such copy to him, file a counter-statement on Patents Form 3 (Official Fee 50Sing) setting out fully the grounds on which he contests the applicant’s case and shall at the same time send a copy thereof to the applicant.

C) Subject to such directions as the Registrar may think fit to give, the applicant may, within 2 months from the date of receipt of the copy of the counter-statement, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.

D) Within 2 months from the date of receipt of the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within 2 months from the date of receipt of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.

E) No further evidence shall be filed by either party except by leave or direction of the Registrar.

F) The Registrar may give such directions as he may think fit with regard to the subsequent procedure.