Amendment No. 1 of 2022 to the Supreme Court Practice Directions 2021 (the “Practice Directions”) has been published by the Supreme Court. Under Part 2 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (the “Simplified Process”), these modifications create a new Part 23 and Appendix I relating to the new Simplified Process for certain Intellectual Property Claims (the “Simplified Process”).
All procedures under the Simplified Process are governed by Part 23. Claimants and defendants who seek to use the Simplified Process should consult section 170 for detailed procedural instructions. The section also includes instructions for defendants responding to claimants who choose the Simplified Process.
Claimant’s decision to use the Simplified Process
The Simplified Process is intended for low-value disputes and/or when parties want their case handled quickly. The next steps for a claimant who wants to use the Simplified Process should be found in section 170(1) of the Practice Directions.
The claimant must file and submit the following forms in accordance with the supreme court of judicature rules 5(1): (1) the form to elect for Part 2 of the supreme court of judicature rules to apply, and (2) the form to renounce any claim for monetary relief in excess of $500,000.
This demonstrates that the Simplified Process can be used in circumstances where the claim value is capped.
Defendant’s guidelines for filing a counterclaim
Following the directions in section 170(2) of the Practice Directions, a defendant filing a counterclaim may respond to a claimant who has opted to bring an action using the Simplified Process.
If the defendant chooses to follow the Simplified Process, he or she has two choices. The defendant may do one of the following things within two working days of submitting the defense and counterclaim:
- File and serve the form to abandon any claim for monetary relief in excess of $500,000
- Inform the Court by letter that the defendant agrees to the application of this Part without abandoning any claim for monetary relief in excess of $500,000
As a result, the defendant is not required to drop any claims for monetary compensation in excess of $500,000.
The Court will next issue instructions to decide whether the Simplified Process should continue to apply to the case, taking into account the issues raised in section 4 of the Simplified Process. Section 4 states that an originating claim is only suitable for the Simplified Process if it meets the following criteria:
- The dispute involves an intellectual property right
- The monetary relief claimed by each party does not or is not likely to exceed $500,000 or all parties agree to the application of the Simplified Process
- The case is otherwise suitable for the Simplified Process, having regard to the following factors: Whether a party can only afford to bring or defend a claim under the Simplified Process, the Complexity of the issues, Whether the estimated length of trial is likely to exceed 2 days, Any other relevant matters.
These factors should help claimants and defendants decide if their case is appropriate for the Simplified Process.
If the defendant does not wish to proceed through the supreme court of judicature rules, section 170(2)(b) requires the defendant to notify the Court in writing that he or she does not intend to file the form to abandon any claim for monetary relief in excess of $500,000 and does not agree to proceed through the Simplified Process.
Instructions for a defendant who does not file a counterclaim
Section 170(5) applies if the defendant does not file a counterclaim and does not agree to continue through the Simplified Process. The defendant must file an application under rule 5(4) of the supreme court of judicature rules for the Simplified Process not to apply within two working days of filing the defense.
Defendant’s request for an injunction requiring the use of the Simplified Process
When the amount of monetary relief sought does not exceed $500,000 or all parties agree to use the Simplified Process, the claim is appropriate for the Simplified Process. This is exemplified in section 170(7) of the Practice Directions, which provides instructions to a defendant who chooses to use the Simplified Process.
If the defendant is bringing a counterclaim, he or she must do one of the following things as soon as possible before filing the application:
- Comply with rule 6(3)(a) of the supreme court of judicature rules by filing and serving the form to abandon any claim for monetary relief in excess of $500,000; or
- Inform the Court by letter that rule 6(3)(c) of the supreme court of judicature rules applies, in that all parties agree to the application of Part 2 of the SCJIPR.
Legislation amendments
On April 1, 2022, the remaining revisions to the Copyright Act 2021, the Intellectual Property (Dispute Resolution) Act 2019, and the Patents (Amendment Rules) 2022 went into force. The jurisdictional amendments to certain intellectual property conflicts brought forth by these revisions are noteworthy. This should provide claimants a clearer notion of where to file a claim for infringement of intellectual property rights in the relevant forum.
Copyright Act 2021
The Courts’ jurisdiction over the Copyright Act is defined by Section 501.
It indicates that under the Copyright Acts 1987 and 2021, the District Court and Magistrate’s Court have jurisdiction to try any offense and have the competence to execute the full punishment for any offense. The General Division of the High Court, however, is the court with jurisdiction over such proceedings under section 501(1).
Intellectual Property (Dispute Resolution) Act 2019
Amendments to the Patents Act: The Intellectual Property Dispute Resolution Act of 2019 amends the Patents Act in various ways. When it comes to patent procedures, these revisions effectively define the Registrar’s and Court’s jurisdiction.
Several provisions of the Patents Act relating to patent infringement have been amended. These changes reflect the fact that patents are largely enforced in Singapore courts rather than in the Singapore Intellectual Property Office. The Patents (Amendment) Rules 2022, which came into effect on April 1, 2022, reflect this amendment.
The Patents Act’s section 80, which relates to the authority to revoke patents, has been changed to give the Court that authority.
Section 82 of the Patents Act has been amended to clarify that both the Court and the Registrar have the power to hear patent cancellation procedures.
The State Courts Act has been amended
The State Courts Act of 1970 was amended in sections 31 and 32. The modifications make it clear that action in passing off cannot be heard and tried in the District Court or Magistrate’s Court.
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