Singapore legislation
Regulation 37
of Supreme Court of Judicature (Intellectual Property) Rules 2022
Regulation 37
Production of documents
Subregulation 1
In any proceedings where the validity of a patent is put in issue, the application of Order 11 of the Rules of Court is subject to the modifications in this rule.
Subregulation 2
A document falling within any of the following classes (called in this rule exempt documents) must not be listed:
a document relating to any ground on which the validity of a patent is put in issue, but not a document that came into existence within the period beginning 2 years before the earliest claimed priority date and ending 2 years after that date;
a document relating to the issue of commercial success.
Subregulation 3
If the issue of commercial success arises, the proprietor of the patent must serve a schedule containing the following details:
where the commercial success relates to an article or a product —
an identification of the article or product (for example, by product code number) that the proprietor asserts has been made in accordance with the claims of the patent;
a summary by convenient periods of sales of any such article or product;
a summary for the equivalent periods of sales (if any) of any equivalent prior article or product marketed before the article or product mentioned in sub‑paragraph (i); and
a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products mentioned in sub‑paragraphs (i) and (iii);
where the commercial success relates to the use of a process —
an identification of the process which the proprietor asserts has been used in accordance with the claims of the patent;
a summary by convenient periods of the revenues received from the use of such process;
a summary for the equivalent periods of the revenues (if any) received from the use of any equivalent prior art process; and
a summary by convenient periods of any expenditure which supported the use of the process mentioned in sub‑paragraphs (i) and (iii).
Subregulation 4
Despite paragraph (2), any party may apply under Order 11 of the Rules of Court for further and better production or specific production of any exempt document.
Subregulation 5
To avoid doubt, paragraph (2) does not create any privilege in an exempt document.
Subregulation 6
If, despite paragraphs (1) and (2), a party (X) produces an exempt document for inspection —
any other party (Y) may request X in writing to provide a supplementary list of all other documents within the same class as the exempt document; and
unless the Court orders otherwise, X must serve the supplementary list on Y within 14 days after the request.
Subregulation 7
This rule does not affect the Court’s power to limit production on any other ground.