THE USE OF EXPERTS IN LEGAL PROCEEDINGS IN SINGAPORE INVOLVING INTELLECTUAL PROPERTY RIGHTS

• Citation: (2013) 25 SAcLJ 480
• Date: 01 December 2013
• Published date: 01 December 2013
• Author: David LLEWELYN Professor (Practice) and Deputy Dean, School of Law, Singapore Management University; Professor of Intellectual Property Law, King's College London.

In intellectual property (“IP”) cases decided in recent years in Singapore, the use of expert evidence is commonplace. Weaknesses in that expert evidence are commonplace too; sometimes the weaknesses are such that the evidence should be excluded, on other occasions they render the evidence of little value. However, in all cases the reliance on expert evidence will have increased the costs award make that increase good for the successful party). Aside from the more general policy concerns regarding expert evidence, this is an important reason why the courts must always be vigilant in ensuring in IP cases that expert evidence is allowed only when it is clearly of assistance to them in their role as the ultimate arbiter on questions law.

I. Introduction

1 The use of expert evidence in legal proceedings in Singapore involving intellectual property (“IP”) rights is so common that it rarely gives advisers much cause for thought, even though as a matter of law there is no entitlement to adduce such evidence unless, under the new but still relatively limited wording of s 47 of the Evidence Act,1 the court is likely to derive assistance from an opinion upon a point of scientific, technical or other specialised knowledge, in which case the opinions of experts upon that point are relevant facts. Although some IP cases require expert evidence in those areas, a not insignificant number does not and yet expert evidence is still adduced on matters which are within the judge's knowledge and experience to decide without that so-called expert evidence. Inevitably, this has a knock-on effect on the cost of litigating IP disputes: once one side decides to use an expert witness, the

other will follow suit for fear of being criticised by either its client or the court for not doing so. This issue is worthy of particular focus now as there is increasing concern that the cost of IP litigation effectively excludes from the litigation process, both as willing plaintiffs and unwilling defendants,2 many of the small and medium-sized enterprises (“SMEs”) on which much of Singapore's future growth is likely to depend. It is noteworthy also that in England, with effect from 1 April 2013, the overriding objective of the Civil Procedure Rules 19983 has been reframed to be “dealing with cases justly and at proportionate cost” [emphasis added].4

2 At the outset, it is important to recognise, as the Law Reform Committee explained in its 2011 Report on Opinion Evidence (“LRC Report” that the Evidence Act's exclusionary approach to the admissibility of evidence (“[e]verything that's not in is out”,6 exemplified by the wording in s 5 to the effect that evidence of facts in issue and other relevant facts is admissible but “of no others”) is the opposite of modern evidence law in other jurisdictions where evidence is admitted unless specifically excluded.7

3 There are numerous areas in which parties to IP disputes in Singapore have relied on expert witnesses over recent years.

4 In patent infringement proceedings, experts are almost always called to give evidence on the meaning of technical words and phrases in the patent specification and the “common general knowledge” that the notional skilled person would have had at the relevant time,⁸ in assisting the court to determine the scope of the claims in the patent. Likewise in patent invalidity or revocation proceedings, the experts will help the court (or alternatively, in the latter case, the Registrar)9 in coming to its conclusions on whether the invention was not patentable (that is, it was not new, did not involve an inventive step and/or was not capable of industrial application, as required by s 13(1) of the Patents Act),10 whether the patent specification disclosed the invention sufficiently for it be performed by a person skilled in the art,11 and/or whether matter was added to the specification in the course of its prosecution that went beyond that originally filed.¹²

5 In registered design infringement cases, which also involve monopoly rights so that knowledge and intention are irrelevant, expert

evidence may be required to help the court decide the question of the validity of a particular design.

6 In trade mark infringement and passing off proceedings, experts are often called to give evidence on the essential legal issue for the court of whether or not there is a likelihood of confusion or actual (or likely) deception, respectively, between the plaintiff's mark (or, strictly, the trade indicia the use of which has generated goodwill, in a passing off action) and the sign or trade indicia used by the defendant.13 That evidence often takes the form of survey evidence (introduced by way of the expert evidence of the person who devised the survey), especially if the alleged infringement or passing off has commenced only recently and there is therefore no actual evidence of confusion or deception.

7 In copyright infringement proceedings, experts are called to give evidence on the similarity between the plaintiff's copyright work and the allegedly infringing work produced by the defendant and also on design practices in the field in question (that may go to the question of whether there has been sufficient copying of original work of the plaintiff).

8 Finally, experts are occasionally used to help with complicated technology in breach of confidence cases (which some characterise as IP).14

II. The basis for admission of expert evidence

9 As the expert is giving opinion evidence, the admissibility of that evidence depends on its falling within a permitted exception to the rule against hearsay testimony. In the words of the Law Reform Committee,15“these rules were created to minimise the inherent danger

that tribunals of fact, in most cases juries, will place undue emphasis on expert opinions and abdicate their ultimate responsibility to draw their own conclusions on all the relevant facts in dispute.”

10 In Singapore, the position is now regulated by the recently amended s 47(1) of the Evidence Act:16

When the court is likely to derive assistance from an opinion upon a point of scientific, technical or other specialised knowledge, the opinions of experts on that point are relevant facts.

11 The amendment to section 47(1) was made in response to a recommendation in the LRC Report.17

12 The LRC Report highlights18 that the “idiosyncratic sense” of the word “relevant” in s 47 (in its pre-amendment and current form) is “admissible”, rather than “rationally probative”, which is the sense in which it is used in what the LRC Report labels as “modern evidence law” elsewhere.19 By way of example, the LRC Report refers to s 55(1) of the Australian Evidence Act 199520 which defines “relevant evidence” as that which “if it were accepted, could rationally affect (directly or indirectly) the assessment of the probability of the existence of a fact in issue in the proceedings”.21 In view of this idiosyncratic sense, the LRC Report cautions that it is important to “never lose sight of this fundamental difference between our evidence law and that of most other foreign jurisdictions … [and] to bear this essential difference in mind when translating into the local context principles drawn from cases, articles and law reform reports from foreign jurisdictions which adopt the modern approach to the law of evidence”.22

13 Even though he or she may be called as an expert by one of the parties to a dispute, and paid by them for doing so, an expert's primary duty under O 40A, r 2 of the Rules of Court23 is to assist the court and this duty overrides whatever obligation is owed to the party calling the expert.24 In addition, it is clear from the judgment of the Court of Appeal in HSBC Institutional Trust Services (Singapore) Ltd v Toshin Development Singapore Pte Ltd,25 involving valuation expert evidence,

that experts should as a matter of legal principle disclose “without any prompting” any existing or recent relationship with any of the parties.26“A failure to make proper disclosure in a timely manner may raise serious concerns about apparent or actual bias on the part of the expert”27 that could lead to the evidence being discounted.

III. Procedure for the admission of expert evidence

14 Order 40A of the Rules of Court28 sets out the requirements for the form in which expert evidence may be submitted:

(1) Unless the Court otherwise directs, expert evidence is to be given in a written report signed by the expert and exhibited in an affidavit sworn to or affirmed by him testifying that the report exhibited is his and that he accepts full responsibility for the report.

(2) An expert's report must —

(a) give details of the expert's qualifications;

(b) give details of any literature or other material which the expert witness has relied on in making the report;

(c) contain a statement setting out the issues which he has been asked to consider and the basis upon which the evidence was given;

(d) if applicable, state the name and qualifications of the person who carried out any test or experiment which the expert has used for the report and whether or not such test or experiment has been carried out under the expert's supervision;

(e) where there is a range of opinion on the matters dealt with in the report —

(i) summarise the range of opinion; and

(ii) give reasons for his opinion;

(f) contain a summary of the conclusions reached;

(g) contain a statement of belief of correctness of the expert's opinion; and

(h) contain a statement that the expert understands that in giving his report, his duty is to the Court and that he complies with that duty.^[29]

15 In England, the Civil Procedure Rules 1998 (“CPR”)30 provide that the starting point in relation to expert evidence is that it “be restricted to that which is reasonably required to resolve the proceedings” (r 35.1). Additionally, the court's permission must be obtained before expert evidence may be adduced:

35.4...